British Telecommunications Public Limited Company

Patent Trials and Appeals Board

Dec 9, 2021

2021005047 (P.T.A.B. Dec. 9, 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.
16/310,948 12/18/2018 Richard MACKENZIE 4359.212WOUS01 3620
135778 7590 12/09/2021
Patterson Thuente Pedersen, P.A.
4800 IDS CENTER
80 SOUTH 8TH STREET
MINNEAPOLIS, MN 55402-2100
EXAMINER
TRAN, THINH D
ART UNIT PAPER NUMBER
2466
NOTIFICATION DATE DELIVERY MODE
12/09/2021 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):
efsuspto@ptslaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD MACKENZIE, ZAID AL-DAHER, and
MICHAEL FITCH
Appeal 2021-005047
Application 16/310,948
Technology Center 2400
Before JASON V. MORGAN, ERIC B. CHEN, and JEREMY J. CURCURI,
Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as British
Telecommunications Public Limited Company. Appeal Br. 2.
Appeal 2021-005047
Application 16/310,948
2
CLAIMED SUBJECT MATTER
The claims are directed to a “[m]ulticast-broadcast mobile
communications network.” Spec., Title. Claim 1, reproduced below with the
key disputed limitations emphasized, is illustrative of the claimed subject
matter:
1. A method of operating a mobile communications
network comprising a plurality of base stations, each base
station comprising at least one transceiver, and wherein a first
transceiver is comprised in a first base station, the method
comprising:
at the first base station:
operating the first transceiver to:
transmit a first signal to serve a mobile
terminal over multicast; and
receive information from the mobile
terminal, wherein the information is a value of
Reference Signal Received Power (RSRP) or
Reference Signal Received Quality (RSRQ) of a
second signal received at the mobile terminal from
a second transceiver that is not serving the mobile
terminal; and
receive further information from the mobile
terminal, wherein the further information includes signal
quality information of the first signal received at the
mobile terminal from the first transceiver and wherein
the further information also includes signal quality
information of a third signal received at the mobile
terminal from a third transceiver;
on the basis of a comparison of the RSRP or the
RSRQ information of the second signal received at the
mobile terminal with a threshold, switching
communications between the first transceiver and the
Appeal 2021-005047
Application 16/310,948
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mobile terminal from multicast to unicast; and
subsequently
on the basis of a comparison of the signal quality
information of the first signal and the signal quality
information of the third signal, both received at the
mobile terminal, when the signal quality information of
the first signal is no longer greater than the signal quality
information of the third signal, providing to the mobile
terminal an instruction instructing the mobile terminal to
transition from being served by the first transceiver to
being served by the third transceiver.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Mochizuki US 2009/0175183 A1 July 9, 2009
Lu US 2016/0105894 A1 Apr. 14, 2016
Zhu US 2016/0211980 A1 July 21, 2016
Wang US 2018/0263074 A1 Sept. 13, 2018

