Ex Parte RE40077 et alDownload PDFPatent Trial and Appeal BoardAug 7, 201495002157 (P.T.A.B. Aug. 7, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/002,157 09/07/2012 RE40077 1291-216.901 1872 106622 7590 08/07/2014 Blue Capital Law Firm, P.C. 600 Anton Blvd., Suite 1000 Costa Mesa, CA 92626 EXAMINER CORSARO, NICK ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 08/07/2014 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 ____________ RESEARCH IN MOTION CORP. and RESEARCH IN MOTION LTD. Requesters v. INNOVATIVE SONIC LTD. Patent Owner and Appellant ____________ Appeal 2014-007368 Inter partes Reexamination Control 95/002,157 United States Patent US RE40,077 E Technology Center 3900 ____________ Before JOHN A. JEFFERY, MARC S. HOFF, and JEREMY J. CURCURI, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. Appeal 2014-007368 Reexamination Control 95/002,157 Patent US RE40,077 E 2 DECISION ON APPEAL Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s decision to reject claims 1-16. App. Br. 2.1 We have jurisdiction under 35 U.S.C. §§ 134 and 315. We reverse and enter new grounds of rejection under 37 C.F.R. § 41.77(b). STATEMENT OF THE CASE This proceeding arose from a request for inter partes reexamination filed on behalf of Requesters, on September 7, 2012, of United States Patent RE40,077 E (“’077 patent”), that reissued U.S. Patent 6,888,816 on February 19, 2008. The ‘077 patent describes a window-based polling scheme for a wireless communications protocol that triggers a transmitter’s polling operation to request a receiver’s receiving status. See generally Abstract; col. 1, ll. 10-15. Claim 1 illustrates the invention and is reproduced below: 1. A method for [determining] triggering of a polling request in a wireless communications protocol for transmitter, the 1 Throughout this opinion, we refer to (1) Requesters’ Request for Reexamination filed September 7, 2012 (“Request”); (2) the Right of Appeal Notice mailed September 6, 2013 (“RAN”); (3) Patent Owner’s Appeal Brief filed December 9, 2013 (“App. Br.”); (4) the Examiner’s Answer mailed March 7, 2014 (“Ans.”); and (5) Patent Owner’s Rebuttal Brief filed April 7, 2014 (“Reb. Br.”) (incorrectly labeled as “Respondent’s Brief”). The latter relabeling is essential to clarify the record, for Respondents—the Requesters—did not file a brief. Although Patent Owner also filed a document labeled “Reply Brief” the same day as the so-called “Respondent’s Brief,” these documents are otherwise identical. Appeal 2014-007368 Reexamination Control 95/002,157 Patent US RE40,077 E 3 transmitter [capable of] for transmitting layer 2 protocol data units (PDUs), each PDU comprising an n-bit sequence number, that method comprising: obtaining a base sequence number VT(A), the base sequence number VT(A) marking a beginning sequence number of a transmitting window of the transmitter; obtaining a base sequence number VT(S), the current sequence number VT(S) marking a sequence number of a PDU that is next to be transmitted by the transmitter; obtaining a first value that [is] includes 2n added to a difference of the current sequence number VT(S) and the base sequence number VT(A); and obtaining a second value that is a modulus of the first value with 2n ; [and obtaining a test value that is the second value divided by a size of the transmitting window; wherein polling value.] wherein polling is triggered according to the second value and a size transmitting window. RELATED PROCEEDINGS Although neither Patent Owner’s briefs nor the Examiner’s Answer identify any related proceedings, Requesters indicate that the ’077 patent is the subject of related litigation. See Request 6 (citing Innovation Sonic Ltd. v. Research in Motion Ltd. & Research in Motion Corp., No. 6:10-CV-455 (E.D. Tex. Sept. 2, 2010)). On March 17, 2011, the case was transferred to the Northern District of Texas. Request 6. THE APPEALED REJECTIONS Patent Owner appeals the Examiner’s adopting the following rejections: Appeal 2014-007368 Reexamination Control 95/002,157 Patent US RE40,077 E 4 Claims 1-16 under 35 U.S.C. § 103(a) as unpatentable over Universal Mobile Telecommunications