Ex Parte Ramesh et al

Patent Trial and Appeal Board

Jan 23, 2017

12333147 (P.T.A.B. Jan. 23, 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.
12/333,147 12/11/2008 Rajaram Ramesh 2380-1190 5831
23117 7590 01/25/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
CHENG, CHI TANG P
ART UNIT PAPER NUMBER
2463
NOTIFICATION DATE DELIVERY MODE
01/25/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJ ARAM RAMESH,
KUMAR BALACHANDRAN, and HAVISH KOORAPATY
Appeal 2016-001595
Application 12/333,147
Technology Center 2400
Before MAHSHID D. SAADAT, NATHAN A. ENGELS, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1—24, 26, 27, 29, 30, and 32—42, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Telefonaktiebolaget
LM Ericsson. Br. 3.
Appeal 2016-001595
Application 12/333,147
STATEMENT OF THE CASE
The Invention
According to the Specification, the “invention pertains to
telecommunications, and particular to an initial ranging procedure involved
in wireless telecommunications.” Spec. 11.2 The Specification explains
that a base station and a wireless terminal communicate over an air interface
and “the base station mak[es] an identification or categorization of the
wireless terminal during a ranging procedure,” where the “identification or
categorization concerns whether or not the wireless terminal has an
enhanced capability.” Id. 124.
Exemplary Claim
Independent claim 1 exemplifies the subject matter of the claims
under consideration and reads as follows, with italics indicating the
limitations at issue in claim 1:
1. A method of operating a communications network
comprising a base station and a wireless terminal which
communicates over an air interface with the base station, the
method comprising:
the base station making a categorization of the wireless
terminal during a ranging procedure, the categorization being
whether or not the wireless terminal has an enhanced
capability, the categorization being made on a basis of a
transmission characteristic of the wireless terminal at a
physical layer, the transmission characteristic being a radio
resource used by the wireless terminal, the radio resource being
2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed December 11, 2008; “Final Act.” for the Final Office
Action, mailed July 2, 2014; “Adv. Act.” for the Advisory Action, mailed
November 20, 2014; “Br.” for the Appeal Brief, filed April 2, 2015; and
“Ans.” for the Examiner’s Answer, mailed September 17, 2015.
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a codeword utilized by the wireless terminal as a spreading
code;
the base station making the categorization of the wireless
terminal during an initial ranging procedure in which a set of
codewords is allocated for use during the ranging procedure by
the wireless terminal with the enhanced capacity; and
the base station communicating with the wireless
terminal in a manner to utilize the enhanced capability of the
wireless terminal.
Br. 43 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability, the Examiner relies on the following
prior art:
Lee et al.
(“Lee”)
Eom et al.
(“Eom”)
Tzavidas et al.
(“Tzavidas”)
Ju et al.
(“Ju”)
Harris et al.
(“Harris”)
Li et al.
(“Li”)
Maheshwari et al.
(“Maheshwari”)
US 2005/0250499 Al
US 2006/0239241 Al
US 2007/0026881 Al
US 2007/0202882 Al
US 2007/0211787 Al
US 2008/0161000 Al
US 2009/0109932 Al
Nov. 10, 2005
Oct. 26, 2006
Leb. 1,2007
Aug. 30, 2007
Sept. 13, 2007
July 3, 2008
Apr. 30, 2009
(filed Oct. 25, 2007)
The Rejections on Appeal
Claims 1—5, 11—14, 20, 21, 24, 34—38, 41, and 42 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Tzavidas and Harris, final Act.
9-29.
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Claims 26, 27, 29, 30, 32, and 33 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Tzavidas, Harris, and Ju. Final Act. 30—31.
Claims 9, 18, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tzavidas, Harris, and Maheshwari. Final Act. 31—32.
Claims 6, 7, 15, 16, 22, 39, and 40 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Tzavidas, Harris, and Li. Final Act. 32—36.
