Ex Parte Kitazoe et al

Patent Trial and Appeal BoardAug 27, 2018

14077783 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/077,783 11/12/2013 15142 7590 08/29/2018 Arent Fox, LLP and Qualcomm, Incorporated 1717 K Street, NW Washington, DC 20006-5344 FIRST NAMED INVENTOR Masato Kitazoe 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. 030284.15152/082014C 1 5517 EXAMINER MARCELO, MEL VIN C ART UNIT PAPER NUMBER 2463 NOTIFICATION DATE DELIVERY MODE 08/29/2018 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): ocpat_uspto@qualcomm.com patentdocket@arentfox.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASATO KIT AZOE, NATHAN EDWARD TENNY, and ARNAUD MEYLAN Appeal2017-004250 Application 14/077, 783 1 Technology Center 2400 Before CARLA M. KRIVAK, BRUCE R. WINSOR, and IRVINE. BRANCH, Administrative Patent Judges. BRANCH, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-8, 13-20, 25, and 26, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. Technology The application relates to user equipment in wireless communication systems having autonomy with respect to the use of measurement gaps in frequency handovers. Spec. Abstract. 1 According to Appellants, the real party in interest is QUALCOMM Incorporated. App. Br. 3. Appeal2017-004250 Application 14/077, 783 Related Appeals The Examiner points out that Appeal 2014-001030 (Application No. 12/500,996 ("the '996 application"), now abandoned) decided by this panel on June 20, 2016, addressed issues similar to issues raised here (Final Act. 2-3; Ans. 2). Indeed, the instant case is a continuation of the '996 application (Spec. ,r 1) and was filed after the '996 application was placed on appeal. See Notice of Appeal in the '996 application filed March 12, 2013. Appellants acknowledge the prior appeal but contend our Decision there should have "no impact" on the instant appeal. Reply Br. 2. Even if true, Appellants' contention does not dismiss the relationship of our prior Decision to the instant appeal and does not excuse Appellants' failure to cite it as a related case. See 37 C.F.R. Â§ 4I.37(c)(ii); see also Manual of Patent Examining Procedure (MPEP) Â§ 706.07(h) XI. A. (9th ed. Rev. 08.2017, Jan. 2018) ("[A .. ] Board decision in an application is the 'law of the case/ and is thus controlling in that application and any subsequent, related application."). Appellants are reminded that this requirement is not optional. Illustrative Claim Claim 1 is illustrative and reproduced below with the limitations at issue emphasized: 1. A method for utilizing a measurement gap, comprising: wirelessly communicating, by a user equipment, on a source carrier frequency; receiving, by the user equipment, an assignment for a measurement gap on the source carrier frequency; independently determining, by the user equipment, to remain tuned to the source carrier frequency during a first portion of the measurement gap, wherein the first portion of the measurement gap includes one of a reception of a Random 2 Appeal2017-004250 Application 14/077, 783 Access Response, transm1ss10n of a random access channel (RACH) message 3, or reception of a RACH contention resolution message; and selectively tuning, by the user equipment, between the source carrier frequency and a target carrier frequency during a second portion of the measurement gap in accordance with the independent determination. Rejection2, 3 Claims 1-8, 13-20, 25, and 26 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Petrovic (US 2009/0274086 Al, published Nov. 5, 2009), Grilli (US 2007/0097914 Al, published May 3, 2007), and Lee (US 2009/0259910 Al, published Oct. 15, 2009). Final Act. 18-33. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). 2 Rather than repeat the Examiner's positions and Appellants' arguments in their entirety, we refer to the above mentioned Appeal Brief filed June 22, 2016 ("App. Br."), as well as the following documents for their respective details: the Final Action mailed March 7, 2016 ("Final Act."), the Examiner's Answer mailed November 10, 2016 ("Ans."), and the Reply Brief filed January 6, 2017 ("Reply Br."). 3 The Examiner rejected claims 1-8, 13-20, 25, and 26 under non-statutory obviousness-type double patenting over claims 1-12 and 14--27 of Kitazoe (US 12/500996) and Lee (US 2009/0259910). Final Act. 2-3. This rejection was withdrawn because co-pending application US 12/500996 was abandoned. Ans. 2. 3 Appeal2017-004250 Application 14/077, 783 Claims 1, 6-8, 13, 18-20, 25, and 26 Claim 1 recites, in pertinent part, "independently determining, by the user equipment, to remain tuned to the source carrier frequency during a first portion of the measurement gap" and "selectively tuning, by the user equipment, between the source carrier frequency and a target carrier frequency during a second portion of the measurement gap in accordance with the independent determination" ( collectively "the argued limitations"). The Examiner finds Petrovic teaches the argued limitations, except that "Petrovic does not [explicitly] disclose 'independently determining'," which the Examiner finds is taught by Grilli. Final Act. 19-20 ( citing Petrovic Figs. 1, 8, 9, 28 and ,r,r 204--206, 210, 343-345, 347-349; and Grilli ,r,r 51-53, 55). The Examiner also finds Grilli discloses a mobile device remaining on the source frequency after having "determine[ d] that a frequency channel is sufficient for the mobile device" by "monitoring a characteristic for channel quality within the mobile device" and also "tuning to different frequencies during measurement gaps based on the CQI falling below a specific threshold." Ans. 7-9 ( citing Grilli ,r,r 51-53 and 55). The Examiner finds it would be obvious for a person having ordinary skill in the art to incorporate the teachings of "independently determining" as taught by Grilli in the system of Petrovic in order to allow the UE to determine if another base station, frequency, or technology will provide better service than the existing base station. Final Act. 20 ( citing Grilli ,r 5). Appellants present a number of arguments alleging that the Examiner has misinterpreted the teachings of Petrovic. See App. Br. 8-15. Appellants do not dispute the Examiner's findings with respect to Grilli or the 4 Appeal2017-004250 Application 14/077, 783 Examiner's reasoning for combining the respective teachings of Petrovic and Grilli. Id. Appellants' arguments do not persuade us of error for the reasons stated by the Examiner. Ans. 3-9. We agree with and adopt the Examiner's findings and conclusion that claims 1, 6-8, 13, 18-20, 25, and 26 are not obvious over the collective teachings of the cited references. Final Act. 18- 33. We highlight the following primarily for emphasis. Appellants' arguments against Petrovic alone (App. Br. 8-15) are unpersuasive of error in view of the Examiner's findings with respect to Grilli. "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We are also not persuaded the Examiner has misinterpreted Petrovic and agree with the Examiner that one of ordinary skill in the art at the time of Appellants' invention would have found the argued limitations obvious in view of the combined teachings of the cited references. Accordingly, we sustain the Examiner's rejection of claim 1, and claims 6-8, 13, 18-20, 25, and 26, which Appellants argue are patentable for similar reasons. See App. Br. 15; 37 C.F.R. Â§ 4I.37(c)(l)(iv). The Remaining Claims Appellants argue claims 2, 3, and 5 under separate headings together with claims that respectively recite commensurate subject matter. See App. Br. 15-23; Reply Br. 4--10. We are unpersuaded of error in the Examiner's rejection of these claims (Final Act. 21-33) for the reasons stated by the Examiner (Ans. 9-14), which Appellants do not persuasively rebut (see Reply Br. 4--10). 5 Appeal2017-004250 Application 14/077, 783 DECISION For the reasons above, we affirm the Examiner's decision rejecting claims 1-8, 13-20, 25, and 26. 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§ 41.50(Â±). AFFIRMED 6