QUALCOMM INCORPORATED et al.

Patent Trials and Appeals Board

Jan 29, 2021

2019005688 (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.
15/312,747 11/21/2016 Chintan Shirish SHAH 140283USP 5084
15055 7590 01/29/2021
Patterson + Sheridan, L.L.P.
Qualcomm
24 Greenway Plaza, Suite 1600
Houston, TX 77046
EXAMINER
KIM, HARRY H
ART UNIT PAPER NUMBER
2411
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):
PAIR_eOfficeAction@pattersonsheridan.com
ocpat_uspto@qualcomm.com
qualcomm@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHINTAN SHIRISH SHAH and
JIMING GUO
____________________

Appeal 2019-005688
Application 15/312,747
Technology Center 2400
____________________

Before ERIC S. FRAHM, CATHERINE SHIANG, and
BETH Z. SHAW, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–8 and 34–45, which constitute all the claims pending in this
application. Claims 9–33 have been canceled (see Appeal Br. 20). We have
jurisdiction under 35 U.S.C. § 6(b). We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2018). “The word ‘applicant’ when used in this title refers
to the inventor or all of the joint inventors, or to the person applying for a
patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as Qualcomm Incorporated (Appeal Br.
3).
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DISCLOSED AND CLAIMED INVENTION
The disclosed invention, entitled “Methods and Apparatus for
Reducing Collisions Between CDRX and Paging Operations” (Title),
relates generally to wireless communication, and more
particularly to methods and apparatus for reducing between
connected discontinuous reception (CDRX) and paging
operations (e.g., for avoiding persistent long term evolution
(LTE) connected discontinuous reception (CDRX) listening
period collisions with CDMA2000 1x Radio Transmission
Technology (1xRTT) paging cycles and Global System for
Mobile (GSM) communications paging cycles/slots)
(Spec. ¶ 1).
Independent claim 1, and dependent claims 5 and 8, are reproduced
below with bracketed lettering and emphases added to key portions of the
claims, and are illustrative of the claimed subject matter:
1. A method for wireless communications by a user equipment
(UE), comprising:
entering a mode wherein the UE alternates between
listening periods and non-listening periods while connected to a
first radio access technology (RAT) network, wherein the
listening periods are determined based on an offset value
assigned by the first RAT network;
[A] determining that a plurality of the listening periods
each conflict with one or more paging intervals in a second RAT
network; and
[B] taking action to obtain a new offset value in an attempt
to avoid conflicts between one or more subsequent listening
periods and the one or more paging intervals in the second
RAT network.

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5. The method of claim 1, further comprising:
determining that one or more subsequent listening periods
conflict with one or more paging intervals in the second RAT
network after taking action to obtain the new offset value; and
[C] in response, determining not to take action to obtain
another new offset value.

Appeal Br. 19, Claims Appendix (formatting, bracketed lettering, and
emphases added).
8. The method of claim 1, wherein [D] the mode is a radio
resource control (RRC) connected state discontinuous reception
operation mode.

Appeal Br. 20, Claims Appendix (formatting, bracketed lettering, and
emphases added).

REJECTIONS
The Examiner made the following rejections:
(1) Claims 1, 2, 5–7, 34, 35, 38–40, 42, and 43 stand rejected under
35 U.S.C. § 103 as being unpatentable over Chin et al. (US 2013/0040666
A1; published Feb. 14, 2013) (“Chin 1”) and Chin et al. (US 2010/0202430
A1; published Aug. 12, 2010) (“Chin 2”). Final Act. 4–12; Ans. 4–12.
(2) Claims 3, 4, 8, 36, 37, 41, 44, and 45 stand rejected under 35
U.S.C. § 103 as being unpatentable over Chin 1, Chin 2, and Kim et al. (US
2015/0087313 A1; published March 26, 2015) (“Kim”). Final Act. 26–28.

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ISSUES
Because Appellant does not present any separate arguments as to the
obviousness rejection of claims 3, 4, 36, 37, 44, and 45 over the combination
of Chin 1, Chin 2, and Kim, Appellant has not shown that the Examiner
erred in rejecting claims 3, 4, 36, 37, 44, and 45, and we sustain the
obviousness rejection of claims 3, 4, 36, 37, 44, and 45 over Chin 1, Chin 2,
and Kim pro forma. Ex parte Frye, 94 USPQ2d 1072, 1076 (BPAI 2010)
(“Precedential”) (“[T]he Board will generally not reach the merits of any
issues not contested by an appellant.”); 37 C.F.R. § 41.37 (c)(1)(iv)(2017)
(Each ground of rejection must be treated under a separate heading.). Other
than including this prior art rejection of claims 3, 4, 36, 37, 44, and 45 (see
supra Rejection 2) in our conclusion, we will not discuss this rejection
further.
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 7–
18) and the Reply Brief (Reply Br. 2–10),2 the following three principal
issues are presented on appeal:

