Ex Parte Thome et al

Patent Trial and Appeal Board

Sep 18, 2018

12495395 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/495,395 06/30/2009
32968 7590 09/20/2018
KYOCERA INTERNATIONAL INC.
INTELLECTUAL PROPERTY DEPARTMENT
8611 Balboa Ave
SAN DIEGO, CA 92123
FIRST NAMED INVENTOR
Timothy A. Thome
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.
UTL00865 2738
EXAMINER
VU, HOANG-CHUONG Q
ART UNIT PAPER NUMBER
2476
NOTIFICATION DATE DELIVERY MODE
09/20/2018 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):
KII-USPatents@kyocera.com
Kathleen.Connell@kyocera.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY A. THOME and AMIT KALHAN
Appeal2018-002132
Application 12/495,395
Technology Center 2400
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1--4, 6-10, 12-16, and 18-20, which
constitute all the claims pending in this application. Claims 5, 11, and 17
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Kyocera Corporation. App.
Br. 3.
Appeal2018-002132
Application 12/495,395
STATEMENT OF THE CASE
Appellants invented a wireless communication device that maintains a
dual idle-traffic state-an idle state relative to a first transceiver node and a
traffic state relative to a second transceiver node. See generally Abstract.
According to the Specification, a receiver of the wireless communication
device receives signals from a first transceiver node and a second transceiver
node. Spec. ,r 46; Fig. 5. The receiver further receives a handoff control
message from the first transceiver node. Spec. ,r 48. A controller of the
wireless communication device processes and manages a handoff in
response to the handoff control message. Id.
Claim 1, reproduced below, is illustrative:
1. A wireless communication device comprising:
a receiver configured to wirelessly receive first control
signals from a first transceiver node and to wirelessly receive,
from a second transceiver node, second control signals different
from the first control signals, the receiver further configured to
receive a handoff control message from the first transceiver
node;and
a controller configured to
monitor the first control signals to maintain registration
with the first transceiver node after the wireless communication
device has been handed off from the first transceiver node to
the second transceiver node,
receive traffic channel signals from the second
transceiver node using the second control signals, and
process, in response to the handoff control message, a
handoff from the second transceiver node to the first transceiver
node to invoke reception of traffic channel signals from the first
transceiver node.
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Application 12/495,395
THE REJECTIONS
The Examiner rejected claims 1, 4, 6, 7, 10, 12, 13, 16, and 18-20
under 35 U.S.C. § I03(a) as being unpatentable over Laroia et al. (US
7,450,543 B2, issued Nov. 11, 2008), Kalhan (US 2008/0130598 Al,
published June 5, 2008; hereinafter "Kalhan '598"), and Hofmann (US
2008/0020770 Al, published Jan. 24, 2008). Final Act. 2-15. 2
The Examiner rejected claims 2, 3, 8, 9, 14, and 15 under 35 U.S.C.
§ I03(a) as being unpatentable over Laroia, Kalhan '598, Hofmann, and
Kalhan et al. (US 2008/0280630 Al, published Nov. 13, 2008; hereinafter
"Kalhan '630"). Final Act. 15-18.
THE OBVIOUSNESS REJECTION OVER LAROIA, KALHAN '598,
AND HOFMANN
The Examiner finds that Laroia, Kalhan '598, and Hofmann
collectively teach or suggest all recited elements of claim 1. Final Act. 2-5.
Among other things, the Examiner finds that Laroia's wireless
communication device monitors first control signals received from a first
transceiver node to maintain registration with the first transceiver node.
Id. at 3. The Examiner also finds that Laroia's monitoring occurs while
receiving traffic channel signals from a second transceiver node. Id.
Although the Examiner acknowledges that Laroia's monitoring does
not occur after the wireless communication device has been handed off from
2 Throughout this opinion, we refer to (1) the Final Rejection mailed Dec. 1,
2016 ("Final Act."); (2) the Appeal Brief filed June 13, 2017 ("App. Br.");
(3) the Examiner's Answer mailed Oct. 31, 2017 ("Ans."); and the Reply
Brief filed Dec. 19, 2017 ("Reply Br.").
