Ex Parte Van Der Velde et al

Patent Trial and Appeal Board

Oct 17, 2017

10552295 (P.T.A.B. Oct. 17, 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.
10/552,295 10/26/2006 Himke Van Der Velde P18216-US1 2060
27045 7590 10/19/2017
F.RTrSSON TNC EXAMINER
6300 LEGACY DRIVE SCHWARTZ, JOSHUA L
M/SEVR 1-C-ll
PLANO, TX 75024 ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
10/19/2017 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):
michelle. sanderson @ eric sson .com
pam. ewing @ ericsson. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIMKE VAN DER VELDE and GERT-JAN VAN LIESHOUT
Appeal 2015-004528
Application 10/552,295
Technology Center 2600
Before MAHSHID D. SAADAT, BARBARA A. PARVIS, and
STACEY G. WHITE, Administrative Patent Judges.
PARVIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 8—16, 31—35, and 39—51.1 We have jurisdiction under 35 U.S.C.
§ 6(b). We REVERSE.
i Claims 1—7, 17—30, and 36—38 have been cancelled.
Appeal 2015-004528
Application 10/552,295
BACKGROUND
Appellants’ disclosed invention relates to a specific protocol extension
scenario for telecommunications, namely the addition of a new system
information block (“SIB”) type to message(s) transmitted in cellular
applications such as, for example, a cellular network that uses Wideband
Code Division Multiple Access (W-CDMA). Spec. 12. Independent claim
8 is illustrative and is reproduced below:
8. A method of operating a node of a telecommunications
network which prepares network system information for
transmission across an air interface to a user equipment unit, the
system information including a system information block type
which is included in protocol blocks, the protocol blocks being a
system information block and a referencing block, the
referencing block being one or both of a master information
block and a scheduling block, the protocol blocks in which the
system information is included having a system information
block type field which includes a system information block type
value which corresponds to the system information block type,
the system information block comprising one or more segments,
comprising the steps of:
including a first system information block type extension
indicator in the system information block type field of the
referencing block when the system information block type for a
system information block referenced by the referencing block
does not have a system information block type value in a nominal
range of system information block type values;
including a first system information block type extension
field in the referencing block;
including in the first system information block type
extension field a system information block type extension value
which indicates a system information block type for the system
information block referenced by the referencing block; and
including a second system information block type
extension indicator in the system information block type field of
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Application 10/552,295
a segment of the system information block referenced by the
referencing block.
EVIDENCE CONSIDERED
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wiberg US 6,628,946 B1 Sept. 30,2003
Numminen US 2004/0120265 A1 June 24, 2004
European Telecommunications Standards Institute, Universal Mobile
Telecommunications System (UMTS); Radio Resource Control (RRC)
protocol specification 321, 324, 341, 408, 612, 616, 617 (ETSI TS 125 331
version 5.5.0; 3GPP TS 25.331 version 5.5.0 Release 5, 2003) (“ETSI
UMTS TS”).
3rd Generation Partnership Project (3GPP) Technical Specification
Group Radio Access Network, Guidelines and Principles for Protocol
Description and Error Handling 8, 36—39 (3GPP TR 25.921 version 4.6.0
Release 4, 2003) (“3GPP TR 25.921”).
REJECTIONS
Claims 8—10, 15, 16, 47, 48, and 51 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wiberg and 3GPP TR 25.921. Final
Rejection 3—8.
Claims 11—14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wiberg, 3GPP TR 25.921, and Numminen. Final
Rejection 8, 9.
Claims 31—35, 39-46, 49, and 50 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wiberg, 3GPP TR 25.921, and ETSI
UMTS TS. Final Rejection 9-17.
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Appeal 2015-004528
Application 10/552,295
ISSUES
Appellants contend that 3GPP TR 25.921 is not prior art because the
