TELEFONAKTIEBOLAGET L M ERICSSON (PUBL)

Patent Trials and Appeals Board

Aug 3, 2021

2020002397 (P.T.A.B. Aug. 3, 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.
16/161,532 10/16/2018 Olof Liberg P44442-US3 9090
27045 7590 08/03/2021
ERICSSON INC.
6300 LEGACY DRIVE
M/S EVR 1-C-11
PLANO, TX 75024
EXAMINER
YOUNG, STEVE R
ART UNIT PAPER NUMBER
2477
NOTIFICATION DATE DELIVERY MODE
08/03/2021 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):
amber.rodgers@ericsson.com
michelle.sanderson@ericsson.com
pam.ewing@ericsson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte OLOF LIBERG, MÅRTEN SUNDBERG,
JOHN WALTER DIACHINA, and PAUL SCHLIWA-BERTLING
___________

Appeal 2020-002397
Application 16/161,532
Technology Center 2400
____________

Before CAROLYN D. THOMAS, JAMES B. ARPIN, and
MICHAEL J. ENGLE, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–40, all of the pending claims. Non-Final Act. 2.2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party-in-interest as Telefonaktiebolaget LM
Ericsson (publ.). Appeal Br. 2.
2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed
November 21, 2019) and Reply Brief (“Reply Br.,” filed February 4, 2020);
the Non-Final Office Action (“Non-Final Act.,” mailed October 2, 2019) and
the Examiner’s Answer (“Ans.,” mailed January 30, 2020); and the
Specification (“Spec.,” filed October 16, 2018). Rather than repeat the
Examiner’s findings and Appellant’s contentions in their entirety, we refer to
these documents.
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STATEMENT OF THE CASE
The claimed nodes, methods, and devices “relate[] generally to the
field of wireless communications, and more particularly to system overload
control when in extended coverage.” Spec., 1:9–10.
As noted above, claims 1–40 are pending. Claims 1, 10, 19, and 30
are independent. Appeal Br. 15 (claim 1), 16 (claim 10), 18 (claim 19),
20 (claim 30) (Claims App.). Claims 2–9 depend directly or indirectly from
claim 1, claims 11–18 depend directly or indirectly from claim 10,
claims 20–29 depend directly or indirectly from claim 19, and claims 31–40
depend directly or indirectly from claim 30. Id. at 15–22.
Claim 1, reproduced below with the disputed limitations emphasized,
is representative.
1. A network node configured to control system overload in a
wireless communication system, the network node
comprising:
a processing module configured to indicate an implicit reject
status in a synchronization channel (SCH) block; and
a transceiver module configured to transmit the SCH block to
at least one wireless device, wherein the implicit reject status
indicates if a system access is allowed by the at least one
wireless device prior to the at least one wireless device
attempting the system access.
Id. at 15 (emphases added). Each of independent claims 10, 19, and 30
recites limitations corresponding to the disputed limitations of claim 1. Id.
at 16, 18, 20.
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REFERENCES3 AND REJECTIONS
The Examiner relies upon the following references:
Name4 Reference Publ’d/Issued Filed
Liberg US 10,142,876 B2 Nov. 27, 2018 Aug. 18, 2015
Tran US 2008/0194256 A1 Aug. 14, 2008 Feb. 14, 2007
Diachina US 2012/0093008 A1 Apr. 19, 2012 Mar. 18, 2011
Palanisamy US 2017/0019750 A1 Jan. 19, 2017 Mar. 31, 20155
Gong US 2017/0142718 A1 May 18, 2017 Jan. 31, 20176
The Examiner rejects:
a. claims 4–6, 13–15, 21–23, and 32–34 under 35 U.S.C. § 101 as
unpatentable for statutory double patenting in view of Liberg.
(Non-Final Act. 2);
b. claims 1, 2, 7–11, 16–19, 24–30, and 35–40 under the judicially-
created doctrine of obviousness-type double patenting in view of
Liberg (id. at 4);
c. claims 1–3, 7, 9–12, 16, 18–20, 24–27, 29–31, 35–38, and 40
under 35 U.S.C. § 103 as obvious over the combined teachings of
Diachina, Tran, and Palanisamy (id. at 4–23); and

3 The application on appeal claims the benefit of U.S. Provisional Patent
Application No. 62/040,154, filed August 21, 2014.