Claims 8 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tzavidas, Harris, Li, and Lee. Final Act. 36—37.
Claims 10 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tzavidas, Harris, Ju, and Eom. Final Act. 37—39.
ANALYSIS
We have reviewed the rejections of claims 1—24, 26, 27, 29, 30, and
32-42 in light of Appellants’ arguments that the Examiner erred. For the
reasons explained below, we disagree with Appellants’ assertions regarding
error by the Examiner. We adopt the Examiner’s findings in the Final
Office Action and Answer and add the following primarily for emphasis.
The Rejection of Claims 1—5, 11—14, 20, 21,
24, 34^38, and 41 Under 35 U.S.C. § 103(a)
Categorizing for Enhanced Capability Based
on a Physical-Layer Transmission Characteristic
Appellants argue that the Examiner erred in rejecting independent
claims 1, 11, 20, 24, and 34 because “Tzavidas and Harris in combination do
not disclose ‘the categorization being whether or not the wireless terminal
has an enhanced capability, the categorization being made on a basis of a
transmission characteristic of the wireless terminal at a physical layer.’”
Br. 28; see id. at 34—35. In particular, Appellants contend that in Tzavidas a
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wireless terminal explicitly provides capability information to a base station
in a media access control (MAC) layer message, and in contrast to the
claims, the base station does not make a capability categorization based on
“a transmission characteristic of the wireless terminal at a physical layer.”
Id. at 29 (emphasis omitted). Appellants then contend that “Harris cannot
correct this deficiency” because in Harris a base station assigns codes based
on a wireless terminal’s location. Id. at 29-31; see id. at 32—33 (citing
Harris 133). According to Appellants, Harris “at best teaches categorizing
whether or not the wireless terminal is located within a reuse coverage
region.” Id. at 31.
Appellants’ arguments do not persuade us of Examiner error because
the Examiner relies on the combination of Tzavidas and Harris for the
disputed limitations. Ans. 3—4, 7—8, 10-11; see, e.g., Final Act. 3—4, 9-15;
Adv. Act. 2. An obviousness analysis “need not seek out precise teachings
directed to the specific subject matter of the challenged claim” because the
analysis “can take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). “A person of ordinary skill is also a person of
ordinary creativity, not an automaton.” Id. at 421. A person of ordinary
skill will be able to fit together the teachings of multiple references. See id.
at 420.
Here, the Examiner finds that Tzavidas teaches that (1) a wireless
terminal sends a “ranging request RNG_REQ” message to a base station and
(2) the “ranging request RNG_REQ” message includes a field called
“network entry management message processing delays” that the base
station uses to determine the wireless terminal’s processing speed, i.e.,
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whether “slow” or “fast.” Ans. 3; see, e.g., Final Act. 9—10 (citing Tzavidas
1120-21, 38-42, 44—51, Abstract, Figs. 3^1, 6).
For the capability categorization based on a physical-layer
transmission characteristic, the Examiner relies on Harris. Ans. 4; see, e.g.,
Final Act. 11—13. More specifically, the Examiner finds that Harris teaches
that (1) a wireless terminal uses signal strength or terminal priority class to
select a suitable code; (2) the wireless terminal sends the selected code to a
base station in an “initial access signal”; and (3) the base station assigns link
bandwidth to the wireless terminal based on the code received from the
wireless terminal. Ans. 4; see, e.g., Final Act. 11—13 (citing Harris 3, 18—
22, 29, 33, 36, Figs. 3—5). The Examiner further finds that Harris teaches
that the base station assigns a smaller amount of link bandwidth where the
received code indicates a comparatively strong signal strength. Ans. 5, 9;
see, e.g., Final Act. 12—13. Conversely, the base station assigns a larger
amount of link bandwidth where the received code indicates a comparatively
weak signal strength. See Br. 32—33 (citing Harris 133). The Examiner also
finds that Harris teaches that the base station preferentially assigns link
bandwidth where the received code indicates that the wireless terminal
belongs in a higher priority class. Ans. 5, 9; see, e.g., Final Act. 12—13.
