Ex Parte Wang

Patent Trial and Appeal Board

Sep 11, 2017

13266636 (P.T.A.B. Sep. 11, 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.
13/266,636 10/27/2011 He Wang LUTZ 201340US01 1027
48116 7590 09/13/2017
FAY STTARPF/T TTf’F.NT
EXAMINER
1228 Euclid Avenue, 5th Floor MYERS, ERIC A
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2474
NOTIFICATION DATE DELIVERY MODE
09/13/2017 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):
docketing @ faysharpe.com
ipsnarocp @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HE WANG
Appeal 2017-003709
Application 13/266,636
Technology Center 2400
Before BARBARA A. BENOIT, MICHAEL M. BARRY, and
DAVID J. CUTITTAII, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 7—12, 14, and 15. Dependent claims 2, 4, 5, 13, and 16 stand as
allowable if rewritten in independent form to include all limitations of their
base claim(s) and any intervening claims.2 We have jurisdiction over the
rejected claims 1, 3, 7—12, 14, and 15 under 35 U.S.C. § 6(b).
We affirm and, pursuant to our authority under 37 C.F.R. § 41.50(b),
designate our affirmance as a new ground of rejection.
1 Appellant identifies Alcatel Lucent as the real party in interest. App. Br. 1.
2 See Final Act. 1,21 (claim 6 was previously canceled (see Oct. 27, 2011
Amendment submitted with original application filing)).
Appeal 2017-003709
Application 13/266,636
Introduction
Appellant describes the invention as “relating] to the field of wireless
communication” in general, and specifically that it addresses issues of “how
to carry out a dynamic dispatching to meet the requirements for MBSFN
[(Multicast Broadcast Single Frequency Network)] transmissions and to
improve the efficiency of the radio resources.” Spec. 1.
Claim 1 is exemplary:
1. A method for dynamically dispatching radio
resources used for Multicast Broadcast Single Frequency
Network (MBSFN) transmissions for Multimedia Broadcast
Multicast Service (MBMS), comprising:
determining, by a Multi-Cell/Multicast Coordination
Entity (MCE), for a current dispatching period, semi-static
MBMS dispatching information for each MBMS service or
each MBMS service group, according to Quality of Service
(QoS) requirements of each MBMS service or each MBMS
service group used for MBSFN transmission, wherein said
MBMS service group is a service group formed by statistically
multiplexing a plurality of MBMS services that have the same
Block Error Rate as their QoS requirements;
informing, by said MCE, each base station and respective
mobile stations under the control of each base station in an
MBSFN area of the determined semi-static MBMS dispatching
information; and
dispatching, by each base station, the radio resources
dynamically according to the semi-static MBMS dispatching
information received from the MCE and actual data volume to
be processed by each MBMS service or each MBMS service
group.
App. Br. 15 (Claims App’x).
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Appeal 2017-003709
Application 13/266,636
Rejections and References
Claims 1, 3, 10, 11, and 14 stand rejected under 35 U.S.C. § 103(a) as
obvious in view ofKoskinen (US 2011/0013554 Al; Jan. 20, 2011)
(“Koskinen ’554”) and Kazmi (US 2010/0135175 Al; June 3, 2010). Final
Act. 5—15.
Claims 7—9, 12, and 15 stand rejected under § 103(a) as obvious over
Koskinen ‘554, Kazmi, and Koskinen (US 2011/0021224 Al; Jan. 27, 2011)
(“Koskinen‘224”). Final Act. 15—20.
ISSUE
Appellant presents essentially the same arguments of Examiner error
for independent claims 1,11, and 14, all of which include substantively the
same disputed requirements. App. Br. 5—13. Appellant argues the
patentability of dependent claims 3, 7—10, 12, and 15 solely based on the
arguments presented for the independent claims. Id. Thus, the sole issue is
whether the Examiner errs in the rejection of claims 1,11, and 14, from
which we select claim 1 as representative. 37 C.F.R. 41.37(c)(l)(iv).
ANALYSIS
Appellant argues the Examiner errs in finding the cited prior art
teaches or suggests claim 1 ’s determining step. App. Br. 5—8. Regarding
the term “or” as recited in the determining step, the Examiner notes
[t]he claim language “for each MBMS service or each MBMS
service group” is recited in the alternative form using the word
“or” and may thus be broadly reasonably interpreted as only
requiring either an MBMS service or an MBMS service group.
The claim language therefore does not require that semi-static
MBMS dispatching information for MBMS service groups be
determined and may be reasonably interpreted as requiring only
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Appeal 2017-003709
Application 13/266,636
the determination of semi-static MBMS dispatching
information for an MBMS service.
Final Act. 4; see also Adv. Act. 4—5 (Feb. 24, 2016) and Ans. 3.
We agree with the Examiner. The meaning of the conjunction “or” is
unambiguous. It is axiomatic that if a claim recites a requirement for “X or
Y,” then either “X” or “Y” satisfies the requirement. Such is the case here.
In other words, if the cited prior art teaches or suggests “determining, by an
MCE, semi-static MBMS dispatching information for each MBMS service,”