4 All reference citations are to the first named inventor only.
5 Palanisamy claims the benefit of U.S. Provisional Patent Application
No. 61/972,746, filed March 31, 2014.
6 Gong is a continuation of International Patent Application
No. PCT/CN2014/083448, filed on July 31, 2014.
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d. claims 8, 17, 28, and 39 under 35 U.S.C. § 103 as obvious over the
combined teachings of Diachina, Tran, Palanisamy, and Gong (id.
at 23).
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the contentions and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). The Examiner and Appellant focus their findings and
contentions on claim 1 (see Appeal Br. 5, 13; Ans. 25–30); so do we.
Arguments not made are forfeited.7 Unless otherwise indicated, we adopt
the Examiner’s findings in the Non-Final Office Action and the Answer as
our own and add any additional findings of fact for emphasis. We address
the rejections below.
ANALYSIS
A. Statutory and Obviousness-Type Double Patenting
As noted above, the Examiner rejects: (1) claims 4–6, 13–15, 21–23,
and 32–34 under 35 U.S.C. § 101 as unpatentable for statutory double
patenting in view of Liberg; and (2) claims 1, 2, 7–11, 16–19, 24–30, and
35–40 under the judicially-created doctrine of obviousness-type double
patenting in view of Liberg. Non-Final Act. 2–4. Appellant does not
challenge these rejections. Appeal Br. 4; Reply Br. 1–2; see Ans. 25.

7 See In re Google Tech. Holdings LLC, 980 F.3d 858, 863 (Fed. Cir. 2020)
(“We interpret the Patent Office to be arguing that Google’s failure to raise
its lexicography arguments, inadvertent or not, compels a finding of
forfeiture.”); 37 C.F.R. § 41.37(c)(1)(iv) (2019) (“Except as provided for in
§§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the
appeal brief will be refused consideration by the Board for purposes of the
present appeal.”).
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Instead, with respect to the statutory double patenting rejection, Appellant
will consider cancelling or amending the rejected claims; and, with respect
to the obviousness-type double patenting rejection, Appellant will consider
filing an appropriate terminal disclaimer, after receipt of our decision in this
appeal. Reply Br. 1–2.
“An appeal, when taken, is presumed to be taken from the rejection of
all claims under rejection unless cancelled by an amendment filed by the
applicant and entered by the Office.” 37 C.F.R. § 41.31(c) (2019); see also
37 C.F.R. § 41.37(c)(1)(iv) (“The arguments shall explain why the examiner
erred as to each ground of rejection contested by appellant.”). “If a ground
of rejection stated by the examiner is not addressed in the appellant’s brief,
appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it, unless the examiner subsequently withdrew the
rejection in the examiner’s answer.” MPEP § 1205.02 (Rev. 10.2019, June
2020). Therefore, we summarily sustain the Examiner’s double patenting
rejections.
B. Obviousness over Diachina, Tran, and Palanisamy
As noted above, the Examiner rejects claim 1 under 35 U.S.C. § 103
as obvious over the combined teachings of Diachina, Tran, and Palanisamy.
Non-Final Act. 4–7. In particular, the Examiner finds Diachina teaches or
suggests the majority of the limitations recited in claim 1. Id. (citing
Diachina, Background, Summary). Specifically, Diachina discloses:
According to one or more embodiments of the present
invention described and claimed herein, a wireless
communication network having received one or more low
priority access requests on an access channel may issue an
implicit reject response on a grant channel. The implicit reject
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response may comprise a flag or other value embedded in an
explicit access grant or explicit access reject response. The
implicit reject response applies to some or all of the wireless
terminals having transmitted low-priority access requests.
Diachina ¶ 12; see id. ¶ 6 (“In some protocols, the access request message
may be a Channel Request message, and the access channel may be a
Random Access Channel (RACH). . . . The wireless terminal then monitors
a grant channel, such as the Access Grant Channel (AGCH) for a response,
for a predetermined monitoring duration, or ‘window.’”); cf. Spec., 3:22–
4:19. Thus, the Examiner finds Diachina teaches or suggests, “a processing
module configured to indicate an implicit reject status,” as recited in claim 1.