System (UMTS); RLC Protocol Specification (3G TS 25.322 version 3.3.0 Release 1999), June 2000 (“ETSI”), Document R2-1346, Change Request 25.322 CR 061, Source: Ericsson, 3GPP TSG RAN WG2 Meeting #14, Paris, France, July 3-7, 2000 (“Ericsson”), and Shu Lin & Daniel J. Costello, Jr., ERROR CONTROL CODING: FUNDAMENTALS AND APPLICATIONS 15-20 (1983) (“Lin”). Claims 1-16 under 35 U.S.C. § 103(a) as unpatentable over ETSI, Ericsson, and Donald E. Knuth, THE ART OF COMPUTER PROGRAMMING 271 (2d ed. 1981) (“Knuth”). THE REJECTION OVER ETSI, ERICSSON, AND LIN The Examiner finds that ETSI’s polling request triggering method obtains (1) base and current sequence numbers VT(A) and VT(S), respectively; (2) a first value that includes these sequence numbers; and (3) a second value that is a modulus of the first value with 2n. Ans. 6-7. The Examiner acknowledges that ETSI does not obtain a first value that includes 2n added to a difference of the current and base sequence numbers, but cites Ericsson for teaching obtaining the current and base sequence number difference in view of the associated “distance” function “Dist(VT(A), VT(S))” in the poll equation in Sections 9.6 and 11.3.2.1.1. Ans. 7-8, 48-50. The Examiner also cites Lin for teaching adding 2n to the difference as claimed, and then concludes that the claim would have been obvious over the cited references’ collective teachings. Ans. 7-8, 31-57. Appeal 2014-007368 Reexamination Control 95/002,157 Patent US RE40,077 E 5 According to the Examiner, the variable “Tx_Window_Size” in ETSI’s polling equation in Sections 9.6 and 11.3.2.1.1 is a modulus that is 2n where n=12 (i.e., 212) in light of (1) ETSI’s various statements to that effect in connection with 12-bit sequence numbers, and (2) fundamental modular arithmetic and binary number theory. Ans. 33-40. Although the Examiner acknowledges that ETSI’s window size range is stated to be [1, 212-1] in Section 9.2.2.11.3 which yields a maximum size value of 212-1 and not 212, the Examiner nonetheless reasons that this stated range is apparently a typographical error in light of ETSI’s 212 modulus in Section 9.4 that would yield a range from zero (not one) to 212-1, namely [0, 212-1]. Ans. 33-34, 38- 40. The Examiner’s “corrected” range is said to be confirmed by a later version of ETSI’s specification, namely version 3.5.0, whose updated Section 9.2.2.11.3 shows a [0, 212-1] range. Ans. 41-45. The Examiner adds that Ericsson’s “distance” function is equivalent to subtraction as understood in the art at the time of the invention as evidenced by patents to Olson and Bridgman that, while not cited in the rejection, were nonetheless cited responsive to arguments made during prosecution that Ericsson’s distance function was undefined. Ans. 5, 31-32. Patent Owner argues that the Examiner’s reliance on Olson and Bridgman is improper because not only were they not cited in the rejections, the Examiner’s attempt to incorporate these references through alleged claim interpretation is wrong because the term “Dist(s1, s2)” is not claimed. App. Br. 5-6; Reb. Br. 3-4. The Examiner’s reliance on ETSI Version 3.5.0 in the Answer is also said to be improper because it was not cited previously. Reb. Br. 4-5. Appeal 2014-007368 Reexamination Control 95/002,157 Patent US RE40,077 E 6 Regarding the rejection, Patent Owner contends that the cited prior art does not teach or suggest obtaining the particular first and second values recited in claim 1. According to Patent Owner, the Examiner’s reliance on ETSI is flawed because the maximum value for the variable “Tx_Window_Size” in ETSI’s polling equation is 212-1, not 212 as the Examiner asserts. App. Br. 7-9, 14-16; Reb. Br. 5-6. As such, Patent Owner contends, ETSI’s stated window size range [1, 212-1] in Section 9.2.2.11.3 is not a typographical error as the Examiner alleges, but rather consistent with the notion that a transmission window size cannot be zero or full size (212). App. Br. 8-9, 16; Reb. Br. 6. According to Patent Owner, the former would result in a transmitter that cannot send any packets, and the latter would mean that any sequence number could be transmitted within