Ex Parte Kashima

Patent Trial and Appeal Board

Dec 21, 2018

12141321 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/141,321 06/18/2008
11764 7590
Ditthavong & Steiner, P.C.
44 Canal Center Plaza
Suite 305
Alexandria, VA 22314
12/26/2018
FIRST NAMED INVENTOR
Tsyoshi Kashima
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.
01057-1356 5118
EXAMINER
PHAM,TITOQ
ART UNIT PAPER NUMBER
2466
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
docket@dcpatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TSYOSHI KASHIMA
Appeal2018-004863
Application 12/141,321
Technology Center 2400
Before DEBRA K. STEPHENS, JEREMY J. CURCURI, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-3, 5-12, 14--17, 19-29, and 31-33. Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b ). 1
Claims 1, 2, 5-11, 14--17, 19, 22-25, 28, 29, and 31-33 are rejected
under 35 U.S.C. § 103(a) as obvious over Talarmo (US 5,778,318; July 7,
1 Claims 4 and 13 are objected to as being dependent upon a rejected base
claim. This matter is not before us. See, e.g., MPEP § 706; see also MPEP
§ 1201. Claims 18 and 30 were canceled in an Amendment filed March 24,
2017.
Appeal2018-004863
Application 12/141,321
1998), Haartsen (US 2007/0293157 Al; Dec. 20, 2007), Lorh (US
2009/0116434 Al; May 7, 2009), and Narasimha (US 2008/0268850 Al;
Oct. 30, 2008). Final Act. 2-6, 7-8. 2
Claims 3, 12, 20, 21, 26, and 27 are rejected under 35 U.S.C. § I03(a)
as obvious over Talarmo, Haartsen, Lorh, Narasimha, and Liu (US
2008/0069032 Al; Mar. 20, 2008). Final Act. 6-8. 3
We reverse.
STATEMENT OF THE CASE
Appellant's invention relates to "generating a control message having
a format designated for resource allocation." Abstract. Claim 1 is
illustrative and reproduced below:
1. A method comprising:
generating a control message having a format designated for resource
allocation, wherein the control message includes a plurality of control fields;
and
reserving a value of one of the control fields to specify information
other than information for resource allocation, the value indicating
information for starting a non-contention based random access procedure at
a base station,
2 The formal statement of rejection omits claims 8 and 17; however, these
claims are addressed by the Examiner on page 5 of the Final Action. Thus,
we consider this an inadvertent typographical error.
3 Claims 21 and 27 depend from claims 20 and 26, respectively.
Accordingly, we treat claims 21 and 27 as rejected as obvious over Talarmo,
Haartsen, Lorh, N arasimha, and Liu.
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Application 12/141,321
wherein the control message is transmitted over a control channel
according to a lower layer protocol.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential).
ANALYSIS
THE OBVIOUSNESS REJECTION OF CLAIMS 1, 2, 5-11, 14--17, 19, 22-25, 28,
29, AND 31-33 OVER TALARMO, HAARTSEN, LORH, AND NARASIMHA
Appellant contends the Examiner has improperly combined the
teachings ofNarasimha and Talarmo and specifically, that "[t]he Examiner's
generalized statement of achieving 'random access at handover' to justify
the proposed combination of references is insufficient to support a
conclusion of obviousness" (App. Br. 7-8). Because this contention is
dispositive of the appeal, we do not reach Appellant's other contentions.
The Examiner finds Talarmo, Haartsen, Lorh, and Narasimha teach all
limitations of claim 1. Final Act. 3--4. The Examiner reasons "it would
have been obvious to one with ordinary skill in the art at the time of the
invention to implement in Talarmo a value indicating information for
starting a non-contention based random access procedure at a base station.
The motivation would have been for random access at handover." Final Act.
5.
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Application 12/141,321
Appellant presents the following principal argument in support of
Appellant's contention that the Examiner has improperly combined the
teachings ofNarasimha and Talarmo:
Appellant submits that absent the present application as a
blueprint, one of ordinary skill in the art would not have been
motivated to tum to Narasimha in order to remedy any
deficiency of Talarmo. Narasimha's invention relates to
handover procedures that eliminate or minimize the interruption
time. See paragraph [0008]. In contrast to Narasimha's
objective, Talarmo's invention relates to a method for
allocating channels in a radio system comprising base stations
and subscriber stations communicating with the base stations
over control and traffic channels. See Background section of
Talarmo. Talarmo teaches allowing the signaling capacity to be
increased in a situation where the control channel of the base
station is congested, but some other channel may have extra
capacity. See Summary section of Talarmo. The Examiner's
generalized statement of achieving "random access at
handover" to justify the proposed combination of references is
insufficient to support a conclusion of obviousness.
Appeal Br. 7-8; see also Reply Br. 3--4.
In response, the Examiner explains
In this case, Talarmo teaches a control message indicating
information for starting a random access procedure (Talarmo's
figure 3 field 355: random access procedure algorithm).
Talarmo also teaches interference between radio devices in
communicating with the base station ( col. 8 lines 1-16).
Talarmo does not explicitly teach the random access procedure
is non-contention based. Narasimha teaches allocating reserved
resource for handover including reserved (non-contention)
random access (paragraphs 44, 54, and 55). Thus, it would
have been obvious to combine Narasimha with Talarmo.
Ans. 11.
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Application 12/141,321
Our Review
This appeals turns on one question: Does the Examiner's conclusion
of obviousness have a rational underpinning on the record before us. The
following disclosures in Talarmo and Narasimha are relevant to this
question. Talarmo discloses "FIG. 3 shows the control channel allocation
message according to the invention." Talarmo col. 8, 11. 37-38. Talarmo
discloses "Field 355 contains other possible parameters." Talarmo col. 8, 11.
55-56. Talarmo discloses "In certain examples, for random access, the
control channel is able to transmit random access algorithm data 355 to
radio devices requesting access in control channel allocation messages."
Talarmo col. 7, 11. 6-9. Talarmo further discloses "FIG. 7 shows a traffic
interruption message according to the invention." Talarmo col. 11, 11. 50-
51. Talarmo discloses "Field 702 indicates whether the uplink channel has
been allocated as a traffic channel or whether [it is] used for random access
attempts during the following uplink time slot(s)." Talarmo col. 11, 11. 55-
58. Narasimha discloses "The handover preparation command can include a
schedule for a transmit/receive gap corresponding to RACH [(Random
Access Channel)] occasions on the target base station 130, a reserved RACH
preamble on the target base station, and the reserved MAC-ID." Narasimha
,T 53.
We do not readily see, nor has the Examiner adequately explained,
why a skilled artisan would have modified Talarmo's channel allocation
message ( or traffic interruption message) to include N arasimha' s reserved
RACH preamble. Although the Examiner in the Final Action reasons "[t]he
motivation would have been for random access at handover," we agree with
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Application 12/141,321
Appellant that this statement is insufficient to support a conclusion of
obviousness. Final Act. 5; see also Ans. 11.
For example, the Examiner does not explain how or why Talarmo's
control channel allocation message (Talarmo Fig. 3), which is sent to a
group of subscribers, would have been modified to include information from
Narasimha's handover command (Narasimha step 335, Fig. 3), which is sent
to a single mobile station 110. See Talarmo col. 8, 11. 52 ("Field 354
indicates a user group"), Narasimha ,r 53 ("In step 335, the source base
station 120 can use the persistent resource to send the handover preparation
command to the mobile station 110."). Talarmo's channel allocation
message is not a handover command. See Talarmo col. 8, 11. 37-38.
Similarly, we do not readily see, nor has the Examiner adequately
explained, how or why a skilled artisan would have modified Talarmo' s
traffic interruption message (Talarmo Fig. 7) to include information from
Narasimha's handover command (Narasimha step 335, Fig. 3). Like
Talarmo's channel allocation message, Talamo's traffic interruption
message is not a handover command. See Talarmo col. 11, 11. 50---51.
In short, the Examiner's conclusion of obviousness lacks a rational
underpinning, on the record before us, for reasons discussed above. Because
we have determined the Examiner has improperly combined the references,
we do not address Appellants' other arguments.
We, therefore, do not sustain the Examiner's rejection of claim 1. We
also do not sustain the Examiner's rejections of independent claims 9, 10,
19, 24, and 25, for the same reasons. See Final Act. 3-5 (addressing these
claims together with claim 1). We also do not sustain the Examiner's
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rejections of dependent claims 2, 5, 6-8, 11, 14--17, 22, 23, 28, 29, and 31-
33, which variously depend from claims 1, 10, 19, and 25.
THE OBVIOUSNESS REJECTION OF CLAIMS 3, 12, 20, 21, 26, AND 27 OVER
TALARMO, HAARTSEN, LORH, NARASIMHA, AND LIU
Claims 3, 12, 20, 21, 26, and 27 variously depend from claims 1, 10,
19, and 25. The Examiner does not cure the deficiency of the rejections of
claims 1, 10, 19, and 25. See Final Act. 6-8.
We, therefore, do not sustain the Examiner's rejections of claims 3,
12, 20, 21, 26, and 27.
ORDER
The Examiner's decision rejecting claims 1-3, 5-12, 14--17, 19-29,
and 31-33 is reversed.
REVERSED
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