Non-Final Act. 6 (quoting claim 1).
The Examiner finds, however, “Diachina does not specifically
disclose indicating/sending the implicit reject status in a synchronization
channel (SCH) block,” as recited in claim 1. Non-Final Act. 6 (emphasis
added). Nevertheless, the Examiner finds Tran teaches or suggests this
missing limitation and that a person of ordinary skill in the relevant art
would have had reason to combine Tran’s teachings with those of Diachina
to achieve this limitation of claim 1. Id.
Tran discloses,
the mobile station must be synchronized with the network part in
order for the mobile station properly to be able to communicate
therewith pursuant to a communication session. Synchronization
schemes are used by which to synchronize the mobile station
with the network part such that, once synchronized, the mobile
station is able to send and to receive data to effectuate a
communication service. . . . And, pursuant to such operating
protocols, a frequency correction channel (FCCH) 28 and a
synchronization channel (SCH) 32 are defined upon the radio air
interface 14. The network part generates control information that
is broadcast on the respective channels 28 and 32. Included
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amongst the control information broadcast on the respective
channels is control information usable by the mobile station to
synchronize itself with the network.
Tran ¶ 25 (emphases added). Thus, the Examiner finds Tran teaches or
suggests that a mobile station monitors FCCH and SCH for control
information, including, but not limited to, frequency offsets and
synchronization information; and this control information is sent in order to
enable the mobile device to communicate over the network. Non-Final
Act. 6 (citing Tran ¶¶ 25–30); cf. Spec. 6:14–17 (“The method has an
advantage in that it enables the network node to more effectively convey
implicit reject status information using the at least one of the FCCH block or
the SCH block since the blocks need to be successfully acquired by a
wireless device prior to attempting any given system access.”). Therefore,
the Examiner finds Diachina and Tran together teach or suggest a processing
module configured to indicate an implicit reject status, e.g., a type of control
signal, “in a synchronization channel (SCH) block,” as opposed to a grant
channel; and a person of ordinary skill in the relevant art would have had
reason to combine the teachings of Diachina and Tran to achieve this
limitation “in order to improve synchronization and communication between
mobile devices and the radio network.” Non-Final Act. 6 (citing Tran’s
Background of the Invention); see Tran ¶¶ 5 (“Signaling is used, not only
pursuant to channel allocation, but also, importantly, to synchronize the
mobile station with the radio network.”), 6 (“Existing methods generally
utilize a sequential procedure, that is, a procedure in which the FCCH is first
monitored and in which, thereafter, the SCH is monitored.”).
The Examiner finds, however, “Diachina, modified by Tran, does not
specifically disclose wherein the implicit reject status indicates if a system
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access is allowed by the at least one wireless device prior to the at least one
wireless device attempting the system access.” Non-Final Act. 6–7.
Nevertheless, the Examiner finds Palanisamy teaches or suggests this
missing limitation and a person of ordinary skill in the relevant art would
have had reason to combine Palanisamy’s teachings with those of Diachina
and Tran to achieve the node of claim 1. Id. at 7.
Palanisamy discloses
Another example mechanism to control overload and/or
manage congestion is referred to as GERAN Low Access
Priority-Implicit Reject Procedure. A [base station controller
(BSC)] is enhanced to support rejection of [radio resource (RR)]
connection establishments from [mobile stations (MSs)]
configured for low access priority during overload/congestion.
When rejecting a RR connection request for overload reasons the
BSC indicates to the MSs an appropriate timer value that limits
further RR connection requests. An Implicit Reject Procedure is
used by the BSC to prevent a mobile station configured for “low
access priority” from requesting PS/CS resources, as further
described in 3GPP TS 44.018, “Mobile radio interface layer 3
specification; Radio Resource Control (RRC) protocol.”