the window, thus resulting in no transmission window protection for memory size control and sequence number duplication. Id. Patent Owner adds that the Examiner’s reliance on Ericsson’s distance function is improper, for this “vague abstraction” not only fails to provide sufficient detail to enable skilled artisans to implement the function, a working group chairman expressed concern that replacing a more detailed polling expression description with this “abstraction” would likely create more confusion on what was a proper implementation—a statement that is said to be unopposed. App. Br. 11-14, 17. Because Ericsson was later withdrawn from consideration as “inadequate,” Patent Owner argues that not only would it would not have been obvious to combine its teachings with ETSI as the Examiner proposes, this withdrawal evidences a failure of others Appeal 2014-007368 Reexamination Control 95/002,157 Patent US RE40,077 E 7 to solve the problem residing in existing polling expressions. App. Br. 13- 14, 17-18. ISSUE Under § 103, has the Examiner erred in rejecting claim 1 by finding that ETSI, Ericsson, and Lin or Knuth collectively would have taught or suggested obtaining (1) a first value that includes 2n added to a difference of the recited current and base sequence numbers, and (2) a second value that is a modulus of the first value with 2n? ANALYSIS We begin by noting that the Examiner’s particular findings from Lin and Knuth are undisputed; accordingly, we confine our discussion principally to ETSI and Ericsson. We further note that the arguments presented in connection with the Examiner’s rejection based on ETSI, Ericsson, and Lin apply equally to those based on ETSI, Ericsson, and Knuth, for the latter rejection was not argued separately with particularity. Accordingly, our analysis applies to both rejections. As noted above, the Examiner finds that ETSI obtains a first value that includes sequence numbers VT(S) and VT(A), but relies on Ericsson for teaching obtaining a difference between these numbers via an associated “distance” function “Dist(VT(A), VT(S))” in the polling equation in Sections 9.6 and 11.3.2.1.1. Ans. 7-8, 48-50. The Examiner also cites Lin for teaching adding 2n to this difference, referring to pages 30 through 32 of the Request for an in-depth discussion. Ans. 8. Appeal 2014-007368 Reexamination Control 95/002,157 Patent US RE40,077 E 8 A key aspect of the Examiner’s position is that the variable “Tx_Window_Size” in ETSI’s polling equation in Sections 9.6 and 11.3.2.1.1 is a modulus that is said to be 2n where n=12 (i.e., 212) in light of (1) ETSI’s various statements to that effect in connection with 12-bit sequence numbers, and (2) fundamental modular arithmetic and binary number theory. Ans. 33-40. ETSI’s window size range, however, is stated as [1, 212-1] in Section 9.2.2.11.3 which yields a maximum size value of 212- 1, and not 212 as Patent Owner indicates. App. Br. 7-9, 14-16; Reb. Br. 5-6. To say that this stated range is a typographical error as the Examiner speculates is, at best, dubious on this record. As Patent Owner indicates, a zero window size would result in a transmitter that cannot send any packets, and a full-size (212) window would mean that any sequence number could be transmitted within the window, thus resulting in no transmission window protection for memory size control and sequence number duplication as Patent Owner indicates. App. Br. 8-9, 16; Reb. Br. 6. Although ETSI’s 212 modulus in Section 9.4 would have 212 total numbers as the Examiner indicates (Ans. 39-40), that does not mean that the “Tx_Window_Size” variable in the polling equation must be that modulus as the Examiner asserts. Rather, the evidence on this record suggests otherwise, namely that the “Tx_Window_Size” variable is less than 212 and greater than zero. We reach this conclusion despite a later version of ETSI’s specification (version 3.5.0)2 updating (1) Section 9.2.2.11.3 to show a 2 This reference is mentioned in the ‘077 patent in col. 6, l. 35 as the Examiner indicates. Ans. 41 n.2 (noting where ETSI Version 3.5.0 was introduced into the record). Patent Owner also discusses