Mitsubishi Electric Corporation

Patent Trials and Appeals Board

Jan 29, 2021

2019005746 (P.T.A.B. Jan. 29, 2021)

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.
14/071,294 11/04/2013 Miho MAEDA 424453US20CONT 5043
22850 7590 01/29/2021
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
JONES, PRENELL P
ART UNIT PAPER NUMBER
2467
NOTIFICATION DATE DELIVERY MODE
01/29/2021 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MIHO MAEDA, MITSURU MOCHIZUKI,
YASUSHI IWANE, NORIYUKI FUKUI,
TETSUYA MISHUKU, MICHIAKI TAKANO,
RYOICHI FUJIE, SHIGENORI TANI,
AKIRA OKUBO, and KEISUKE OZAKI
____________________

Appeal 2019-005746
Application 14/071,294
Technology Center 2400
____________________

Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 2–5. Appellant has canceled claim 1. See Appeal Br. 10. We have
jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies
Mitsubishi Electric Corporation as the real party in interest. Appeal Br. 2.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to “a
data communications method and a mobile communications system for
providing multimedia multicast/broadcast service to [] mobile terminals.”
Spec. ¶ 1.
Claim 2 is representative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
2. A communication method of performing radio
communication between a mobile terminal and a base station, the
communication method comprising:
transmitting, in discontinuous intervals, by circuitry of the
base station, data of a multimedia broadcast multicast service
(MBMS) to the mobile terminal; and
transmitting, in discontinuous intervals, by the circuitry,
synchronization signals to the mobile terminal, wherein the data
of the MBMS and the synchronization signals are transmitted at
different time from each other.

The Examiner’s Rejection
Claims 2–5 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Hirata (US 2005/0159127 A1; July 21, 2005); Mori et al.
(US 2003/0055996 A1; Mar. 20, 2003) (“Mori”); Terry et al. (US
2012/0307622 A1; Dec. 6, 2012) (“Terry”); and Kettunen et al. (US
2005/0232271 A1; Oct. 20, 2005) (“Kettunen”).2 Final Act. 3–9.

2 We note that in the statement of rejection, the Examiner only identifies
Hirata, Mori, and Terry, but the body of the rejection relies on the combined
teachings of Hirata, Mori, Terry, and Kettunen. See Final Act. 3–9.
Appellant does not allege to have been prejudiced by this oversight. Instead,
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ANALYSIS3
In rejecting claim 2, the Examiner relies on the combined teachings of
Hirata, Mori, Terry, and Kettunen. Final Act. 3–5. In particular, the
Examiner finds Hirata teaches, inter alia, transmitting, discontinuously, by
the circuitry of a base station, data of a multimedia broadcast multicast
service (MBMS) to a mobile terminal. Final Act. 3 (citing Hirata ¶¶ 21, 25–
26). In addition, the Examiner finds Mori teaches transmitting
discontinuously, by the circuitry, synchronization signals to a mobile
terminal. Final Act. 3 (citing Mori ¶ 57, Fig. 7). The Examiner relies on
Terry to teach the MBMS and synchronization signals (i.e., as taught by
Hirata and Mori) are transmitted at different times. Final Act. 4 (citing
Terry ¶¶ 32, 34). Further, the Examiner relies on Kettunen to teach the
transmission of signals (i.e., such as those taught by Hirata and Mori) in
discontinuous intervals. Final Act. 4 (citing Kettunen ¶¶ 2, 28–29, Fig. 4).
Appellant asserts that Terry fails to teach transmitting MBMS data
and synchronization signals at different times. Appeal Br. 5–6. More
particularly, Appellant argues Terry merely describes higher priority data
transmissions interrupting the transmission of lower priority data, but
otherwise fails to discuss whether MBMS data is of higher or lower priority
as compared to synchronization signals. Appeal Br. 5–6; Reply Br. 4. As