Palanisamy ¶ 16 (emphases added); see also id. ¶ 17 (“This may prevent
devices from performing any mobile originated access attempts except for
emergency calls.” (emphasis added)). Thus, the Examiner finds Palanisamy
teaches or suggests the implicit reject status indicates “if a system access is
allowed by the at least one wireless device prior to the at least one wireless
device attempting the system access,” as recited in claim 1. Non-Final
Act. 7 (emphasis added). Moreover, a person of ordinary skill in the
relevant art would have had reason to combine Palanisamy’s teachings with
those of Diachina and Tran “in order to save on network resources.” Id.
(citing Palanisamy’s Background); see Palanisamy ¶ 6.
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Appellant contends the Examiner fails to show that Diachina, Tran,
and Palanisamy together teach or suggest the disputed limitations of claim 1,
for two reasons. Appeal Br. 4–13; Reply Br. 2–8. On this record, Appellant
does not persuade us the Examiner errs in the findings regarding the
combination of Diachina’s, Tran’s, and Palanisamy’s teachings.
1. Tran Cures Diachina’s Deficiencies
First, Appellant contends Tran’s teachings do not correct the
deficiencies in Diachina’s teachings, such that their combination teaches or
suggests, “indicat[ing] an implicit reject status in a synchronization channel
(SCH) block,” as recited in claim 1. Appeal Br. 6; Reply Br. 2–4. Further,
Appellant contends:
Instead, Tran’s paragraphs [0025]-[0030] disclose that the
control information broadcast on the FCCH 28 and SCH 32 is
control information usable by the mobile station to synchronize
itself with the network where the mobile station must first
synchronize with the network before being able to communicate
with the network pursuant to a communication session. Thus,
Tran’s control messaging in SCH block is required to be control
information usable by the mobile station to synchronize itself
with the network whereas claim 1’s requires an implicit reject
status to be indicated in a SCH block where the implicit reject
status is not control information usable by the wireless device to
synchronize itself with the network but rather indicates if a
system access is allowed by the wireless device prior to the
wireless device attempting the system access.
Appeal Br. 6 (emphasis added). We disagree with Appellant’s narrow
reading of Tran.
As noted above, Tran discloses that control information carried on an
SCH block is not limited to synchronization information. See, e.g., Tran
¶ 25 (“Included amongst the control information broadcast on the respective
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channels is control information usable by the mobile station to synchronize
itself with the network.” (emphasis added)). Thus, the Examiner finds:
Tran, though not specifically teaching sending “implicit reject
status” information, does show sending of “control information”
on the [AGCH], as in Diachina,[8] but also on the SCH block. An
“implicit reject status” is a form of “control information” and
therefore it would be obvious to one of ordinary skill in the art
before the effective filing date of the claimed invention to send
control information such as the implicit reject status of Diachina,
on the SCH block as well as the [AGCH] block, as taught in
Tran. The Appellant has not shown why sending of control
information such as “implicit reject status” on the SCH is
patentably different or significant versus sending it on another
control channel, such as the [AGCH], that is also received and
monitored by the terminal device.
Ans. 26 (emphasis added). We agree with the Examiner.
Consequently, we are not persuaded of Examiner error by this first
reason.

8 Appellant states that it is unable to find where Diachina discloses sending
an implicit reject status on the FCCH. Reply Br. 3 n.1. We too could find
no such disclosure. However, we understand the Examiner to have been
referring to an AGCH, rather than the FCCH. See Diachina ¶¶ 6 (“The
wireless terminal then monitors a grant channel, such as the Access Grant
Channel (AGCH) for a response, for a predetermined monitoring duration,
or ‘window.’”), 12 (“At the expiration of such a terminal’s window for
monitoring potential responses to its access request, if it has not received an
explicit response, but the implicit reject response applies to it, the wireless
terminal will refrain from transmitting another access request for a
predetermined or configurable duration.”). The Examiner’s typographical
error is harmless.
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2. Sufficient Reason to Combine
Second, Appellant contends:
The Examiner has still not established a prima facie case of
obviousness because he has not provided any articulated
reasoning with some rational underpinning to support his
argument that one skilled in the art would be motivated to
combine Diachina-Tran to teach claim 1’s indicate/transmit an
implicit reject status in a synchronization channel (SCH) block.
