Ex Parte YAMADA et al

Patent Trial and Appeal BoardFeb 14, 2019

14660587 (P.T.A.B. Feb. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/660,587 03/17/2015 23117 7590 02/19/2019 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Shohei YAMADA 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. HWB-1035-1319 1453 EXAMINER TIM ORY, KABIR A ART UNIT PAPER NUMBER 2631 NOTIFICATION DATE DELIVERY MODE 02/19/2019 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHOHEI YAMADA, JIA SHENG, and JOHN MICHAEL KOWALSKI Appeal2018-006487 Application 14/660,587 1 Technology Center 2600 Before MAHSHID D. SAADAT, DAVID M. KOHUT, and JAMES W. DEJMEK, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from a Final Rejection of claims 19, 26, and 33-36. Appellants have canceled claims 1-18, 20-25, and 27-32. App. Br. 28-29. We have jurisdiction over the remaining pending claims under 35 U.S.C. Â§ 6(b ). We affirm-in-part. 1 Appellants identify Sharp Kabushiki Kaisha as the real party in interest. App. Br. 3. Appeal2018-006487 Application 14/660,587 STATEMENT OF THE CASE Introduction Appellants' disclosed and claimed invention generally relates to "granting radio resources for wireless device-to-device (D2D) communications." Spec. ,r 1. Claim 19 is exemplary of the subject matter on appeal and is reproduced below: 19. A method in a wireless terminal, the method comprising: generating a radio resource control (RRC) message including wireless terminal capability information, for each of one or more band combinations, indicating whether or not the wireless terminal, which is a user equipment (UE), supports simultaneous transmission of a plurality of communications consisting of (i) communication between the wireless terminal and a base station and (ii) device-to-device (D2D) communication directly performed between the wireless terminal and another wireless terminal, wherein the wireless terminal supports the communication between the wireless terminal and the base station in the one or more band combinations; and transmitting the radio resource control (RRC) message to the base station. The Examiner's Rejection Claims 19, 26, and 33-36 stand rejected under 35 U.S.C. Â§ 103 as unpatentable over Hakola et al. (US 2014/0106757 Al; Apr. 17, 2014) ("Hakola") and Patil et al. (US 2015/0215981 Al; July 30, 2015) ("Patil"). Final Act. 7-10. 2 Appeal2018-006487 Application 14/660,587 ANALYSIS 2 Claims 19, 26, 35, and 36 Appellants argue Hakola fails to teach a wireless terminal generating a radio resource control (RRC) message including wireless terminal capability information and transmitting the RRC message to a base station. App. Br. 18-20; Reply Br. 2--4. In particular, Appellants argue Hakola describes transmitting capabilities of the base station (i.e., an evolved Node B, or eNB) between eNBs or providing the capabilities of the eNB to the wireless terminal. App. Br. 18 (citing Hakola, Figs. 6-7). To the extent the Examiner relies on Hakola's disclosure of a wireless terminal (i.e., the user equipment, or UE) transmitting an RRC message to the eNB, Appellants argue the message in Hakola does not include the claimed wireless terminal capability information-i.e., indicating whether or not the wireless terminal supports simultaneous transmission of a plurality of communications consisting of (i) communication between the wireless terminal and a base station, and (ii) device-to-device communication directly performed between the wireless terminal and another wireless terminal. Reply Br. 2--4 ( citing Hakola ,r,r 44--45, and 50). Additionally, Appellants argue Patil fails to teach an RRC message including wireless terminal capability or an indication of whether or not the wireless terminal supports simultaneous transmission of a plurality of communications. App. Br. 21-24; Reply Br. 4--5. 2 Throughout this Decision, we have considered the Appeal Brief, filed July 6, 2017 ("App. Br."); the Reply Brief, filed June 7, 2018 ("Reply Br."); the Examiner's Answer, mailed April 11, 2018 ("Ans."); and the Final Office Action, mailed April 21, 2017 ("Final Act."), from which this Appeal is taken. 