Ex Parte Callender et al

Patent Trial and Appeal Board

Apr 27, 2018

12431619 (P.T.A.B. Apr. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/431,619 04/28/2009
11051 7590 05/01/2018
Squire Patton Boggs (US) LLP
Nokia Technologies Oy
8000 Towers Crescent Drive, 14th Floor
Vienna, VA 22182
FIRST NAMED INVENTOR
Christopher Callender
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.
059864.01941 5497
EXAMINER
SHEDRICK, CHARLES TERRELL
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
05/01/2018 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):
sonia.whitney@squirepb.com
ipgeneraltyc@squirepb.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 CHRISTOPHER CALLENDER, HARRI AATOS JOKINEN,
and LEONARDO PROVVEDI
Appeal2018-000049
Application 12/431,619
Technology Center 2600
Before ALLEN R. MacDONALD, NABEEL U. KHAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-000049
Application 12/431,619
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 5-8, 10, 12-15, 17, and 19-21. We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM-IN-PART.
Representative Claims
Representative claims 1 and 5 under appeal read as follows (emphasis,
formatting, and bracketed material added):
1. A method for reselection of a cell in a wireless
network, the method comprising:
a) detecting that a level of a current serving cell is below a
threshold defined for the current serving cell;
b) determining the availability of a target cell at a lower or
equal priority layer than the current serving cell;
c) determining, for at least one available target cell at a lower
or equal priority layer than the current serving cell,
whether the available target cell has a level above a
threshold defined for the available target cell;
d) selecting the available target cell when the determination
at c) is affirmative;
and, when the determination of c) is negative, then
e) determining the availability of a target cell at any
priority layer;
t) determining, for at least one available target cell at any
priority layer, whether the available target cell has a
level higher by a hysteresis than the level of the
serving cell; and
g) selecting the available target cell when the
determination at f) is affirmative.
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5. The method of claim 1, wherein the following are performed
before a):
[x)] determining the availability of a target cell at a higher
priority layer than the current serving cell;
[y)] determining, for at least one available target cell at a
higher priority layer than the current serving cell,
whether the available target cell has a level above a
threshold defined for the available target cell; and
[z)] selecting the available target cell if the determination the
available target cell has a level above said threshold for
the available target cell.
Rejection
The Examiner rejected claims 1, 3, 5-8, 10, 12-15, 1 7, and 19-21
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Somasundaram et al. (US 2008/0220784 Al; Sept. 11, 2008) and Yi et al.
(US 2010/0216469 Al; Aug. 26, 2010). 1
1 Although Appellants repeat the claim 1 arguments for claim 8, and repeat
the claim 5 arguments for claim 12, the constructions of these pairs of
identically worded claims differ greatly. Therefore, Appellants have
effectively presented separate arguments for claims 1, 5, 8, and 12.
Although Appellants separately discuss claims 15 and 19, the
arguments for these claims repeat the arguments for claims 8 and 12,
respectively. We treat claims 15 and 19 with claims 8 and 12.
Appellants do not argue separate patentability for claims 3, 6, 7, 10,
13, 14, 17, 20, and 21. For example, as to claim 3, merely reciting the
language of a particular claim and asserting the cited prior art reference does
not disclose or suggest the specific limitations of claim 3, without more, fails
to constitute an argument on the merits. See 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv); In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Except for our ultimate decision, the§ 103 rejection of claims 3, 6, 7,
10, 13-15, 17, and 19-21 is not discussed further herein.
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Application 12/431,619
Issues on Appeal
Did the Examiner err in rejecting claims 1 and 5 as being obvious?
Did the Examiner err in rejecting claims 8 and 12 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
A. Introduction
We reach significantly different results when construing claim 1 and
claim 8 (as discussed infra). However, as noted at the end of our claim 1
analysis, we conclude, with minimal amendments, Appellants can bring
claim 1 into alignment with claim 8. We also note here that (as discussed
infra) we find persuasive at least one of Appellants' claim 8 arguments.
B. Claim 1
1.
As an initial matter of claim construction, we conclude each of steps
a) through c) of independent method claim 1 are positively recited as being
unconditionally performed within the scope of the claim. However, in each
of "determining" steps b) and c ), method claim 1 recites alternative "or"
language ("at a lower or equal priority layer") (emphasis added). When a
claim covers several alternatives (e.g., using "or" language), the claim may
be unpatentable if any of the alternatives within the scope of the claim are
taught by the prior art. See Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir.
