Ex Parte JANG et al

Patent Trial and Appeal Board

Sep 15, 2017

13440216 (P.T.A.B. Sep. 15, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/440,216 04/05/2012 Jaehyuk JANG 0203-0807 1076
09/19/201768103 7590
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
EXAMINER
YOUNG, STEVE R
ART UNIT PAPER NUMBER
2477
NOTIFICATION DATE DELIVERY MODE
09/19/2017 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):
u sdocketing @ j effersonip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAEHYUK JANG and KYEONG IN JEONG
Appeal 2016-007964
Application 13/440,2161
Technology Center 2400
Before JOSEPH L. DIXON, SCOTT B. HOWARD, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 21—40, which constitute all of the claims pending in this
application. Claims 1—20 have been cancelled. App. Br. 10. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Samsung Electronics Co., Ltd. as the real party in
interest. App. Br. 2.
Appeal 2016-007964
Application 13/440,216
THE INVENTION
The disclosed and claimed invention is directed to a method and
apparatus for “operating multiple time alignment timers in a Long Term
Evolution (LTE) system using multiple carriers.” Spec. 12.
Claim 21, reproduced below with the relevant limitations emphasized,
is illustrative of the claimed subject matter:
21. A method for operating Time Alignment Timers (TATs)
of a User Equipment (UE) transmitting/receiving data to/from an
eNB on a Primary cell (PCell) and at least one Secondary Cell
(SCell), the method comprising:
receiving, from the eNB, first Timing Advance (TA)
information associated with a Primary Timing Advance Group
(PTAG) which is a group of serving cells having same uplink
timing and includes the PCell;
starting or restarting a first TAT associated with the PTAG
based on the first TA information;
receiving, from the eNB, second TA information
associated with a Secondary Timing Advance Group (STAG)
which is a group of serving cells having same uplink timing and
does not include the PCell;
starting or restarting a second TAT associated with the
STAG based on the second TA information;
receiving downlink data on at least one serving cell in the
STAG;
determining whether the first TAT associated with the
PTAG is running and whether the second TAT associated with
the STAG is running; and
delivering, if the first TAT associated with the PTAG is
running and the second TAT associated with the STAG expires,
positive or negative acknowledgement (ACK/NACK) information
corresponding to the downlink data received on at least one
serving cell in the STAG to a physical (PHY) layer of the UE.
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Appeal 2016-007964
Application 13/440,216
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Park US 2010/0296454 A1 Nov. 25, 2010
Sebire US 2011/0243102 A1 Oct. 6, 2011
Dinan US 2013/0272279 A1 Oct. 17,2013
REJECTIONS
Claims 21—25, 29—33, and 37-40 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Sebire in view of Park. Final
Act. 7-17.
Claims 26—28 and 34—36 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Sebire in view of Park and Dinan. Final
Act. 17-21.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.* 2
We are not persuaded by Appellants’ arguments regarding claims 21—40,
and we incorporate herein and adopt as our own: (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
2 Rather than reiterate the entirety of the arguments of Appellants and the
positions of the Examiner, we refer to the Appeal Brief (filed Jan. 5, 2016);
the Reply Brief (filed Aug. 11, 2016); the Final Office Action (mailed July
2, 2015); and the Examiner’s Answer (mailed June 15, 2016) for the
respective details.
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Application 13/440,216
taken (Final Act. 7—21), and (2) the reasons and rebuttals set forth in the
Examiner’s Answer in response to Appellants’ arguments (Ans. 18—20). We
incorporate such findings, reasons, and rebuttals herein by reference unless
otherwise noted. However, we highlight and address specific findings and
arguments for emphasis as follows.
Claims 21—25, 37, and 39
Appellants argue the Examiner erred in finding the combination of
Sebire and Park teach the delivering step recited in claim 21. App. Br. 4—7;
Reply Br. 2—5. Specifically, Appellants argue that neither of the cited
references teach the disputed delivering step. See, e.g., App. Br. 5
(“According to the cited paragraphs of Sebire, if the first timer associated
with the PTAG is running and the second timer associated with the STAG
expires, the UE 10 does not perform reception of downlink data nor sending
of an acknowledgement corresponding to the downlink data.”); Reply Br. 3
(“According to Sebire, if the first timer associated with the PTAG is running
and the second timer associated with the STAG expires, the UE 10 does not
perform reception of downlink data nor sending of an acknowledgement
corresponding to the downlink data.”); App. Br. at 7 (“However, Applicants
respectfully submit that Park does not deal with the Timing Advance Group
(TAG) which means carriers or cells having uplink timings identical or
similar among each other. Rather, Park merely describes sending an ACK
signal or NACK signal, without considering which TAG the expired time
belongs to.”); Reply Br. 4 (same). Appellants further argue because Park
“states ‘wherein the generated positive or negative response message is not
