Ex Parte Fukuta et al

Patent Trial and Appeal Board

Mar 30, 2018

14470723 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/470,723 08/27/2014
78198 7590
Studebaker & Brackett PC
8255 Greensboro Drive
Suite 300
Tysons, VA 22102
04/03/2018
FIRST NAMED INVENTOR
Noriyoshi FUKUTA
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
005200-K00200 7251
EXAMINER
SEFCHECK, GREGORY B
ART UNIT PAPER NUMBER
2477
NOTIFICATION DATE DELIVERY MODE
04/03/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
info@sbpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORIYOSHI FUKUTA, MASATO FUJISHIRO,
CHIHARU YAMAZAKI, HIROYUKI ADACHI, and
ATSUHISA INAKOSHI
Appeal2017-010906
Application 14/470,723
Technology Center 2400
Before CARL W. WHITEHEAD JR, JEREMY J. CURCURI, and
NABEEL U. KHAN, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 are appealing the final rejection of claims 1-3 under
35 U.S.C. § 134(a). Appeal Brief 2. We have jurisdiction under 35 U.S.C.
§ 6(b) (2012).
We affirm.
Introduction
The invention is directed to a, "mobile communication method, which
configures a DRX cycle (a discontinuous reception cycle) having an On
1 The real party in interest is Kyocera Corporation. Appeal Brief 2.
Appeal2017-010906
Application 14/470,723
duration, in which a downlink signal transmitted from a serving cell is to be
monitored, and an Off duration other than the On duration, and a radio
terminal." Specification 1.
Illustrative Claim
1. A mobile communication method, which configures a
discontinuous reception (DRX) cycle having an On duration in which
a downlink signal transmitted from a radio base station is to be
monitored and an Off duration other than the On duration in a radio
resource control (RRC) connected state where a RRC connection is
established between a radio terminal and the radio base station, the
mobile communication method comprising:
transmitting, from the radio terminal to the radio base station,
first information indicating that the radio terminal gives priority to
configurations for improved power savings of the radio terminal, in
response to when the radio terminal gives priority to the
configurations for improved power savings in the RRC connected
state, and
transmitting, from the radio terminal to the radio base station,
second information indicating that the radio terminal does not give
priority to the configurations for improved power savings of the radio
terminal, in response to when the radio terminal does not give priority
to the configurations for improved power savings in the RRC
connected state, wherein
the first information, when transmitted to the radio base station,
is used by the radio base station to configure parameters on the RRC
connected state to the radio terminal,
the second information, when transmitted to the radio base
station, is used by the radio base station to configure parameters on
the RRC connected state to the radio terminal, and
the configurations for improved power saving comprise a
configuration in which the time duration of a DRX cycle is increased
relative to a DRX cycle presently used by the radio terminal.
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Application 14/470,723
Rejection on Appeal
Claims 1-3 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Fodor (US Patent 8,285,346 B2; issued October 9, 2012)
and Peisa (US Patent 8,441,973 B2; issued May 14, 2013). Final Action 3-
4.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed January 13, 2017), the Reply Brief
(August 21, 2017), the Answer (mailed June 22, 2017) and the Final Action
(mailed July 15, 2016) for the respective details.
Appellants contend the Fodor reference does not disclose or suggest
the "transmitting ... second information" limitation and that the Examiner
finds the limitation is disclosed by the Peisa reference. Appeal Brief 7.
Appellants contend "the Examiner asserts that the limitation of transmitting
'second information indicating that the radio terminal does not give priority
to the configurations for improved power savings' limitation is met by the
Peisa reference at Fig. 3, steps 304 and 308" and "[m]ore particularly, the
Examiner asserts that the 'cause value' reads on the claimed second
information. However, the Examiner has inadvertently misconstrued the
meaning of 'cause value' within the Pesia [sic] reference." Appeal Brief 7.
Appellants argue:
Appellants respectfully direct attention to col. 4, lines 2-3,
of Pesia [sic], which equates "cause value" with "Fast Dormancy
request." A Fast Dormancy request is described in col. 3, lines
20-25 of Peisa as "specified by subclause 8.1.14 of 3GPP TS
25.331 that is used by the UE to indicate to the RAN that one of
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Application 14/470,723
its signaling connections has been released or to request the RAN
to initiate a state transition to a battery-efficient RRC state."
Accordingly, given the description of Peisa's "cause
value," it is unreasonable and legally impermissible to read the
term "cause value" as satisfying the claimed "second
information" given the plain language of the claims. Despite
any assertion by the Examiner in his Interview Summary of
October 28, 2016, that the § 103 rejection is proper "based on a
broadest reasonable interpretation of the pending claims," there
is nothing in the claim language and the specification that would