2001).
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As to selecting step d) of method claim 1, to the extent the two recited
"when the determination at c) is" conditions are conditionally performed in a
mutually exclusive manner (or never performed) as a result of the outcome
of the claimed "determining" step c ), we find the Boards' guidance of Ex
parte Schulhauser, is controlling. Ex parte Schulhauser et al., No. 2013-
007847, 2016 WL 6277792, at *4 (PTAB April 28, 2016) (precedential)
(holding "[ t ]he Examiner did not need to present evidence of the
obviousness of the remaining method steps of claim 1 that are not required
to be performed under a broadest reasonable interpretation of the claim ...
. ").
As to claim 1, Appellants assert "the combination of Somasundaram
and Yi does not disclose or suggest, at least, 'when the determination of c) is
negative, then [perform steps e) through±)]."' App. Br. 10. Appellants
argue:
In other words, an embodiment of the invention provides that
when the other (conventional) criterion fails, a target cell may
be selected based on cross-cell comparison between the target
cell and serving cell.
Appellants respectfully submit that the combination of
Somasundaram and Yi does not disclose or suggest the above-
noted elements of the present claims. Specifically, neither
Somasundaram nor Yi disclose or suggest selecting a target cell
based on a determination, for an available target cell at any
priority layer, whether the available target cell has a level
higher (by a hysteresis) than the level of the current serving
cell.
App. Br. 11. Appellants then present additional arguments (not reproduced
herein) directed to steps e) through t) of claim 1, steps that are performed
when the determination of c) is negative. App. Br. 11-14.
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During examination, claims are given their broadest reasonable
interpretation consistent with the Specification. See In re Am. A cad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). "Construing claims
broadly during prosecution is not unfair to the applicant ... because the
applicant has the opportunity to amend the claims to obtain more precise
claim coverage." Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1364.
Here, claim 1 is directed to a method for reselection of a cell in a
wireless network, where the method includes several steps that only need to
be performed if certain conditions precedent are met. For example, claim 1
recites, in pertinent part (emphasis added):
[perform steps a) and b)];
c) determining, for at least one available target cell at a lower or
equal priority layer than the current serving cell, whether
the available target cell has a level above a threshold
defined for the available target cell;
d) selecting the available target cell when the determination
at c) is affirmative;
and, when the determination of c) is negative, then
[perform steps e) through f)].
Due to the language in step d) and the line following step d), logically, steps
e) through f) do not need to be performed after step d), if the condition
precedent recited for steps e) through f) is not met. More specifically, the
"selecting" of step d) and the performing of steps e) through g) of this claim
are mutually exclusive. If the determination at c) is affirmative, then an
available target cell is selected at step d) and the remaining method steps
need not be performed in the method as recited. Given the language recited
in the remaining steps of claim 1, the remaining steps only need to be
reached if the determination at c) is negative.
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In claim construction, "the name of the game is the claim." In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (quoting Giles Sutherland
Rich, Extent of Protection and Interpretation of Claims-American
Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L. 497, 499 (1990)).
Based on the claim limitations as written, the broadest reasonable
interpretation of claim 1 encompasses an instance in which the method ends
at step d) and the remaining steps need not be reached. In other words,
claim 1 as written covers at least two methods, ( 1) a first instance in which
the prerequisite condition for step d) is met, and (2) a second instance in
which the prerequisite condition for step e) through f) is met (and there are
additional instances when the alternative language of steps b) and c) is
considered). Thus, the broadest reasonable interpretation encompasses a
method where only steps a) through d) are performed. 2 The Examiner
determined that the prior art would have rendered obvious this method (steps
a) through d)) covered by claim 1, and for the reasons that follow, we do not
find persuasive Appellants' arguments contesting this rejection. Further,
Appellants acknowledge steps a) through d) are "conventional." See App.
Br. 11 ("the invention provides that when the other (conventional) criterion
fails" then other steps are performed).
The Examiner in this case presented a prima facie case of obviousness
as to claim 1 to show obviousness of steps a) through d) of claim 1 over
2 The Board previously has construed similar method steps in this same
manner. See, e.g., Ex Parte Fleming, Appeal 2014-002849, 2014 WL
7146104 (PTAB Dec, 12, 2014) (expanded panel decision on rehearing), Ex
parte Urbanet et al., Appeal 2011-002606, 2012 WL 4460637 (BPAI Sept.
19, 2012), and Ex Parte Katz, Appeal 2010-006083, 2011WL514314
(BPAI Jan. 27, 2011).
