Ex Parte KALHAN

Patent Trials and Appeals BoardJan 24, 2019

12267365 - (D) (P.T.A.B. Jan. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/267,365 11/07/2008 32968 7590 01/28/2019 KYOCERA INTERNATIONAL INC. INTELLECTUAL PROPERTY DEPARTMENT 8611 Balboa Ave SAN DIEGO, CA 92123 FIRST NAMED INVENTOR AmitKALHAN 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. TUTL 00180 5970 EXAMINER SLOMS, NICHOLAS ART UNIT PAPER NUMBER 2476 NOTIFICATION DATE DELIVERY MODE 01/28/2019 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 AMIT KALHAN 1 Appeal 2018-001671 Application 12/267,365 Technology Center 2400 Before ROBERT E. NAPPI, BARBARA A. BENOIT, and SCOTT B. HOWARD, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1-3, 5-10, and 16-39. Claims 4 and 11-15 have been canceled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm-in-part. 1 According to Appellant, Kyocera Corporation is the real party in interest. App. Br. 3. Appeal 2018-001671 Application 12/267,365 INVENTION Appellant's claimed invention is directed to a wireless communication device configured to receive a device beacon transmitted by another wireless communication device at a time specified by a beacon transmission time parameter and in accordance with wireless wide area network timing information. See Abstract; Spec. ,r 30. Claims 1 and 29 are illustrative of the subject matter on appeal and are reproduced below: 1. A wireless communication device comprising: a wireless wide area network (WW AN) transceiver configured to receive WW AN signals from a base station, at least one of the WW AN signals comprising a beacon transmission time parameter; and a device beacon detector configured to apply the beacon transmission time parameter and WW AN system timing information derived from the WW AN signals to receive a device beacon transmitted by another wireless communication device at a time specified by the beacon transmission time parameter and in accordance with the WW AN system timing information, the device beacon detector comprising an uplink WW AN receiver configured to receive the device beacon transmitted by the another wireless communication device. 29. A mobile wireless communication device comprising: a wireless wide area network (WW AN ) receiver configured to receive WW AN downlink signals from a WWAN; a device beacon generator configured to generate a device beacon signal based on a WW AN system timing derived from the WW AN downlink signals to generate the device beacon signal; a transmitter configured to transmit the device beacon signal within a WW AN uplink channel; and a searcher configured to search for femtocell signals transmitted by a femtocell transceiver and responsive to a search signal transmitted in response to detection of the device beacon 2 Appeal 2018-001671 Application 12/267,365 signal at the femtocell transceiver by adjusting a searching scheme of searching for the femtocell signals by changing searching parameters increasing the likelihood for detecting the femtocell signals. App. Br. 20, 24 (Claims App.). REJECTIONS AT ISSUE2 The Examiner has rejected claims 1, 5, 6, 8-10, 16-22, 24, 28, 30-33, 35, and 39 under 35 U.S.C. Â§ I03(a) as unpatentable over the combination of Li (US 7,961,708 B2, June 14, 2011) and Corson (US 2007/0254596 Al, Nov. 1, 2007). Final Act. 4---6. The Examiner has rejected claims 2 and 3 under 35 U.S.C. Â§ I03(a) as unpatentable over the combination of Li, Corson, and Jacobsen (US 7,260,361 B2, Aug. 21, 2007). Final Act. 6-7. The Examiner has rejected claims 7, 23, 25-27, 34, and 36-38 under 35 U.S.C. Â§ I03(a) as unpatentable over the combination of Li, Corson, and Dalsgaard (US 2010/0183031 Al, July 22, 2010). Final Act. 7-8. The Examiner has rejected claim 29 under 35 U.S.C. Â§ I03(a) as unpatentable over the combination of Li, Corson, and Saksena (US 2008/0096553 Al, Apr. 24, 2008). Final Act. 8-9. ANALYSIS We have reviewed Appellant's arguments on pages 9 through 19 of the Appeal Brief, and pages 2 through 6 of the Reply Brief, the Examiner's rejections, and the Examiner's response to Appellant's arguments. 2 Throughout this Decision we refer to the Appeal Brief (App. Br.) filed April 6, 2017, Reply Brief (Reply Br.) filed December 4, 2017, Final Office Action (Final Act.) mailed August 29, 2016, and Examiner's Answer (Ans.) mailed October 5, 2017. 3 Appeal 2018-001671 Application 12/267,365 Appellant's arguments have not persuaded us of error in the Examiner's rejection of claims 1-3, 5-10, 16-28, and 30-39. Appellant's arguments have persuaded us of error in the Examiner's rejection of claim 29. Claims 1-3, 5-10, 16-28, and 30-39 Claim 1 recites a "beacon transmission time parameter" that is applied to "receive a device beacon transmitted by another wireless communication device at a time specified by the beacon transmission time parameter." App. Br. 20 (Claims App.). 3 The Examiner finds the combination of Li and Corson teaches this limitation. Final Act. 4--5; Ans. 2-5. Specifically, the Examiner finds Li's WW AN signals may be in the form of a beacon and contain a common clock reference. Final Act. 4; Ans. 3--4, Li 6:56-61, 7:29-33, 8:4--20. The Examiner further finds Li's common clock reference teaches the claimed timing beacon parameter because Li's wireless devices utilize the common clock reference to determine the start and finish times of peer (e.g., other wireless devices) discovery intervals. Final Act. 4; Ans. 3- 5; Li 7:29-33, 8:4--20. The Examiner additionally finds Corson teaches peer-to-peer communications via beacons. Final Act. 4--5; Ans. 2-5; Corson ,r,r 7-11. Appellant contends the Examiner erred, arguing there is no teaching that Li's broadcast signals sent to the wireless terminals actually contain a beacon transmission time parameter. App. Br. 1 O; Reply Br. 3--4. Appellant 3 With respect to independent claims 10, 20, and 30, Appellant's arguments present the same issues as independent claim 1. App. Br. passim; Reply Br. passim. No separate arguments are presented for the dependent claims 5, 6, 11-15, and 20-23, which fall with independent claims 1, 10, and 20. App. Br. passim; Reply Br. passim; 3 7 C.F .R. Â§ 41.3 7 ( c )(1 )(iv). Except for our ultimate decision, these claims are not discussed further herein. 