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Application 12/495,395
the first transceiver node to the second transceiver node, the Examiner cites
Kalhan '598 for teaching this feature. Id. at 3--4. The Examiner also
acknowledges that Laroia does not process, in response to receiving a
handoff control message from the first transceiver node, a handoff from the
second transceiver node to the first transceiver node to invoke reception of
traffic channel signals from the first transceiver node. The Examiner,
however, cites Hofmann for teaching this feature in concluding that the
claim would have been obvious. Id. at 4--5. According to the Examiner,
Hofmann's backward handover from a target base station to a source base
station is in response to a user equipment receiving a handover command
from the source base station. Final Act. 4 ( citing Hofmann ,r,r 54, 57);
Ans. 22-25 (additionally citing Hofmann ,r,r 45--49, 55). In the Examiner's
view, Hofmann's backward handover would not have occurred if not for the
user equipment receiving the handover command. Ans. 23.
Appellants argue, among other things, that Hofmann's backward
handover is not in response to receiving a handover command. App. Br. 9-
12; Reply Br. 3--4. According to Appellants, Hofmann's backward handover
is a separate and distinct handover process because the backward handover
does not occur every time a handover command is issued. App. Br. 10. In
Appellants' view, "a break in the causal chain of events" occurs between
issuing the handover command and executing a backward handover.
Id. at 11.
ISSUE
Under§ 103(a), has the Examiner erred in rejecting claim 1 by finding
that Laroia, Kalhan '598, and Hofmann collectively would have taught or
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Application 12/495,395
suggested a wireless communication device comprising (1) a receiver
configured to receive a handoff control message from a first transceiver
node, and (2) a controller configured to process, in response to receiving the
handoff control message from the first transceiver node, a handoff from a
second transceiver node to the first transceiver node to invoke reception of
traffic channel signals from the first transceiver node ("the disputed
limitation")?
ANALYSIS
On this record, we see no error in the Examiner's obviousness
rejection of claim 1. In the rejection, the Examiner relies on Laroia for
teaching many elements of claim 1, including a wireless communication
device comprising a receiver that wirelessly receives first control signals
from a first transceiver node, and a controller that monitors the first control
signals. Final Act. 3--4. The Examiner, however, acknowledges that
Laroia's receiver does not receive a handoff control message from the first
transceiver node, and Laroia's controller does not process, in response to the
handoff control message, a handoff from the second transceiver node to the
first transceiver node to invoke reception of traffic channel signals from the
first transceiver node. Id. at 4. The Examiner cites Hofmann in concluding
that such functionality of the disputed limitation would have been obvious.
Id. at 4--5.
Thus, Appellants' arguments regarding Hofmann's alleged individual
shortcomings pertaining to the disputed limitation (App. Br. 8, 10-11), then,
do not show nonobviousness where, as here, the rejection is based on the
cited references' collective teachings. See In re Merck & Co., Inc., 800 F.2d
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Application 12/495,395
1091, 1097 (Fed. Cir. 1986). In short, Appellants do not persuasively rebut
the Examiner's finding that Laroia's receiver of a wireless communication
device is configured to receive a handoff control message from a first
transceiver node such as that at least suggested in Hofmann's functionality
discussed below. Nor do Appellants persuasively rebut the Examiner's
finding that modifying Laroia' s contro Iler of the wireless communication
device, which is configured to process, in response to receiving the handoff
control message, a handoff from the second transceiver node to the first
transceiver node to invoke reception of traffic channel signals from the first
transceiver node with Hofmann's functionality discussed below would have
been at least an obvious variation.
Nor do we find availing Appellants' argument concerning an
unfounded requirement that Hofmann must explicitly (App. Br. 11;
Reply Br. 3) or inherently (App. Br. 11-12; Reply Br. 4) teach or suggest the
disputed limitation. "The distinction between rejections based on 35 U.S.C.
[§] 102 and those based on 35 U.S.C. [§] 103 should be kept in mind."
MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 706.02 (9th ed. Rev.
08.2017, Jan. 2018). "Anticipation requires that every limitation of the
claim in issue be disclosed, either expressly or under principles of inherency,
in a single prior art reference." Corning Glass Works v. Sumitomo Elec.
US.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989). A prior art
disclosure that anticipates under § 102 also renders the claim obvious under
§ 103, for anticipation is the epitome of obviousness. See In re Pearson, 494
F.2d 1399, 1402 (CCPA 1974); In re McDaniel, 293 F.3d 1379, 1385 (Fed.