Referring to Tzavidas’s “ranging request RNG_REQ” message, the
Examiner reasons that the field denoting “fast” or “slow” processing
indicates whether or not the wireless terminal has an enhanced capability.
Ans. 3. The Examiner further reasons that when a base station in Harris
assigns a smaller amount of link bandwidth because a received code
indicates a comparatively strong signal strength, the “the wireless terminal
would possess ‘enhanced capacity’ in that it is able to more efficiently
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utilize network resources” by “consuming] a smaller amount of bandwidth
to achieve satisfactory communication quality.” Id. at 5. The Examiner also
reasons that when a base station in Harris preferentially assigns link
bandwidth because a received code indicates that the wireless terminal
belongs in a higher priority class, the “higher priority wireless terminal
would be characterized by an ‘enhanced capability’ of being ensured
preferential resource assignments.” Id. The Examiner explains that under
the broadest reasonable interpretation of “enhanced capability,” any of these
capability categorizations corresponds to the claimed capability
categorization. Id. at 3—5, 10.
Appellants argue that “assigning a smaller bandwidth based on the
signal strength is highly suggestive of assigning a bandwidth based on” a
wireless terminal’s location relative to a base station and “not an indication
that the remote unit [wireless terminal] has enhanced capabilities.” Br. 34.
As the Examiner indicates, however, that argument rests on an improperly
narrow interpretation of “enhanced capability.” Ans. 7, 8—10. “[DJuring
examination proceedings, claims are given their broadest reasonable
interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000). Here, the Specification notes that a “good”/“poorer”
signal and “transmit power” constitute physical-layer transmission
characteristics. Spec. ^fl[ 6, 16. Hence, the Examiner properly relies on
signal strength as a physical-layer transmission characteristic that may have
an “enhanced capability.”
The Examiner points out that Appellants make “arguments against the
cited art individually” and that Appellants’ “piecemeal attacks on the two
references individually” do not address the Tzavidas-Harris combination.
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Ans. 7, 10—11. “[T]he test for combining references is not what the
individual references themselves suggest but rather what the combination of
disclosures taken as a whole would suggest to one of ordinary skill in the
art.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); see In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Accordingly, Appellants have not
persuasively argued that the Examiner erred in rejecting the independent
claims for obviousness based on the Tzavidas-Harris combination.
The Propriety of Combining Tzavidas and Harris
Appellants argue that “the combination of Tzavidas and Harris is
improper” because the combination “renders Harris unsatisfactory for its
intended purpose.” Br. 37. More specifically, Appellants assert that the
combination “would defeat the purpose of Harris,” i.e., “to enable greater
code reuse.” Id. at 35 (emphasis omitted). Appellants also assert that “the
modification suggested in the Office Action would not result in increasing
the number of available codewords” but would instead reduce the number
because two wireless terminals could require different codewords even
though they have the same “enhanced capability” or the same legacy
capability. Id. at 36.
Appellants’ argument does not persuade us of Examiner error
because, as the Examiner explains, that argument rests on an improperly
narrow interpretation of “enhanced capability” resulting from a comparison
of IEEE standard 802.16m to an earlier version of that standard. Ans. 11;
see Spec. 110 (describing IEEE standard 802.16m as an “evolution” of
IEEE standard 802.16e).
In addition, the Examiner explains, and we agree, that Appellants’
argument mischaracterizes the rejection because the argument employs
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Harris as the primary reference modified by Tzavidas, whereas the rejection
employs Tzavidas as the primary reference modified by Harris. Ans. 12—13.
Moreover, obviousness does not depend on “whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference.” Keller, 642 F.2d at 425. “Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” Id.