Appeal Br. 6–7. In particular, Appellant contends: (a) “the Examiner still
has not provided any articulated reasoning with some rational underpinning
to support his argument that one skilled in the art would be motivated to
combine Diachina-Tran to teach claim 1’s indicate/transmit an implicit reject
status in a synchronization channel (SCH) block” (Reply Br. 5; see Appeal
Br. 8); (b) “[t]he Examiner has failed to provide a ‘technical feature’ taught
by Palanisamy that would have motivated one skilled in the art to modify the
Diachina-[Tran] combination to read-on the independent claim 1” (Reply
Br. 6; see Appeal Br. 8–9); and (c) the proposed combination would render
Diachina’s network unsuitable for its intended purpose and/or improperly
change a principle of Diachina’s network’s operation (Reply Br. 6–8; see
Appeal Br. 9–13). For the reasons given below, we disagree with Appellant.
a. Sufficient Reason to Combine Teachings of Diachina and Tran
With regard to the combination of the teachings of Diachina and Tran,
Appellant contends:
Because, the Examiner by merely stating that there is a
motivation to combine the references in order “to improve
synchronization and communication between mobile devices
and the radio network” as was done to reject the independent
claim 1 is not the same as “show[ing] a motivation to combine
the references.” In particular, the problem with the Examiner’s
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logic is that it effectively eliminates the requirement of
identifying a factual suggestion for combining references from
the obviousness analysis.
Appeal Br. 8. Nevertheless, the Examiner finds, “In this case, Tran teaches
of there being communicative benefits to transmitting control information in
the SCH and FCCH blocks.” Ans. 26–27 (citing Trans ¶¶ 3–10
(Background of the Invention), 25–30).
As the U.S. Supreme Court explained, “Under the correct analysis,
any need or problem known in the field of endeavor at the time of invention
and addressed by the patent can provide a reason for combining the
elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 420 (2007) (emphasis added). Appellant does not dispute that Tran
teaches or suggests communicative benefits to transmitting control
information in the SCH and FCCH blocks. Reply Br. 5 (“In Tran, the
control information broadcast on the FCCH 28 and SCH 32 is ‘control
information’ usable by the mobile station to synchronize itself with the
network where the mobile station must first synchronize with the network
before being able to communicate with the network pursuant to a
communication session.”); see Appeal Br. 6. As discussed above, however,
we disagree with Appellant that Tran’s control information is limited to
synchronization information. Ans. 26–27; see Tran ¶ 25 (“Included amongst
the control information broadcast on the respective channels is control
information usable by the mobile station to synchronize itself with the
network.”).
Diachina discloses receiving an implicit rejection response to an
access request. See Diachina ¶ 12. Tran discloses that synchronization
information, as well as other control information, are received before a
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wireless device may communicate over a network. Tran ¶ 5 (“Without
appropriate synchronization of the mobile station with the network,
communications are generally unable to be carried out adequately.”); see
Tran ¶¶ 14–16, 25 (discussing advantages of receiving control information
with synchronization information and the scope of control information). The
claimed node also addresses this need or problem. See, e.g., Spec., 6:1–8,
14–22. As the Court explained, this is sufficient reason to combine. KSR,
550 U.S. at 420; see also id. at 417 (“When a work is available in one field
of endeavor, design incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a person of ordinary skill
can implement a predictable variation, § 103 likely bars its patentability.”).
Therefore, we are persuaded the Examiner has shown sufficient reason to
combine the teachings of Diachina and Tran. Non-Final Act. 6; Ans. 26–27.
b. Sufficient Reason to Combine the Teachings of Diachina, Tran,
and Palanisamy
With regard to the combination of the teachings of Diachina, Tran,
and Palanisamy, Appellant contends:
First, Palanisamy’s goal which is to “save on network on
network resources to prevent network congestion caused by too
much signaling from too many devices . . .” is per se not legally
permissible motivation (see the aforementioned In re Rouffet
holding). The Examiner has failed to provide a “technical
feature” taught by Palanisamy that would have motivated one
skilled in the art to modify the Diachina-[Tran] combination to
read-on the independent claim 1. Second, the Examiner’s
interpretation of claim 1’s limitations is not reasonable where the
Examiner argued: . . . the scope of the claim language “prior to
the at least one wireless device attempting the system access” is
broader than what is being interpreted by the Appellant. That is,
“prior to the . . . attempting the system access” does not require
this step/action taken prior to the “request” for system access, but
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rather prior to the “attempt” for the system access itself.
