Ex Parte Aydin et al

Patent Trial and Appeal Board

May 16, 2017

13825718 (P.T.A.B. May. 16, 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.
13/825,718 03/22/2013 Osman Aydin LUTZ 201616US01 5229
48116 7590 05/18/2017
FAY STTARPF/T TTf’F.NT
EXAMINER
1228 Euclid Avenue, 5th Floor SCHEIBEL, ROBERT C
The Halle Building
Cleveland, OH 44115-1843 ART UNIT PAPER NUMBER
2467
NOTIFICATION DATE DELIVERY MODE
05/18/2017 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 @ faysharpe.com
ipsnarocp @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OSMAN AYDIN and UWE DOETSCH
Appeal 2016-008352
Application 13/825,718
Technology Center 2400
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
ERIC S. FRAHM, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—13 and 15. Claim 14 is objected to as being
dependent upon a rejected base claim. The Examiner indicates that claim 14
would be allowable if rewritten in independent form. (Final Act. 14). We
have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
Invention
The disclosed and claimed invention on appeal “relates to the field of
telecommunications, and, more specifically, to methods and devices for
Appeal 2016-008352
Application 13/825,718
performing Machine Type Communications (MTC) in a radio network.”
(Spec. II.)1
Representative Claim
1. A method for providing information from a machine
device, wherein the
[LI] machine device is a sensor device, to a radio access
network, comprising:
[L2] transmitting, by the machine device, a plurality of
Random Access Channel preambles over a Random Access
Channel, wherein the information is encoded by transmitting
the Random Access Channel preambles with pre-selected
frequency offsets relative to each other.
(Contested limitations are emphasized.)
Rejections
A. Claims 1, 3—6, 8, 10, 11, 13, and 15 are rejected under pre-AIA 35
U.S.C. § 103(a) as being obvious over the combined teachings and
suggestions of Fung et al. (US 2012/0300644 Al, pub. Nov. 29, 2012)
(hereinafter “Fung”) in view of Golaup et al. (US 2011/0244907 Al,
pub. Oct. 6, 2011) (hereinafter “Golaup”).
B. Claims 2 and 9 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of Fung,
Golaup, and Gaikwad (US 2008/0101496 Al, pub. May 1, 2008).
C. Claim 7 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Fung,
1 We reference the Specification paragraphs as designated in US Patent
Application Publication 2014/0177525 Al.
2
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Application 13/825,718
Golaup, and Malladi et al. (US 2011/0294530 Al, pub. Dec. 1, 2011)
(hereinafter “Malladi”).
D. Claim 12 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Fung,
Golaup, and Shaheen (US 2011/0128911 Al, pub. June 2, 2011).
Grouping of Claims
Based on Appellants’ arguments, we decide the appeal of all claims
rejected under rejection A on the basis of representative independent claim
1. See 37 C.F.R. § 41.37(c)(l)(iv). We decide the appeal of independent
claim 12, rejected under rejection D, infra. We address rejection B of
dependent claims 2 and 9, and rejection C of dependent claim 7, separately,
infra. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We disagree with Appellants’ arguments, and we adopt as our
own: (1) the findings and legal conclusions set forth by the Examiner in the
final action from which this appeal is taken (Final Act. 2—14), and (2) the
findings, legal conclusions, and explanations set forth in the Answer in
response to Appellants’ arguments. (Ans. 2—7.) We highlight and address
specific findings and arguments for emphasis in our analysis below.
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Rejection A of Independent Claim 1 under 35 U.S.C. § 103(a)
We decide the following issues presented in this appeal regarding
rejected representative claim 1:
Issues: Under § 103, did the Examiner err by finding the cited
combination of Fung and Golaup would have taught or suggested the
contested limitations:
wherein the
[LI] machine device is a sensor device, to a radio access
network, comprising:
[L2] transmitting, by the machine device, a plurality of
Random Access Channel preambles over a Random Access
Channel, wherein the information is encoded by transmitting
the Random Access Channel preambles with pre-selected
frequency offsets relative to each other\,]
within the meaning of claim 1? 2 (Emphasis added).
