Alcatel Lucent

Patent Trials and Appeals Board

Nov 23, 2021

2020003129 (P.T.A.B. Nov. 23, 2021)

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.
15/329,748 01/27/2017 Yun Deng LUTZ 202203US01 6222
48116 7590 11/23/2021
FAY SHARPE/NOKIA
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
EXAMINER
BROCKMAN, ANGEL T
ART UNIT PAPER NUMBER
2463
NOTIFICATION DATE DELIVERY MODE
11/23/2021 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
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YUN DENG, SEAU SIAN LIM, and YONG LIU
____________________

Appeal 2020-003129
Application 15/329,748
Technology Center 2400
____________________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and
ST. JOHN COURTENAY, III, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 5, 9 through 12, 14, 15, 17, and 27 through 30. The
Examiner has identified claims 6, 7, 20, 21, and 24 as containing allowable
subject matter. Claims 3, 4, 8, 13, 16, 18, 19, 22, 23, 25, and 26 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, Alcatel Lucent a wholly
owned subsidiary of Nokia Oy are the real party in interest. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims relate generally to a method for controlling a Proximity-
Based Service (ProSe) service in a communication system. Spec. p. 1, ll. 5–
7. Claim 1 is reproduced below.
1. A method of controlling a Prose service in an eNB of
a communication system, the method comprising:
sending, in a shared cell, a first PLMN identifier to
a UE of the shared cell, wherein the first PLMN identifier
indicates that a UE of the first PLMN can carry out the
ProSe service in the shared cell controlled by the eNB
and shared by the first PLMN and other PLMN.
EXAMINER’S REJECTIONS2
The Examiner rejects claims 1, 2, 5, 9 through 12, 14, 15, 17, and 27
through 30 under 35 U.S.C. § 112(b) as being indefinite. Final Act. 4–5.
The Examiner rejects claims 1, 2, 9, 10, 11, 12, 14, 17, and 27 through
30 under 35 U.S.C. § 102(a) (2) as being anticipated by Jung (US
2013/0208644 Al; published Aug. 15, 2013). Final Act. 5–9.
The Examiner rejects claims 15 and 15 under 35 U.S.C. § 103 as
being unpatentable by Jung and Lee (US 2010/0240367 A1; published Sept.
23, 2010). Final Act. 9–10.
ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the

2 Throughout this Decision, we refer to the Appeal Brief filed September
16, 2019 (“Appeal Br.”); the Reply Brief filed March 16, 2020 (“Reply
Br.”); the Final Office Action mailed March 29, 2019 (“Final Act.”) and the
Examiner’s Answer mailed January 16, 2020 (“Ans.”).
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Examiner’s rejection of claims 1, 2, 5, 9 through 12, 14, 15, 17, and 27
through 30 under 35 U.S.C. § 112(b) and of claim 17 under 35 U.S.C. §
102(a)(2). However, Appellant has not persuaded us of error in the
Examiner’s rejection claims 1, 2, 9through12, 14, 27 through 30 under 35
U.S.C. § 102 and claims 5 and 15 under 35 U.S.C. § 103(a).

Indefiniteness Rejection.
The Examiner rejects claims 1, 9, and 29 under 35 U.S.C. § 112(b) as
“The word ‘can’ renders the claim indefinite because it is unclear whether
the limitation(s) following the phrase are part of the claimed invention.”
Final Act. 5 (citing MPEP § 2175.05(d). Further, the Examiner considers
the term “can includes the aspect of defining a possibility (i.e. ‘those things
can happen’) and is inter changeable with may or might” and as such the
limitation is optional. Ans. 3–4.
Appellant argues the Examiner’s rejection is in error as the word
“can” should be afforded the ordinary meaning of “to be able to” and when
properly interpreted the claim is definite. Appeal Br. 10. Further, the
Appellant asserts that the section of the MPEP cited by the Examiner is not
relevant to the disputed term. Appeal Br. 10.
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection. Each of independent claims 1, 9, and 29 recite limitations directed
to the PLMN (Public Land Mobile Network) identifier indicating whether
the PLMN can carry out a ProSe service. We concur with the Appellant that
the use of the word “can” in this claim is reciting that the identifier indicates
that the ProSe service is able to be provided (i.e. the information conveyed
by the indication), and is not identifying a conditional limitation. As such,
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we do not sustain the Examiner’s indefiniteness rejection of claim 1, 9, and
29.
Anticipation Rejection of Independent claims 1, 9, and 29.
Appellant argues that the Examiner’s anticipation rejection 1, 9, and
29 is in error as Jung does not teach a ProSe service and thus does not teach
the claimed indicator that indicates a ProSe service can be carried out.
Appeal Br. 11–12; Reply Br. 3–4. Appellant, acknowledges that “claim 1
has no requirement of carrying out a Prose service, claim 1 has the feature of
the first PLMN identifier indicates that a UE of the first PLMN can carry out
the ProSe service.” Appeal Br. 11. However, Appellant argues that Jung
does not teach the claimed ProSe identifier as Jung teaches a closed
subscriber group and not a ProSe service (a device to device
communication). Appeal Br. 11–12 (citing Jung ¶¶ 3, 6 and Spec. 1).
The Examiner finds that Jung discloses the claimed method of
sending, in a shared cell, a PLMN identifier to a user equipment. Final Act.
5 (citing Jung ¶¶ 115–117). Further, in response to Appellant’s arguments,
the Examiner states “Jung discloses PLMN identifiers (¶ [0112], ¶ [0011]).
The multiple PLMN identifiers include first and second PLMNs which
because of the claim language do not have to indicate the first PLM is
carrying out the ProSe service.” Ans. 4.
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection. Representative claim 1 recites “sending, in a shared
cell, a first PLMN identifier to a UE of the shared cell, wherein the first
PLMN identifier indicates that a UE of the first PLMN can carry out the
ProSe service in the shared cell controlled by the eNB and shared by the first
PLMN and other PLMN.” As acknowledged by Appellant, the claim does
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not recite the feature of the carrying out ProSe service. The Examiner has
found and the Appellant has not contested, that Jung teaches communicating
a PLMN identifier. Appellant’s arguments are directed to whether the
PLMN identifier indicates whether a service can be performed (i.e. the
content of the information conveyed by the identifier). We consider the
disputed limitation to be directed to non-functional descriptive material
(printed matter) as the claim does not recite performing any function based
upon the indication in the PLMN identifier, i.e. there is no step performed
based upon the status of the indicator in the PLMN identifier.3 Thus, we do
not consider the disputed limitation to distinguish the invention over the
prior art. “[O]nce it is determined that the limitation is directed to printed
matter, one must then determine if the matter is functionally or structurally
related to the associated physical substrate, and only if the answer is ‘no’ is
the printed matter owed no patentable weight.” In re Distefano, 808 F.3d.
845, 851 (Fed. Cir. 2015). Accordingly, we sustain the Examiner’s
anticipation rejection of claims 1, 9, and 29.

