Ex Parte Alanara

Patent Trial and Appeal Board

Oct 24, 2016

13130297 (P.T.A.B. Oct. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/130,297 05/19/2011
10948 7590 10/26/2016
Harrington & Smith, Attorneys At Law, LLC
4 Research Drive, Suite 202
Shelton, CT 06484
FIRST NAMED INVENTOR
Seppo Alanara
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.
859.0224.Ul(US) 6458
EXAMINER
TSEGA YE, SABA
ART UNIT PAPER NUMBER
2467
NOTIFICATION DATE DELIVERY MODE
10/26/2016 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):
USPTO@hspatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEPPO ALANARA 1
Appeal2015-006168
Application 13/130,297
Technology Center 2400
Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
FISHMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 20-38.2 Claims 1-19 have been cancelled. App. Br. 2. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm-in-part and designate our affirmance as containing a NEW
GROUND OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41.50(b).
1 Appellant identifies Nokia Corporation as the real party in interest. App.
Br. 1.
2 In this Decision, we refer to Appellant's Appeal Brief ("App. Br.," filed
October 27, 2014); Appellant's Reply Brief ("Reply Br.," filed June 1,
2015); the Final Office Action ("Final Act.," mailed May 14, 2014); the
Examiner's Answer ("Ans.," mailed May 7, 2015); and the original
Specification ("Spec.," filed May 19, 2011).
Appeal2015-006168
Application 13/130,297
THE INVENTION
Appellant's invention is directed to monitoring a user equipment's
downlink signal quality. Spec., Abstract.
Independent claim 20, reproduced below, is illustrative:
20. A method, comprising:
monitoring downlink signal quality of a user equipment
with a base station at least in part [based] on measurement results
received from the user equipment; and
if the downlink signal quality is less than a threshold value,
sending a revised radio resource allocation to the user equipment
to initiate switching operation of the user equipment from a full
duplex frequency division duplex mode of operation to a half
duplex frequency division duplex mode of operation.
THE REJECTIONS
Claims 20, 21, 23-27, 29-33, and 35-38 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over McCoy (US 2007/0254692
Al; publ. Nov. 1, 2007) and Arviv et al. (US 6,549,759 B2; iss. Apr. 15,
2003) ("Arviv"). Final Act. 2-9.
Claims 22, 28, and 34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over McCoy, Arviv, and Choi et al. (US 2009/0296609
Al; publ. Dec. 3, 2009 (filed June 2, 2008)) ("Choi"). Final Act. 9-10.
ANALYSIS
Only those arguments actually made by Appellant have been
considered in this Decision. Arguments that Appellant did not make in the
Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 13/130,297
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner erred. App. Br. 4--25; Reply Br. 1-5. We are
not persuaded by Appellant's contentions regarding claims 20-23 and 25.
With the exception of the Examiner's discussion of claims 24 and 26-38, we
adopt as our own the findings and reasons set forth by the Examiner in the
action from which this appeal is taken (Final Act. 2-9) and as set forth by
the Examiner in the Answer (Ans. 2---6). However, we highlight and address
specific arguments and findings for emphasis as follows.
Claims 20--23 and 25
Appellant contends the Examiner erred in finding the combination of
McCoy and Arviv teaches or suggests the limitations of independent claim
20. In particular, Appellant argues McCoy does not teach a full to half
duplex switch decision based on downlink signal quality as determined from
measurement results received from user equipment. App. Br. 4--5 (citing
McCoy i-fi-f 18, 29, 53, 64, 91, 103). Appellant further argues Aviv does not
teach a full to half duplex switch decision as determined from a base station.
Id. at 6 (citing Arviv 12:8, Figs. 4 and 5).