With regard to Tzavidas’s “ranging request RNG_REQ” message
modified with spreading channel codes according to Harris, Appellants
assert that the “spreading codes themselves would provide no information
regarding the capabilities” of wireless terminals. Br. 36 n.l. As the
Examiner points out, however, that assertion disregards “a critical teaching
of Harris, which discloses utilizing the spreading channel code to convey
information on whether to provide efficient or preferential bandwidth
allocation.” Ans. 14; see Final Act. 5—6.
Appellants contend that “Harris teaches away from the claimed
invention.” Br. 37. To teach away, a reference must “criticize, discredit, or
otherwise discourage” the subject matter claimed. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Appellants identify no portions
of Harris that “criticize, discredit, or otherwise discourage” the subject
matter of claims 1, 11, 20, 24, and 34. See Br. 35—37.
Summary for Independent Claims 1,11,20,24, and 34
For the reasons discussed above, Appellants’ arguments have not
persuaded us that the Examiner erred in rejecting claims 1, 11, 20, 24, and
34 for obviousness based on Tzavidas and Harris. Hence, we sustain the
rejection of these claims.
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Dependent Claims 4, 5,14,21, and 35-38
Appellants dispute the rejection of dependent claims 4, 5, 14, 21, and
35—38 for obviousness based on Tzavidas and Harris. Br. 37—39. For each
claim, however, Appellants simply quote the claim language and assert that
it “logically follows that the combination of Tzavidas and Harris also cannot
teach or suggest the feature” recited in the claim. Id. Appellants do not
discuss the references or explain how the claims distinguish over the
references. Id. “A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”
37 C.F.R. § 41.37(c)(l)(iv); see In reLovin, 652 F.3d 1349, 1356-57
(Fed. Cir. 2011). Because Appellants do not argue these dependent claims
separately, they stand or fall with the independent claims. See 37 C.F.R.
§ 41.37(c)(l)(iv). Hence, we sustain the obviousness rejection of claims 4,
5, 14, 21, and 35-38.
Dependent Claims 2,3,12,13, and 41
Appellants do not present any patentability arguments for dependent
claims 2, 3, 12, 13, and 41 beyond the arguments for the independent claims.
Br. 37—39. Accordingly, we sustain the obviousness rejection of these
claims for the same reasons as the independent claims. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Rejection of Dependent Claim 42 Under 35 U.S.C. § 103(a)
Claim 42 depends from claim 34 and specifies that “higher layer
information carried in the physical layer resources used by the wireless
terminal are not necessary to determine whether or not the wireless terminal
has the enhanced capability.” Br. 53. Appellants contend that Tzavidas
“directly teaches away from claim 42” because Tzavidas “explicitly
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indicates” that a wireless terminal uses media access control (MAC) layer
messages to communicate with a base station. Id. at 39.
In response, the Examiner notes that the rejection relies on Harris, not
Tzavidas, for the limitation in claim 42. Ans. 17. Further, the Examiner
finds that Harris teaches that a base station determines that a wireless
terminal “is associated with higher signal strength or a higher priority class
. . . only based on the code group of the spreading channel code and not
based on other higher layer information transmitted in the ‘initial access
signal’ message that was transmitted using the spreading channel code.”
Final Act. 29 (citing Harris Tflf 3, 18—25, 27—33, Figs. 3—5). Additionally,
Appellants identify no portions of Tzavidas that “criticize, discredit, or
otherwise discourage” the subject matter of claim 42. See Br. 39.
Accordingly, Appellants’ arguments are not persuasive of Examiner
error in rejecting claim 42 for obviousness based on Tzavidas and Harris.
Hence, we sustain the rejection of claim 42.
The Rejections of Dependent Claims 6—8,
15-17, 22, 39, and 40 Under 35 U.S.C. § 103(a)
Claim 6 depends from claim 1 and specifies that “the transmission
characteristic further comprises utilization of a specified portion of a time-
frequency grid reserved for use by the wireless terminal with the enhanced
capability during the ranging procedure.” Br. 44. Claim 8 depends from
claim 7 and specifies that “the base station broadcasts an indication of the
specified portion of a time-frequency grid which is usable by the wireless
terminal with the enhanced capability for the ranging procedure.” Id. at 45.
