Ex Parte Chang et al

Patent Trial and Appeal Board

Jan 13, 2017

13466710 (P.T.A.B. Jan. 13, 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.
13/466,710 05/08/2012 Henry Chang TUTL 00206 8724
32968 7590 01/18/2017
KYOCERA INTERNATIONAL INC.
INTELLECTUAL PROPERTY DEPARTMENT
8611 Balboa Ave
SAN DIEGO, CA 92123
EXAMINER
CHAKRABORTY, RAJARSHI
ART UNIT PAPER NUMBER
2648
NOTIFICATION DATE DELIVERY MODE
01/18/2017 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):
KII-USPatents @ kyocera.com
Kathleen .Connell@kyocera.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENRY CHANG, DOUG DUNN, AMIT KALHAN,
and DAVID COMSTOCK
Appeal 2015-0079831
Application 13/466,710
Technology Center 2600
Before ALLEN R. MacDONALD, IRVIN E. BRANCH, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—17, 19, and 20, which are all of the pending
claims.2 We have jurisdiction over these claims under 35 U.S.C. § 6(b).
We reverse, and enter new grounds of rejection under 37 C.F.R.
§ 41.50(b).
1 Appellants identify Kyocera Corporation as the real party in interest.
(App. Br. 3.)
2 Claim 18 has been canceled. (Final Act. 2.)
Appeal 2015-007983
Application 13/466,710
Introduction
According to Appellants, “[t]his invention generally relates to
wireless communications and more particularly to a wireless communication
system where a common group cell identifier is transmitted by adjacent base
stations.” (Spec. 11.)
Claim 1, reproduced below with the disputed limitation italicized, is
exemplary of the claimed subject matter:
1. A cellular communication system comprising:
a first base station transmitting, within a first service area,
a first single cell identifier and a group cell identifier; and
a second base station transmitting, within a second service
area that at least partially overlaps the first service area, a
second single cell identifier and the group cell identifier.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
REJECTIONS
Claims 1, 9, 4, 14, and 16 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Chen. (Final Act. 3—8.)
Exemplary Claim
REFERENCES
Chen et al.
Henttonen et al.
Nakasato
Ji et al.
US 2008/0095163 Al Apr. 24, 2008
US 2010/0304748 Al Dec. 2, 2010
US 2011/0051687 Al Mar. 3, 2011
US 2011/0194482 Al Aug. 11,2011
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Appeal 2015-007983
Application 13/466,710
Claims 2—5 and 10—12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chen and Nakasato. (Final Act. 9-19.)
Claims 7, 8, and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chen and Ji. (Final Act. 20-23.)
Claims 17 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chen and Henttonen. (Final Act. 23—28.)
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chen, Henttonen, and Ji. (Final Act. 28—30.)
ISSUE3
Based on Appellants’ arguments, the dispositive issue on appeal is
whether the Examiner erred in finding Chen discloses all of the limitations
of independent claim 1, including “a second base station transmitting, within
a second service area that at least partially overlaps the first service area, a
second single cell identifier and the group cell identifier.”
ANALYSIS
We are persuaded by Appellants that the Examiner erred in finding
Chen discloses “a second base station transmitting ... a second single cell
identifier and the group cell identifier,” as recited in independent claim 1
(emphasis added). (See Final Act. 4; Ans. 2—3.) As an initial matter, we
note the Examiner contends “the invention described in the instant
application’s specification may overcome the prior art reference,” but asserts
the invention as claimed does not. (Ans. 2 (emphasis added).) This
3 Appellants’ contentions present additional issues. Because the identified
issue is dispositive of the appeal, we do not reach the additional issues.
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Appeal 2015-007983
Application 13/466,710
contention is based on an overly broad reading of claim 1 as requiring “each
base station communicates two identifiers within the base station’s coverage
area.” (Ans. 2 (emphasis added).) As the Appellants contend, and we agree,
claim 1 does not require merely that two base stations each transmit two
identifiers, but requires both the first and the second base stations transmit,
in addition to their own “single cell identifiers],” the same “group cell
identifier.”4 (App. Br. 16 (Claims App’x).)
The Examiner’s incorrect reading of the claims appears to have led to
a gap in the Examiner’s findings. Although we agree with the Examiner that
Chen discloses a base station (which the Examiner has mapped to Chen’s
roadside unit (RSU)) (see Ans. 3), the Examiner fails to find Chen discloses
two base stations that each transmit the same group cell identifier. The
