Ex Parte RE40077 et al

Patent Trial and Appeal Board

Aug 7, 2014

95002157 (P.T.A.B. Aug. 7, 2014)

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.

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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.
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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:
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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.
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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.
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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
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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.
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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
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[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.
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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.
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(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.

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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.
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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
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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

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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

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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

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