Ex Parte Wu

Patent Trial and Appeal Board

Nov 22, 2013

11564303 (P.T.A.B. Nov. 22, 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 2011-003631
Application 11/564,303
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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Application 11/564,303

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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 Timer_Poll
timer in a wireless communications system, and more specifically, to a
method for handling a Timer_Poll timer after re-establishment in a wireless
communication system” (Spec. ¶ [0003]; see also App. Br. 2). The
Timer_Poll 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_Poll timer in a
wireless communications system, the method comprising the
steps of:
starting the Timer_Poll 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_Poll 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. 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 and 5-7).
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_Poll timer is stopped after re-establishment, and that the
Specification fails to describe when exactly the timer is stopped (Ans. 6-7).
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.
(2) The Examiner rejected claim 1 as being unpatentable under
35 U.S.C. § 103(a) over Vialen (US 2001/0018342 A1, Aug. 30, 2001) and
3GPP TS 25.322 v3.110 (hereinafter, “3GPP”). Ans. 4-5 and 7-9. For
purposes of applying the references to the claims, the Examiner interprets
claim 1 as reciting stopping the Timer_Poll timer after a re-establishment
function, and not during the re-establishment function as is claimed, i.e., the
Examiner substitutes the term “after” for the actually recited term “during”
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in limitation [A] due to the asserted lack of written description support. Ans.
4-5 and 7-9. The Examiner concludes that stopping the timer after the re-
establishment function would have been obvious in view of the collective
teachings and suggestions of Vialen and 3GPP, in order to return the timer to
its original state (Ans. 4-5 and 7-9).
Appellant’s Contentions
(1) Appellant contends (App. Br. 3-5; Reply Br. 2-3) that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 112, first paragraph,
because:
(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; Reply Br. 2-3);
(b) the step of re-establishment is included in the re-establishment
function recited in claim 1 (App. Br. 4); and
(c) Figure 2 illustrates handling of the Timer_Poll timer during
the re-establishment function (Reply Br. 2-3), thus the Specification
shows that the inventor possessed stopping the timer during a re-
establishment function (Reply Br. 3).
(2) Appellant contends (App. Br. 5-7; Reply Br. 4) that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a) over Vialen and 3GPP
because without impermissible hindsight and/or Appellant’s Specification,
there is no motivation or incentive to handle the Timer_Poll timer during a
RLC re-establishment function.
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Issues on Appeal
Based on Appellant’s arguments, the following issues are presented
on appeal:
(1) 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_Poll timer be stopped “during a re-establishment
function” as set forth in claim 1?
(2) Did the Examiner err in rejecting claim 1 as being obvious because
the combination of Vialen and 3GPP fails to teach or suggest stopping the
timer during the re-establishment function, as recited in claim 1?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief (App. Br. 3-6) and the Reply Brief (Reply Br.
2-4) that the Examiner has erred.
Issue (1): § 112, First Paragraph, Rejection
With regard to the written description rejection, 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), and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief (Ans. 5-7). 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
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Appellant had possession of the feature of stopping the Timer_Poll 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
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 . . . .”).
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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). Appellant draws a distinction between “re-establishment” and
the “re-establishment function,” contending that “the step of re-
establishment is included in the re-establishment function” (App. Br. 4).
Appellant contends that “the Examiner seems to omit the entire meaning of
[Para 15], and garbles a quotation advantageous to the rejection” (Reply Br.
2), and asserts that “the notation ‘Re-establishment’ shown in FIG. 2
represents the step of ‘requesting re-establishment by upper layers’” (Reply
Br. 3).
In such a case as this, we find it particularly useful to examine the
entire Specification, Drawings, and claim as originally filed in the instant
application on appeal. And, because the instant case on appeal is a
continuing application of U.S. Patent No. 7,227,856 (“’856 Patent”), 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
“Request for Re-establishment by Upper Layers.” And, notably, the
originally filed Specification of the instant application on appeal (¶¶ [0003]
Field of the Invention, [0010] and [0011] Summary of the Invention, [0015]
and [0016] Detailed Description; Abstract; claim 1) all describe stopping the
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Timer_Poll timer after re-establishment, not “after the re-establishment
function,” “during re-establishment,” and not “during the re-establishment
function.”
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_Poll 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. ¶¶ [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 A POLLING TIMER AFTER RE-ESTABLISHMENT IN A
WIRELESS COMMUNICATIONS SYSTEM.” (Title (emphasis added)).
The Abstract as originally filed is “A method for handling a Timer_Poll
timer in a wireless communications system includes starting the Timer_Poll
timer for a Radio Link Control Acknowledged Mode (RLC AM) entity,
performing a re-establishment procedure for the RLC AM entity; and
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stopping the Timer_Poll timer after re-establishment of the RLC AM entity”
(Abs. (emphasis added)). And, claim 1 as originally filed recited, “stopping
the Timer_Poll timer after re-establishment of the RLC AM entity” (claim 1
(emphasis added)).
Paragraphs [0003], [0010], [0011], [0015], and [0016] of Appellant’s
Specification describes stopping the Timer_Poll timer in the following
manner:
[Para 3] The present invention relates to a method for handling
a Timer_Poll timer in a wireless communications system, and
more specifically, to a method for handling a Timer_Poll 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 Timer_Poll timer
after an RLC reset or re-establishment in a wireless
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_Poll timer in a wireless communications
system includes starting the Timer_Poll 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_Poll 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_Poll timer during a re-
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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_Poll
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_Poll 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]
found in claim 1 on appeal (reciting that the Timer_Poll 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_Poll 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 the ’856 Patent, 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
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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_Poll 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 of the at issue limitation.
Accordingly, we sustain the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 112, first paragraph.1
Issue (2): § 103(a) Rejection over Vialen and 3GPP
With regard to claim 1, the Examiner determines (Ans. 4-5 and 7-9)
that the combination of Vialen and 3GPP teaches or suggests the recited
method, including limitation [A] of claim 1, on the condition that the clause
rejected in the written description rejection as lacking support (“stopping the
Timer_Poll timer during a re-establishment function”) can be interpreted as
reading “stopping the Timer_Poll timer after a re-establishment function.”