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Somasundaram and Yi. Final Act. 6-7. The Examiner did not need to
present evidence of the obviousness of the remaining method steps of claim
1 that are not required to be performed under a broadest reasonable
interpretation of the claim (e.g., instances in which the determination at c) is
affirmative such that the condition precedent for the remaining steps of
claim 1 has not been met). Appellants direct their arguments to the failure of
the Examiner to demonstrate adequately that the remaining steps e) through
f) of claim 1 are rendered obvious. Such arguments are not commensurate
with the broadest reasonable interpretation of claim 1 and are, therefore,
unpersuasive.
A proper interpretation of claim language, under the broadest
reasonable interpretation of a claim during prosecution, must construe the
claim language in a way that at least encompasses the broadest interpretation
of the claim language for purposes of infringement. "[I]t is axiomatic that
that which would literally infringe if later anticipates if earlier." Bristol-
Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1378 (Fed. Cir.
2001 ). "That which infringes if later anticipates if earlier." Polaroid Corp.
v. Eastman Kodak Co., 789 F.2d 1556, 1573 (Fed. Cir. 1986) (citing Peters
v. Active Mfg. Co., 129 U.S. 530, 537 (1889)). Based on the manner in
which claim 1 is written, the prior art conventional method would literally
infringe claim 1 by virtue of the prior art's performance of only steps a)
through d) of claim 1. See, e.g., Applera Corp. v. Illumina, Inc., 375 Fed.
App'x 12, 21 (Fed. Cir. 2010) (unpublished) (affirming a district court's
interpretation of a method claim as including a step that need not be
practiced if the condition for practicing the step is not met); Cybersettle, Inc.
v. Nat'! Arbitration Forum, Inc., 243 Fed. App'x 603, 607 (Fed. Cir. 2007)
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(unpublished) ("It is of course true that method steps may be contingent. If
the condition for performing a contingent step is not satisfied, the
performance recited by the step need not be carried out in order for the
claimed method to be performed."). For the reasons provided supra, we
agree with the Examiner's determination that the combination of
Somasundaram and Yi, renders obvious the steps a) through d) of claim 1.
As such, we agree with the Examiner's determination that claim 1 is
unpatentable under 35 U.S.C. § 103(a).
For these reasons, we sustain the Examiner's rejection of claim 1 as
unpatentable over Somasundaram and Yi.
2.
We assume the claim construction result we reach supra was not the
result intended by Appellants. We offer the following guidance as one
possible mechanism to overcome the conditional claim construction result
supra. At the preamble of claim 1, amend "reselection" to read -iterative
reselection-. Also, amend the end of claim 1 to include:
wherein the determination at c) is negative in at least one
iteration.
The resulting claim 1 would positively recite the process branch "when the
determination of c) is negative" as being unconditionally performed at least
once within the scope of the claim's iterative reselection process.
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C. Claim 5
Claim 5 depends from claim 1 and recites, in pertinent part (emphasis
and bracketed material added):
The method of claim 1, wherein the following are performed
before a):
[x)] determining the availability of a target cell at a
higher priority layer than the current serving cell;
[y)] determining, for at least one available target cell ... ,
whether the available target cell has a level above
a threshold defined for the available target cell;
and
[z)] selecting the available target cell if the determination
the available target cell has a level above said
threshold for the available target cell.
Appellants contend that the Examiner erred in rejecting claim 5 under
35 U.S.C. § 103(a) because:
Yi only discloses, when a UE does not find a higher priority cell
than the serving cell, if a signal characteristic value of the
serving cell is less than a specific threshold value, the UE
reselects a cell of a frequency or RAT having a lower priority
than the serving cell. However, Yi does not disclose or suggest
determining whether the available higher priority target cell has
a level above a threshold defined for the available target cell. As
such, the combination of cited prior art does not disclose or
suggest all of the elements of claim 5.
App. Br. 15-16 (emphasis added).
Similar to claim 1, logically, steps y) and z) do not need to be
performed if the "availability of a target cell" condition in step x) is not met.
Appellants acknowledge step x) is disclosed by Yi, and the Examiner did not
need to present evidence of the obviousness of the remaining method steps
of claim 5 that are not required to be performed under a broadest reasonable
interpretation of the claim. Appellants direct their argument to the failure of
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the Examiner to demonstrate adequately that the remaining steps y) and z) of
claim 5 are rendered obvious. As above, such arguments are not
commensurate with the broadest reasonable interpretation of claim 5 and are,
therefore, unpersuasive.