transmitted to the network when a timer is expired or not running, the timer
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Application 13/440,216
is a Time Alignment timer (TAT). . Park teaches away from the claimed
invention. App. Br. 7 (emphasis omitted) (quoting Park 1 50).
During prosecution, claims must be given their broadest reasonable
interpretation while reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad, of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
With regard to claim 21, the disputed delivering step is a conditional
limitation. That is, claim 21 only recites delivering a positive or negative
acknowledgement when two conditions are met: “[(1)] the first TAT
associated with the PTAG is running and [(2)] the second TAT associated
with the STAG expires.” See App. Br. 10 (Claims App’x). On the other
hand, the claim does not require any specific message to be delivered when
both conditions are not met. Id. We conclude that the broadest reasonable
construction of claim 1 covers two alternative methods, one method when
the two timing conditions are met and another when it is not. See Ex parte
Schulhauser, No. 2013-007847, 2016 WL 6277792, *3-5 (PTAB April 28,
2016) (precedential) (discussing construction of conditional limitations in
method claims). In light of the claim’s conditional language, the prior art
need only teach one of the two alternatives, not both. See id. Appellants do
not argue that the prior art does not teach or suggest all of the steps of the
method when the two timing conditions of the delivering step are not met.
Therefore, we are not persuaded by Appellants’ arguments that the Examiner
erred. Id. (holding the claimed subject matter to be obvious when only one
of two conditional methods is taught by the prior art).
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Moreover, even if we did consider the alternative embodiment in
which the two timing conditions are met, we are not persuaded by
Appellants’ arguments that the Examiner erred.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981). Because Appellants arguments are directed to the
references individually and do not address the combination of teachings as
applied by the Examiner, we are not persuaded that the Examiner erred.
Instead, we agree with the Examiner that the combination of the teachings of
Sebire and Park “would effectively transmit ACK/NACK data during only
the second procedure (i.e. STAG expires).” Ans. 19.
We also find Appellants have not established that the prior art teaches
away from the claimed invention because Appellants have not demonstrated
that “a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed Cir. 1994). Park paragraph 50, which
discusses a preferred embodiment, “does not teach away. . . [as] it merely
expresses a general preference for an alternative invention but does not
‘criticize, discredit, or otherwise discourage’ investigation into the invention
claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
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1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004)). Appellants do not identify any passage in Park that
explicitly discredits or discourages sending ACK/NACK messages after a
timer expires; instead, Appellants merely identify a preference in the
preferred embodiment against doing so. See App. Br. 7; Reply Br. 4; Park
| 50. That stated preference is insufficient to teach away from the claimed
invention. See id.; Fulton, 391 F.3d at 1201.
Accordingly, we sustain the Examiner’s rejection of claim 21, along
with the rejection of dependent claims 22—25, 37, and 39 not separately
argued.
Claims 29—33, 38, and 40
Appellants rely on the same arguments discussed above for
independent claim 29. App. Br. 7—8 (“Regarding independent claim 29, this
claim recites the above subject matter related to independent claim 21.
Thus, the arguments set forth above with respect to independent claim 21 are
applicable to independent claim 29.”). Because claim 29 is an apparatus
claim, claiming User Equipment and not a method, the discussion above
regarding the construction of the conditional method step limitation does not
apply. However, except for the discussion of the conditional claim
language, for the same reasons discussed above for claim 21, we are not
persuaded by Appellants’ arguments that the Examiner erred.3
3 For the avoidance of doubt, we are not persuaded by Appellants’
arguments directed to the references individually and that Park teaches
away.
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Accordingly, we sustain the Examiner’s rejection of claim 29, along
with the rejection of dependent claims 30—33, 38, and 40 not separately
argued.
Claims 26—28 and 34—36
With respect to dependent claims 26—28 and 34—36, Appellants
merely contend that because the additional reference used in the rejection of
these claims (Dinan) does not cure the shortcomings of the other references
applied against claims 21 and 29, the Examiner failed to make a prima facie
case of obviousness for these claims. App. Br. 9. Because we determine
that the rejection of claims 21 and 29 is not erroneous for the reasons
discussed above, we sustain the rejections of these claims.
DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 21—40.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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