Anticipation Rejection of Dependent claim 2.
With respect to claim 2, Appellant argues that the Examiner’s
anticipation rejection is in error as Jung does not teach either: a) the
limitation directed to sending information about one carrier frequency of the
other PLMN or the UE or b) the limitation “in response to the UE of the

3 Similarly, we consider the recitation of “a method for controlling a ProSe
service” in the preamble of claim 1 to merely be a statement of intended use
and is not considered a limitation and is no significance in claim
construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1305 (Fed. Cir. 1999), see also MPEP § 2111.02(II).
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other PLMN intending to carry out the ProSe service . . .” Appeal Br. 13.
These arguments have not persuaded us of error in the Examiner’s
rejection. With regard to the first disputed limitation, Appellant asserts that
the teachings of Jung cited by the Examiner do not anticipate that the
information is about the at least one carrier frequency of the other PLMN
that can carry out ProSe service. Appeal Br. 13. Similar to our discussion
above with respect to claim 1, these arguments are directed to a limitation
which recites the content of the information and the claims recite no function
that is performed based upon the information. As such, we consider the first
disputed limitation to be directed to non-functional descriptive material4.
Accordingly, the limitation does not distinguish the claim from the prior art
and we are not persuaded of error in the Examiner’s rejection.
With regard to the second disputed limitation we are similarly not
persuaded of error. Claim 2 is a method claim and recites a step of
determining which is performed “in response to the UE of the other PLMN
intending to carry out the ProSe service in the other PLMN.” Thus, the
claim is reciting a conditional step of determining, that is performed in
response to a condition the intentions of the other PLMN. As such, the
broadest reasonable interpretation of the claim is that the step of determining
would not be invoked necessarily and, as such, it is not incumbent upon the
Examiner to show that the art performs those steps. See Ex parte
Schulhauser, No. 2013-007847, 2016 WL 6277792, at *3–4 (PTAB Apr. 28,

4 “[T]he nature of the information being manipulated does not lend
patentability to an otherwise unpatentable computer-implemented product or
process.” Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008)
(precedential).
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2016) (precedential) (holding that in a method claim, a step reciting a
condition precedent does not need to be performed if the condition precedent
is not met). See also MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) § 2111.04(II) (9th ed. Rev. 08.2017, Jan. 2018) (citing Schulhauser)
and In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006). (“[O]ptional
elements do not narrow the claim because they can always be omitted.”). Ex
Parte Gary M. Katz, Appeal No. 2010-006083, 2011 WL 1211248, at *2
(BPAI Mar. 25, 2011) (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004)).5 Accordingly, Appellant’s arguments directed
to claim 2, asserting that Jung does not teach a ProSe service and thus not
teaching the determination based upon the other PLMN indenting to carry
out the ProSe service, are not commensurate with the broadest reasonable
interpretation of claim 2. Because we are not persuaded us of error in
rejecting claim 2, we sustain the Examiner’s rejection of this claim.

