Ex Parte Susitaival et al

Patent Trial and Appeal BoardAug 6, 2018

14793884 (P.T.A.B. Aug. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/793,884 07/08/2015 5073 7590 BAKER BOTTS L.L.P. 2001 ROSS A VENUE SUITE 900 DALLAS, TX 75201-2980 08/08/2018 FIRST NAMED INVENTOR Riikka Susitaival 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 017997.0668 2443 EXAMINER MIAH,LITON ART UNIT PAPER NUMBER 2642 NOTIFICATION DATE DELIVERY MODE 08/08/2018 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): ptomaill@bakerbotts.com ptomail2@bakerbotts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RIIKKA SUSITAIVAL, HAKAN PERSSON, and MAGNUS STATTIN 1 Appeal2018-000617 Application 14/793,884 Technology Center 2600 Before ROBERT E. NAPPI, SCOTT E. BAIN, and JASON M. REPKO, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1-12. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 According to Appellants, the real party in interest is Telefonaktiebolaget L M Ericsson. Br. 2. Appeal2018-000617 Application 14/793,884 INVENTION Appellants' disclosed invention is directed to notifying base stations of in-device coexistent (IDC) radio interference within a mobile device. Spec. ,r 4. Claim 1 is representative of the invention and reproduced below. 1. A method performed by a user equipment (UE), the method comprising: sending a first In-Device Coexistence (IDC) indication message to a source base station; performing a handover to a target cell; and sending a second IDC indication message to a target base station in the target cell, the second IDC indication message including substantially the same content as the first IDC indication message. REJECTIONS AT ISSUE2 The Examiner has rejected claims 1-12 under 35 U.S.C. Â§ 112, second paragraph, for being indefinite. Final Act. 2-3. The Examiner has rejected claims 1-12 on the ground of nonstatutory, obviousness-type, double patenting, for being obvious over Susitaival (U.S. 9,107,116 B2, Aug. 11, 2015). Final Act. 4--5. The Examiner has rejected claims 1, 2, 6-8, and 12 under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of non-patent literature titled Assistance Information handling concerning the FDM and TDM solutions, (3GPP TSG-RAN WG2 Meeting #77bis R2-121364, 2012) authored by Huawei ("Huawei") and non-patent literature titled Necessary 2 Throughout this Decision we refer to the Appeal Brief (Br.) filed July 3, 2017, Final Office Action (Final Act.) mailed January 31, 2017, and Examiner's Answer (Ans.) mailed August 23, 2017. 2 Appeal2018-000617 Application 14/793,884 procedure for avoiding ping-pong to problematic frequency, (3GPP TSG- RAN2 Meeting #77bis R2-121769, 2012) authored by LG Electronics Inc. ("LG"). Final Act. 6-8. 3 ANALYSIS We have reviewed Appellants' arguments on pages 8 through 10 of the Appeal Brief, the Examiner's rejections, and the Examiner's response to Appellants' arguments. Appellants' arguments have not persuaded us of error in the Examiner's rejection. Uncontested Rejections The Examiner rejects claims 1-12 under 35 U.S.C. Â§ 112, second paragraph, because the term "substantially" recited in each of independent claims 1 and 7 "is a relative term which renders the claim[s] indefinite." Final Act. 2-3. Appellants indicate that they "are willing to remove the term 'substantially' from Claims 1 and 7." Br. 10. Appellants do not otherwise traverse the rejections and Appellants have not amended claims 1 and 7. Because Appellants do not dispute the substance of the rejection and merely propose a potential amendment, we summarily sustain the rejection under 35 U.S.C. Â§ 112, second paragraph, of claims 1-12. Id.; see 37 C.F.R. Â§ 4I.37(c)(l)(iv). The Examiner has rejected claims 1-12 on the ground of nonstatutory, obviousness-type, double patenting. Final Act. 3-5. Appellants "do not request review of this double patenting rejection" and indicate that they "are willing to file a terminal disclaimer to obviate this double patenting rejection 3 Claims 3-5 and 9-11 are indicated as containing allowable subject matter. Final Act. 9. 3 Appeal2018-000617 Application 14/793,884 upon indication of allowable subject matter of the claims in their current form." Br. 10. Accordingly, we sustain, proforma, the rejection of claims 1-12 on the ground of nonstatutory, obviousness-type, double patenting. See 37 C.F.R. Â§ 4I.37(c)(l)(iv); see also Manual of Patent Examining Procedure (MPEP) Â§ 1205.02 (9th ed. Rev. 08. 2017, Jan. 2018). Rejections Under 35 U.S.C. Â§ 103 Appellants argue the Examiner erred because LG teaches away from "sending a second IDC indication message to a target base station in the target cell, the second IDC indication message including substantially the same content as the first IDC indication message," as recited in claim 1. 4 Br. 8-9. Appellants argue LG discloses two alternatives for notifying a target base station, such as an eNB, about IDC interference: (1) the UE again reporting information to the target eNB, and (2) transferring information from a source base station to the target eNB. Id. Appellants argue that because LG discloses the second alternative is preferred over the first, LG teaches away from the first alternative. Id. We are not persuaded the Examiner erred. "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994 ). "The prior art's mere disclosure of more than one alternative does not constitute a teaching away from ... alternatives because 4 With respect to claims 2, 6-8, and 12, regarding the rejections under 35 U.S.C. Â§ 103 based on the asserted references, Appellants' arguments present us with the same dispositive issues as independent claim 1. Br. 8-9. 4 Appeal2018-000617 Application 14/793,884 such disclosure does not criticize, discredit, or otherwise discourage the solution claimed." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). LG does not criticize, discredit, or otherwise discourage reporting information again by the UE to the target eNB. See LGÂ§ 2. In the case before us, LG teaches two mechanisms for providing IDC information to a target eNB and provides reasons warranting a preference for each mechanism. LGÂ§ 2. Specifically, LG teaches a preference for transferring IDC information from the source to the target eNB when radio resources are scarce (i.e., "Alt. 2"). Id. LG also teaches a preference for the UE providing IDC information to the target eNB when the status of the IDC interference situation changes (i.e., "Alt. 1 "). Id. LG's disclosure of more than one alternative, explaining when each alternative would be preferred over the other, does not criticize, discredit, or otherwise discourage either mechanism. See Fulton, 391 F.3d at 1201; see also LGÂ§ 2. Therefore, LG does not teach away. Nevertheless,, even if a reference is not found to teach away, its statements regarding preferences are relevant to the finding regarding whether one of ordinary skill in the art would have combined LG and Huawei. See Apple, 839 F.3d at 1051 n.15 (noting that, even if a reference "does not teach away, its statements regarding users preferring other forms of switches are relevant to a finding regarding whether a skilled artisan would be motivated to combine the slider toggle in" that reference with the invention of a second reference). Here, the Examiner points out that Appellants' argument ignores the problematic situation in LG's Alt. 2. Ans. 3--4. Specifically, the Examiner explains, and we agree, that LG's Alt. 1 avoids a ping-pong handover while keeping the eNB aware of coexistence 5 Appeal2018-000617 Application 14/793,884 problems during the handover. Id. at 4. Therefore, we are not persuaded of Examiner error. DECISION We affirm the Examiner's rejections of claims 1-12 under 35 U.S.C. Â§ 112, second paragraph. We affirm the Examiner's rejections of claims 1-12 on the ground of nonstatutory, obviousness-type, double patenting. We affirm the Examiner's rejections of claims 1, 2, 6-8, and 12 under 35 U.S.C. Â§ 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l)(iv)(2015). AFFIRMED 6