Claims 7, 15—17, 22, 39, and 40 recite similar features relating to the time-
frequency grid. Id. at 40-41, 45, 47-49, 53.
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Appellants argue that the Examiner erred in rejecting these dependent
claims because (1) both Li and Lee concern reserving resources for a
wireless terminal during handover and (2) the resources are reserved
regardless whether the wireless terminal has enhanced capability.
Br. 40-41. Appellants also argue that nothing in either Li or Lee indicates
that a specified portion of the time-frequency grid is reserved for a wireless
terminal having enhanced capability. Id.
Appellants’ arguments do not persuade us of Examiner error because,
as the Examiner explains, the arguments rest on an improperly narrow
interpretation of “enhanced capability” resulting from a comparison of IEEE
standard 802.16m to an earlier version of that standard. Ans. 18. Further,
the Examiner finds that both Li and Lee teach reserving a specified portion
of the time-frequency grid for a wireless terminal. See, e.g., Final Act. 33,
36-37 (citing Li H 21, 37, 56, 63, Figs. 2-3; Lee H 36, 46, 87-89).
Appellants do not dispute those findings. Br. 40-41. The Examiner also
finds that the wireless terminals associated with the reserved portions of the
time-frequency grid have enhanced capability, i.e., because the wireless
terminal in Li comes within range of an additional base station and the
wireless terminal in Lee performs ranging faster. Ans. 18; see also Final
Act. 33, 36-37.
Accordingly, Appellants’ arguments are not persuasive of Examiner
error in rejecting claims 6—8, 15—17, 22, 39, and 40 for obviousness. Hence,
we sustain the rejections of these claims.
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The Rejection of Dependent Claims 26, 27,
29, 30, 32, and 33 Under 35 U.S.C. § 103(a)
Claim 33 depends from claim 20 and specifies that “the terminal
ranging unit is also configured to transmit the signal with the transmission
characteristic during a periodic ranging procedure.” Br. 51. Appellants
argue that the Examiner erred in rejecting claim 33 because Ju’s periodic
ranging procedure employs a media access control (MAC) layer message
instead of a physical-layer transmission characteristic. Id. at 41.
Appellants’ argument does not persuade us of Examiner error
because, as the Examiner explains, the rejection relies on Harris, not Ju, for
the capability categorization based on a physical-layer transmission
characteristic. Ans. 18—19; see, e.g., Final Act. 11-13,30-31. Appellants
do not dispute the Examiner’s finding that Ju discloses a periodic ranging
procedure. See Br. 41; see also Final Act. 31.
Accordingly, Appellants’ arguments are not persuasive of Examiner
error in rejecting claim 33 for obviousness. Hence, we sustain the rejection
of claim 33.
Like claim 33, dependent claims 26, 27, 29, 30, and 32 stand rejected
for obviousness based on Tzavidas, Harris, and Ju. Final Act. 30—31.
Appellants do not present any patentability arguments for these dependent
claims beyond the arguments for the independent claims. Br. 39-41.
Accordingly, we sustain the obviousness rejection of these dependent
claims. See 37 C.F.R. § 41.37(c)(l)(iv).
The Rejections of Dependent Claims 9,
10, 18, 19, and 23 Under 35 U.S.C. § 103(a)
Appellants do not present any patentability arguments for dependent
claims 9, 10, 18, 19, and 23 beyond the arguments for the independent
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claims. Br. 39-41. For instance, Appellants say nothing about Eom or
Maheshwari. Id. Accordingly, we sustain the obviousness rejections of
these dependent claims. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner’s decision to reject claims 1—24, 26, 27, 29,
30, and 32^12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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