Anticipation Rejection of Dependent claims 10 and 30.
With respect to claims 10 and 30, Appellant argues that the
Examiner’s anticipation rejection is in error as Jung does not teach either: a)

5 See, also e.g., Applera Corp. v. Illumina, Inc., 375 Fed. App’x. 12, 21 (Fed.
Cir. 2010) (unpublished) (affirming a district court’s interpretation of a
method claim as including a step that need not be practiced if the condition
for practicing the step is not met); Cybersettle, Inc. v. Nat’l Arbitration
Forum, Inc., 243 Fed. App’x. 603, 607 (Fed. Cir. 2007) (unpublished) (“It is
of course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be
performed.”).

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the limitation directed to receiving information about one carrier frequency
of the other PLMN or b) the limitation “in response to the UE of the other
PLMN intending to carry the ProSe service . . .” Appeal Br. 14–15.
These arguments have not persuaded us of error in the Examiner’s
rejection. With regard to the first disputed limitation, similar to our analysis
of claims 1 and 2, we consider the limitation in dispute to recite non-
functional descriptive material which does not distinguish the invention over
the prior art. With respect to the second disputed limitation, similar to our
analysis of claim 2, the second disputed limitation is a conditional limitation
in a method claim and, as such, Appellant’s arguments are not
commensurate with the broadest reasonable interpretation of claims 10 and
30. Accordingly, we sustain the Examiner’s rejection of claims 10 and 30.

Anticipation Rejection of Dependent claims 11, 12, 14, 27, and 28; and
Obviousness Rejection of claims 5 and 15.
With respect to claim 12, Appellant argues that the Examiner’s
anticipation rejection is in error as Jung does not teach either: a) the
limitation directed to “in response to the UE of the other PLMN having not
been handed over from the shared cell to another cell . . .” or b) the
limitation “in response to the UE of the other PLMN having not been handed
over from the shared cell to another cell . . .” Appeal Br. 16–17. With
respect to claim 14 Appellant argues that the Examiner’s anticipation
rejection is in error as Jung does not teach the limitation directed to
“response to the UE of the other PLMN being in the idle state . . .” Appeal
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Br. 17–18. With respect to claims 27 and 28, Appellant argues that the
Examiner’s anticipation rejection is in error as Jung does not teach the
limitation directed to “in response to the handover procedure failing . . .”
Appeal Br. 19–20.
With respect to claims 5 and 15, Appellant argues that the Examiner’s
obviousness rejection is in error as Jung does not teach the limitation
directed to “in response to the handover procedure failing . . .” Appeal Br.
14.
These arguments have not persuaded us of error in the Examiner’s
rejection. Similar to our analysis of claims 2, 10, and 30, the disputed
limitations are conditional limitations in a method claim and as such
Appellant’s arguments are not commensurate with the broadest reasonable
interpretation of claims 12, 14, 27, and 28. Additionally, we recognize
Appellant’s argument, that the Examiner has not provided reasoning as to
why the limitations of claim 11 are rejected. However, we are not persuaded
of error in the rejection of claim 11, as claim 11 adds one method step, a
conditional step, to the method of claim 10. Thus, similar to our analysis
discussed above, the broadest reasonable interpretation of claim 11 is that
the step is not performed and the analysis of claim 10 from which claim 11
depends is sufficient. Accordingly, we sustain the Examiner’s rejection of
claims 11, 12, 14, 27, and 28.

Anticipation Rejection Dependent claim 17.
With respect to claim 17, Appellant argues that the Examiner’s
anticipation rejection is in error as Jung does not teach the limitation
directed to receiving the other PLMN identifier and a second period of time
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in which the ProSe server is carried out in the shared cell and
sending information about a radio resource over which the
Prose service is carried out in the other PLMN, to the eNB,
wherein the information about the radio resource comprises a
time window corresponding to the radio resource, in the second
period of time, and the information about the radio resource is
configured to instruct the eNB not to schedule the UE of the
other PLMN in the shared cell in the time window.

Appeal Br. 18. Appellant argues that the teachings of Jung cited by the
Examiner do not a time window corresponding to a radio resource. Appeal
Br. 18–19; Reply Br. 5–6.
The Examiner finds that this limitation is disclosed in Jung paragraphs
111 through 118. Final Act. 7–8. Further, in response to Appellant’s
arguments directed to claim 17, the Examiner states “claim does not
positively recite the Prose service is being carried out. Therefore the same
arguments hold for claim 17 as recited in claim 1.” Ans. 6.
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of claim 17. Claim 17 recites two steps of receiving a time, a first
time period and a second time period and sending information including a
time window corresponding to the second period of time. We have reviewed
the teachings of Jung, cited by the Examiner and do not find sufficient
evidence or explanation by the Examiner to support a finding that Jung
teaches receiving the two time periods and sending the time window as
claimed. Accordingly, we do not find that the Examiner has shown that
Jung anticipates the limitations of claim 17 and we do not sustain the
Examiner’s rejection of claim 17.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 2, 5, 9, 10,
11, 12, 14,
15, 27–30
112 Indefiniteness 1, 2, 5, 9,
10, 11, 12,
14, 15, 27–
30
1, 2, 9–12,
14, 17, 27–
30
102 Jung 1, 2, 9–12,
14, 27–30
17
5, 15 103 Jung, Lee 5, 15
Overall
Outcome
1, 2, 5, 9–
12, 14, 15,
27–30
17
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED-IN-PART