2 Appellant presents arguments as to (i) claim 1, relying on those arguments
as to the patentability of claims 2, 6, 7, 34, 35, 39, 40, 42, and 43 (see
Appeal Br. 7–14; Reply Br. 2–7); (ii) claims 5 and 38 (see Appeal Br. 14);
and (iii) claims 8 and 41 (see Appeal Br. 15–17; Reply Br. 7–9). Namely,
Appellant presents arguments concerning (i) limitations A and B recited in
claim 1, and commensurately recited in claims 34 and 42 (see Appeal Br. 7–
14; Reply Br. 2–7); (ii) limitation C recited in claims 5 and 38 (see Appeal
Br. 14); and (iii) limitation D recited in claims 8 and 41 (see Appeal Br. 15–
17; Reply Br. 7–9). Pursuant to our authority under 37 C.F.R.
§ 41.37(c)(1)(iv), we select (i) claim 1 as representative of claims 1, 2, 6, 7,
34, 35, 39, 40, 42, and 43; (ii) claim 5 as representative of claims 5 and 38,
rejected over Chin 1 and Chin 2; and (iii) claim 8 as representative of claims
8 and 41 rejected over Chin 1, Chin 2, and Kim.
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(1) Has Appellant shown the Examiner erred in rejecting claims 1, 2,
5–7, 34, 35, 38–40, 42, and 43 under 35 U.S.C. § 103 as being unpatentable
over the combination of Chin 1 and Chin 2, because the combination fails to
teach or suggest limitations A and B, of representative claim 1?
(2) Did the Examiner err in rejecting claims 5 and 38 under 35 U.S.C.
§ 103 as being unpatentable over the combination of Chin 1 and Chin 2,
because Chin 2 fails to teach or suggest limitation C, as recited in
representative claim 5?
(3) Has Appellant shown the Examiner erred in rejecting claims 8 and
41 under 35 U.S.C. § 103 as being unpatentable over the combination of
Chin 1, Chin 2, and Kim, because Kim fails to teach or suggest limitation D,
as recited in representative claim 8?

ANALYSIS
Obviousness Rejection of Claim 1
We have reviewed the Examiner’s rejection of claim 1 (see Final Act.
4–6; Ans. 4–7) in light of Appellant’s arguments (Appeal Br. 7–14; Reply
Br. 2–7) that the Examiner has erred, as well as the Examiner’s response to
Appellant’s arguments in the Appeal Brief (Ans. 14–18). With regard to
representative claim 1, we agree with and adopt as our own the Examiner’s
findings of facts and conclusions as set forth in the Final Rejection (Final
Act. 4–6) and Answer (Ans. 4–7). Appellant’s arguments regarding
limitations A and B recited in claim 1 (and commensurately recited in claims
34 and 42) are not persuasive of Examiner error. We provide the following
explanation for emphasis.
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The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a rational connection
between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n
v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal
quotation marks and citation omitted); see Synopsys, Inc. v. Mentor
Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an
administrative agency, the PTAB “must articulate logical and rational
reasons for [its] decisions” (internal quotation marks and citation omitted)).
We emphasize that the Examiner’s ultimate legal conclusion of
obviousness is based upon the combined teachings of the cited references.
Moreover, “‘the question under 35 USC 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.’” Merck & Co.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)) (emphasis added); see also
MPEP § 2123. In this light, we agree with the Examiner that the combined
teachings and suggestions of Chin 1 and Chin 2 support the legal conclusion
of obviousness as to claim 1.
We agree with the Examiner’s findings that (i) Chin 1 teaches or
suggests determining conflicts for listening periods with paging intervals, as
recited in limitation A of claim 1; and (ii) Chin 1 and Chin 2 combined teach
or suggest avoiding conflicts by obtaining a new offset value, as recited in
limitation B of claim 1 (see Final Act. 5–6; Ans. 5–7). Like Appellant’s
disclosed invention, Chin 1 is concerned with determining and resolving
conflicts between paging intervals of two different networks using different
radio access technologies (RATs) (see Abstract; ¶¶ 5, 56, 59, 60), and
“scheduling paging monitoring intervals in a multimode mobile station” (¶
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2). Similarly, Chin 2 concerns avoiding collisions between paging intervals
in two different networks at a multi-mode mobile station (see Abstract), by
scheduling paging intervals so as to reduce conflicts/collisions (see ¶¶ 69,
77). Chin 2 reduces collisions by controlling “an offset value T” in an effort
to prevent listening intervals of one RAT from colliding with listening
intervals of another RAT (see ¶ 64).
Even if we were to agree with Appellant that Chin 1 does not teach
determining that a plurality of listening periods, but only one listening period,
conflicts with one or more paging intervals as set forth in limitation A of
claim 1, a person having ordinary skill in the art at the time of Appellant’s
invention would understand it desirable to determine any existing conflict,
and examining a plurality of listening periods would improve the
effectiveness of conflict determinations. In addition, it is established law that
the utilization of two elements, where the prior art teaches one element does
not give rise to patentability. See In re Huyett, 112 F.2d 853 (CCPA 1940).
Mere duplication of parts is not patentable, and does not lend patentability to
an otherwise unpatentable claim. In re Abrahamsen, 53 F.2d 893 (CCPA
1931). Therefore, examining a plurality of listening periods, as opposed to
just one listening period, does not lend patentability to claim 1.
In view of the foregoing, Appellant has not shown the Examiner erred
in rejecting claim 1, as well as claims 2, 6, 7, 34, 35, 39, 40, 42, and 43
grouped therewith, over the combination of Chin 1 and Chin 2.
Obviousness Rejections of Claim 5
The dispositive issue presented by Appellant’s arguments for claim 5
is whether the Examiner erred in finding Chin 2, and thus the combination of
Chin 1 and Chin 2, teaches or suggests limitation C as recited in claim 5.
Limitation C requires “determining not to take action to obtain another new
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offset value” (claim 5, limitation C) (emphasis added) in response to
determining there is a conflict (see claim 5). Appellant’s contention that
paragraphs 62 and 64 of Chin 2 “are simply silent with regard to any
determination not to obtain another new offset value” (Appeal Br. 14)
(emphasis added) in response to determining any listening period conflicts
with a paging interval, is persuasive.
The Examiner’s reasoning found at page 19 of the Examiner’s Answer
is unreasonable, and unsupported by evidence. The cited portions of Chin 2
are silent as to the negative action taken in limitation C of claim 5. And,
although Chin 2 discusses using an offset value T (see ¶ 77), this teaching
does not support a finding that Chin 2 acts to determine not to take action as
required by limitation C of claim 5. We will not resort to speculation or
assumptions to cure the deficiencies in the Examiner’s fact finding. See In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
In view of the foregoing, Appellant has shown the Examiner erred in
rejecting claim 5, as well as claim 38 grouped therewith, over the
combination of Chin 1 and Chin 2.
Obviousness Rejection of Claim 8
The dispositive issue presented by Appellant’s arguments for claim 8
is whether the Examiner erred in finding Kim, and thus the combination of
Chin 1, Chin 2, and Kim, teaches or suggests limitation D as recited in claim
8. Limitation D requires that the mode of claim 1 “is a radio resource
control (RRC) connected state discontinuous reception operation mode”
(claim 8, limitation D). Appellant’s contentions (see Appeal Br. 16–17;
Reply Br. 9) that paragraph 55 and Figures 3 and 4 of Kim fail to teach or
suggest the mode defined in limitation D of claim 8 are persuasive.
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The Examiner’s reasoning found at page 20 of the Examiner’s Answer
is unreasonable, and unsupported by evidence. Kim’s paragraph 55,
reproduced below, is silent as to the RRC connected state discontinuous
reception operation mode set forth in limitation D of claim 8.
FIG. 3 is a flowchart illustrating the UE operation for
mobility state estimation in transition from the idle state to the
connected state according to the first embodiment.