Therefore, broadly interpreted, a request for system access could
have already been sent and as long as the attempt to actually
access the system utilizing actual resources by the system does
not take place, the claim language would be satisfied. Applicant
disagrees–one skilled in the art would readily appreciate that a
wireless device “sending a request for system access” is in fact
“attempting a system access” to contend otherwise is not
reasonable since “attempting the system access” includes
“sending a request for system access” (see also the patent
application’s page 5, lines 18-25).
Reply Br. 6 (italics added). For the reasons given below, we disagree with
both of Appellant’s contentions.
With regard to Appellant’s first contention, the U.S. Supreme Court
explained the correct analysis for determining the sufficiency of a reason to
combine. KSR, 550 U.S. at 420 (quoted above). There is no requirement to
show a “‘technical feature’ taught by Palanisamy that would have motivated
one skilled in the art to modify the Diachina-[Tran] combination,” nor, in In
re Rouffet, did our reviewing court suggest there is. Reply Br. 6 (emphasis
added); see In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998) (“This court
has identified three possible sources for a motivation to combine references:
the nature of the problem to be solved, the teachings of the prior art, and the
knowledge of persons of ordinary skill in the art.”).
Here, the Examiner finds:
It would have been obvious to one of ordinary skill in the
art before the effective filing date of the claimed invention to
implement the overload control system and indicating/sending
the implicit reject status, as disclosed in Diachina, modified by
Tran, wherein the implicit reject status indicates if a system
access is allowed by the at least one wireless device prior to the
at least one wireless device attempting the system access, as
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taught in Palanisamy. One is motivated as such in order to save
on network resources (See Palanisamy Background).
Non-Final Act. 7 (italics added). The claimed node also addresses this need
or problem. See, e.g., Spec. 7:2–7, 17–22. As the Court explained, this is
sufficient reason to combine the teachings of Palanisamy, with those of
Diachina and Tran. KSR, 550 U.S. at 420; see also id. at 417 (quoted
above).
With regard to Appellant’s second contention, we review the
Examiner’s interpretation of the disputed claim recitation de novo. See In re
Donaldson Co., 16 F.3d 1189, 1192 (Fed. Cir. 1994). During examination
of a patent application, we give the pending claims their broadest reasonable
interpretation consistent with the Specification. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Prater, 415 F.2d 1393,
1404–05 (CCPA 1969).
Claim 1 recites, “the implicit reject status indicates if a system access
is allowed by the at least one wireless device prior to the at least one
wireless device attempting the system access.” Appeal Br. 15 (Claim App.)
(emphasis added). With regard to system “access,” the Specification
discloses, “The wireless devices read the SCH prior to attempting system
access and determine the value of the Implicit Reject Status (IRS) parameter
therein to determine if system access using the RACH is allowed.” Spec.,
3:24–26. Further, the Specification discloses, “The network node has an
advantage in that it can more effectively convey implicit reject status
information using the at least one of the FCCH block or the SCH block since
the blocks need to be successfully acquired by a wireless device prior to
attempting any given system access.” Id. at 6:1–4 (emphasis added).
Nevertheless, neither claim 1 nor the Specification mentions a “request” for
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access or equates a “request” for access with an “attempt” to access. But see
Reply Br. 6 (citing Spec., 5:18–25).
It is the appellants’ burden, not the Office’s, to define precisely the
invention. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Here, the
Examiner determines, “broadly interpreted, a request for system access
could have already been sent and as long as the attempt to actually access
the system utilizing actual resources by the system does not take place, the
claim language would be satisfied.” Ans. 28. On this record, we agree with
the Examiner’s interpretation of the disputed language of claim 1.
Consequently, we are not persuaded the Examiner’s reason for combining
the references teachings relies on impermissible hindsight. See Appeal
Br. 7–8; Reply Br. 5.