Appellant acknowledges that the rejection includes the teachings of
Kettunen. See Appeal Br. 5, n.2. Accordingly, we treat the Examiner’s
typographical error as harmless.
3 Throughout this Decision, we have considered the Appeal Brief, filed
January 30, 2019 (“Appeal Br.”); the Reply Brief, filed July 24, 2019
(“Reply Br.”); the Examiner’s Answer, mailed May 24, 2019 (“Ans.”); and
the Final Office Action, mailed May 9, 2018 (“Final Act.”), from which this
Appeal is taken.
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such, Appellant asserts that one of ordinary skill in the art would not know
how to apply Terry’s teachings to two different types of data of unknown
priority. Appeal Br. 5–6. In addition, Appellant argues that “nothing in
Terry appears to indicate that the lower and higher priority data represent
different or unlike signals.” Appeal Br. 6.
As an initial matter, we note the Examiner relies on the combined
teachings of Hirata, Mori, and Terry to teach transmitting MBMS data and
synchronization signals at different times. That is, as discussed above,
Hirata teaches transmitting MBMS data, Mori teaches transmitting
synchronization signals, and Hirata teaches transmitting different signals at
different times. As the Examiner explains (see Ans. 12–13), Terry’s
approach of interrupting the transmission of lower priority signals with the
transmission of higher priority signals teaches that the transmission of
signals with different priorities are performed at different times. Contrary to
Appellant’s assertion, the Examiner finds Terry teaches “each priority class
is associated with a unique identifier and transmission sequence number
among other unique characteristics.” Ans. 13 (citing Terry ¶¶ 20–23). As
such, the Examiner finds, and we agree, Terry teaches, or at least suggests,
the higher priority signals are different from the lower priority signals (i.e.,
one could be MBMS data and the other synchronization signaling).
Accordingly, by a preponderance of evidence, the combination of Hirata,
Mori, and Terry teaches teach transmitting MBMS data and synchronization
signals at different times.
Appellant also argues that it is unclear as to whether the Examiner’s
proposed combination would result in the claimed invention. Appeal Br. 7–
8; Reply Br. 4. In particular, Appellant asserts Terry is designed to reduce
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the latency of high priority data and will, accordingly, complete the
transmission of the high priority data. Appeal Br. 7. Appellant argues
Terry’s approach is inconsistent with the discontinuous transmission of
MBMS data taught by Kettunen. Appeal Br. 7–8; Reply Br. 4.
“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.” In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The relevant inquiry is
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining
the teachings of references does not involve an ability to combine their
specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973).
We agree with the Examiner’s findings that Hirata, modified by
Kettunen’s teaching of transmission in discontinuous intervals, teaches the
claimed transmission of MBMS data, and that Mori, as modified by
Kettunen, teaches the claimed transmission of synchronization signals. As
discussed above, Terry is relied on for the limited teaching of transmitting
different signals at different times. Thus, the combined teachings of Terry
with those of Hirata, Mori, and Kettunen, teach the transmission of the
MBMS data and synchronization signals occur at different times.
For the first time in the Reply Brief, Appellant belatedly asserts that
(i) Hirata fails to teach “transmitting, discontinuously, MBMS data,” and
(ii) both the higher priority and lower priority signals discussed in Terry are
“ACK/NACK signals,” but the signals described in Hirata and Mori “do not
have this type of similarity in their characteristics.” Reply Br. 5–8
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These arguments were not made in the Appeal Brief, but could have
been, and are not responsive to any new evidence or finding set forth by the
Examiner in the Answer. In the absence of a showing of good cause by
Appellant, these arguments are untimely and deemed waived.
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in the
[E]xaminer’s answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the
present appeal, unless good cause is shown.
37 C.F.R. § 41.41(b)(2); see also Ex parte Nakashima, 93 USPQ2d 1834,
1837 (BPAI 2010) (informative) (explaining that arguments and evidence
not presented timely in the principal brief, will not be considered when filed
in a Reply Brief, absent a showing of good cause explaining why the
argument could not have been presented in the principal brief); Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply
brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner’s rejections, but were
not.”).
Moreover, even if we were to consider Appellant’s untimely
arguments, we do not find them persuasive of Examiner error. Appellant’s
argument relies on a portion of Hirata describing transmission from a mobile
terminal, not the base station, as identified by the Examiner. See Final
Act. 3 (citing Hirata ¶ 21). Moreover, we note that the Examiner relies on
the combined teachings of Hirata and Kettunen to teach “transmitting, in
discontinuous intervals, by circuitry of the base station, data of a multimedia
broadcast multicast service (MBMS) to the mobile terminal.” See Final
Act. 3–4.
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In addition, as discussed above, Terry is relied on for the limited
teaching of transmitting different signals at different times. The Examiner
does not rely on the particular characteristics of Terry’s signals in the
proposed combination. Thus, Appellant’s arguments that the signals of
Hirata and Mori do not share a common characteristic as the signals of Terry
are inapposite and unpersuasive of error.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 2. For similar reasons, we also sustain the Examiner’s rejection of
independent claims 3–5, which recite similar limitations and were not argued
separately. See Appeal Br. 8; see also 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
We affirm the Examiner’s decision rejecting claims 2–5 under pre-
AIA 35 U.S.C. § 103(a).

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–5 103(a) Hirata, Mori, Terry,
Kettunen
2–5

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Application 14/071,294

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TIME PERIOD FOR RESPONSE
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). See
37 C.F.R. § 41.50(f).

AFFIRMED