Ex Parte Wu

Patent Trial and Appeal Board

Nov 25, 2013

11564294 (P.T.A.B. Nov. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL
BOARD
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Ex parte CHIH-HSIANG WU
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Appeal 2011-009328
Application 11/564,294
Technology Center 2400
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claim 1, the sole claim on appeal. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
Disclosed Invention
Appellant’s invention “relates to a method for handling a status report
prohibit timer[] in a wireless communications system, and more specifically,
to a method for handling a Timer_Status_Prohibit timer after re-
establishment in a wireless communication system” (Spec. ¶ [0003]). The
Timer_Status_Prohibit timer is stopped after re-establishment of the radio
link control (RLC) acknowledged mode (AM) entity (Figs. 1 and 2; Spec. ¶¶
[0010], [0011], [0015], [0016]; Abs.; originally filed claim 1).
Claim 1
Independent claim 1, the only claim on appeal, is reproduced below
with bracketed lettering and emphasis added to the disputed limitation at
issue, reads as follows:
1. A method for handling a Timer_Status_Prohibit timer in a wireless
communications system, the method comprising:
starting the Timer_Status_Prohibit timer for a Radio Link Control
Acknowledged Mode (RLC AM) entity;
performing a re-establishment procedure for the RLC AM entity; and
[A] stopping the Timer_Status_Prohibit timer during a re-
establishment function for the RLC AM entity.
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The Examiner’s Rejection
(1) The Examiner rejected claim 1 under 35 U.S.C. § 112, first
paragraph, as failing to provide adequate written description of the claimed
invention, i.e., failing to describe the subject matter of claim 1 on appeal in
such a way as to reasonably convey to one skilled in the art that the inventor
had possession of the currently claimed invention at the time the application
was filed. Ans. 3-4. The Examiner determines that the originally filed
Specification, Drawings, and Claims fail to show, describe, and/or provide
written description support for limitation [A] of claim 1 (Ans. 3-6). The
Examiner finds (Ans. 3) that Appellant’s Specification (Spec. ¶ [0015]) only
describes stopping a timer after re-establishment of the RLC AM entity,
because the RLC AM entity has returned to its initial state. The Examiner
also finds that Appellant’s originally filed Figure 2 teaches that the
Timer_Status_Prohibit timer is stopped after re-establishment, and that the
Specification fails to describe when exactly the timer is stopped (Ans. 4-6).
The Examiner concludes that because the timer is stopped after re-
establishment, and a re-establishment function is inherently associated with
a time period, this is not the same as stopping the timer during re-
establishment.
Appellant’s Contentions
(1) Appellant contends (App. Br. 4-7; Reply Br. 1-5) that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 112, first paragraph,
because:
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(a) Figure 2 and paragraph [0015] of the originally filed
Specification support that the inventor had possession of the invention as
recited in claim 1 on appeal (App. Br. 4-6; Reply Br. 1-5);
(b) the step of re-establishment is included in the re-establishment
function recited in claim 1, because Figure 2 discloses “handling” of the
timer, which includes “stopping” (App. Br. 5; Reply Br. 3-5), and
paragraphs [0006] and [0008] of Appellant’s Specification disclose that
re-establishment is an occurrence or request made by upper layers during
a re-establishment function (Reply Br. 2); and
(c) Figure 2 illustrates handling of the Timer_Poll timer during
the re-establishment function (Reply Br. 2-4), thus the Specification
shows that the inventor possessed stopping the timer during a re-
establishment function.
Issue on Appeal
Based on Appellant’s arguments, the following issue is presented on
appeal:
Did the Examiner err in determining that the originally filed
Specification fails to reasonably convey to one of ordinary skill in the art
that Appellant had possession of the claim limitation [A] as set forth in claim
1, including that the Timer_Status_Prohibit timer be stopped “during a re-
establishment function” as set forth in claim 1?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief (App. Br. 4-7) and the Reply Brief (Reply Br.
1-5) that the Examiner has erred.
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We do not agree with Appellant’s conclusions, and we adopt as our
own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Ans. 3-4), and (2) the reasons set forth by
the Examiner in the Examiner’s Answer in response to Appellant’s Appeal
Brief (Ans. 4-5). We also add that our review of the entire Specification as
originally filed, including the originally filed Drawings and Claims,
confirms the conclusion reached by the Examiner that the originally filed
Specification, Drawings, and Claims do not reasonably convey to the
ordinarily skilled artisan that Appellant had possession of the feature of
stopping the Timer_Status_Prohibit timer during a re-establishment function
at the time of filing the instant application.
A description adequate to satisfy 35 U.S.C. § 112, first paragraph,
must “clearly allow persons of ordinary skill in the art to recognize
