Ex Parte Yoon et al

Patent Trial and Appeal Board

Mar 26, 2018

14253669 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/253,669 04/15/2014
15142 7590 03/28/2018
Arent Fox, LLP and Qualcomm, Incorporated
1717 K Street, NW
Washington, DC 20006-5344
FIRST NAMED INVENTOR
Young Cheu! Yoon
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
030284.15160/082084D1Dl 5539
EXAMINER
WASHINGTON, ERIKA ALISE
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
ocpat_uspto@qualcomm.com
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOUNG CHEUL YOON,
MANOI MADHUKAR DESHPANDE, JEN MEI CHEN,
CHANDRASEKHARTHERAZHANDURSUNDARRAMAN
and SRINIVASAN BALASUBRAMANIAN
Appeal2017-009145
Application 14/253,669 1
Technology Center 2600
Before ALLEN R. MacDONALD, CARL W. WHITEHEAD, JR., and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants' Brief ("App. Br.") identifies QUALCOMM, Incorporated as
the real party in interest. App. Br. 2.
Appeal2017-009145
Application 14/253,669
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 2, 4--7, 9--12, 14--17, and 19--21. 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We reverse.
CLAIMED SUBJECT MATTER
The claims are directed to the identification and acquisition of access
points. Claim 2, reproduced below, is illustrative of the claimed subject
matter:
2. A method for performing handoff to a target access
point, the method comprising:
transmitting, by user equipment, handoff information
received from the target access point, the handoff information
compnsmg:
information indicative of an identity of a mobile switching
center to which the target access point is associated; and
information indicative of an identity of a cell to which the
target access point is associated.
App. Br. 22 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sundarraman et al. US 2010/0048216 Al Feb.25,2010
2 Claims 3, 8, 13, and 18 have been indicated to be allowable if rewritten
into independent form.
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Appeal2017-009145
Application 14/253,669
REJECTIONS
Claims 2, 4--7, 9--12, 14--17, and 19-21 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Sundarraman. Final Act. 2.
ISSUE
The sole issue presented in this appeal is whether the Examiner has
erred in finding Sundarraman is prior art to the appealed claims because the
provisional application to which Appellants claim priority does not provide
adequate support under 35 U.S.C. § 112(a).
ANALYSIS
The application at issue on this appeal claims priority, through a series
of intervening parent applications, to U.S. Provisional App. No. 61/080,618,
filed July 14, 2008 (hereinafter "Appellants' provisional application" or "the
provisional application"). The Examiner rejects the claims under 35 U.S.C.
§ 102(e) as being anticipated by Sundarraman. Final Act. 2. The Examiner
finds that Sundarraman discloses each and every limitation recited in the
claims subject to appeal (Final Act. 2-3), and that Sundarraman qualifies as
prior art based on the August 22, 2008 filing date of its corresponding
provisional application (US 61/080,618) (Final Act. 4). The Examiner finds
Sundarraman qualifies as prior art because Appellants' provisional
application filed July 14, 2008 provides no disclosure of "handoff
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Appeal2017-009145
Application 14/253,669
information received from the target access point" as recited in independent
claim 2, and recited similarly in the other independent claims. Ans. 2. 3
Appellants do not argue Sundarraman fails to disclose the claimed
invention. Instead, Appellants argue Sundarraman does not qualify as prior
art because the provisional application antedates the Sundarraman
provisional filing. 4 App. Br. 5---6. Appellants argue their provisional
application provides support for the limitation of "handoff information
received from the target access point," and that the Examiner erred in
finding a lack of adequate disclosure as to that limitation. Id. Appellants
point to various locations in their provisional application as providing
support. Broadly speaking, Appellants argue their provisional application
discloses the use of a unique femto-cell identification parameter that is sent
from a femto-cell over a broadcast channel to a mobile station in order to
allow it to identify a femto-cell for the purpose of in call (or active)
handover. App. Br. 7 (citing Provisional Application i-fi-f 15, 16, 18;
Provisional Application App'x 1, 2, 6) see also Reply Br. 2-3. We agree
with Appellants.
3 The Examiner finds the limitations recited in the dependent claims
sufficiently supported by the Provisional Application. Thus, the rejection of
the dependent claims is based on the deficiency found by the Examiner with
respect to the independent claims.
4 Appellants do not argue Sundarraman is not entitled to the priority date of
its provisional for failing to provide support in the provisional for at least
one claim in the published application (US 2010/0048216 Al). See
Dynamic Drinkware, LLC v. Nat'! Graphics, Inc., 800 F.3d 1375, 1382 (Fed.
Cir. 2015) (holding that "reference patent is only entitled to claim the benefit
of the filing date of its provisional application if the disclosure of the
provisional application provides support for the claims in the reference
patent in compliance with § 112, i-f l ") (citing In re Wertheim, 646 F .2d 527,
537 (CCPA 1981)).
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Appeal2017-009145
Application 14/253,669
The provisional application and its associated appendix disclose a
femto-cell (i.e., a "target access point") that sends a unique identification
parameter that includes a mobile switching center identifier and cell ID (i.e.,
"handoff information") that is received by a mobile station for the purpose
of allowing hand-in (i.e., in-call handover). See Provisional Application
i-f 18 ("fields are further introduced to support active call hand-in, such as,
for example, an MSC_ID and/or a Cell_ID"); Provisional Application
App'x 1 ("support idle HO, active HO and femto-cell discovery"). As such,
we agree with Appellants that this disclosure is sufficient to support the
disputed limitation in the manner required by 35 U.S.C. § 112(a).
Accordingly, we do not sustain the rejection of claim 2, nor do we sustain
the rejection of the remaining independent claims 7, 12, and 17 for which the
Provisional Application also provides sufficient disclosure. For the same
reason, we also do not sustain the rejection of dependent claims 4---6, 9-11,
14--16, and 19-21.
DECISION
We reverse the Examiner's rejection of claims 2, 4--7, 9-12, 14--17,
and 19-21.
REVERSED
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