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 the ’856 Patent), 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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We agree with the Examiner (Ans. 4-5 and 7-9) that the combination
of Vialen and 3GPP teaches or suggests stopping a Timer_Poll timer after a
re-establishment function, because it would have been obvious to return the
timer to its initial state after re-establishment has been performed. In fact,
Vialen alone discloses in steps 305 and 306 of Figure 3 and paragraph
[0065] that timers are stopped after re-establishment (¶ [0065], “After the
re-establishment has been completed, the timers are stopped at step 306.”).
However, claim 1 on appeal recites stopping the timer during a re-
establishment function.
In view of the Examiner’s failure to address the actual language of
claim 1 on appeal, which recites stopping the timer during a re-
establishment function and not after a re-establishment function, Appellant’s
arguments (App. Br. 5-7; Reply Br. 4) that the combination of Vialen and
3GPP fails to teach or suggest stopping the Timer_Poll timer during a re-
establishment function are persuasive.
Accordingly, we do not sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a) over Vialen and 3GPP.2

2 We note that in related appeal 2010-008452 of U.S. Patent Application No.
11/564,298, having the same inventor as the instant application and based on
the same parent application 10/064,747 (now the ’856 Patent), the Patent
Trial and Appeal Board affirmed a similar § 103(a) rejection of a claim for
handling a Timer_MRW timer in a wireless communications system, finding
that Vialen disclosed timers used in a re-establishment procedure are
stopped after completion of re-establishment (Vialen, Fig. 3; ¶ [0065]), and
concluding that the step of “stopping the Timer_MRW timer after re-
establishment of the RLC AM entity” (claim 1) obvious over the
combination of Vialen and 3GPP. We agree with the previous panel of the
Patent Trial and Appeal Board (considering claim 1 of related appeal 2010-
008452 of U.S. Patent Application No. 11/564,298), and with the Examiner
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CONCLUSIONS
(1) 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_Poll timer during a re-establishment
function” (emphasis added), and (ii) rejecting claim 1 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
(2) The Examiner erred in rejecting claim 1 as being obvious under
35 U.S.C. § 103(a) because the combination of Vialen and 3GPP fails to
teach or suggest the method of handling a Timer_Poll timer in a wireless
communications system including the step of “stopping the Timer_Poll timer
during a re-establishment function for the RLC AM entity,” as recited in
limitation [A] of claim 1 (emphasis added).

DECISION
The Examiner’s § 112, first paragraph, written description rejection is
affirmed, and the § 103(a) rejection is reversed.
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).

in the instant case, that the combination of Vialen and 3GPP teaches or
suggests stopping timers after re-establishment in a wireless
communications system. However, such a limitation is not before us in the
instant case, which presents the limitation of “stopping the Timer_Poll timer
during a re-establishment function,” as set forth in claim 1 on appeal.
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AFFIRMED

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