REJECTIONS
Claims 1, 7, and 8 are rejected under 35 U.S.C. § 103 as obvious over
Zhu, Wang, and Mochizuki. Final Act. 3–11.
Claims 2–6 are rejected under 35 U.S.C. § 103 as obvious over Zhu,
Wang, Mochizuki, and Lu. Final Act. 11–16.
OPINION
The Obviousness Rejection of Claims 1, 7, and 8 over Zhu, Wang, and
Mochizuki
The Examiner finds Zhu, Wang, and Mochizuki teach all limitations
of claim 1. Final Act. 3–7; see also Ans. 3–10. In particular, the Examiner
finds Zhu teaches “receive information from the mobile terminal, wherein
Appeal 2021-005047
Application 16/310,948
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the information is a value of signal quality of a second signal received at the
mobile terminal” Final Act. 4 (citing Zhu ¶¶ 36, 91, 93). The Examiner
further finds Wang teaches “wherein the Reference Signal Received Power
(RSRP) or Reference Signal Received Quality (RSRQ) of a second signal
received at the mobile terminal from a second transceiver that is not serving
the mobile terminal.” Final Act. 5 (citing Wang ¶¶ 54, 55, 56). The
Examiner further finds Zhu teaches “on the basis of a comparison of the
signal quality information of the second signal received at the mobile
terminal with a threshold, switching communications between the first
transceiver and the mobile terminal from multicast to unicast.” Final Act. 4
(citing Zhu ¶¶ 91, 93, 94). The Examiner reasons:
It would have been obvious to the person of ordinary skill in the
art before the effectively filing date of the claimed invention to
implement the system or method as taught by the fourth
embodiment of WANG in the system of ZHU to determine the
RSRP or RSRQ including the signal from the non serving cell.
The motivation would have been to provide seamless
transmission from multicast to unicast transmission.
Final Act. 5.
Appellant presents the following principal arguments:
The proposed combination of Zhu, Wang, and Mochizuki fails to
disclose or suggest, on the basis of a comparison of the RSRP or
RSRQ signal quality information of the second signal received
at the mobile terminal with a threshold, switching
communications between the first transceiver and the mobile
terminal from multicast to unicast.
Appeal Br. 15.
Appellant agrees with the Examiner that Zhu fails to
disclose the required second signal or the required switching
communications between the first transceiver and the mobile
Appeal 2021-005047
Application 16/310,948
5
terminal from multicast to unicast on the basis of a comparison
of the RSRP or the RSRQ information of the second signal
received at the mobile terminal with a threshold.
Appeal Br. 16. “Appellant respectfully submits that the Examiner’s
summary of Wang is incorrect, and moreover, Wang fails to disclose the
required limitations.” Appeal Br. 17. “Wang explicitly teaches a target node
handover and not a multicast to unicast transition.” Appeal Br. 18. “There is
simply no disclosure in Wang that the signal quality information can be used
in a multicast to unicast switching decision between the first transceiver
and the mobile terminal.” Appeal Br. 18; see also Reply Br. 4–7.
One skilled in the art is therefore presented with two
teachings. The first teaching, of Zhu, is that the mobile terminal
should switch from multicast to unicast based on the strength of
the eMBMS signal (that is, the multicast signal serving the
mobile terminal). The second teaching, of Wang, is that the
mobile terminal may use signal quality information from target
nodes in its handover decision. As explained above, there is no
indication in either Zhu or Wang that the signal quality
information of signals from a transceiver not serving the mobile
terminal may be used in a multicast to unicast switching decision.
Appeal Br. 18–19. The Examiner’s motivation to combine the references “is
completely without basis, as there is no teaching that use of this signal
quality information [taught by Wang] would provide a seamless transition
[from multicast to unicast in Zhu].” Appeal Br. 19; see also Reply Br. 7–8.
In response, the Examiner explains Wang discloses “using of the
measurement of the RSRP or RSRQ to handover to the target nodes and
[for] switching from eMBMS (multicast) to unicast.” Ans. 5.
In reply, Appellant argues:
This conclusory statement is representative of the overall
shortcomings of the Examiner’s rejection. Wang includes the
Appeal 2021-005047
Application 16/310,948
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words “transferred from multicast to unicast” in paragraph
[0014] and further discusses “signal quality” of a target node in
paragraph [0055] but simple mention of these broad concepts is
insufficient to establish a prima facie case of obviousness and,
thus, the rejection is made in error.
Reply Br. 6–7.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Zhu discloses “[t]he UE switches from reception of the eMBMS
broadcast from the first MBSFN area to one of reception through unicast or
reception through a second MBSFN area supporting the eMBMS broadcast
service, based on the at least one MBSFN threshold and the at least one
MBSFN measurement.” Zhu, Abstract. Thus, we determine Zhu describes
comparing the measurement to a threshold, and switching from broadcast
(multicast) to unicast. Zhu, Abstract. However, the Examiner finds “ZHU
does not explicitly teach wherein the . . . second signal received at the
mobile terminal from a second transceiver that is not serving the mobile
terminal.” Final Act. 5 (emphasis added). Thus, we determine Zhu’s
measurement used in the comparison is not from a second transceiver that is
not serving the mobile terminal.
Wang discloses “a signal quality related to at least one possible target
node may be measured.” Wang ¶ 56. Thus, we determine Wang describes
receiving a measurement related to a node that is not serving the mobile
terminal. Wang ¶ 56. However, Wang’s teaching are related to handoff—not
switching from multicast to unicast—as explained by Wang:
It should be noted that the exemplifying embodiments described
herein are not related to a multicast to unicast transition within
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the same source cell, as in the initial step in the Make Before
Break solution described above. The target node should thus be
assumed to be associated with a different cell or an at least partly
different coverage area than the cell or area in which the eMBMS
is provided.
Wang ¶ 55.
Thus, there is still no teaching in Zhu or Wang of using the signal
quality of the target node as part of the procedure of switching
communications between the first transceiver and the mobile terminal from
multicast to unicast, as recited in the key disputed limitations of claim 1,
because Zhu’s measurement used in the comparison is not from a second
transceiver that is not serving the mobile terminal, and because Wang is
related to handoff and not related to a multicast to unicast transition.
The Examiner attempts to address this shortcoming, reasoning that the
claimed invention would have been obvious based on the combined
teachings of the references. Final Act. 5. However, the Examiner’s reasoning
(“to provide seamless transmission from multicast to unicast transmission”)
lacks a rational underpinning because neither Zhu nor Wang suggests using
the signal quality of the target node as part of the procedure of switching
communications between the first transceiver and the mobile terminal from
multicast to unicast, as recited in the key disputed limitations of claim 1,
would provide seamless transmission from multicast to unicast transition. In
short, the Examiner’s reasoning uses improper hindsight based on
Appellant’s invention.
We, therefore, do not sustain the Examiner’s rejection of claim 1. We
also do not sustain the Examiner’s rejection of claim 7, which depends from
claim 1. We also do not sustain the Examiner’s rejection of independent
claim 8 for the same reasons discussed above for claim 1.
Appeal 2021-005047
Application 16/310,948
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The Obviousness Rejection of Claims 2–6 over Zhu, Wang, Mochizuki, and
Lu
The Examiner does not find Lu cures the deficiency of Zhu, Wang,
and Mochizuki. See Final Act. 11–16.
We, therefore, do not sustain the Examiner’s rejection of claims 2–6.
CONCLUSION
The Examiner’s decision to reject claims 1–8 is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 7, 8 103 Zhu, Wang,
Mochizuki
1, 7, 8
2–6 103 Zhu, Wang,
Mochizuki, Lu
2–6
Overall
Outcome
1–8

REVERSED