Appellants contend, inter alia:
As previously argued, [Fung and Golaup] fail to disclose
transmitting by sensors, as recited in claim 1. The cited portions
of Fung merely disclose transmission and receipt of signals via
communication devices, none of which are identified as sensors.
In fact, Fung fails to disclose sensor devices as recited in claim
1. Golaup likewise fails to disclose transmission by machine
devices taking the form of sensor devices.
In the Response to Remarks section in the Final Office
Action of August 31, 2015, the Examiner asserts that cellular
phones, disclosed in the art, may act as sensor devices as per the
claims as cellular phones may house sensor devices. However,
as previously argued, this is not in keeping with claim 1 as the
2 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997).
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specification of the present application clearly shows sensor
devices (SI) and cellular phones (UE) as distinct entities.
(App. Br. 6.)
The Examiner disagrees:
As noted in the Final Rejection mailed 8/31/2015, the
Examiner gives the term sensor device its broadest reasonable
interpretation. A device which senses some part of its
environment is reasonably interpreted as a sensor device.
Cellular phones are well-known to sense their environment; for
example, cellular phones include a microphone for sensing
human voice energy. Cellular phones also measure channel
quality using other types of sensors. [The] Examiner maintains
that cellular phones are reasonably interpreted as sensor devices.
Further, Appellant's suggestion that the devices labeled SI
and UE in Figure 1 indicate a clear distinction between sensor
devices and cellular phones is not persuasive. Although the
specification discusses sensor devices and user equipment
devices separately, it does not draw a clear line between the two.
In addition, in paragraph 0052, the specification notes that "the
transfer of encoded information to the Radio Access Network
RAN over the Random Access Channel RACH is not limited to
sensor devices. In particular, user equipments UE (see FIG. 1)
which allow human interactions may also be provided with this
additional communication functionality.'' In other words,
UEs/cellular phones can also be provided with the functionality
to communicate like "sensor devices" or "machine devices".
That is, UEs can operate in a sensor device mode (at least as far
as the use of the RACH is concerned).
Additionally, if, as Appellants] suggests, cellular devices
fall into a category of devices which (a) sense their environment
and (b) are not considered "sensor devices", the specification
does not clearly delineate the boundary between this type of
device and "sensor devices". If Appellant's assertion is correct,
it is unclear how other devices which perform a sensing function
are categorized as being either "sensor devices" or not. (What
other types of "sensing" devices are not considered "sensor
devices"? ) However, as claimed, Examiner's interpretation of a
sensor device as a device which performs a sensing function has
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a clear scope. Under this interpretation, cellular devices are a
subset of the broader category of sensor devices.
(Ans. 2-3.)
Contested limitation LI
This appeal turns upon claim construction regarding the contested
limitations. Appellants urge that the “specification . . . clearly shows sensor
devices (SI) and cellular phones (UE) as distinct entities.” (App. Br. 6.)
However, we find Appellants’ Specification also indicates that “all
statements herein reciting principles, aspects, and embodiments of the
invention, as well as specific examples thereof, are intended to encompass
equivalents thereof.” (Spec. 155 (emphasis added).) Given this context,
we agree with the Examiner that cell phones are “machine devices” that are
also “sensor devices” within the meaning of claim 1. (See Ans. 2—3; see
also Spec. 1 52.)
Although Appellants’ Figure 1 depicts a preferred embodiment in
which sensor devices (SI) and cellular phones (UE) are distinct entities, our
reviewing court guides: “[tjhough understanding the claim language may be
aided by the explanations contained in the written description, it is important
not to import into a claim limitations that are not a part of the claim.”
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004). “We have cautioned against reading limitations into a claim from the
preferred embodiment described in the specification, even if it is the only
embodiment described, absent clear disclaimer in the specification.” In re
Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
Applying this reasoning here, we decline Appellants’ invitation to
import limitations from the Specification into the claims. Given the absence
of a definition (or a clear disclaimer) in the claim or Specification for the
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contested claim term “sensor device” (claim 1), on this record, we are not
persuaded the Examiner’s reading of contested limitation LI is overly broad,
unreasonable, or inconsistent with the Specification.3 (See Ans. 2—3.)
