Ex Parte Norris et al

Patent Trials and Appeals BoardJun 25, 2014

11808903 - (D) (P.T.A.B. Jun. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte TIM J. NORRIS and GRAHAM A. CHARLES _____________ Appeal 2011-013209 Application 11/808,903 Technology Center 2400 ______________ Before JEFFREY S. SMITH, JOHNNY A. KUMAR, and LARRY J. HUME, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1 and 3-26. Claim 2 has been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2011-013209 Application 11/808,903 2 STATEMENT OF CASE Invention Appellant’s invention involves sending a message from a mobile terminal to a radio access network on a common transport channel (see Spec. 4, ll. 23-25; 10, ll. 6-8; and Figs. 1 and 2). Claim 1 is representative of the invention and reproduced below: 1. A method, comprising: sending a message from a mobile terminal to a radio access network on a common transport channel, wherein the message comprises information of one or more measurement results, each measurement result defining a value of a measured parameter relating to radio signal transmission between the mobile terminal and one or more access entities of the radio access network, and the information which is sent to the radio access network is based on a default reporting configuration stored in the mobile terminal. Rejection at Issue1 The Examiner rejected claims 1, 3-16, and 23 under 35 U.S.C. § 102(b) as being anticipated by ETSI (ETSI Tech. Spec. 125 331, Universal Mobile Telecommunications System (UMTS); Radio Resource Control (RRC) protocol specification, 3GPP TS 25.331 version 3.21.0 Release 1999). Ans. 4-11.2 1 Throughout this opinion we refer to the Examiner’s Answer (“Ans.”) mailed on June 9, 2011. 2 We note the Examiner has withdrawn the rejection of claim 1 as being anticipated by Mikola. Ans. 4. Appeal 2011-013209 Application 11/808,903 3 The Examiner rejected claims 17-22, 24, and 25 under 35 U.S.C. § 103(a) as being unpatentable over ETSI and Charpentier (US 2008/0076359 A1, Mar. 27, 2008). Ans. 11-21. The Examiner rejected claim 26 under 35 U.S.C. § 103(a) as being unpatentable over ETSI and well-established teachings in art. Ans. 21-22. ISSUES3 Did the Examiner err in rejecting claims 1, 3-16, and 23 as being anticipated by ETSI? Did the Examiner err in rejecting claims 17-22, 24, and 25 as obvious over ETSI and Charpentier because the cited references fail to disclose, teach, or suggest the argued limitations? Did the Examiner err in rejecting claim 26 as obvious over ETSI and well-established teachings in the art, i.e., Official Notice? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions that the Examiner has erred. Further, we have reviewed the Examiner’s response to Appellants’ arguments. The Examiner has provided a comprehensive response to each argument presented by the Appellants on pages 5 through 30 of the Answer. We have reviewed this response and concur with the Examiner’s findings and conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from Appeal 2011-013209 Application 11/808,903 4 which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. Ans. 5-30. We have considered Appellants’ Reply Brief but find it unpersuasive to rebut the Examiner’s findings and legal conclusions. Anticipation Rejection of Claims 1, 3-16, and 23 We note the disputed “message comprises information of one or more measurement results” and “a default reporting configuration” limitations recited in representative claim 14 constitute non-functional descriptive material for they merely recite different types of data, because “information of one or more measurement results” and “default reporting configuration” do not functionally limit the claimed invention. Therefore, the disputed information of one or more measurement results and default reporting configuration constitute non-functional descriptive material that does not patentably distinguish over prior art that otherwise renders the claims unpatentable. The Examiner need not give patentable weight to descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. See In re Lowry, 32 F.3d 1579, 1582-83 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (nonfunctional descriptive material cannot render nonobvious an invention that would have 3 Throughout this opinion we refer to the Appeal Brief (“App. Br.”) dated May 6, 2011, and Reply Brief (“Reply Br.”) dated July 22, 2011. 4 Independent claims 17, 20, 23, 24, and 25 recite similar subject matter. Appeal 2011-013209 Application 11/808,903 5 otherwise been obvious); see also Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006). Unpatentability Rejection of Claims 17-22, 24, and 25 Appellants merely argue the combination of prior art cited by the Examiner does not teach or suggest the disputed limitations in claim 17, as argued with respect to claim 1, and that Charpentier does not make up for the purported deficiencies of ETSI. App. Br. 25-26. While using an argument for patentability of a first claim as a cut-and-paste argument for a second claim might outwardly appear to be a separate argument for patentability of the second claim, such a cut-and-paste argument is not in fact an argument for “separate patentability.” Appellants make similar arguments for patentability of independent claims 20, 24 and 25, and claims depending therefrom. App. Br. 27-34. Accordingly, on this record, we do not find Appellants’ arguments for patentability of claims 17-22, 24 and 25 to be persuasive, for the same reasons discussed above with respect to the anticipation rejection of claim 1. Unpatentability Rejection of Claim 26 Appellants merely argue claim 26 is patentable for the same reasons as claim 17, because ETSI does not teach or suggest all the limitations of claim 17, as well as the additional limitations recited therein. App. Br. 34. With respect to the Examiner’s taking of Official Notice in finding the limitation of claim 26 relating to the use of an integrated circuit is well- known in the art (Ans. 22), Appellants have not properly traversed the Examiner’s finding. Instead, Appellants argue, Appeal 2011-013209 Application 11/808,903 6 [T]he elements of the present claims that are not disclosed in ETSI are also not well known in the art. In particular, Appellants submit that it is not well known in the art that an apparatus sends a message that includes “information of one or more measurement results, each measurement result defining a value of a measured parameter relating to radio signal transmission between the apparatus and one or more access entities of the radio access network, and to send the information to the radio access network based on a default reporting configuration stored in the mobile terminal,” as recited in claim 17. App. Br. 34. We find Appellants have mischaracterized the Examiner’s finding concerning the taking of Official Notice, and thus their arguments are therefore misplaced because the Examiner’s taking of Official Notice is directed to the additional recitation of claim 26, and not the recitations of claim 17 from which claim 26 depends. In addition, Appellant’s assertions with respect to claim 26 amount to unsupported attorney argument and not evidence, and therefore we give them little weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996). Accordingly, on this record, we do not find error in the Examiner’s reliance on the combination of ETSI with well-known teachings in the art to render claim 26 unpatentable. CONCLUSION Consequently, we conclude there is no reversible error in the Examiner’s rejections of independent claims 1, 17, 20, and 23-25, and dependent claims 3-16, 18, 19, 21, 22, and 26 not argued separately. Appeal 2011-013209 Application 11/808,903 7 DECISION The decision of the Examiner to reject claims 1 and 3-26 is affirmed. 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). AFFIRMED msc