4 Appeal 2018-001671 Application 12/267,365 further contends that Li's generic broadcast signals cannot be reasonably interpreted to contain a beacon transmission time parameter because Li's wireless terminals must determine the timing for various functional intervals based on Li's broadcast signals. App. Br. 10-11; see Reply Br. 3--4; see also Li 7:52-8:24. We are not persuaded of Examiner error. The determination of timing intervals by Li's wireless terminals does not preclude Li's broadcast signals comprising a beacon transmission time parameter. Rather, as explained by the Examiner, Li's wireless terminals utilize timing information (i.e., the common clock reference) contained in Li's broadcast signals in order to determine timing intervals. See Ans. 3--4. Thus, we agree with the Examiner's finding that Li teaches a beacon transmission time parameter, as recited in claim 1. See Final Act. 4--5; see also Ans. 2--4. Moreover, Li further supports the Examiner's finding, by disclosing that "the wireless terminal may determine the transmission time(s) ... to transmit based upon an identifier and/or a notion of time (e.g., derived from a received Beacon)." Li 10:6-11. Accordingly, a skilled artisan would find Li teaches a beacon transmission time parameter, as recited in claim 1. Appellant additionally argues that the Examiner erred because Li and Corson do not teach that the beacon transmission time parameter is received from a base station. App. Br. 11-12; Reply Br. 3--4. To the contrary, as found by the Examiner, "Li explicitly states that timing information is broadcast from a base station to a wireless device in order to synchronize signals between the wireless device and another wireless device (i.e. peer-to- peer signaling)." Ans. 3; Li 7:29-33, 8:4--12, 10: 13-15, 43--45. Thus, we are not persuaded of Examiner error. 5 Appeal 2018-001671 Application 12/267,365 In addition, Appellant argues, for the first time in the Reply Brief, that based on the principles of claim construction, the recited "system timing information" and the recited "beacon transmission time parameter" are two separate distinct claim features, and the Examiner erred because the Examiner has not presented evidence of prior art that teaches or suggests each of: ( 1) WW AN system timing information derived from the WW AN signals and (2) a beacon transmission time parameter. Reply Br. 2-3. This new argument could have been presented in the Apply Brief, was not prompted by the Examiner's Answer, and is not based on any new arguments or grounds of rejection in the Examiner's Answer. As a result, Appellant has waived such untimely argument because Appellant has not shown good cause for belatedly raising the new argument. See 37 C.F.R. Â§ 41.4I(b)(2). Nevertheless, Appellant's argument is not persuasive. Appellant's argument does not address the Examiner's specific findings. The Examiner finds "Li explicitly states that timing information is broadcast from a base station to a wireless device in order to synchronize signals between the wireless device and another wireless device (i.e. peer-to-peer signaling)." Ans. 3. The Examiner also finds Li's "WW AN signals received from the base station include a time parameter that specifies a time for peer-to-peer discovery signaling." Id. Thus, the Examiner finds that Li's broadcast timing information includes a timing parameter. See id. Accordingly, we are not persuaded by Appellant's argument that the Examiner has not presented evidence teaching both WW AN system timing information derived from the WWAN signals and a beacon transmission time parameter. Reply Br. 2-3. 6 Appeal 2018-001671 Application 12/267,365 Claim 29 The Examiner finds claim 29 is rendered obvious in view of the combination of Li, Corson, Jacobsen, and Saksena. Specifically the Examiner finds that "Jacobsen teaches device search and alteration to search as well as indication of beacon reception (e.g., col. 2, lines 1--49, col. 3, lines 16-27, col. 4, lines 25----67, col. 5, lines 1-7, and figures 1-2.)." Ans. 6-7. The Examiner further explains that Jacobsen is relevant to the rejection of claim 29 "because it demonstrates the responsive functionality; that is, searching (or modifying search) in response to device detection." Ans. 6-7. Appellant argues the Examiner erred because Jacobsen fails to teach performing any action in response to detecting a device beacon signal. App. Br. 18; Reply Br. 4----6. Appellant's argument is persuasive. Jacobsen is directed to detecting an interfering device in a wireless network by comparing modulation adaptations in the uplink and downlink directions of a communication channel between wireless terminals. Jacobsen, Abstract. We agree with the Examiner that Jacobsen teaches device searching and modifying search schemes. Ans. 6-7. The Examiner, however, has not shown that the combination of Li, Corson, Jacobsen, and Saksena teaches that a device search is conducted in response to detection of a device beacon signal. See Final Act. 8-9; see also Ans. 6-7. Accordingly, we do not sustain the rejection of claim 29. DECISION We affirm the Examiner's rejections of claims 1-3, 5-10, 16-28, and 30-39 under 35 U.S.C. Â§ 103(a). 7 Appeal 2018-001671 Application 12/267,365 We reverse the Examiner's rejection of claim 29 under 35 U.S.C. Â§ I03(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(1)(iv)(20I5). AFFIRMED-IN-PART 8