3 Appeal2018-006487 Application 14/660,587 We begin our analysis with a review of claim 19. Claim 19 requires a wireless terminal to generate a radio resource control (RRC) message and transmit the message to the base station. Additionally, the claim requires the wireless terminal to support the communication between the wireless terminal and the base station in one or more band combinations. Further, the claim recites the RRC message includes certain content-namely that the message includes: wireless terminal capability, for each of one or more band combinations, indicating whether or not the wireless terminal, which is a user equipment (UE), supports simultaneous transmission of a plurality of communications of consisting of (i) communication between the wireless terminal and a base station and (ii) device-to-device (D2D) communication directly performed between the wireless terminal and another wireless terminal. However, the claim does not recite using the specific message content, but instead only recites that the message is transmitted. Additionally, the message content merely indicates whether the wireless terminal supports the recited simultaneous transmission of communications. "Claim limitations directed to printed matter are not entitled to patentable weight unless the printed matter is functionally related to the substrate on which the printed matter is applied." Praxair Distribution, Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1031 (Fed. Cir. 2018) ( emphasis added). Our reviewing court has also explained that this printed matter doctrine is not strictly limited to "printed" materials. Mallinckrodt, 890 F.3d at 1032. More specifically, "a claim limitation is directed to printed matter 'if it claims the content of information.'" Mallinckrodt, 890 F.3d at 1032 (quoting In re DiStefano, 808 F.3d 845,848 (Fed. Cir. 2015)). 4 Appeal2018-006487 Application 14/660,587 "Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms ofpatentability." In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (footnote omitted). As a general proposition, we need not give patentable weight to non-functional descriptive material absent a new and nonobvious functional relationship between the descriptive material and the substrate. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010); and Manual of Patent Examining Procedure (MPEP) Â§ 2111.05 (9th ed. Rev. 08.2017, Jan. 2018). In Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI 2008) (precedential), the Board held that the nature of the information being manipulated by the computer should not be given patentable weight absent evidence that the information is functionally related to the process "by changing the efficiency or accuracy or any other characteristic" of the steps. See also Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (non- precedential) (holding "wellness-related" data stored in a database and communicated over a network was non-functional descriptive material as claimed because the data "does not functionally change" the system). We find the content of the RRC message does not change the method of claim 19 or, similarly, the circuitry of the wireless terminal (see claim 26) to generate and transmit the message. Moreover, the content of the RRC message is not functionally related to the generation of an RRC message or the transmission of such message. Accordingly, the content of the RRC message is merely non-functional descriptive material. 5 Appeal2018-006487 Application 14/660,587 Having determined independent claim 19 recites non-functional descriptive matter, we are mindful to read the claim as a whole in our analysis. See Gulack, 703 F.2d at 1385 ("[T]he board cannot dissect a claim, excise the printed matter from it, and declare the remaining portion of the mutilated claim to be unpatentable. The claim must be read as a whole.") (footnote omitted). Based on the foregoing discussion, claim 19 is interpreted as follows: 19. A method in a wireless terminal, the method comprising: generating a radio resource control (RRC) message including [ non-functional descriptive matter]; and transmitting the radio resource control (RRC) message to the base station. As identified by the Examiner, Hakola teaches a wireless terminal having a radio resource control connection with a base station (i.e., eNB). Hakola ,r 27, Fig. 1; see also Ans. 2--4; Final Act. 7-8. In particular, the Examiner finds, and we agree, Hakola expressly teaches the wireless terminal generating an RRC message and transmitting the RRC message to the base station. Ans. 4 (citing Hakola ,r 44). Figure 6D of Hakola is illustrative and is reproduced below: 6 Appeal2018-006487 Application 14/660,587 I 204 UE I j 100 SOURCE tNB I 1200 TARGET ms I 608 HO REQUEST & PROSE INFO, ~ 610 HO RESPONSE & - CAPABILITY INFORMATION 606 CAPASILITY INDICATION 615 ' ... L!. ..... ... "--~------Â·Â·Â·Â· .. """''Hâ€¢,.â€¢â€¢â€¢â€¢â€¢â€¢''"'~Â·Â·â€¢â€¢â€¢â€¢â€¢â€¢"''"'""'"''"nn,,â€¢ ...... ,. ... " ............ -...................... -.. I 616 DETECTION: NO SIB j 618 MESSAGE ~ ~ ! 620 ACT!NG BASED ON MESSAGE I ...................... ..1 ....................... , / 611 ACTIVATING PROSE & SIB 1 . ; j 622DETECTION: SIB i Â· . ., .............. r .................... Â· ....................... r ...................... FIG.6D Figure 6D of Hakola illustrates a signal flow diagram between, inter alia, a wireless terminal (204 UE) and a base station (200 Target eNB). Hakola ,r,r 22, and 44--45. As shown in Figure 6D, Hakola describes "the UE 204 may generate an RRC message 618 to the target eNB 200." See Hakola ,r 44. Moreover, Hakola discloses "a message 618 may be sent [i.e., transmitted)] to the target node 200 ... [ and] may comprise various indications." Hakola ,r 45. Thus, we find Hakola teaches a wireless terminal generating an RRC message and transmitting the RRC message to a base station. For the reasons discussed supra, we are unpersuaded of Examiner error. Accordingly, we sustain the Examiner's rejection of independent claim 19. 3 For similar reasons, we also sustain the Examiner's rejection of 3 We note the Examiner relied on the combined teachings of Hakola and Patil in rejecting claims 19, 26, 35 and 36. See Final Act. 7-10. Although, based on our construction of the claims, we rely only on the teachings of 7 Appeal2018-006487 Application 14/660,587 independent claim 26, which recites similar limitations (and non-functional descriptive matter) and was not argued separately. See App. Br. 25; see also 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2017). Further, we sustain the Examiner's rejection of claims 35 and 36, which depend therefrom and were not argued separately with particularity. See App. Br. 37; see also 37 C.F.R. Â§ 4I.37(c)(l)(iv) Claims 33 and 34 Claim 33 depends from claim 19 and recites "wherein the wireless terminal in RRC_CONNECTED is served in a serving cell in a first carrier frequency, and the wireless terminal performs the D2D communication in a second carrier frequency different from the first carrier frequency." Claim 34 depends from claim 26 and recites a similar limitation. Appellants argue that although Patil, as relied on by the Examiner (see Final Act. 9), generally describes the system may support operation on multiple carriers, Patil fails to teach how the different carriers are used. App. Br. 26. More specifically, Appellants argue Patil does not teach a wireless terminal in RRC_CONNECTED is served in a serving cell on a first carrier frequency and that D2D communications involving the wireless terminal occur on a second, different carrier frequency. App. Br. 26. The Examiner does not respond to Appellants' arguments. Reviewing the Examiner's rejection of claims 33 and 34 (see Final Act. 9) and the cited portions of Patil (i.e., Patil ,r,r 51, 57, and 60-61), we find Patil describes a wireless communications system that may support operation on multiple Hakola, this does not constitute a new ground of rejection. See In re Bush, 296 F.2d 491,496 (CCPA 1961). 8 Appeal2018-006487 Application 14/660,587 frequencies. Patil ,r 51. Additionally, Patil describes that after a wireless terminal transitions to (D2D) Mode 2 (i.e., a mode wherein the wireless terminal selects resources from resource pools (see Patil ,r 59)) may operate in a device-to-device communications mode and continue to monitor for and receive indications from a base station conveying resource pool information. Patil ,r 61. However, Patil does not describe that in Mode 2, the wireless terminal is in RRC_CONNECTED, as required by claims 33 and 34. In contrast, Appellants explain when the wireless terminal is RRC_CONNECTED, there is normal RRC connection between the wireless terminal and the base station, and the wireless terminal may operate in (D2D) Mode 1. See Spec. ,r,r 87, and 103-104. Additionally, the Examiner does not provide sufficient technical reasoning or evidence to support the finding that Patil teaches "wherein the wireless terminal in RRC_CONNECTED is served in a serving cell in a first carrier frequency, and the wireless terminal performs the D2D communication in a second carrier frequency different from the first carrier frequency." For the reasons discussed supra, we do not sustain the Examiner's rejection of claims 33 and 34. DECISION We affirm the Examiner's decision rejecting claims 19, 26, 35, and 36. We reverse the Examiner's decision rejecting claims 33 and 34. 9 Appeal2018-006487 Application 14/660,587 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)(l). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 10