Appellant's contentions are not persuasive. Appellant considers the
teachings of McCoy and Arviv in isolation and fails to rebut specifically the
Examiner's ultimate legal conclusion of obviousness that is based on the
combination of McCoy and Arviv. One cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references. In re Merck & Co., Inc., 800 F .2d 1091, 1097
(Fed. Cir. 1986). Specifically, the Examiner relies on McCoy, not Arviv, for
disclosing a full to half duplex switch decision determined from a base
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Application 13/130,297
station. Final Act. 2-3 (citing McCoy iii! 18, 29, 53, 64, 67, 91, 92, 101;
Figures 4---6); see also Ans. 2-3. The Examiner relies on Arviv, not McCoy,
for disclosing determining downlink signal quality based on measurement
results received from user equipment. Final Act. 3 (citing Arviv 11: 15-17,
11:37-57, 12:8-18); see also Ans. 3. Thus, the Examiner finds the
combination of McCoy and Arviv teaches a base station basing a full to half
duplex switch decision on downlink signal quality as determined from a user
equipment's measurement results. We agree with the Examiner's findings
and conclusions and adopt them as our own.
Appellant further asserts a person of ordinary skill in the art would not
ignore Arviv's teaching of changing a modulation technique for both uplink
and downlink signals. App. Br. 9; see also id. at 8 (citing Arviv Abstract,
2:8-27); Reply Br. 4. Appellant argues because Arviv teaches changing a
modulation scheme for both uplink and downlink signals, "there appears to
be only two possible 'obvious' combinations of the teachings of Arviv with
McCoy," and concludes "[n]either of these two suggestions is what
[A]pplicant is claiming." App. Br. 8-9.
Appellant's contentions are not persuasive. It is well settled that mere
attorney arguments and conclusory statements, which are unsupported by
factual evidence, are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (attorney argument is not evidence). Further,
Appellant's arguments are not responsive to the Examiner's rejection
discussed supra. In particular, the Examiner finds, and we agree, Arviv
teaches downlink signal quality as determined from a user equipment's
measurement results, not uplink signal quality.
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Application 13/130,297
Appellant further asserts, for the first time in the Reply Brief~ the
combination of McCoy and Arviv would use both McCoy's uplink signal
and Arviv's downlink signal for determining a mode of operation.
Appellant argues the combination "would be unmanageable and result in
conflicts; something neither reference suggests how to address."
Reply Br. 4. Appellant further argues replacing McCoy's use of uplink
signal quality with a use of downlink signal quality for determining a mode
of operation "would require throwing out most of what McCoy teaches and,
thus, go[ es] against the teaching in McCoy." Id.
These arguments are untimely and waived. 37 C.F.R. § 41.41(b)(2);
see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) ("the 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"). Further, Appellant's arguments are
not responsive to the Examiner's rejection discussed supra. In particular,
the Examiner finds, and we agree, the combination relies on Arviv's
downlink signal quality determined from a user equipment's measurement
results, not McCoy's uplink signal.
Appellant further contends there is no motivation to make the
Examiner's proposed combination. In rejecting claim 1, the Examiner finds
it would have been obvious to modify the system of McCoy to include
downlink signal measurement results received from user equipment as
taught by Arviv "in order to provide a flexible system that adaptively adjusts
the modulation scheme for each individual uplink and downlink in a two-
way communication connection between each base station and subscriber
unit pair." Final Act. 3--4 (citing Arviv 1:66-2:5). Appellant argues one of
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ordinary skill in the art, when presented with McCoy's teachings relating to
full to half duplex switch, would not be motivated to consider the teachings
of Arviv to change a modulation scheme. App. Br. 9-10. The Examiner
explains, because McCoy's base station makes a full to half duplex switch
decision based on received signals from a mobile device, and Arviv' s base
station monitors its own signal quality to determine if uplink modulation
should be changed, then "McCoy would use the teaching of Arviv to allow
the use of reported downlink quality measurements by the user equipment
for changing the operation mode (full/half duplex mode)." Ans. 16-17
(citing McCoy i-f 70; Arviv 7:4---6).
We agree with Appellant, and find insufficient reasoning to justify a
reason one of ordinary skill in the art would add the modulation system of
Arviv to the system of McCoy. Although both disclosures discuss
measuring signal quality between a base station and mobile device, there is
no evidence cited or rationale provided by the Examiner supporting or
explaining why a base station, making a full to half duplex switch decision
based on uplink signal measurement results as taught by McCoy, would use
a modulation scheme based on downlink signal measurement results as
taught by Arviv.
However, we note claim 20 is directed to a method for sending a
revised radio resource allocation to user equipment to switch the user
equipment from a full to half duplex frequency division duplex mode of
operation "if the downlink signal quality is less than a threshold value."
Conditional steps employed in a method claim need not be found in the prior
art if, under the broadest scenario, the method need not invoke the steps. See
Ex parte Katz, No. 2010-006083, 2011 WL 514314, *4 (BP AI 2011) (citing
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Application 13/130,297
Jn re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)).
We determine the conditional limitation recites an optional event that may
not occur and, therefore, processing recited as dependent on the condition
need not be performed nor taught by the prior art. Thus, we agree with the
Examiner that claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable
over McCoy and Arviv and the conditional operations need not be found in
the prior art.
For the above reasons, we sustain the Examiner's rejection of
independent claim 20, and dependent claims 22, 23, and 25, which are not
argued separately with particularity. App. Br. 26.
Claim 21 depends from independent claim 20, and Appellant presents
essentially the same arguments for claim 21. App. Br. 11-13. For the same
reasons as claim 20, we are not persuaded the Examiner erred in rejecting
claim 21 and we sustain its rejection.
Although we sustain the Examiner's rejection of claims 20-23 and 25,
we designate our affirmance of the decision to reject claims 20-23 and 25 as
a new ground of rejection pursuant to our authority under 37 C.F.R.
§ 41.50(b).
Claim 24
Claim 24 depends from claim 21 and further recites a user
equipment's request "is sent at least partially in response to the user
equipment detecting that the base station is scheduling uplink and downlink
resources such that transmission coincides with reception." Appellant
argues McCoy teaches a mobile device including a duplexer that transmits
and receives signals simultaneously, but the duplexer does not detect that a
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base station is scheduling uplink and downlink resources such that
transmission coincides with reception. App. Br. 13-14 (citing McCoy i-fi-136
and 51).
In response to Appellant's arguments, the Examiner finds McCoy
teaches a mobile device will switch from a full to half duplex mode when
the mobile device "neared an edge or other interfering element." Ans. 21
(citing McCoy i129). The Examiner reasons McCoy "clearly shows that a
request being sent at least partially in response to the user equipment
detecting that the base station is scheduling uplink and downlink resources
such that transmission coincides with reception (full duplex)." Id.
We agree with Appellant. The Examiner has not provided sufficient
evidence or technical reasoning explaining how McCoy's mobile device
teaches or suggests "detecting that the base station is scheduling uplink and
downlink resources such that transmission coincides with reception," as
claimed. In particular, although McCoy's mobile device switches from full
to half duplex mode when it nears an edge of a pentagonal area representing
the coverage area of a base station, the Examiner fails to adequately explain
how McCoy's mobile device detects the base station is scheduling uplink
and downlink resources such that transmission coincides with reception.
Thus, on the record before us, we are persuaded the Examiner erred in
the rejection of claim 24 and we do not sustain its rejection.
Claims 26--38
Independent claim 26 includes recitations similar to claim 20 but is
directed to a computer-readable memory medium storing computer
instructions to perform the conditional operation discussed above.
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Independent claim 32 is also similar to claim 20 but is directed to an
apparatus configured to provide the optional function discussed supra.
Although the optional step of the method of claim 20 need not be found in
the prior art, the prior art must teach or suggest a claimed apparatus
configured to perform the optional function, or a claimed computer medium
with instructions to perform the optional function. Thus, for the reasons
discussed supra regarding the optional function of claim 20, we reverse the
rejection of independent claim 26 and 32 and claims 27-31 and 33-38
dependent therefrom, respectively.
DECISION
We reverse the Examiner's decision to reject claims 24 and 26-38.
We affirm the Examiner's decision to reject claims 20-23 and 25 and
designate the affirmance as containing a NEW GROUND OF REJECTION.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
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Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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