Ex Parte Masini et al

Patent Trial and Appeal BoardAug 17, 2017

14202281 (P.T.A.B. Aug. 17, 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. 14/202,281 03/10/2014 Gino Luca Masini 4015-8598 / P32140-US2 6453 24112 7590 08/17/2017 COATS & BENNETT, PLLC 1400 Crescent Green, Suite 300 Cary, NC 27518 EXAMINER LIU, JUNG-JEN ART UNIT PAPER NUMBER 2473 MAIL DATE DELIVERY MODE 08/17/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GINO LUCA MASINI, FREDRIK GUNNARSSON, GUNNAR MILDH, and ELENA MYHRE ____________________ Appeal 2017-004986 Application 14/202,2811 Technology Center 2400 ____________________ Before ST. JOHN COURTENAY III, LARRY J. HUME, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–3, 5, 6, and 9.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is Telefonaktiebolaget L M Ericsson. App. Br. 1. 2 Claims 4, 7, and 8 are not rejected, but objected to. Final Act. 3. Appeal 2017-004986 Application 14/202,281 2 INVENTION Appellants’ application relates to a relay node, a donor radio base station, and methods therein. Spec. 2. Claim 1 is illustrative of the appealed subject matter and reads as follows: 1. A method in a donor radio base station for informing a relay node about a type of a radio network connection between the donor radio base station and another radio base station, wherein the relay node and the donor radio base station are comprised in a radio communications network, and wherein the donor radio base station serves the relay node, the method comprising: receiving a protocol message of a first type of a radio network application protocol, from the relay node or from the another radio base station; and transmitting a message to the relay node, wherein the message indicates the first type or a second type of a radio network application protocol, and wherein each type of a radio network application protocol is related to a type of the radio network connection and thus the message informs the relay node of the type of the radio network connection. REJECTION Claims 1–3, 5, 6, and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Liu et al. (US 2010/0322146 A1, pub. Dec. 23, 2010) (“Liu”) and Cai et al. (US 2011/0080890 A1, pub. April 7, 2011) (“Cai”). ANALYSIS We have reviewed the Examiner's rejections in light of Appellants’ contentions the Examiner erred. We disagree with Appellants’ contentions. Except as noted below, we adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and Appeal 2017-004986 Application 14/202,281 3 (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants’ Appeal Brief. We concur with the findings and legal conclusions reached by the Examiner. We highlight the following additional points. Appellants contend the Examiner erred in rejecting claim 1 because the combination of Liu and Cai does not teach or suggest the limitation “wherein each type of a radio network application protocol is related to a type of the radio network connection.” App. Br. 5. Appellants argue the Examiner did not present a rejection based on the actual claim language. Id. at 6. Specifically, Appellants argue that, in a table in the Final Action, the Examiner referred to “a radio network connection” rather than “the radio network connection,” as recited in claim 1. Id. at 5–6 (citing Final Act. 4–5). Based on the Examiner’s table entry, Appellants argue “the Examiner appears to interpret the term “radio network connection” to encompass any radio network connection, while claim 1 requires that each type of a radio network application protocol is related to a type of radio network connection between the donor radio base station and another radio base station. Id. at 5–6. We are not persuaded the Examiner interpreted the claims as Appellants describe. In the Answer, the Examiner reiterated the findings on which the disputed limitation was based (Ans. 24–31) and explained that the table in the Final Action was used to respond to Appellants’ arguments, not to set forth rejections. Ans. 32 (citing Final Act. 4–5). The Examiner further explained that the limitation in the table was copied from Appellants’ arguments. Id. Even if we agreed that the Examiner’s findings are based on the claim interpretation described by Appellants (App. Br. 6), Appellants Appeal 2017-004986 Application 14/202,281 4 have not persuasively shown that the Examiner’s interpretation of the disputed limitation is overly broad, unreasonable, or inconsistent with the Specification.3 Appellants next argue that neither Liu nor Cai, alone or in combination, teaches or suggests transmitting a message to a relay node, where the transmitted message indicates to the relay node a first type of radio network