13141858 (P.T.A.B. Feb. 27, 2017)

Ex Parte Maeda et al

Patent Trial and Appeal BoardFeb 27, 2017

13141858 (P.T.A.B. Feb. 27, 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. 13/141,858 06/23/2011 Miho Maeda 382561US2PCT(277-0187PCT 7697 27431 7590 03/01/2017 SHIMOKAJI & ASSOCIATES, P.C. 8911 RESEARCH DRIVE IRVINE, CA 92618 EXAMINER BEDNASH, JOSEPH A ART UNIT PAPER NUMBER 2461 NOTIFICATION DATE DELIVERY MODE 03/01/2017 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): patents @ shimokaj i. com PAIR @ shimokaji.com uspatents @ shimokaj i. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MIHO MAEDA, MITSURU MOCHIZUKI, TAIGA SAEGUSA, and YASUSHII WANE Appeal 2015-003039 Application 13/141,858 Technology Center 2400 Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and MELISSA A. HAAPALA, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 6—14. We heard oral argument from Appellants on February 15, 2017. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2015-003039 Application 13/141,858 STATEMENT OF THE CASE The present patent application “relates to a mobile communication system in which a base station carries out radio communications with a plurality of mobile terminals.” Spec. 11. Claim 6 illustrates the claimed invention: 6. A mobile communication system including: mobile terminals, a CSG cell operating in a closed access mode in which a specified one of the mobile terminals can access the CSG cell, and a non CSG cell operating in an open access mode in which an unspecified one of the mobile terminals can access the non CSG cell, in which a CSG indicator indicating whether the cell is a CSG cell or not is broadcasted, wherein the mobile communication system includes a hybrid cell operating in a hybrid access mode which supports the closed access mode and the open access mode at the same time; the hybrid cell has the CSG indicator set to indicate that the cell is not the CSG cell; and the mobile terminals receive the CSG indicator. REJECTION Claims 6—14 stand rejected under 35 U.S.C. § 102(e) as anticipated by Deshpande et al. (US 2009/0305699 Al; Dec. 10, 2009). ISSUE Has the Examiner established Deshpande is prior art under 35 U.S.C. § 102(e)? 2 Appeal 2015-003039 Application 13/141,858 ANALYSIS Appellants’ application claims priority to Japanese Patent Application No. 2008-326643, filed December 23, 2008. App. Br. 9. The Examiner rejected claims 6—14 of Appellants’ application—the only claims currently pending—under 35 U.S.C. § 102(e) as anticipated by Deshpande. Final Act. 2—5. Deshpande was filed on June 4, 2009, after the priority date of Appellants’ application, but Deshpande claims priority to Provisional Application No. 61/059,680 (“’680 Application”), filed June 6, 2008, before Appellants’ priority date. See Deshpande at [22], [60]; App. Br. 9. Therefore, according to Appellants, Deshpande is prior art to Appellants’ application under 35 U.S.C. § 102(e) only if Deshpande is entitled to the filing date of the ’680 Application. App. Br. 9—10. Appellants argue Deshpande is not entitled to the filing date of the ’680 Application because the application does not provide adequate written description support or enable the portions of Deshpande’s disclosure cited by the Examiner. See id. at 16—20. Appellants point out the Examiner found Deshpande discloses a “hybrid cell” that “has the CSG [Closed Subscriber Group] indicator set to indicate that the cell is not the CSG cell” and “supports the closed access mode and the open access mode at the same time” as recited in Appellants’ claims. See id. Appellants argue the ’680 Application does not provide adequate written description support for or enable a “hybrid cell” that has these features. See id. We find Appellants’ arguments persuasive. As contended by Appellants, Deshpande is entitled to the filing date of the ’680 Application only if the ’680 Application provides adequate written description support for the subject matter relied on by the Examiner. See Manual of Patent 3 Appeal 2015-003039 Application 13/141,858 Examining Procedure § 706.02(f)(1) (“The 35 U.S.C. 102(e) date of a reference that did not result from, nor claimed the benefit of, an international application is its earliest effective U.S. filing date ... if the prior application(s) properly supports the subject matter used to make the rejection in