Ex Parte Siomina et al

Patent Trial and Appeal BoardAug 15, 2017

13997735 (P.T.A.B. Aug. 15, 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. 13/997,735 06/25/2013 Iana Siomina 4015-8590 / P36927-US2 7346 24112 7590 08/16/2017 COATS & BENNETT, PLLC 1400 Crescent Green, Suite 300 Cary, NC 27518 EXAMINER NGUYEN, HANH N ART UNIT PAPER NUMBER 2479 MAIL DATE DELIVERY MODE 08/16/2017 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 IANA SIOMINA and BENGT LINDOFF (Applicant: Telefonaktiebolaget LM Ericsson) ____________________ Appeal 2017-001602 Application 13/997,735 Technology Center 2400 ____________________ Before CARLA M. KRIVAK, IRVIN E. BRANCH, and AMBER L. HAGY, Administrative Patent Judges. BRANCH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 24–52. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2017-001602 Application 13/997,735 2 CLAIMED SUBJECT MATTER Appellants assert the present invention is directed to “performing verification using the result of a timing measurement, instead of or in addition to the result of a power-based measurement. Verification performed in this way proves faster, more accurate/reliable, less complex, and/or more resource-efficient than verification performed exclusively using the result of a power-based measurement.” See Spec. 5:27–31. “The method includes obtaining a result of a timing measurement performed on one or more first radio signals associated with one or more specific characteristics. . . . . then . . . verifying one or more second radio signals as associated with the one or more specific characteristics, by determining whether that result meets one or more conditions.” Spec. 6:2–7. Claim 24, reproduced below, is illustrative of the claimed subject matter: 24. A method implemented by a node in a wireless communication system, the method comprising: by said node, obtaining a result of a timing measurement performed on one or more first radio signals associated with one or more specific characteristics; and by said node, verifying one or more second radio signals as associated with the same one or more specific characteristics, by determining whether said result meets one or more conditions. REFERNCE AND REJECTIONS Claims 24–49 and 51 stand rejected under pre-AIA 35 U.S.C. § 102(e) as anticipated by Chin (US 2012/0269172). Final Act. 2–7. Claims 50 and 52 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Chin. Final Act. 7. Appeal 2017-001602 Application 13/997,735 3 ANALYSIS We have reviewed Appellants’ arguments alleging error in the Examiner’s rejection of claims 24–49 and 51 as anticipated by Chin. App. Br. 5–13, Reply Br. 1–4; see Final Act. 2–7. Although Appellants’ arguments are difficult to follow (see, e.g., App. Br. 10–11 (arguing claim 24 based on arguments presented with respect to the claim from which it depends)), the Examiner’s rejection also is not the model for clarity (see, e.g., Final Act. 2–3 (rejecting claims “24, 25, 40, 45, 46, 47, 48” as anticipated with no specific mapping of individual claim elements to the teachings of Chin); see also Final Act. 7 (rejecting claim 50 as obvious with no reasoning (“but it would have been obvious to one skilled in the art to apply …”)). Based on the record before us, we cannot sustain the Examiner’s anticipation rejection of claims 24–49 and 51 and the Examiner’s obviousness rejection of claims 50 and 52. Specifically, the Examiner does not provide an adequate explanation of how claim 24’s verifying (“verifying one or more second radio signals as associated with the same one or more specific characteristics, by determining whether said result meets one or more conditions” (emphasis added)) reads on Chin’s timing measurements, which determine whether to handoff a user from one node to another. See, generally, Ans. 8–11. Chin’s timing measurement determines differential distance from user equipment to two different nodes (see, e.g., Fig. 7A), which does not teach “verifying” that a second radio signal is associated with the “same” characteristic as a first radio signal. Appellants raise this issue that “Chin uses a timing measurement result to check whether a UE should be handed over” but “claim 24 uses a timing measurement result to check whether it is true that a signal is Appeal 2017-001602 Application 13/997,735 4 associated with a specific characteristic; namely, the same specific characteristic as that with which a signal on which the timing measurement was performed is associated.” App. Br. 10–11. The Examiner’s Answer, however, does no better job than the Final Rejection at directing us to what the Examiner finds to be the claimed “one or more second radio signals as associated with the same one or more specific characteristics, by determining whether said result meets one or more conditions.” Compare Ans. 8–11 to Final Act. 2–3. The Examiner’s obviousness rejection of dependent claims 50 and 52 also gives us no firm footing on which to make a new ground of rejection of the independent claims based on obviousness because the Examiner’s obviousness rejection of claims 50 and 52 includes no “‘articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). See Final Act. 7. The rejection merely concludes that it “would have been obvious to one skilled in the art to apply” the teachings of the references in the manner recited in claims 50 and 52, with no explanation for why it would have been obvious to do so. “[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). We decline to speculate and, therefore, take no position on whether any of claims 24–52 would have been obvious to one of ordinary skill in the art over Chin or over other prior art not of record. On this record, however, we cannot sustain the Examiner’s rejections of the pending claims. Appeal 2017-001602 Application 13/997,735 5 DECISION We reverse the Examiner’s rejection of claims 24–52. REVERSED