allow Peisa's cause value/Fast Dormancy request to read on the
claimed second information, and the Examiner fails to point to
any passage or drawing in the present specification that supports
his interpretation. Accordingly, the Examiner's interpretation is
unreasonable, and thus legally impermissible ....
Still further, a "Fast Dormancy request" requires giving
priority to power savings as its purpose is to quickly put a mobile
station into a dormant state.
Appeal Brief7-8.
The Examiner finds:
Fodor is shown to expressly disclose the claimed "first
information" in the form of an explicit UE request for an
extended DRX cycle in order to "give priority to configurations
for improved power savings", as claimed.
Fodor is only deficient in showing the claimed "second
information," which the plain language and broadest reasonable
interpretation dictates is the opposite of the first information, i.e.
to NOT give priority to configurations for improved power
savings. As shown above, Fodor's disclosure of first information
to give priority for a particular configuration would at least
suggest the second information to NOT give priority to the
particular configuration. However, in order to strengthen the case
of obviousness, secondary reference to Peisa is relied upon to
show similar "first information" as in Fodor for giving priority
to a power saving configuration (see Fig. 3, 304 "Battery
Efficient?" Yes) while also showing different signaling which
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Appeal2017-010906
Application 14/470,723
does NOT give priority to power saving configuration (Fig. 3,
304 "Battery Efficient?" No).
Answer 6.
We agree with the Examiner that Fodor teaches or suggests the
claimed first information in the form of its UE request for an extended DRX
cycle. Final Action 3--4 (citing Fodor column 2, line 60 to column 3, line
15, column 4, lines 45-55). However, Appellants are correct that the
Examiner misinterprets Peisa by finding Pesia's Disable Fast Dormancy
Request (Peisa Figure 3, element 304 "Battery Efficient?" Yes, element 312)
as giving priority to a power saving configuration, while finding Peisa's
Enable Fast Dormancy Request (Peisa Figure 3, element 304 "Battery
Efficient?" No, element 306) as not giving priority to power saving
configuration. Instead, the reverse is true. Peisa's Enable Fast Dormancy
Request, in response to the UE not being in a battery efficient state, gives
priority to a power saving configuration, while Peisa's Disable Fast
Dormancy Request, in response to the UE being in a battery efficient state,
does not give priority to a power saving configuration.
It is evident that Fodor discloses a method wherein the UE requests
extending the DRX cycle thus placing a priority on power savings. It is also
evident that Fodor also discloses transmitting to the radio base when priority
is not given to improved power savings when the negotiation between the
radio base or core network results in a normal DRX cycle. 2 We agree with
2 "The DRX cycle is set by a negotiation between UE and core network 604,
therefore when the DRX cycle is to be extended or when it changes from the
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Application 14/470,723
the Examiner that Pesia teaches transmitting first information giving priority
to configurations for power savings and second information not giving
priority to configurations for power savings, except that the steps of Pesia
relied upon by the Examiner as teaching first information actually teaches
the claimed second information, and the steps relied upon as teaching second
information, actually teaches the claimed first information. We ultimately
agree with the Examiner's findings that it would have been obvious to
modify Fodor in view of Peisa's disclosure to incorporate first and second
transmissions to modify the priority of the saving power within a radio
terminal.
For the above reasons, we sustain the Examiner's rejection of
independent claim 1, as well as, dependent claims 2, 3 not argued separately.
See Appeal Brief 8. Although our analysis is generally the same as the
Examiner's reasoning, we have made new fact findings and provided
additional explanations not provided by the Examiner, thereby changing the
thrust of the rejection. Accordingly, in the interest of giving Appellants a
full and fair opportunity to respond, we designate our affirmance of claims
1-3 as a new ground of rejection to the extent it relies on new underpinnings
in support of the proffered reason.
DECISION
The Examiner's obviousness rejection of claims 1-3 is affirmed.
extended DRX cycle to the normal DRX cycle, a negotiation must be
performed." Fodor, column 5, lines 26-30.
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Application 14/470,723
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that "[a] new ground of
rejection .. , shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims
so rejected or new evidence relating
to the claims so rejected, or both, and
have the matter reconsidered by the
examiner, in which event the
proceeding will be remanded to the
exammer ....
(2) Request rehearing. Request that
the proceeding be reheard under §
41.52 by the Board upon the same
record ....
AFFIRMED
37 C.F.R. § 41.50(b)
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