Ex Parte Huang et al

Patent Trial and Appeal BoardDec 19, 2016

12829981 (P.T.A.B. Dec. 19, 2016)

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. 12/829,981 07/02/2010 Yinghua HUANG HW 0810218US 9591 74365 7590 12/21/2016 Slater Matsil, LLP 17950 Preston Road, Suite 1000 Dallas, TX 75252 EXAMINER MAGLOIRE, VLADIMIR ART UNIT PAPER NUMBER 2641 NOTIFICATION DATE DELIVERY MODE 12/21/2016 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): uspatent@huawei.com docketing @ slatermatsil. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YINGHUA HUANG, BOYUN XIE, ZUOYAN ZHU, MINGJIANG XIE, XIAOFEI MA, WEN GAO, and XIAOYING XU Appeal 2015-002168 Application 12/829,981 Technology Center 2600 Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and JON M. JURGOVAN, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing of the August 25, 2016, Decision on Appeal (“Decision”), wherein we affirmed the rejection of claims 1,18, 22— 47, and 49, and entered a new ground of rejection for claim 48 under 35 U.S.C. § 102(b) as anticipated by Ueda. We have reconsidered the Decision in light of Appellants’ arguments but, for the reasons given below, we are not persuaded any points were misapprehended or overlooked by the Board in our Decision. Appeal 2015-002168 Application 12/829,981 ANALYSIS First, Appellants contend the Board misapprehended the teachings of Ueda when entering a new ground of rejection for claim 48 under 35 U.S.C. § 102(b), because Ueda does not disclose “transmitting, by the [evolved Node B], the list of priorities to the terminal, ‘where’ each entry in the list of priorities for cell reselection specific to the terminal is a priority level labeled by an integer” (Req. Reh’g 3). Appellants argue that Ueda does not disclose the evolved Node B (“eNB”) or Mobile Management Entity (“MME”) as recited in independent claim 1 (Req. Reh’g 4). This argument however is entitled to no consideration because it was first presented in the Reply Brief (see Reply Br. 4), not the opening brief, and Appellants have not shown good cause why it should be considered, as required by our procedural rule. See 37 C.F.R. § 41.41(b)(2) (2012); accord Ex parte Borden, 93 USPQ2d 1473, 1473—74 (BPAI 2010) (informative opinion) (absent a showing of good cause, the Board is not required to address an argument presented in the reply brief that could have been presented in the principal brief on appeal). Second, Appellants further contend the portions of Ueda cited in the Decision to affirm the rejection of independent claim 1, specifically Ueda’s Figures 5, 10, and 16, do not disclose list of explicit priority levels” being transmitted to a terminal (Req. Reh’g 5—7). We are unpersuaded by Appellants’ contention, because “a priority level labeled by an integer” is recited in dependent claim 48, not independent claim 1, and thus, the rejection of claim 1 over Ueda need not address “a priority lever (emphasis added). 2 Appeal 2015-002168 Application 12/829,981 Third, Appellants argue the Board misapprehended the portions of Ueda cited in the new ground of rejection of claim 48, specifically Ueda 125—26 and Figure 22, because nothing in Ueda suggests the priority levels (i.e., Fig. 22, Frequency Priority 1—5) are reported to the User Equipment (“UE”) terminals (Req. Reh’g 7—10). Since the radio network controller (“RNC”) already filters out low priority cells, Appellants contend the UE has no need for the priority information for the purpose of filtering (id.). We are not persuaded by Appellants’ contentions. In each embodiment, Ueda consistently discloses the “neighbor cell list” (e.g., Ueda Figs. 5, 10, 16, and 22) is reported to the UE terminal (Ueda H 71, 88), and the UE measures the signal for each cell in the list (id.). Although the frequency priority in the embodiments of Figures 5, 10, and 16 is fixed by the network operator (see, e.g., Ueda 1 64), the frequency priority in the embodiment of Figure 22 is dynamically determined by the load on each cell and is assigned a priority integer value of 1—5 (Ueda 1122) (see also Decision 5—6). The neighboring cell list of Figure 22, which is reported to the UE terminal, includes cell IDs, radio load values, and frequency priorities (i.e., priority level integers) for every frequency (Ueda 1125). The UE then selects a neighboring cell with which to perform a handover procedure according to the highest priority and the measured cell signal strength (Ueda 9, 62, 71, 126—27). From this disclosure in Ueda, it is clear the neighboring cell list (i.e., the list of priorities (see Decision 3)) is transmitted to the UE terminal for purposes of reselecting a cell, and each entry in the neighboring cell list (i.e., cell ID) is labeled with a priority level integer 1—5 (Ueda Fig. 22). 3 Appeal 2015-002168 Application 12/829,981 Even assuming arguendo that Ueda’s priority level integer is not transmitted to the UE terminal along with the rest of the information in the neighboring cell list of Figure 22, we find the broadest reasonable interpretation, consistent with Appellants’ disclosure, of “transmitting . . . the list of priorities to the terminal” in claim 1 does not necessarily require all information that was used to determine the list of priorities is included in the list to be transmitted; i.e., a sub-set of information in the list may be transmitted. See In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“[T]he PTO is obligated to give claims their broadest reasonable interpretation during examination.”) As claim 48 does not explicitly require the priority level integers to be transmitted to the terminal, we find Ueda’s disclosure of determining a list of priorities (i.e., neighboring cells) for cell reselection by labeling each entry in the list of priorities with a priority level integer and transmitting that list of prioritized neighboring cell IDs to the UE (Ueda 125—27 and Fig. 22 (see also Decision 5—6)) anticipates claim 48, regardless of whether Ueda’s integer information is also included in the transmission. Accordingly, we are unpersuaded that our Decision misapprehended the disclosure of Ueda when entering a new ground of rejection for claim 48 under 35 U.S.C. § 102(b). DECISION Based on the foregoing, we have granted Appellants’ request to the extent that we have reconsidered our Decision, but we deny Appellants’ request to make any changes therein. 4 Appeal 2015-002168 Application 12/829,981 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). REHEARING DENIED 5