Ex Parte Tseng

Patent Trial and Appeal BoardApr 15, 2016

12343501 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/343,501 12/24/2008 Li-Chih Tseng 106622 7590 04/19/2016 Blue Capital Law Firm, P.C. 611 Anton Blvd., Suite 1050 Costa Mesa, CA 92626 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. 1291-108.101 4532 EXAMINER AREY ALO, JOSEPH ART UNIT PAPER NUMBER 2642 NOTIFICATION DATE DELIVERY MODE 04/19/2016 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): docketing@bluecapitallaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LI-CHIH TSENG Appeal2014-006687 Application 12/343,501 Technology Center 2600 Before HUNG H. BUI, KEVIN C. TROCK, and AMBER L. HAGY, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellant 1 seeks our review under 35 U.S.C. Â§ 134(a) of the Examiner's final rejection of claims 1, 4---6, and 9--12, which constitute all the claims pending in this application. Claims 2, 3, 7, and 8 are cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 2 1 According to Appellant, the real party in interest is Innovative Sonic Limited. App. Br. 2. 2 Our Decision refers to Appellant's Appeal Brief filed December 30, 2013 ("App. Br."); Reply Brief filed May 21, 2014 ("Reply Br."); Examiner's Answer mailed March 21, 2014 ("Ans."); Final Office Action mailed July Appeal2014-006687 Application 12/343,501 STATEMENT OF THE CASE 3GPP TS 26.321 3rd Generation Partnership Project (3GPP) Specification discloses the use of Discontinuous Reception (DRX) functionality to allow a user equipment (UE) to enter a standby mode during certain periods of time and stop monitoring Physical Down Link Control Channel (PDCCH) in order to reduce power consumption of the UE. Spec. i-f 7. However, Appellant recognizes that: [A ]ccording to the above operation, when the DRX Retransmission Timer is running but both of the On Duration Timer and the DRX Inactivity Timer are not running, if the PDCCH indicates the UE to receive a new transmission packet, the DRX Inactivity Timer would not be started or restarted by the DRX functionality. In such a case, the UE may miss reception of the following new transmission packets due to inability of continuously mentoring [sic, monitoring] the PDCCH." Id. i-f 12 (emphasis added). In order to address this problem, Appellant's invention proposes to improve a start mechanism of a DRX Inactivity Timer, i.e., to start or restart a DRX Inactivity Timer (1) when the PDCCH indicates the UE a new transmission and (2) a DRX Retransmission Timer is running, and both (3) an On Duration Timer and (4) a DRX Inactivity Timer are not running. Id. i-fi-1 3, 7, 13; Abstract. Claims 1 and 6 are independent. Claim 1 is illustrative of Appellant's invention and is reproduced below: 29, 2013 ("Final Act."); and the original Specification filed December 24, 2008 ("Spec."). 2 Appeal2014-006687 Application 12/343,501 1. A method of improving discontinuous reception (DRX) functionality for a user equipment (UE) of a wireless communication system, the method comprising: monitoring a Physical Downlink Control Channel (PDCCH); starting or restarting the DRX Inactivity Timer when the PDCCH indicates the UE a new transmission and a DRX Retransmission Timer is running, and both an On Duration Timer and a DRX Inactivity Timer are not running; and starting the DRX Retransmission Timer to monitor the PDCCH for detecting the retransmission of a Hybrid Automatic Repeat Request (HARQ) process when a HARQ RoundTrip Time (RTT) Timer expires. App. Br. 9 (Claims App.) (disputed limitations in italics). Evidence Considered 3GPP TS 26.321 V8.0.0 (2007-12) 3rd Generation Partnership Project: Technical Specification Group Radio Access Network; Evolved Universal Terrestrial Radio Access (E-UTRA) Medium Access Control (MAC) Protocol Specification (Release 8) (hereinafter referred as "3GPP Specification." Examiner's Rejections (1) Claims 1, 4, 6, 9, 11, and 12 stand rejected under 35 U.S.C. Â§ 102(e) as being anticipated by 3GPP Specification. Final Act. 2-5. (2) Claims 5 and 10 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over 3GPP Specification. Final Act. 5---6. Issue on Appeal Based on Appellant's arguments, the dispositive issue on appeal is whether 3GPP Specification discloses the disputed limitation: 3 Appeal2014-006687 Application 12/343,501 lSJtarting or restarting the DRX Inactivity Timer when the PDCCH indicates the UE a new transmission and a DRX Retransmission Timer is running, and both an On Duration Timer and a DRX Inactivity Timer are not running, as recited in independent claims 1 and 6. App. Br. 4--7; Reply Br. 4--5. ANALYSIS With respect to independent claims 1 and 6, Appellant acknowledges 3GPP Specification discloses in