instant application is entitled to a priority claim to the filing date of April 3,
2003 of Appellants’ Swedish Application (herein “Swedish App.”).2 Reply
Br. 6; App. Br. 8. Appellants, more specifically, argue that they traversed
the rejections by identifying portions of Appellants’ Swedish Application
that provide support for certain claim limitations. See Reply 5—6; App. Br.
8—10 (citing Swedish App. 6:24—7:4, 7:23—8:5). Did the Examiner err in
finding that no new arguments were presented such that Appellants’
traversal is foreclosed by a prior Board decision?
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Briefs. We concur with Appellants’ contention that the
Examiner erred in finding that no new arguments were presented such that
Appellants’ traversal was foreclosed by our prior decision.
As background, issues relating to the instant application were
previously before us. In particular, in the Decision on Appeal No. 2011-
000140, we entered a new ground of rejection as to claims 8, 15, 47, and 51
under 37 C.F.R. § 41.50(b) by which we rejected independent claims 8, 15,
47, and 51 under 35 U.S.C. § 103(a) as unpatentable in view of Wiberg and
3GPP TR 25.921. Dec. on Appeal, 5-7.
2 Appellants’ Swedish Application is Swedish Patent Application Number
0301027-9, which was filed on April 3, 2003.
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Appeal 2015-004528
Application 10/552,295
On August 1, 2013, Appellants filed a Request for Rehearing (“Reh’g
Req.”). Appellants’ contentions regarding priority set forth in their Request
for Rehearing are set forth in their entirety below.
The Appellants’ application is a U.S. national stage of PCT
International Application Number PCT/SE2004/000517, filed on
April 2, 2004, which claims priority from Swedish Patent
Application Number 0301027-9, filed on April 3, 2003; i.e., the
priority date of Appellants’ application precedes the publication
date of 3GPP TR 25.921 and, therefore, the new reference cited
by the PTAB does not qualify as prior art.
Reh’g Req. 2—3.
In our Decision on the Request for Rehearing (“Rehearing Decision”
or “Dec. Reh’g Req.”), we explained that support was not “readily
identifiable” in the Swedish Application. Dec. Reh’g Req. 2. Additionally,
we explained “we do not readily see a connection or nexus between
Appellants’ priority document” and certain limitations recited in claim 8. Id.
at 2—3.
Following our Rehearing Decision, in response to a Non-Final
Rejection of all claims, on April 21, 2014, Appellants filed a Response under
37 C.F.R. § 1.111 (“April 2014 Response”) that for the first time identified
portions of the Swedish Application that Appellants contend support the
missing claim limitations. April 2014 Response 12—13 (citing Swedish App.
6:24—7:4, 7:23—8:5). Appellants contend that the Examiner’s response to
these contentions is the basis for this appeal. See Reply 5—6; App. Br. 8—9
(citing Swedish App. 6:24—7:4, 7:23—8:5).
We agree with the Examiner that Appellants previously asserted
priority of the Swedish Application. Ans. 4. We, however, do not agree that
Appellants did not provide any new arguments after our Rehearing Decision.
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Application 10/552,295
Id. at 3. In particular, Appellants more specifically identified portions of
Appellants’ Swedish Application that were not before us. See Reply 5—6;
App. Br. 8—9 (citing Swedish App. 6:24—7:4, 7:23—8:5).3 Thus, because we
find that the Examiner erred in not considering Appellants’ new arguments
we reverse the rejection of independent claims 8, 15, 47, and 51, under
35 U.S.C. § 103(a), as being obvious in view of Wiberg and 3GPP TR
25.921. For the same reason, we also reverse the rejection of claims 9—14,
16, 31—35, 39-46, and 48—50, which are dependent from one of independent
claims 8, 15, 47, and 51.
DECISION
The Examiner’s rejection of claims 8—16, 31—35, and 39-51 is
REVERSED.
REVERSED
3 In case of further prosecution, further development of the written record of
this application as to this Swedish Application priority benefit issue may be
helpful. More specifically, we suggest including a written response to
Appellants’ contentions that includes some evaluation of the identified
portions of Appellants’ Swedish Application.
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