this reference at page 10 of the Appeal Brief (among other places). As noted later in this Appeal 2014-007368 Reexamination Control 95/002,157 Patent US RE40,077 E 9 [0, 212-1] window size range, and (2) Section 9.6 to include the value 4096 (i.e., 212) in a different polling equation. Notably, as Patent Owner indicates (Reb. Br. 4-5), the Examiner did not cite this reference in the rejection. But even if the Examiner’s reference to this document does not change the thrust of the rejection to render it a new ground, the updated version 3.5.0 only reinforces Patent Owner’s position that the Examiner’s assertion that the “Tx_Window_Size” variable in ETSI’s polling equation is 212 (i.e., 2n) (Ans. 39-45) is unreasonable. That the denominator (“VT(WS)”) in Version 3.5.0’s polling equation differs from its numerator (4096), unlike ETSI’s polling equation that includes the “Tx_Window_Size” variable in both numerator and denominator, only bolsters this conclusion. Compare ETSI Version 3.5.0, at 37 with ETSI Version 3.3.0, at 35. Accord Reb. Br. 6 (noting that the minimum value of VT(WS) in ETSI Version 3.5.0 is 1). Although we appreciate the Examiner’s thorough analysis and helpful explanations regarding binary number theory and modular arithmetic (Ans. 35-37), the Examiner’s premise that the “Tx_Window_Size” variable in ETSI’s polling equation is 212 (i.e., 2n) (Ans. 39-45) as a basis for concluding that the claims would have been obvious is nonetheless unreasonable on this record. For this reason alone, we are persuaded that the Examiner erred in rejecting claims 1-16 over ETSI, Ericsson, and Lin. Because this issue is dispositive regarding our reversing the Examiner’s rejection of these claims, we need not address Patent Owner’s other arguments. opinion, we rely on this reference in a new ground of rejection and cite it in its entirety in connection with that rejection. Appeal 2014-007368 Reexamination Control 95/002,157 Patent US RE40,077 E 10 THE REJECTION OVER ETSI, ERICSSON, AND KNUTH For similar reasons, we are likewise persuaded of error in the Examiner’s alternative obviousness rejection of claims 1-16 over ETSI, Ericsson, and Knuth. Ans. 18-30. NEW GROUNDS OF REJECTION Pursuant to 37 C.F.R. § 41.77(b), we enter the following new grounds of rejection. Anticipation Rejection Claims 1, 3, 4-6, and 8-13 are rejected under 35 U.S.C. § 102(e) as anticipated by Universal Mobile Telecommunications System (UMTS); RLC Protocol Specification (3GPP TS 25.322 version 3.5.0 Release 1999), Dec. 2000 (“ETSI Version 3.5.0”).3 Regarding claim 1, ETSI Version 3.5.0 discloses a method of triggering a polling request in a wireless communications protocol for a transmitter comprising: (1) obtaining base and current sequence numbers (VT(A) and (VT(S)); (2) obtaining a first value that includes 2n (i.e., 212) added to a difference of the current and base sequence numbers (4096 + VT(S) – VT(A)) in numerator of Poll_Window equation in § 9.6(d)); (3) obtaining a second value that is a modulus of the first value with 2n ((4096 + VT(S) – VT(A)) mod 4096 in numerator); 3 A partial copy of this reference is provided in Appendix A of this opinion. Appeal 2014-007368 Reexamination Control 95/002,157 Patent US RE40,077 E 11 (4) wherein polling is triggered according to the second value and a size of the transmitting window (VT(WS)). See § 9.6(d) (noting that a poll is triggered when the window transmission percentage (J) is ≥ Poll_Window). See ETSI Version 3.5.0 §§ 9.4, 9.6(d). Regarding independent claims 4 and 6, ETSI Version 3.5.0 comprises the recited state variables (VT(A), VT(S), VT(WS)), where VT(WS) inherently indicates a number of PDUs spanned by the transmitting window. See ETSI Version 3.5.0 §§ 9.4, 9.6(d). Moreover, the polling equation in Section 9.6(d) inherently obtains a test value that does not exceed a predetermined value according to (1) a modulus of a first value with 2n (i.e., 212), and (2) the state variable VT(WS), the first value including includes 2n (i.e., 212) added to a difference between VT(S) and VT(A). See ETSI Version 3.5.0 §§ 9.4, 9.6(d). Regarding claims 8, 9, 11, and 12, ETSI Version 3.5.0’s