Cir. 2002) (noting that it is "well-settled that 'anticipation is the epitome of
obviousness."'). But a claim can be obvious under § 103 even where all of
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the claimed features are not found in a specific prior art reference, where
"there is a showing of a suggestion or motivation to modify the teachings of
[the prior art] to the claimed invention." Ormco Corp. v. Align Tech. Inc.,
463 F.3d 1299, 1307 (Fed. Cir. 2006) (quoting SIEJA Neurosciences, Inc. v.
Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000)); see also In re
Nilssen, 851 F.2d 1401, 1403 (Fed. Cir. 1988) (holding that "for the purpose
of combining references, those references need not explicitly suggest
combining teachings, much less specific references.") ( emphasis added).
Turning to the rejection, Hofmann performs a handover of user
equipment in a process shown in Figure 3. Hofmann's Figure 3 shows a
schematic signaling diagram and is reproduced below:
Fig. 3
Hofmann's schematic signaling diagram in Figure 3
Hofmann's user equipment (UE) 9 sends a first measurement report (MRI)
to source base station 1.1 upon reaching trigger thresholds. Hofmann ,r 45.
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Application 12/495,395
Hofmann's source base station 1.1, in response, sends a handover indication
(HI) message including the MRI to target base station 1.2. Id. ,r 46. Source
base station 1.1 subsequently sends a handover command (HC) to UE 9 if
source base station 1.1 does not receive a handover rejection (HR) message
from target base station 1.2. Id. ,r 47. UE 9, then, sends the handover
command (HC') to target base station 1.2. Id. Hofmann's target base
station 1.2 then sends a measurement report request (MRR) to the UE 9, and
the UE 9, in return, sends a second measurement report (MR2) to target base
station 1.2. Id. ,r 48. Hofmann's target base station 1.2 then may execute a
backward handover, which hands UE 9 back to source base station 1.1 for a
certain time period if either: (1) a difference between MRI and MR2
exceeds a predefined threshold, or (2) Hofmann's target base station 1.2
experiences an overload situation. Id. ,r,r 48--49.
We agree with Appellants that these two conditions are "intervening
conditions, either one of which must be satisfied in order to execute the
backward handover." App. Br. 11. Nevertheless, we disagree with
Appellants that Hofmann does not teach or suggest processing a handoff
from a second transceiver node to a first transceiver in response to a handoff
control message received from the first transceiver node. See id.
Notably, Hofmann's source base station 1.1 's sending the handover
command HC to the UE triggers the handover process-a handover process
that must occur before target base station 1.2 can hand back to source base
station 1.1 under the specified conditions. See Hofmann ,r,r 45--49. That is,
but for Hofmann sending the handover command HC from source base
station 1.1 to the UE 9, the backward handover would not be performed.
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Application 12/495,395
To be sure, there are scenarios where the backward handover will not
occur, namely when the respective measurement reports are approximately
the same and no overload exists. See Hofmann ,r,r 48--49. But there are
other scenarios where the backward handover will occur, namely when the
respective measurement reports differ by a certain amount or when an
overload exists. See id. In these latter scenarios, the backward handover
would not occur but for the preceding handover that was triggered by the
handover command HC. In these latter scenarios, then, the backward
handover is at least indirectly based on the initial handover command HC as
the Examiner correctly indicates. Ans. 23. The Examiner's point in this
regard is well taken. See id. (noting that Hofmann's backward handover
would not occur if the handover command HC was not received in the first
place).
Therefore, Hofmann's backward handover is responsive to source
base station 1.1 's sending the handover command HC to UE 9, albeit
indirectly. Nothing in the claim precludes this chain of causation.
Appellants' arguments to the contrary are unavailing and not commensurate
with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 4, 6, 7, 10, 12, 13, 16, and 18-20 not argued separately
with particularity. 3
3 Although Appellants nominally argue independent claims 7, 13, and 19
separately, Appellants reiterate arguments made for claim 1. See App. Br.
12-18. Accordingly, we group these claims together.
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Application 12/495,395
THE OTHER OBVIOUSNESS REJECTION
We also sustain the Examiner's obviousness rejection of claims 2, 3,
8, 9, 14, and 15 under 35 U.S.C. § 103(a). Final Act. 15-18. Because this
rejection is not argued separately with particularity, we are not persuaded of
error in this rejection for the reasons previously discussed.
CONCLUSION
The Examiner did not err in rejecting claims 1--4, 6-10, 12-16, and
18-20 under§ 103(a).
DECISION
The Examiner's decision in rejecting claims 1--4, 6-10, 12-16, and
18-20 is affirmed.
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.
§ 4I.50(f).
AFFIRMED
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