Contested limitation L2
Regarding contested limitation L2, Appellants urge: “the cited art fails
to disclose that the information is encoded by transmitting the Random
Access Channel preambles with pre-selected frequency offsets relative to
each other.” (App. Br. 6.) Appellants note:
The Examiner indicates that Fung (paragraph 126)
discloses a [sic] pre-ambles with a pre-selected frequency offsets
relative to each other as the pre-ambles are rotated by a plurality
of angles from one another in the time domain, which constitutes
frequency shifting to the corresponding signals in the frequency
domain. However, regarding the pre-selected signals, the present
application makes clear that "'pre-selected' refers to the fact that
typically the base station/RAN has knowledge about the specific
frequency off-sets of the mobile devices which may transmit on
the RACH (see paragraph 9 of published application). Fung and
Golaup (cited as disclosing random access channel preambles
and transmission over a Random Access Channel) both fail to
disclose such knowledge by any base stations recited therein.
Thus, in the context of the present application, Fung and Golaup
fail to disclose this feature.
(App. Br. 6—7.)
The Examiner disagrees:
First, the broadest reasonable interpretation of the claimed "pre­
selected frequency offsets" is frequency offsets which are
selected prior to the signal encoding and transmission. Clearly,
Fung discloses pre-selecting the offset to be used prior to
3 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007).
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Application 13/825,718
encoding and transmitting the signals with these offsets. Further,
Fung discloses an example in paragraph 0035 whereby a first
offset (rotation angle) is 0 and a second offset is n. These offsets
are pre-selected and would be known by the receiving device
(such as a base station) to properly decode the rotated signals.
Finally, in other example offsets, the fact that the receiving
device is able to properly decode the rotated signals clearly
suggests that the receiver has knowledge of the offset.
(Ans. 4 (emphasis added).)
Turning to the evidence cited by the Examiner (id), Fung (| 35)
describes: “In the third specific expression, advantageously, a starting angle
of the first plurality of different rotation angles and a starting angle of the
second plurality of different rotation angles may differ by n. Preferably, the
starting angle of the first plurality of different rotation angles is 0.”
Contrary to Appellants’ arguments (App. Br. 6—7), we do not find a
limiting definition in the claim or Specification (| 9) for the contested claim
term “pre-selected.” Because of the use of the qualifier “typically” (Spec.
19), we merely find a non-limiting, exemplary description of “pre-selected
frequency offsets” (claim 1):
The term “pre-selected” refers to the fact that typically the base
station/RAN has knowledge about the specific frequency
offsets/sequences of frequency offsets of the mobile devices
which may transmit on the RACH.
(Spec. 19 (emphasis added).)
Moreover, we find the description in Fung (| 17) buttresses the
Examiner’s finding that the contested “pre-selected frequency offsets” are at
least suggested by the cited combination of Fung and Golaup:
Preferably, the method may further comprise determining a
plurality of modulation symbols used by the plurality of
subcarriers to form each of the first set of preambles. The method
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may further comprise shifting a frequency of each of the signals
by applying one of the plurality of different rotation angles.
(Fung 117.)
We note the Examiner relies on Golaup for teaching or suggesting
“using random access preambles over the RACH [(Random Access
Channel),] for accessing the network (disclosed throughout, see abstract, for
example).” (Final Act. 5 (emphasis added).)
Given the absence of a limiting definition in the claim or Specification
for the contested claim term “pre-selected,” on this record, we are not
persuaded the Examiner’s reading is overly broad, unreasonable, or
inconsistent with the Specification.4 (See Final Act. 4—5; Ans. 3 4.)
Therefore, we find the cited combination of Fung and Golaup at least
suggests (and thus renders obvious) the contested second limitation of
“transmitting, by the machine device, a plurality of Random Access Channel
preambles over a Random Access Channel, wherein the information is
encoded by transmitting the Random Access Channel preambles with pre­
selected frequency offsets relative to each other’'' (claim l).5
Accordingly, on this record, and based upon a preponderance of the
evidence, Appellants have not persuaded us the Examiner erred. Because
we find a preponderance of the evidence supports the Examiner’s underlying
factual findings and ultimate legal conclusion of obviousness regarding both
4 Seen3, supra.
5 “[T]he question under 35 U.S.C. [§] 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made.” Merck & Co. v. Biocraft
Labs., Inc., 874 F. 2d 804, 807 (Fed. Cir. 1989) (emphasis added) (quoting
In reLamberti, 545 F.2d 747, 750 (CCPA 1976)).