Section 5.7 a discontinuous reception (DRX) functionality at a user equipment (UE), including the time the UE is monitoring a Physical Downlink Control Channel (PDCCH) and the use of various timers such as (1) an On Duration Timer, (2) an DRX Inactivity Timer, and (3) a DRX Retransmission Timer. App. Br. 4--5 (citing 3GPP SpecificationÂ§ 5.7). However, Appellant argues 3GPP Specification does not disclose "starting or restarting the DRX Inactivity Timer" when all of these conditions are met: ( 1) when the PDCCH indicates the UE a new transmission; (2) a DRX Retransmission Timer is running, and both (3) an On Duration Timer and (4) a DRX Inactivity Timer are not running, as recited in claims 1 and 6. App. Br. 4--7; Reply Br. 4--5. According to Appellant, the 3GPP Specification only specifies the condition of "[i]f On Duration Timer or DRX Inactivity Timer is running and the PDCCH indicates a new transmission." App. Br. 5 (citing 3GPP SpecÂ§ 5.7:15). Accordingly, Appellant argues that "the DRX Inactivity Timer is not started or restarted when an On Duration Timer and a DRX Inactivity Timer are not running" in the manner recited in claims 1 and 6. Id. at 6. 4 Appeal2014-006687 Application 12/343,501 The Examiner acknowledges: On page 18, 3GPP under 5.7 Discontinuous Reception (DRX) lines 14-15 discloses the three different conditions "ON Duration Timer", "DRX Inactivity Timer is running" and "the PDCCH indicates a new transmission". The "IF" clause, allows to select between the two first options "ON Duration Timer" or "DRX Inactivity Timer is running" once the selection of any of these conditions is met, plus the "PDCCH indicates a new transmission" indicating that is a new transmission all the times, the outcome will be "the start or restart the DRX Inactivity Timer "after all conditions have been met. Ans. 3 (emphasis added). However, the Examiner relies on different portions (lines 16 and 19) of Section 5. 7 of 3 GPP Specification to support the finding that 3GPP Specification also teaches the situation where "a DRX Retransmission Timer is running, and both an On Duration Timer and a DRX Inactivity Timer are not running." Id. at 4. We do not agree with the Examiner. To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). It is not enough that the 3GPP Specification discloses part of Appellant's claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that an artisan might somehow combine to achieve the claimed invention. Net Moneyin, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). As pointed out by Appellant, "the conditions of lines 16 and 19 [of 3GPP Section 5.7 "describing the expiration of the DRX Inactivity Timer and the On Duration Timer"] contradict the conditions of line 14" which 5 Appeal2014-006687 Application 12/343,501 require that 'the PDCCH indicates a new transmission' and either the On Duration Timer or DRX inactivity Timer has to be running." Ans. 4--5. In other words, the Examiner has relied on multiple, distinct paragraphs of the DRX functionality for various (conflicting) conditions disclosed by the 3GPP Specification to describe the present invention. These conditions were expressly acknowledged by Appellants as the problem associated with the DRX functionality of the 3PGG Specification, i.e., "when the DRX Retransmission Timer is running but both of the On Duration Timer and the DRX Inactivity Timer are not running, if the PDCCH indicates the UE to receive a new transmission packet, the DRX Inactivity Timer would not be started or restarted by the DRX functionality." Spec. i-f 12. In order to address that problem, Appellant's invention proposes to improve a start mechanism of a DRX Inactivity Timer, i.e., to start or restart a DRX Inactivity Timer when all those conditions are met, i.e., (1) when the PDCCH indicates the UE a new transmission and (2) a DRX Retransmission Timer is running, and both (3) an On Duration Timer and ( 4) a DRX Inactivity Timer are not running. Id. Accordingly, based on the record before us we cannot sustain the Examiner's anticipation rejection of independent claims 1 and 6 and their respective dependent claims 4, 9, 11, and 12. With respect to dependent claims 5 and 10, Appellant presents no separate patentability arguments. App. Br. 7. For the same reasons discussed, we also cannot sustain the Examiner's obviousness rejection of claims 5 and 10. 6 Appeal2014-006687 Application 12/343,501 CONCLUSION On the record before us, we conclude that the Examiner has erred in rejecting claims 1, 4, 6, 9, 11, and 12 under 35 U.S.C. Â§ 102(e) or in rejecting claims 5 and 10 under 35 U.S.C. Â§ 103(a). DECISION As such, we REVERSE the Examiner's final rejection of claims 1, 4-- 6, and 9--12. REVERSED 7