polling equation in Section 9.6(d) obtains a test value that is the second value (i.e., numerator) divided by a size of the transmitting window (VT(WS)), where polling is triggered according to that value, namely when J ≥ Poll_Window (i.e., test value is greater than or equal to a polling value). Regarding claims 3 and 5, ETSI Version 3.5.0’s polling value indicates a percentage of transmitted PDUs in the window. Regarding claims 10 and 13, n=12 as noted above with respect to claim 1. Appeal 2014-007368 Reexamination Control 95/002,157 Patent US RE40,077 E 12 Obviousness Rejection Claims 2, 7, and 14-16 are rejected under 35 U.S.C. § 103(a) as obvious over ETSI Version 3.5.0. Regarding claims 2 and 14, ETSI Version 3.5.0’s polling equation in Section 9.6(d) indicates that polling will not occur below a certain ratio, where J ≥ Poll_Window, such that 0 ≤ Poll_Window ≤ 100. Moreover, this ratio’s denominator pertains to the size of the transmitting window (VT(WS)). As such, ordinarily skilled artisans would understand that these relationships at least suggest a minimum value choosing operation with the transmitting window’s size as claimed. See also Spec. 8:31-37 (noting that the equation for obtaining test value “t” can be modified to indicate a minimum value choosing operation (“min”) if the test value could exceed 1.0). Regarding claim 15, polling is triggered in ETSI Version 3.5.0 when J ≥ Poll_Window (i.e., test value is greater than or equal to a polling value) as noted above. Regarding claim 16, n=12 as noted above. Regarding claim 7, ETSI Version 3.5.0’s polling value indicates a percentage of transmitted PDUs in the window as noted above. CONCLUSION Under § 103, the Examiner erred in rejecting claims 1-16 over ETSI, Ericsson, and either Lin or Knuth. Appeal 2014-007368 Reexamination Control 95/002,157 Patent US RE40,077 E 13 We newly reject (1) claims 1, 3, 4-6, and 8-13 as anticipated by ETSI Version 3.5.0, and (2) claims 2, 7, and 14-16 as obvious over ETSI Version 3.5.0. DECISION The Examiner’s decision rejecting claims 1-16 is reversed. We newly reject those claims under § 41.77(b). Section 41.77(b) provides that “a new ground of rejection . . . shall not be considered final for judicial review.” That section also provides that Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal proceeding as to the rejected claims: (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both. (2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may file a request for rehearing of the decision within one month of the date of . . . [t]he original decision of the Board under § 41.77(a).” A Appeal 2014-007368 Reexamination Control 95/002,157 Patent US RE40,077 E 14 request for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the request and additional requests for rehearing must be in accordance with 37 C.F.R. § 41.79(c)-(d), respectively. Under 37 C.F.R. § 41.79(e), the time periods for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (c) of this section, and for submitting comments under paragraph (b) of this section may not be extended. An appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. §§ 141-44 and 315 and 37 C.F.R. § 1.983 for an inter partes reexamination proceeding “commenced” on or after November 2, 2002 may not be taken “until all parties’ rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See also MPEP § 2682. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956 (2011). REVERSED 37 C.F.R. § 41.77 Appeal 2014-007368 Reexamination Control 95/002,157 Patent US RE40,077 E 15 For PATENT OWNER: BLUE CAPITAL LAW FIRM, P.C. 600 Anton Blvd., Suite 1000 Costa Mesa, CA 92626 For THIRD PARTY REQUESTER: OBLON, SPIVAK McCLELLAND, MAIER & NEUSTADT, LLP 1940 Duke Street Alexandria, VA 22314 Appeal 2014-007368 Reexamination Control 95/002,157 Patent US RE40,077 E 16 Appendix A Partial Copy of ETSI Version 3.5.0 App Reex Paten eal 2014-0 amination t US RE4 07368 Control 9 0,077 E 5/002,157 17 Appeal 2014-007368 Reexamination Control 95/002,157 Patent US RE40,077 E 18 Appeal 2014-007368 Reexamination Control 95/002,157 Patent US RE40,077 E 20 Copy with citationCopy as parenthetical citation