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contested limitations, we sustain the Examiner’s rejection A of
representative claim 1.
We note independent claims 8, 13, and 15 (also rejected under
rejection A) each recite contested limitations LI and L2 in similar or
commensurate form, and Appellants essentially advance the same arguments
for these claims (App. Br. 7—10), as previously advanced regarding claim 1.
(App. Br. 6—7.) Therefore, we sustain rejection A of independent claims 8,
13, and 15, for the same reasons discussed above regarding rejection A of
claim 1. The remaining dependent claims also rejected under rejection A
fall with representative claim 1. See supra Section “Grouping of Claims.”
Rejections B and C of Dependent Claims 2, 9, and 7 under § 103(a)
Appellants advance no separate, substantive arguments for rejection B
of dependent claims 2 and 9, and rejection C of dependent claim 7.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Rejection D of Independent Claim 12 under 35 U.S.C. § 103(a)
Regarding the contested “sensor device” limitation, Appellants urge:
“the combination of Fung [and] Golaup . . . fails to disclose transmission by
sensor devices. Shaheen fails to remedy this deficiency.” (App. Br. 10).
However, we find no deficiencies regarding the base combination of Fung
and Golaup, for the reasons discussed above regarding rejection A of
claim 1.
Appellants further contend: “Shaheen differentiates between MTCs
(servers) and sensors and does not indicate that the master machine device
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(MTC) is a sensor. Thus, unlike claim 12, the combination of Fung, Golaup
and Shaheen fails to indicate a master machine device taking the form of a
sensor device.” (App. Br. 10—11.) Appellants additionally contend (App.
Br. 11):
the cited portions of Fung, Golaup and Shaheen fail to disclose
an encoding unit encoding information by selecting frequency
offsets between preambles. The Examiner, in the Response to
Remarks section in the Final Office Action of August 31, 2015,
indicates that Fung shows encoding by selecting frequency
offsets between preambles and that such encoding requires an
encoding unit. Even if this were taken to be true, the Examiner
has not clearly shown that each machine device contains an
encoding unit as recited in claim 12 as there is no indication the
MTCs disclosed in Shaheen perform the process put forward by
the Examiner to be encoding.
The Examiner disagrees:
The claim is broad and does not require that the "master machine
device" is in the "form of a sensor device". Rather, claim 12
requires "a plurality of machine devices" which comprise an
encoding unit. This plurality of devices is disclosed by Fung as
indicated above. Claim 12 further requires "a master machine
device" which is adapted to receive and distribute network
configuration parameters "to the plurality of machine devices".
The claim in no way indicates that the "master machine device"
requires any of the limitations attributed to the "plurality of
machine devices". That is, the claim is met as long as the prior
art can show (a) a plurality of master devices (and the associated
limitations) and (b) a master machine device (and its associated
limitations). The claim does not require any other connection
between the plurality of machine devices with the encoding
limitations and the master machine device (which may or may
not have the encoding limitations). Shaheen discloses the
limitations of receiving and distributing network configuration
parameters as indicated in the Final Rejection mailed 8/31/2015.
(Ans. 6.)
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We note the test for obviousness is not whether the claimed invention
is expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citation omitted).
Because Appellants’ arguments are directed to the references
individually, and not to the combination of the respective teachings as
applied by the Examiner (Final Act. 12—14; Ans. 5—7), on this record, we are
not persuaded the Examiner erred. Accordingly, we sustain the Examiner’s
rejection D of independent claim 12.
Reply Brief
To the extent Appellants advance new arguments in the Reply Brief
not in response to a shift in the Examiner’s position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner’s Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
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DECISION
We affirm the Examiner’s rejections of claims 1—13 and 15 under
pre-AIA 35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).
AFFIRMED
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