that [the inventor] invented what is claimed.” In other words, the test
for sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc) (citation omitted, alteration in original).
[T]he test requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill in the
art. Based on that inquiry, the specification must describe an
invention understandable to that skilled artisan and show that the
inventor actually invented the invention claimed.
Id. When, as in Appellant’s originally filed Specification, Drawings, and
Claims, no support for the disputed limitation can be found, pointing out that
a limitation is not stated in a specification is sufficient to shift the burden to
the applicant to show that the specification does in fact describe that
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limitation. See Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007)
("When no such description can be found in the specification, the only thing
the PTO can reasonably be expected to do is to point out its nonexistence.");
id. at 1371 ("The burden was then properly shifted to [the applicant] to cite
to the examiner where adequate written description could be found . . . .").
In the instant case on appeal, Appellant points to paragraph [0015] of
the originally filed Specification as providing written description support for
the timer being stopped during the re-establishment function, and asserts that
Figure 2 shows a re-establishment function, which includes re-establishment
(App. Br. 4-6). Appellant draws a distinction between “re-establishment”
and the “re-establishment function,” and contends that because Figure 2
shows the “handling” of the Timer_Status_Prohibit timer during the re-
establishment function, “handling” must include “stopping” as shown in
Figure 2 (App. Br. 4-5; Reply Br. 1-3). In such a case as this, we find it
particularly useful to examine the entire Specification, Drawings, and
Claims as originally filed in the instant application on appeal. And, because
the instant case on appeal is a continuing application of U.S. Patent (US
7,227,856), based on non-provisional application number 10/064,747, we
find it useful to also examine the originally filed Specification, Drawings,
and Claims of the parent case. The meaning of paragraph [0015] can best be
understood in light of the context of the entire Specification of both the
instant case and the parent.
Figure 2 shows a block containing the term “Re-establishment,” not
“re-establishment function” (see App. Br. 3; Reply Br. 2-4) or ‘“re-
establishment’ . . . request made by upper layers” (Reply Br. 2). And,
notably, the originally filed Specification of the instant application on appeal
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(¶¶ [0003] Field of the Invention, [0010] and [0011] Summary of the
Invention, [0015] and [0016] Detailed Description; Abs.; claim 1) all
describe stopping the Timer_Poll timer after re-establishment, not after the
re-establishment function, during re-establishment, and not during the re-
establishment function.
With regard to Appellant’s reliance upon paragraphs [0006] and
[0008] of Appellant’s Specification as disclosing that re-establishment is an
occurrence or request made by upper layers during a re-establishment
function (Reply Br. 2), this argument is not persuasive inasmuch as it relies
upon extrinsic evidence (3GPP), as well as being outweighed by the much
stronger evidence provided by the text of the originally filed application
itself (see ¶¶ [0003], [0010], [0011], [0015], [0016]; Abs.; claim 1; Fig. 2).
Furthermore, a review of the originally filed parent application
(10/064,747) reveals that the parent Specification (Spec. ¶¶ [0002], [0020],
[0021], and [0073]), originally filed Claims (claims 13, 16, 19, 22, 26, and
27), Drawings (Figs. 8B, 12, 14, 16, 18, 21, and 22), Title, and Abstract, all
disclose stopping timers after re-establishment of the RLC AM entity, and
use the term “re-establishment” (and not “re-establishment function”) to
describe the method and timing of operation.
One of ordinary skill in the art, viewing originally filed Figure 2 of the
instant application on appeal, would understand that “Re-establishment”
occurs in the first block shown in the figure, and that a
Timer_Status_Prohibit timer is stopped after re-establishment is performed.
This is congruent with (i) the originally filed Specification of the instant
application on appeal (¶¶ [0003], [0010], [0011], [0015], [0016]; Abs.; claim
1); and (ii) the originally filed parent application’s Specification (Spec. ¶¶
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[0002], [0020], [0021], and [0073]; claims 13, 16, 19, 22, 26, and 27; Figs.
8B, 12, 14, 16, 18, 21, and 22; Title; Abs.).
The Title of the invention as originally filed is, “METHOD FOR
HANDLING STATUS REPORT PROHIBIT TIMER AFTER RE-
ESTABLISHMENT IN A WIRELESS COMMUNICATIONS SYSTEM.”
(Emphasis added). The Abstract as originally filed is “A method for
handling a Timer_Status_Prohibit timer in a wireless communication system
includes starting the Timer_Status_Prohibit timer for a Radio Link Control
Acknowledged Mode (RLC AM) entity, performing a re-establishment
procedure for the RLC AM entity, and stopping the Timer_Status_Prohibit
timer after re-establishment of the RLC AM entity.” (Emphasis added).
Claim 1 as originally filed recited, “stopping the Timer_Status_Prohibit