application and a second type of radio network application, both of which are related to a type of radio network connection, and thus informs the relay node of the type of the radio network connection between a donor radio base station and another radio base station. App. Br. 7. Appellants argue that “[b]ecause neither reference teaches or suggests the claimed transmission, the combination necessarily cannot teach or suggest the claimed transmission.” Id. Appellants’ arguments are not persuasive because Appellants attack the references individually (App. Br. 7–10), even though the Examiner relied on the combination of Liu and Cai as teaching or suggesting the disputed features. See Final Act. 9–12; see also Ans. 19–44. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, the test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, as Appellants assert, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the 3 Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). Appeal 2017-004986 Application 14/202,281 5 combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, Appellants have not argued persuasively that the disputed limitation would not have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. Appellants further argue that Liu does not teach or suggest three separate stations, which claim 1 requires. App. Br. 8. Appellants specifically argue Liu teaches only two stations—the relay node and the base station—and “in no way involves three stations.” Id. We are not persuaded by Appellants’ arguments. The Examiner found Liu’s relay station 23, base station 25, and other base stations communicate with one another. Ans. 22 (citing Liu ¶¶ 50, 51, Fig. 2F). The Examiner further found Cai teaches a connection between the donor base station and another radio base station. Ans. 23 (citing Cai, Fig. 4). We find the Examiner has articulated (Final Act. 9–12; see also Ans. 21–23) how the claimed features are taught or suggested by the references’ teachings with some rational underpinning to combine Liu’s teachings with those of Cai. Final Act. 12; see KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Appellants have not presented evidence sufficient to show that combining Liu with Cai would have been “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418–19). Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of representative independent claim 1, as well as the 35 U.S.C. § 103(a) rejection of independent claim 9, which Appellants argue is patentable for similar reasons. App. Br. 10. We also sustain the Examiner's rejections of Appeal 2017-004986 Application 14/202,281 6 dependent claims 3, 5, and 6, for which Appellants makes no separate, substantive arguments for patentability. App. Br. 11. See 37 C.F.R. §41.37(c)(1)(iv). Claim 2 depends from claim 1 and further recites “wherein the received protocol message comprises a handover request of a user equipment to a cell of the another radio base station or to a cell of the relay station, and wherein the transmitted message comprises a handover confirmation or a forwarded handover request.” App. Br. 14. Appellants contend the Examiner erred because the combination of Liu and Cai does not teach or suggest the limitation recited in claim 2. Id. at 11. In particular, Appellants argue that Cai’s handover message does not include a “handover confirmation” indicating a particular type of radio network application protocol. Id. Appellants’ arguments do not persuade us of Examiner error. We agree with the Examiner that Appellants argue limitations not recited in the claim, as claim 2 is silent as to any restrictions on the content of the handover confirmation or request. See Ans. 46. For these reasons, we are not persuaded the Examiner erred in finding the combination of Liu and Cai teaches or suggests the limitations of claim 2. Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of dependent claim 2. Finally, Appellants argue the Examiner “has failed to develop a clear issue as required by MPEP § 706.07(f) and 37 C.F.R. § 1.104(b).” App. Br. 11. Challenging the finality of an Office Action, however, is a petitionable matter. MPEP § 706.07(c) (Nov. 2015) (“[a]ny question as to prematureness of a final rejection . . . may therefore not be advanced as a Appeal 2017-004986 Application 14/202,281 7 ground for appeal, or made the basis of complaint before the Board of Patent Appeals and Interferences.”); see also Ex Parte Frye, 94 USPQ2d 1072, 1077–78 (BPAI 2010) (precedential). We therefore do not reach this argument. DECISION We affirm the decision of the Examiner rejecting claims 1–3, 5, 6, and 9. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED