Ex Parte Callender et alDownload PDFPatent Trial and Appeal BoardApr 27, 201812431619 (P.T.A.B. Apr. 27, 2018) Copy Citation 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. 2 Appeal2018-000049 Application 12/431,619 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. 3 Appeal2018-000049 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). 4 Appeal2018-000049 Application 12/431,619 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. 5 Appeal2018-000049 Application 12/431,619 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. 6 Appeal2018-000049 Application 12/431,619 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). 7 Appeal2018-000049 Application 12/431,619 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) 8 Appeal2018-000049 Application 12/431,619 (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. 9 Appeal2018-000049 Application 12/431,619 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 10 Appeal2018-000049 Application 12/431,619 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. 11 Appeal2018-000049 Application 12/431,619 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. 12 Appeal2018-000049 Application 12/431,619 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. 13 Appeal2018-000049 Application 12/431,619 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. 14 Appeal2018-000049 Application 12/431,619 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) 15 Copy with citationCopy as parenthetical citation