timer after re-establishment of the RLC AM entity.” (Emphasis added).
Paragraphs [0003], [0010], [0011], [0015], and [0016] of Appellant’s
Specification describes stopping the Timer_Status_Prohibit timer in the
following manner:
[Para 3] The present invention relates to a method for handling
a status report prohibit timer[] in a wireless communications
system, and more specifically, to a method for handling a
Timer_Status_Prohibit timer after re-establishment in a
wireless communications system.
(Spec. ¶ [0003]) (emphasis added).
[Para 10] It is therefore a primary objective of the claimed
invention to provide a method for handling a status report
prohibit timer after re-establishment in a wireless
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communications system in order to solve the above-mentioned
problems.
(Spec. ¶ [0010]) (emphasis added).
[Para 11] According to the claimed invention, a method for
handling a Timer_Status_Prohibit timer in a wireless
communication system includes starting the
Timer_Status_Prohibit timer for a Radio Link Control
Acknowledged Mode (RLC AM) entity, performing a re-
establishment procedure for the RLC AM entity, and stopping
the Timer_Status_Prohibit timer after re-establishment of the
RLC AM entity.
(Spec. ¶ [0011]) (emphasis added).
[Para 15] Please refer to Fig. 2. Fig. 2 is a message sequence
chart illustrating handling of the Timer_Status_Prohibit timer
during a re-establishment function according to the present
invention. After the RLC AM entity 14 is re-established by
upper layers, the present invention method includes stopping
the Timer_Status_Prohibit timer because the state of the RLC
AM entity after re-establishment should be like the initial state
of the RLC AM entity after it was established.
(Spec. ¶ [0015]) (emphasis added).
[Para 16] Compared to the prior art, the present invention
provides steps for handling the Timer_Status_Prohibit timer
after re-establishment. Therefore, using the method specified in
the present invention will prevent RLC AM entities from
experiencing deadlock, and will help maintain the quality of
service.
(Spec. ¶ [0016]) (emphasis added).
In our view, taken as a whole, the originally filed Specification,
Figure 2, Title, Abstract, and claim do not provide support for limitation [A]
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found in claim 1 on appeal (reciting that the Timer_Status_Prohibit timer is
stopped during a re-establishment function). To the contrary, these portions
of the originally filed Specification support what was originally claimed in
claim 1 at the time of filing the instant application, that the
Timer_Status_Prohibit timer is stopped after re-establishment.
In summary, a review of (i) the entire Specification and Drawings as
originally filed, including the originally filed claim, and (ii) the entire
Specification, Drawings, and Claims originally filed in the parent application
10/064,747, now USPN 7,227,856, fails to reasonably convey to one of
ordinary skill in the art that Appellant had possession of limitation [A] set
forth in claim 1 on appeal, including stopping the timer during the re-
establishment function. Indeed, the originally filed application and parent
application appear to only support stopping a timer after re-establishment,
and do not appear to support the distinction now contended by Appellant,
namely that a re-establishment function includes re-establishment.
However, no written description rejection is before us regarding the
distinction between “re-establishment” and a “re-establishment function.”
In view of the foregoing, we find that one skilled in the art, reading
the original disclosure of the instant application on appeal, would not
immediately discern the limitation “stopping the Timer_Status_Prohibit
timer during a re-establishment function for the RLC AM entity” (claim 1),
and Appellant has not provided persuasive evidence or argument to establish
that Appellant was in possession at the time of filing the application.
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Accordingly, we sustain the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 112, first paragraph.1

CONCLUSION
The Examiner did not err in (i) determining that the originally filed
Specification fails to reasonably convey to one of ordinary skill in the art
that Appellant had possession of the step recited in limitation [A] of claim 1,
including “stopping the Timer_Status_Prohibit timer during a re-
establishment function,” and (ii) rejecting claim 1 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.

DECISION
The Examiner's § 112, first paragraph, written description rejection is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

1 We note that in related appeal 2010-007738 of U.S. Patent Application No.
11/564,296, having the same inventor as the instant application and based on
the same parent application 10/064,747 (now USPN 7,227,856), the Patent
Trial and Appeal Board affirmed a similar § 112, first paragraph, written
description rejection of a claim for handling a Timer_RST time in a wireless
communications system, finding a lack of support for the step of “stopping
the Timer_RST timer during a re-establishment function for the RLC AM
entity” (claim 1).
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AFFIRMED

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