Examiner maps the claimed “group cell identifier” to Chen’s “Local Peer
Group (LPG) identifier,” and maps the claimed “single cell identifier” to
Chen’s “Group Header ID.” (Ans. 3.) Even if we accept this mapping, we
are persuaded of error on this record because the Examiner does not find
Chen discloses two base stations (under the Examiner’s mapping, two
RSU’s) wherein each base station transmits its own “single cell identifier”
(“Group Header ID”) while also transmitting the same “group cell identifier”
(“Local Peer Group (LPG) identifier”), as required by claim 1. If that were
the case, each RSU would be a Group Header, while also being a part of the
same Local Peer Group. Chen discloses, however, that each Local Peer
Group has only a single Group Header. (See Chen 1148 (“Typically, there
4 See infra for discussion regarding ambiguity of claims 1—8, which are
“apparatus” (system) claims, regarding whether such claims require actual
performance of the recited “transmitting” function, or merely the capability
of the recited system to perform such function.
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Appeal 2015-007983
Application 13/466,710
is only one GH 1300 within an LPG 115.”).) Chen also discloses the basis
behind having a single Group Header is that the Group Header “is a moving
device or node within the LPG 115 that is designated to maintain and
control the LPG 115 without any ordering of the nodes or any
infrastructure.” {Id. (emphasis added).)
Consequently, we are constrained by the record before us to find that
the Examiner errs in finding that Chen discloses “a second base station
transmitting ... a second single cell identifier and the group cell identifier,”
as recited in independent claim 1 (emphasis added), and commensurately
recited in independent claims 9 and 14. Accordingly, we reverse the
Examiner’s anticipation rejection of independent claims 1, 9, and 14, as well
as the Examiner’s rejection of the claims dependent thereon.
The Examiner rejects independent claim 17 under 35 U.S.C. § 103(a)
over the combination of Chen and Henttonen. (Final Act. 23—28.) Claim
17, similarly to claim 1, requires a group cell ID received from a first base
station be “the same” as a group cell ID received from a second base station.
(App. Br. 20 (Claims App’x).) As is also the case with claim 1, in rejecting
claim 17 the Examiner fails to find Chen discloses two base stations each
having the same group cell ID, and does not find the additional reference
(Henttonen) makes up for that deficiency. (See Final Act. 23—28.) On this
record, therefore, we are also constrained to find the Examiner errs in
rejecting claim 17 as well as claims 19 and 20, which are dependent thereon.
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Application 13/466,710
NEW GROUND OF REJECTION
Under 37 C.F.R. § 41.50(b), we enter the following new ground of
rejection.
Claims 1—8 are rejected
under 35 U.S.C. § 112(b) as indefinite
Independent apparatus claim 1 recites active method steps (e.g., “a
first base station transmitting . . .”) in connection with recited structural
elements (“A cellular communication system comprising: . . .”). (App. Br.
16—17 (Claims App’x) (emphases added).) As such, this claim is effectively
a hybrid apparatus/method claim, which the Federal Circuit has held is
indefinite under § 112, second paragraph. See Rembrandt Data Techs., LP
v. AOL, LLC, 641 F.3d 1331, 1339 (Fed. Cir. 2011) (holding apparatus claim
reciting active transmitting step indefinite). This is a critical defect because
it is unclear whether claim 1 covers a system that is merely capable of
performing the recited function (e.g., “[/or] transmitting” certain information
at some future time), or if that function actually must be performed (e.g.,
“transmitting” certain information actively at the current time).
Accordingly, we reject independent claim 1, and its dependent claims
2—8, under 35 U.S.C. § 112(b) as indefinite.
DECISION
For the above reasons, the Examiner’s decision to reject claims 1—17,
19, and 20 is reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection of claims 1—8 under 35 U.S.C. § 112, second paragraph,
as indefinite.
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Application 13/466,710
NEW REJECTIONS UNDER 37 C.F.R. § 41.50(b)
This Decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b), which provides that “[a] new ground of rejection . . . shall
not be considered final for judicial review.”
Section 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 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 proceeding 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. . . .
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).
REVERSED
37 C.F.R, $ 41.50(b)
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