Ex Parte Prateek et al

Patent Trial and Appeal Board

Feb 12, 2018

13638365 (P.T.A.B. Feb. 12, 2018)

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.
13/638,365 11/01/2012 Basu Mallick Prateek 0201-0569 1302
68103 7590
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
EXAMINER
RENNER, BRANDON M
ART UNIT PAPER NUMBER
2478
NOTIFICATION DATE DELIVERY MODE
02/14/2018 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):
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 BASU MALLICK PRATEEK, TUSHAR VRIND, and
VINAY KUMAR SHRIVASTAVA
Appeal 2017-008020
Application 13/638,365
Technology Center 2400
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 2, 5, 6, 12, 15, and 16. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm and enter NEW GROUNDS OF REJECTION pursuant to
37 C.F.R. § 41.50(b).
1 Appellants identify Samsung Electronics Co., Ltd., as the real party in
interest (App. Br. 2).
Appeal 2017-008020
Application 13/638,365
THE INVENTION
Appellants’ claimed invention is directed to a mechanism to
update/include the medium access control (MAC) information elements like
the power headroom report (PHR) and the buffer status report (BSR) which
are reported to the enhanced nodeB (ENB) to schedule, maintain, and
operate the reporting user equipment (UE) (Abstract).
Independent claim 2, reproduced below, is representative of the
subject matter on appeal:
2. A method for transmitting a power headroom report
(PHR) by a terminal in a wireless communication network
supporting carrier aggregation, the method comprising:
receiving control information for activating a
secondary cell from a base station;
determining whether to activate the secondary cell
based on the received control information;
determining whether a prohibit PHR timer between
the prohibit PHR timer and a periodic PHR timer expires;
and
transmitting a PHR if the prohibit PHR timer
expires or has expired and a path loss has changed for at
least one activated serving cell when the terminal has
uplink resources for a new transmission.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is the following:
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Appeal 2017-008020
Application 13/638,365
3GPP(ETSI)
Pelletier
Guo
3GPPTS 36.321 Jan. 2009
version 8.4.0 Release 8
(hereinafter, “3 GPP”)
US 2010/0130137 A1 May 27, 2010
US 2010/0238863 A1 Sept. 23, 2010
REJECTIONS
The Examiner made the following rejections:
Claims 2, 5, 12, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pelletier in view of Guo. Final Act. 2.
Claims 6 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pelletier in view of Guo and 3GPP. Final Act. 4.
ISSUE
The pivotal issue is whether the Examiner erred in finding that the
combination of Pelletier and Guo teaches or suggests the limitations of:
determining whether a prohibit PHR timer between the
prohibit PHR timer and a periodic PHR timer expires; and
transmitting a PHR if the prohibit PHR timer expires or
has expired and a path loss has changed for at least one
activated serving cell when the terminal has uplink resources
for a new transmission,
as recited in independent claim 2, and similarly recited in independent claim
12.
ANALYSIS
We adopt the Examiner’s findings in the Answer and Final Office
Action and we add the following primarily for emphasis. We note that if
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Appeal 2017-008020
Application 13/638,365
Appellants failed to present arguments on a particular rejection, we will not
unilaterally review those uncontested aspects of the rejection. See Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential); Hyatt v. Dudas,
551 F.3d 1307, 1313—14 (Fed. Cir. 2008) (the Board may treat arguments
Appellants failed to make for a given ground of rejection as waived).
Appellants argue Examiner error because “Guo discloses that the LTE
system controls the PHR triggering by utilizing both the periodic timer
and the timer ‘prohibitPHR-TlMER,’ whereas pending claim 2 of the
present application recites transmitting a PHR if a prohibit PHR timer
expires” (App. Br. 4, citing Guo 149, emphasis in original). Appellants
contend that “Guo needs both ‘periodicPHR-Timer’ and ‘prohibitPHR-
TIMER’ to control the PHR triggering,” because “if only one set of the
[periodic and prohibit] timers is configured in the UE, it is not sufficient to
control the PHR triggering for all of the configured uplink carriers” (App.
Br. 5, citing Guo 149).
We are not persuaded by Appellants’ arguments. The Examiner finds,
and we agree, that
there is nothing in the claim that limits the scope of the claims
