Ex Parte Medapalli

Patent Trial and Appeal BoardOct 26, 2017

14672861 (P.T.A.B. Oct. 26, 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. 2875.7100003 5145 EXAMINER LEVITAN, DMITRY ART UNIT PAPER NUMBER 2461 MAIL DATE DELIVERY MODE 14/672,861 03/30/2015 Kameswara Rao MEDAPALLI 26111 7590 10/26/2017 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 10/26/2017 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 KAMESWARA RAO MEDAPALLI Appeal 2017-004169 Application 14/672,861 Technology Center 2400 Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and ADAM J. PYONIN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests rehearing of the Decision on Appeal mailed July 24, 2017 (the “Decision”), in which we affirmed the Examiner’s rejections of claims 1—4, 9-14, 19, and 20. See Request for Rehearing filed September 25, 2017 (the “Req. Reh’g”). We have reconsidered the Decision in light of Appellant’s arguments; however, we are not persuaded of any error therein. Appeal 2017-004169 Application 14/672,861 DISCUSSION Claim 1 recites “enabling the disabled transmission of the second wireless protocol upon conclusion of decoding of available data within the downlink sub-frame.” In our Decision, we agreed with the Examiner that Russell anticipates the limitations claim 1, as “Russell discloses the timing of MAP signal 255 coincides with that of the MAP message; thus, Russell enables the disabled transmission of the second wireless protocol (i.e., Bluetooth) upon conclusion of decoding of the MAP message.” Decision 4; see also Final Act. 5—6; Russell Fig. 2. In the Request for Rehearing, Appellant argues “the Board's Decision misapprehends or overlooks various points [and] contains an undesignated new ground of rejection.” Req. Reh’g 1. We consider Appellant’s arguments seriatim, as they are presented in the Request for Rehearing. See Req. Reh’g. 2—10. 1. Does Our Claim Construction Necessitate a New Ground of Rejection? Appellant argues the Decision “contains an undesignated new ground of rejection” (Req. Reh’g 2) because the “Board’s ‘claim construction’ rationale is new” (Req. Reh’g 3). Appellant argues our finding “that a claim construction of the recited term ‘downlink sub-frame’ is not differentiable from ‘Russell’s MAP message’” is a different rationale than used by the Examiner. Req. Reh’g 3, citing Decision 4 We note claim construction is a matter of law that we review de novo. Cf. Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009). In any event, Appellant’s arguments do not persuade us that our 2 Appeal 2017-004169 Application 14/672,861 Decision has provided a new claim construction. As cited in the Decision, the Examiner finds “Russell discloses ‘the mobile station enables Bluetooth/WiFi transmission . . . based on MAP signal 255’ (Final Act. 3), such that the Bluetooth transceiver is enabled upon the ‘conclusion of decoding of the MAP/data signal’ (Final Act. 5—6).’” Decision 4. That is, the Examiner finds “Russell describes MAP information as [] data within the downlink sub-frame.” Final Act. 6, citing Russell 2:46—3:3. Thus, the Examiner has construed the “downlink sub-frame” claim limitation such that it is reasonably disclosed by Russell’s MAP data/signal. See Final Act. 6 (mapping the claimed conclusion of decoding of available data within the downlink sub-frame to Russell’s conclusion of decoding the MAP data/signal). This is the claim construction affirmed in our Decision. See Decision 3^4. Our decision, then, did not change the thrust of the Examiner’s rejection. See In reLeithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011); see also In re Noznick, 391 F.2d 946, 949 (CCPA 1968) (no new ground of rejection made when “explaining to appellants why their arguments were ineffective to overcome the rejection made by the examiner”). 2. Is Our Claim Construction Erroneous, as Overlooking the Entire Claim? Appellant argues that “[t]he Board’s new claim construction rationale is that the claimed ‘downlink sub-frame’ is not differentiable from ‘Russell’s MAP message” is “clearly erroneous” (Req. Reh’g 4), because as shown by the disclosure, “there are two distinct components within the downlink sub-frame (DF sub-frame): (1) the medium access protocol 3 Appeal 2017-004169 Application 14/672,861 information (MAP information), and (2) the downlink data (DL data).” Req. Reh’g 6, citing Spec. 1 50 and Fig. 4. Appellant contends “the MAP information and the DL data protocol data units are different concepts” (Req. Reh’g 7) and that “[o]ne of ordinary skill in the art would understand that the recited ‘data within the downlink sub-frame’ does not include the MAP information.” Req. Reh’g 6. Appellant’s arguments do not persuade us that the Examiner’s claim construction is in error. A common definition of the term data is “information in numerical form that can be digitally transmitted or processed.” Merriam-Webster online dictionary, https://www.merriam- webster.com/dictionary/data. Such definition is consistent with Appellant’s disclosure, as the disclosure explicitly states “[t]he MAP information may comprise data.” Abstract. Further, in addition to the disclosure’s use of the permissive language “may” to describe the contents of a downlink sub-frame (Decision 4, citing Spec. 1 50), Appellant’s Specification describes a situation in which a downlink sub-frame includes MAP information, but “there is no data that needs to be decoded” in any protocol data units (Spec. 156). See also Fig. 4, RX_Active line 334. One of ordinary skill in the art, consistent with the disclosure taken as a whole, would reasonably understand the data within the downlink sub- frame to be the MAP information, such that the conclusion of decoding of available data within the downlink sub-frame corresponds to the conclusion 4 Appeal 2017-004169 Application 14/672,861 of the decoding of the MAP information.1 See Decision 3^4. Thus, we find the Examiner has reasonably construed the claims. See Final Act. 3, 6. Appellant’s related arguments regarding the claim construction of the recited ‘“conclusion of decoding of available data within the downlink sub- frame,’ [which] uses the word “conclusion,”’ and that “the Board’s position overlooks the ‘data’ portion of the claim language when taking a differentiation position with respect to Russell’s MAP message,” are not persuasive for the reasons articulated supra. Req. Reh’g 8—9. Accordingly, Appellant has failed to persuade us that we have misapprehended or overlooked any points in our Decision. DECISION We have granted Appellant’s request to the extent that we have reconsidered our Decision, but we deny the request with respect to making any changes therein. 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 1 Although Appellant’s Specification provides that certain embodiments of the downlink sub-frame may comprise both MAP information and protocol data units (PDUs), claim 1 does not recite such PDUs. See Spec. 1 50. In the event of further prosecution, Appellant may wish to amend the claims to clarity the composition of the downlink sub-frame. See In re Prater, 415 F.2d 1393, 1404—05 (CCPA 1969). 5