compliance with 35 U.S.C. 112, first paragraph.”). To provide adequate written description support for this subject matter, the ’680 Application must “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” AriadPharm., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). For the reasons discussed below, the Examiner has not demonstrated the ’680 Application satisfies this standard. See In re Duvi, 185 F.3d 885 (Fed. Cir. 1999) (“[T]he ultimate burden of establishing unpatentability is with the PTO.”). The Examiner found Deshpande’s disclosed and claimed hybrid cell “has the CSG indicator set to indicate that the cell is not the CSG cell” and “supports the closed access mode and the open access mode at the same time” as required by Appellants claims. See Final Act. 3; Ans. 5—7. The Examiner found Appendix 1 and Appendix 2 of the ’680 Application provide adequate written description support for Deshpande’s hybrid cell. See Final Act. 5—9; Ans. 5—7. With respect to the requirement that the cell include a “CSG indicator set to indicate that the cell is not the CSG cell,” the Examiner found Appendix 1 describes two Open HeNB billing modes that each have a “CSG Indication . . . which is an indication that the cell is a CSG cellC See Ans. 6—7 (emphasis added); ’680 Application app. 1, at 8 (explaining that if the “csg-Indication” is “set to TRUE the UE is only allowed access to the cell if the tracking area identity matches an entry in the 4 Appeal 2015-003039 Application 13/141,858 ‘white list’ that the UE has stored”). The Examiner’s finding the ’680 Application discloses billing modes that have a CSG indication that a cell is a CSG cell does not provide adequate written description support for a hybrid cell with “the CSG indicator set to indicate that the cell is not the CSG cell.” As for a “hybrid cell” that “supports the closed access mode and the open access mode at the same time,” the Examiner found Appendix 1 and Appendix 2 provide adequate written description support for this feature because the appendices disclose “mixed deployments” and “dynamic switching.” See Final Act. 7—9. These disclosures simply indicate that a cell can be either open or closed and switch between these states; the disclosures do not establish that a cell supports closed and open access modes at the same time. See ’680 Application app. 1, at 13, 14, 31; app. 2, at 2. The Examiner also found the OpenHeNB billing models disclosed in Appendix 1 provides adequate written description support because the billing models support preferred billing and include a “CSG Indication . . . which is an indication that the cell is a CSG cell,” “a CSG ID,” and a “‘Closed - Indication which denotes the cells as not closed.” See Final Act. 7—9; Ans. 6—7. The Examiner concluded this disclosure provides sufficient written description support because a “hybrid cell” is simply a cell that “broadcasts both a CSG-ID and a CSG indicator set to indicate access is allowed to a mobile terminal which does not have the broadcast CSG-ID in the whitelist of said terminal.” Ans. 4. But the Examiner found Deshpande’s hybrid cell provides open and closed mode access simultaneously; finding certain billing models disclosed in the ’680 Application broadcast both a “CSG-ID” and “a CSG indicator” set in a 5 Appeal 2015-003039 Application 13/141,858 particular manner does not, without more, reasonably convey the inventors had possession of a hybrid cell that simultaneously provides open and closed access modes. Cf. Ariad Pharm., 598 F.3d at 1352 (“[A] description that merely renders the invention obvious does not satisfy the [written description] requirement.”). As noted by Appellants, the ’680 Application merely discloses that cells can switch between open and closed access modes and that deployments can include both open and closed cells. See Reply Br. 8; ’680 Application app. 1, at 31. The Examiner has not identified any portion of the ’680 Application that explicitly describes a “hybrid cell” that simultaneously supports both open and closed access modes. Based on the record before us, we agree with Appellants that the Examiner has not established Deshpande is prior art to Appellants’ application. We therefore do not sustain the Examiner’s rejection of claims 6—14 as anticipated over Deshpande. DECISION We reverse the rejection of claims 6—14. REVERSED 6