only a single timer expiring or preventing both of the prohibit
and period PHR timers from expiring. Thus as long as the prior
art teaches transmitting a PHR when a prohibit PHR timer
expires (regardless if other timers are also expiring), the prior
art is proper to reject the claim limitations,
and
Guo teaches, in Paragraph 49, that the prohibit PHR timer
expires, thus causing the PHR to be transmitted. Further, Guo,
in Paragraph 8, states that it is well known in the prior art that a
PHR is triggered if any of the prohibit PHR timer or periodic
PHR timers expire
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Appeal 2017-008020
Application 13/638,365
(Ans. 5). We agree with the Examiner’s findings and additionally note that
claim 2 recites “comprising,” and “[t]he transition ‘comprising’ in a method
claim indicates that the claim is open-ended and allows for additional steps.”
Invitrogen Corp. v. Biocrest Manufacturing, L.P., 327 F3d. 1364, 1368 (Fed.
Cir. 2003). Therefore, since the claim is open-ended and allows for
additional steps, the claim does not preclude Guo’s use of prohibit and
periodic timers.
Thus, we sustain the Examiner’s rejection of independent claim 2 and
independent claim 12 not argued with particularity separately (see App. Br.
5), and dependent claims 5, 6, 15, and 16 not argued with particularity
separately (see App. Br. 4—5).
New Grounds of Rejection under 35 U.S.C. § 112, Second Paragraph
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new
grounds of rejection and separately reject claims 2, 5, 6, 12, 15, and 16 under
pre-AIA 35 U.S.C. § 112, second paragraph.
Both independent claims 2 and 12 recite determining “whether a
prohibit PHR timer between the prohibit PHR timer and periodic PHR timer
expires.” Our understanding of the Examiner’s interpretation is that the
claim requires both a single prohibit PHR timer and a single periodic PHR
timer, and the limitation is satisfied when the prohibit PHR timer expires.
However, Appellants’ Briefs state both that “the claims use a prohibit
PHR timer between the prohibit PHR timer and the periodic PHR timer
(App. Br. 5, emphasis added) and that “the claim would still make a
determination of whether to transmit a PHR report based on whether one
timer of out of the prohibit PHR timer and periodic PHR timer has expired”
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Application 13/638,365
(Reply Br. 4, emphasis added). Thus, based on a review of (1) Appellants’
disclosure, (2) the claim language, and (3) Appellants’ statements in the
Briefs, the claim is amenable to two plausible claim constructions, as the
claim could require either one or two prohibit PHR timers; this renders
claims 2 and 12 indefinite. “[W]e hold that if a claim is amenable to two or
more plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35U.S.C. § 112, second
paragraph, as indefinite.” Ex Parte Miyazaki, 89 USPQ2d 1207, 1211
(BPAI 2008) (precedential). See also Ex parte McAward, No. 2015-006416,
2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (quoting In
re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014)) (“[W]e apply the
approach for assessing indefmiteness approved by the Federal Circuit in
Packard, i.e., ‘[a] claim is indefinite when it contains words or phrases
whose meaning is unclear.’”)
Accordingly, we enter new grounds of rejection for claims 2, 5, 6, 12,
15, and 16 under 35 U.S.C. § 112, second paragraph.
CONCLUSION
The Examiner did not err in finding that the combination of Pelletier
and Guo teaches or suggests
determining whether a prohibit PHR timer between the
prohibit PHR timer and a periodic PHR timer expires; and
transmitting a PHR if the prohibit PHR timer expires or
has expired and a path loss has changed for at least one
activated serving cell when the terminal has uplink resources
for a new transmission,
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Application 13/638,365
as recited in independent claim 2, and similarly recited in independent claim
12.
DECISION
The Examiner’s decision rejecting claims 2, 5, 6, 12, 15, and 16 is
affirmed.
We newly reject claims 2, 5, 6, 12, 15, and 16 under 35 U.S.C. § 112,
second paragraph.
37 C.F.R. § 41.50(b) provides a “new ground of rejection pursuant to
this paragraph 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 examiner ....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record ....
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Appeal 2017-008020
Application 13/638,365
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;
37 C.F.R. $ 41.50(b)
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