Therefore, we are persuaded the Examiner has shown sufficient
reason to combine the teachings of Palanisamy with those of Diachina and
Tran. Non-Final Act. 7; Ans. 27–28.
c. No Change in Intended Purpose or Principle of Operation
As noted above, Appellant contends the proposed combination of the
teachings of Diachina, Tran, and Palanisamy would (i) render Diachina’s
network unsuitable for its intended purpose and/or (ii) improperly change a
principle of Diachina’s network’s operation. Reply Br. 6–8; see Appeal Br.
9–13. For the reasons given below, we disagree with Appellant.
i. Not Unsuitable for Diachina’s Intended Purpose
With regard to Diachina’s intended purpose, Appellant contends,
Diachina discloses where the wireless communication network
is required to receive a low-priority access request from a
wireless terminal before issuing an implicit reject response to the
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wireless terminal. In contrast, the independent claim 1 requires
the network node to transmit the implicit reject status (in a
synchronization (SCH) block) to the wireless device prior to the
wireless device attempting a system access. Hence, if Diachina’s
wireless communication network was modified per the
Examiner’s rejection such that Diachina’s wireless
communication network no longer was required to receive a low-
priority access request from a wireless terminal before issuing an
implicit reject response to the wireless terminal then the modified
Diachina’s wireless communication network would be
inoperable for its intended purpose because Diachina’s wireless
communication network must first receive a low-priority access
request from a wireless terminal before issuing an implicit reject
response to the wireless terminal (e.g., see Diachina’s paragraph
[0012]).
Appeal Br. 11; see Reply Br. 7.
The Examiner finds, however,
“Modifying” Diachina to be sent on the SCH (i.e. Tran) does not
change anything about the content of the message being sent. In
other words, since the SCH is a channel monitored by the
wireless device and used for sending control information,
sending the implicit reject information (Diachina) on the SCH
would not require any change to the messaging of Diachina such
that it would be rendered “inoperable”. In other words, for the
instant claims, there is no patentable significance to send the
same information on another monitored control channel.
Ans. 29 (emphasis added). Thus, the Examiner finds Diachina’s intended
purpose is to prevent system overload by too many attempts for access; the
modification of Diachina’s teachings in view of Tran’s teachings does not
change this purpose. See Diachina ¶ 9 (“Conventional wireless
communication network access protocols suffer at least two significant
deficiencies— inherently limited rejection capacity, and a lack of priority
discrimination.”).
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Further, as noted above, claim 1 does not recite an access or other
“request.” See Appeal Br. 15 (Claims App.). Nevertheless, either the
network sends SCH blocks to all possible wireless devices, or some initial
communication triggers the network to send a SCH block to “at least one
wireless device.” Ans. 29; see, e.g., Diachina ¶ 12 (“a wireless
communication network having received one or more low-priority access
requests on an access channel may issue an implicit reject response on a
grant channel.” (emphases added)); Tran ¶ 5 (“The allocation of channels
typically involves exchange of signaling between the mobile station and the
radio network with which the mobile station communicates. Signaling is
used, not only pursuant to channel allocation, but also, importantly, to
synchronize the mobile station with the radio network.” (emphasis added));
see also In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take
into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.”). Whether that initial communication is called a “request” or
something else and whether the SCH block is called a “response” or
something else does not alter the Examiner’s findings. Therefore, we are not
persuaded the Examiner’s combination of the teachings of Diachina, Tran,
and Palanisamy render Diachina unsuitable for its intended purpose. See
Ans. 28–29.
ii. No Change in Diachina’s Principle of Operation
With regard to Diachina’s principle of operation, Appellant contends,
As discussed above, Diachina discloses where the wireless
communication network is required to receive a low-priority
access request from a wireless terminal before issuing an implicit
reject response to the wireless terminal. In contrast, the
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independent claim 1 requires the network node to transmit the
implicit reject status (in a synchronization (SCH) block) to the
wireless device prior to the wireless device attempting a system
access. Hence, if Diachina’s wireless communication network
was modified per the Examiner’s rejection such that Diachina’s
wireless communication network no longer was required to
receive a low-priority access request from a wireless terminal
before issuing an implicit reject response to the wireless terminal
then the modified Diachina’s wireless communication network
would not only require a substantial reconstruction and redesign
of its elements but the modification would also change the basic
principle under which Diachina’s wireless communication
network was designed to operate which is where Diachina’s
wireless communication network must first receive a low-
priority access request from a wireless terminal before issuing an
implicit reject response to the wireless terminal (e.g., see
Diachina’s paragraph [0012]).