D. Claim 8
Independent claim 8 is directed to a different statutory class of
invention than process claim 1. Although claim 8 recites functions that are
substantially similar to the steps recited in the method of claim 1, as noted
supra, claim 8 is directed to an apparatus to select an available target cell in
one of multiple ways.
The broadest reasonable interpretation of an apparatus claim having
structure that performs a function upon a condition precedent, such as claim
8, still requires structure for performing the function regardless of whether
the condition is actually met. 3 In other words, in this case, the apparatus of
claim 8 is narrower in scope than the method of claim 1. Thus, in order to
show anticipation or obviousness of a claim reciting structure that performs
3 This interpretation of the system claim differs from the method claim
because the structure (i.e., a processor programmed to perform an algorithm
for carrying out the recited function should the recited condition be met) is
present in the apparatus regardless of whether the condition is met and the
function is actually performed. Unlike claim 1, which is written in a manner
that does not require all of the steps to be performed should the condition
precedent not be met, claim 8 is limited to the structure capable of
performing all the recited functions.
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a function tied to a condition precedent, the Examiner must cite prior art that
discloses or renders obvious such structure.
In contesting the rejection of claim 8, Appellants repeat the arguments
made for patentability of claim 1, including the contention that the Examiner
erred in rejecting claim 8 under 35 U.S.C. § 103(a) because:
[N]either Somasundaram nor Yi disclose or suggest selecting a
target cell based on a determination, for an available target cell
at any priority layer, whether the available target cell has a level
higher (by a hysteresis) than the level of the current serving cell.
App. Br. 18-19.
The Examiner points to Somasundaram as disclosing the claimed
hysteresis (page 5, [0105], lines 6-11, page 6, [0107] (Final Act. 7); page 2,
[0036], lines 4-9 (Final Act. 11)). In response to Appellants' argument, the
Examiner again cites to these sections of Somasundaram (Ans. 10-11 ), but
we do not find where the Examiner, otherwise, addresses the argument
presented by Appellants.
We conclude, consistent with Appellants' argument, there is
insufficient articulated reasoning to support the Examiner's findings that
Somasundaram discloses the argued hysteresis of claim 8 and, therefore,
there is insufficient articulated reasoning to support the Examiner's final
conclusion that claim 8 would have been obvious to one of ordinary skill in
the art at the time of Appellants' invention.
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E. Claim 12
Our decision as to claim 8 is determinative as to the rejection of
claim 12. Therefore, we conclude that there is insufficient articulated
reasoning to support the Examiner's final conclusion that claim 12 would
have been obvious to one of ordinary skill in the art at the time of
Appellants' invention.
F. New Ground of Rejection
We exercise our discretion to designate our affirmance of the rejection
of claims 1, 3, and 5-7 as a NEW GROUND OF REJECTION. We do so to
provide Appellants with a full and fair opportunity to respond to the thrust of
the rejections because in some instances, the claim interpretation relied on
by the Board to sustain the rejections of claims 1, 3, and 5-7, differs from
the interpretation relied on by the Examiner. 4
37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
4 This exercise our discretion should not be construed to imply that, in all
instances in which the Board affirms a rejection based on a claim
interpretation that differs from the claim interpretation applied by the
Examiner, the thrust of the rejection has changed so as to warrant
designation of the affirmance as a new ground of rejection. Rather, in this
particular case, in light of the scope of the arguments presented by
Appellants, the Board deemed it, in the interests of fairness to Appellants,
appropriate to designate the affirmance as a new ground of rejection.
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37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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 ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 3, and 5-7 as
being unpatentable under 35 U.S.C. § 103(a).
(2) Appellants have established that the Examiner erred in rejecting
claims 8, 10, 12-15, 17, and 19-21 as being unpatentable under 35 U.S.C.
§ 103(a).
(3) Claims 1, 3, and 5-7 are not patentable.
(4) On this record, claims 8, 10, 12-15, 17, and 19-21 have not been
shown to be unpatentable.
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DECISION
The Examiner's rejection of claims 1, 3, and 5-7 as being
unpatentable under 35 U.S.C. § 103(a) is affirmed.
The Examiner's rejection of claims 8, 10, 12-15, 17, and 19-21 as
being unpatentable under 35 U.S.C. § 103(a) is reversed.
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-IN-PART
37 C.F.R. § 41.50(b)
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