Kim ¶ 55.
And, although Kim’s Figures 3 and 4 show idle, connection, and RRC
connection operations, these teachings does not support a finding that Kim
teaches the RRC connected state discontinuous reception operation mode set
forth in limitation D of claim 8. We will not resort to speculation or
assumptions to cure the deficiencies in the Examiner’s fact finding. See In
re Warner, 379 F.2d at 1017.
In view of the foregoing, Appellant has shown the Examiner erred in
rejecting claim 8, as well as claim 41 grouped therewith, over the
combination of Chin 1, Chin 2, and Kim.

CONCLUSIONS
(1) Appellant has not shown the obviousness rejection of
representative claim 1, as well as claims 2, 6, 7, 34, 35, 39, 40, 42, and 43
grouped therewith, over the base combination of Chin 1 and Chin 2 to be in
error. Accordingly, we affirm the obviousness rejection of claims 1, 2, 6, 7,
34, 35, 39, 40, 42, and 43.
(2) Appellant has shown the Examiner erred in rejecting (i)
representative claim 5 and claim 38 grouped therewith under 35 U.S.C.
§ 103 as being unpatentable over Chin 1 and Chin 2; and (ii) representative
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claim 8 and claim 41 grouped therewith under 35 U.S.C. § 103 as being
unpatentable over Chin 1, Chin 2, and Kim. Accordingly, on the record
before us, we are constrained to reverse the obviousness rejections of claims
5, 8, 38, and 41.
In summary:
Claims
Rejected
35
U.S.C. §
References Affirmed Reversed
1, 2, 5–7,
34, 35,
38–40, 42,
43
103 Chin 1, Chin
2
1, 2, 6, 7, 34,
35, 39, 40,
42, 43
5, 38
3, 4, 8, 36,
37, 41, 44,
45
103 Chin 1, Chin
2, Kim
3, 4, 36, 37,
44, 45
8, 41
Overall
Outcome
1–4, 6, 7,
34–37, 39,
40, 42–45
5, 8, 38,
41

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).

AFFIRMED-IN-PART