Appeal Br. 12; see Reply Br. 7.
Appellant’s contention here is substantially the same as the contention
raised above. See supra Section B.2.c.i. Further, the Examiner finds the
language of claim 1 “does not require that no access request actually take
place. ‘Prior to the . . . attempting the system access’ does not require this
step/action taken prior to the ‘request’ for system access, but rather prior to
the ‘attempt’ for the system access itself.” Ans. 29. Thus, the Examiner
finds, “broadly interpreted, a request for system access could have already
been sent and as long as the attempt to actually access the system utilizing
actual resources by the system does not take place.” Id. Consequently, the
limitations of claim 1 are satisfied, and Diachina’s principle of operation is
not changed. Id. Therefore, for substantially the same reasons given above,
we are not persuaded the Examiner’s combination of the teachings of
Diachina, Tran, and Palanisamy improperly changes a principle of
Diachina’s operation. See Ans. 28–29.
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Consequently, we are not persuaded of Examiner error by this second
reason.
On this record, we are not persuaded the Examiner errs in rejecting
independent claim 1 as obvious over the combined teachings of Diachina,
Tran, and Palanisamy; and we sustain that rejection. Further, Appellant does
not challenge the obviousness rejection of independent claims 10, 19, and 30
or of dependent claims 2, 3, 7, 9, 11, 12, 16, 18, 20, 24–27, 29, 31, 35–38,
and 40, separately. See Appeal Br. 13. Thus, we also sustain the rejection
of those claims.
C. Obviousness over Diachina, Tran, Palanisamy, and Gong
As noted above, the Examiner rejects claims 8, 17, 28, and 39 under
35 U.S.C. § 103 as obvious over the combined teachings of Diachina, Tran,
Palanisamy, and Gong. Non-Final Act. 23. Appellant does not challenge
the obviousness rejection of those claims separately from their base claims.
Appeal Br. 13; see supra Section B; note 7. Therefore, we also sustain the
obviousness rejection of those claims.
DECISION
1. The Examiner does not err in rejecting:
a. claims 4–6, 13–15, 21–23, and 32–34 under 35 U.S.C. § 101 as
unpatentable for statutory double patenting in view of Liberg;
b. claims 1, 2, 7–11, 16–19, 24–30, and 35–40 under the
judicially-created doctrine of obviousness-type double
patenting in view of Liberg;
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c. claims 1–3, 7, 9–12, 16, 18–20, 24–27, 29–31, 35–38, and 40
under 35 U.S.C. § 103 as obvious over the combined teachings
of Diachina, Tran, and Palanisamy; and
d. claims 8, 17, 28, and 39 under 35 U.S.C. § 103 as obvious over
the combined teachings of Diachina, Tran, Palanisamy, and
Gong.
2. Thus, on this record, claims 1–40 are not patentable.
CONCLUSION
We affirm the Examiner’s rejections of claims 1–40.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
4–6, 13–15,
21–23, 32–34
101 Statutory Double
Patenting, Liberg
4–6, 13–15,
21–23, 32–34

1, 2, 7–11, 16–
19, 24–30, 35–
40
Nonstatutory Double
Patenting, Liberg
1, 2, 7–11,
16–19, 24–
30, 35–40

1–3, 7, 9–12,
16, 18–20, 24–
27, 29–31, 35–
38, 40
103 Diachina, Tran,
Palanisamy
1–3, 7, 9–12,
16, 18–20,
24–27, 29–
31, 35–38, 40

8, 17, 28, 39 103 Diachina, Tran,
Palanisamy, Gong
8, 17, 28, 39
Overall
Outcome
1–40
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED