Ex Parte Beale et al

Patent Trial and Appeal BoardMar 31, 2017

14042136 (P.T.A.B. Mar. 31, 2017)

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. 14/042,136 09/30/2013 Martin Warwick BEALE 421868US8XCONT 8687 TRACK I 22850 7590 04/04/2017 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER JAROENCHONWANIT, BUNJOB ART UNIT PAPER NUMBER 2466 NOTIFICATION DATE DELIVERY MODE 04/04/2017 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): patentdocket @ oblon. com oblonpat @ oblon. com tfarrell@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARTIN WARWICK BEALE and ALAN E. JONES Appeal 2015-004660 Application 14/042,136 Technology Center 2400 Before: CAROLYN D. THOMAS, ELENI MANTIS MERCADER, and BETH Z. SHAW, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-004660 Application 14/042,136 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s Final Rejection of claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held March 16, 2017. We affirm. THE INVENTION The claimed invention is directed to a base station having functionality for transmitting a base station duplex capability message to user equipment using a transmission format which is common to a plurality of duplex modes. Abstract. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An electronic device comprising: circuitry configured to receive, from a base station, duplex capability information including information identifying duplex modes supported by the base station, the duplex capability information being transmitted according to a signal structure common to a plurality of duplex modes; and determine at least one characteristic for accessing the base station based on the duplex capability information. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Korpela Marjelund Beale US 6,167,283 US 2002/0071480 A1 US 8,493,926 B2 Dec. 26, 2000 June 13, 2002 July 23,2013 2 Appeal 2015-004660 Application 14/042,136 REJECTIONS The Examiner made the following rejections: Claims 1—18 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Marjelund in view of Korpela. Claims 1—18 stand rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1—30 of Beale. ISSUE The pivotal issue is whether the Examiner erred in finding that the combination of Marjelund and Korpela teaches or suggests the limitation of: “receive, from a base station, duplex capability information including information identifying duplex modes supported by the base station” as recited in claim 1 and similarly required by claims 6, 8, and 13. ANALYSIS We adopt the Examiner’s findings in the Answer and Final Rejection. We add the following for emphasis. We note that if Appellants failed to “present arguments on a particular issue—or, more broadly, on a particular rejection—the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.” See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)); Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (The Board may treat arguments Appellant failed to make for a given ground of rejection as waived). 3 Appeal 2015-004660 Application 14/042,136 Claims 1—18 stand rejected on the ground of nonstatutory double patenting Appellants do not argue the Examiner’s Double Patenting rejection. Accordingly, we summarily affirm the Examiner’s rejection. Claims 1—18 rejected under 35 U.S.C§ 103(a) Appellants argue that the combination of Marjelund and Korpela do not teach or suggest the limitation of “receive, from a base station, duplex capability information including information identifying duplex modes supported by the base station” as recited in claim 1 and similarly required by claims 6, 8, and 13 (App. Br. 4—5). In particular, Appellants assert that Marjelund teaches or suggests the use of Frequency Division Duplex (FDD) or Time Division Duplex (TDD) but does not specify transmitting the UE capability information using a signal structure that is common to both the TDD and FDD modes (App. Br. 5). Furthermore, according to Appellants Marjelund teaches transmission of capability from the User Equipment (UE) and Korpela fails to teach or suggest a base station that transmits duplex capability information identifying duplex modes supported by the base station (App. Br. 6). Appellants further assert that the Examiner did not articulate reasoning to combine the references (App. Br. 7). We are not persuaded by Appellants’ arguments. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Instead, the relevant issue is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Id. “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). One cannot show nonobviousness by 4 Appeal 2015-004660 Application 14/042,136 attacking references individually where the rejections are based on combinations of references. Keller at 426 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner finds, and we agree, that Marjelund transmits duplex capability information on the same bandwidth, one of the suggested signal structure parameters (paras. 34-40 and claim 5; Ans. 6). In particular, we agree that Marjelund teaches a signal including duplex capability information identifying duplex modes, because Marjelund explicitly teaches a signal regarding mode capability, wherein the mode can be “FDD only, TDD only, FDD/TDD>’> (para. 36,11. 20-21). Thus, because the term “only” is used to describe single modes, we find the FDD/TDD mode is reasonably construed as a combination of both FDD and TDD (i.e., the duplex capability information (i.e., FDD and TDD) being transmitted according to a signal structure common to a plurality of duplex modes). Accordingly, we agree with the Examiner that Marjelund teaches a “duplex capability information being transmitted according to a signal structure common to a plurality of duplex modes” as recited in claim 1. The Examiner does not rely on Marjelund for teaching the UE transmitting the signal, but rather relies on Marjelund for the teaching of the signal itself. The Examiner then relies on Korpela for teaching that “[b]ase stations transmit at regular intervals control messages which are directed to all terminals . . . which include information about the base station and its operation” ((emphasis added); see Korpela, col. 3,1. 66—col. 4,1. 4; col. 4,11. 50-65; and Ans. 7). Thus, we agree with the Examiner that the modification would yield the predictable result of Korpela’s base station transmitting information about its operation, and particular, the mode of operation being FDD/TDD mode, as taught by Marjelund, so that terminals can select the 5 Appeal 2015-004660 Application 14/042,136 appropriate base station (Ans. 9). Where the claimed subject matter is no more than “the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement,” and, the combination does no more than yield predictable results, the claim is unpatentable under 35 U.S.C. § 103(a). KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). Accordingly, we affirm the Examiner’s rejection of claim 1 and for the same reasons the Examiner’s rejection of claim 2—18 not argued separately. CONCLUSION The Examiner did not err in finding that the combination of Marjelund and Korpela teaches or suggests the limitation of: “receive, from a base station, duplex capability information including information identifying duplex modes supported by the base station,” as recited in claim 1 and similarly required by claims 6, 8, and 13. DECISION For the above reasons, the Examiner’s rejection of claims 1—18 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6