it is unnecessary for it to teach or suggest determining such information for
“each MBMS service group.”
Appellant contends that “[i]f the Examiner maintains the argument
that this limitation need not be given patentable weight, then it is
respectfully submitted that prosecution should be reopened in order to afford
applicant’s representative an opportunity to amend the claims as deemed
necessary.” App. Br. 8. This type of procedural request, however, is
properly made by petition to the Director, or to the PTO official to whom the
Director has delegated the authority to determine the petition, and not to this
Board. See 37 C.F.R. §§ 1.181-83; see also MPEP § 1002 (9th Ed., Rev. 7,
Nov. 2015).
Appellant’s principal argument is that the Examiner errs in finding
Kazmi teaches “determining . . . according to Quality of Service (QoS)
requirements of each MBMS service or [each MBMS] service group . . .
wherein said MBMS service group is a service group formed by statistically
multiplexing a plurality of MBMS services that have the same Block Error
Rate as their QoS requirements'” (the “disputed requirements”). Reply Br. 3;
see id. at 3—9. Appellant further contends “[t]he subject feature of
[statistically] multiplexing a plurality of MBMS services has been afforded
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Appeal 2017-003709
Application 13/266,636
patentable weight at all times during the prosecution of this application and
therefore should be considered as an element of the subject claim during the
Appeal.” Id. at 3.
We agree with Appellant that the recited wherein clause has
“patentable weight,” in that it imposes a requirement upon the claim, and
must be considered as an element of the claim. For an “MBMS service
group” to be within the scope of the claim, it must satisfy the disputed
requirements’ wherein clause.
The wherein clause is, however, part of an alternative requirement.
Following the paradigmatic “X or Y” model from above, the disputed
requirements essentially recite determining “X or Y, wherein Y further
requires Z.” Because of the alternative recitation, such a requirement is
satisfied by either determining “X” or determining “Y, wherein Y further
requires Z.” Thus, from a validity perspective, for a finding that the prior art
renders obvious such a requirement, if the prior art teaches or suggests “X”
then it need not teach or suggest “Y, wherein Y further requires Z.”
Thus, the alternative nature of claim 1 ’s disputed requirements
obviates the need for Kazmi to teach or suggest recited limitations related to
an “MBMS service group” if Kazmi otherwise teaches or suggests an
“MBMS service” that meets the alternative requirement. Appellant does not
argue the Examiner errs in finding Kazmi teaches “determining . . .
dispatching information for each MBMS service . . . according to Quality of
Service (QoS) requirements of each MBMS service” (i.e., irrespective of
recited requirements related to MBMS service groups). See App. Br. 5—8.
Accordingly, Appellant does not persuade us the Examiner errs in rejecting
claim 1.
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The Examiner’s position on claim construction of the alternative
language was secondary to the findings and reasons provided in the rejection
of claim 1. See Final Act. 2—8 (not addressing the claim construction issue
in the findings and reasons discussed in the actual rejection of claim 1 under
“Claim Rejections”); accord Adv. Act. 2—6, Ans. 2—6. Thus, our decision to
sustain the rejection based on the alternative language effectively changes
the thrust of the Examiner’s rejection of claim 1. Accordingly, to give
Appellant a full and fair opportunity to respond to the thrust of the rejection
as we sustain it, we designate it as a new ground of rejection.
In view of the foregoing, we sustain the Examiner’s § 103 rejection of
claim l,3 and also of claims 3, 7—12, 14, and 15, for which Appellant
provides no substantive arguments separate from those for claim 1.
DECISION
We affirm the rejection of claims 1, 3, 7—12, 14, and 15 under 35
U.S.C. § 103(a). Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of
rejection of claim 1 under 35 U.S.C. § 103(a).4
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
3 In sustaining the rejection of claim 1, we adopt the Examiner’s findings
and reasoning in its rejection except for those related to an “MBMS service
group.” See Final Act. 5—8. Appellant’s arguments directed to whether
Kazmi teaches or suggests the requirements related to an “MBMS service
group” (see App. Br. 5—8; Reply Br. 3—9) are moot in view of the rejection
as we sustain it; accordingly, we decline to opine on those arguments.
4 In the event of further prosecution, we leave it to the Examiner to address
the remaining claims in a consistent manner.
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Application 13/266,636
When the Board enters such a non-final decision, the
appellant, 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 prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure (MPEP) § 1214.01.
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).
AFFIRMED
37 C.F.R, $ 41.50(b)
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