Ex Parte Khan et al

Patent Trial and Appeal Board

May 15, 2018

14370538 (P.T.A.B. May. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/370,538 07/03/2014 Asif A. Khan
152435 7590 05/17/2018
Sage Patent Group/Zacco
PO BOX 30789
RALEIGH, NC 27622-0789
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.
3000-022 9950
EXAMINER
KIM, MINJUNG
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
05/1712018 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):
zaccoinstructions@sagepat.com
outsourcing@zacco.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASIF A. KHAN and KONSTANTINOS DIMOU
Appeal2017-011328 1
Application 14/370,538
Technology Center 2600
Before MICHAEL J. STRAUSS, ADAM J. PYONIN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-25, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
Introduction
The Application is directed to "mechanisms for managing interference
in wireless heterogeneous networks" (Spec. i-f 6) that "implement
communication services to user equipment (UEs) through access nodes that
have overlapping cell coverage areas, such as via a macro node (e.g., macro
1 The real party in interest is identified as the assignee of record, i.e.,
Telefonaktiebolaget L M Ericsson (publ). App. Br. 1.
Appeal 2017-011328
Application 14/370,538
base station) that provides service to a relatively large cell coverage area,
and one or more low power nodes (LPNs)" (Spec. i-f 2).
Claims 1, 16, 19, 20, 22, 23, and 25 are independent. Claims 1 and 19
are reproduced below for reference:
1. A method for triggering a handover of a user equipment,
UE, being serviced by a macro node to a low power node, LPN,
operating in a closed access operating mode wherein the LPN
provides service to member UEs, the UE being a non-member of
the LPN, the method comprising:
determining, by the macro node, a trigger condition;
based on the trigger condition, signaling, by the macro
node, the LPN to provide service to the UE, the signaling
including an identifier that identifies the UE; and
directing, by the macro node, the UE to execute the
handover to the LPN.
19. A user equipment, UE, comprising:
a transceiver subsystem configured to communicate with a macro
node and with a low power node, LPN, the LPN operating in a closed
access operating mode wherein the LPN provides service to member
UEs, the UE being a non-member of the LPN; and
a processing subsystem coupled to the transceiver subsystem,
and configured to:
provide link quality data to the macro node to facilitate
determining a link quality of a link between the UE and the macro node;
provide signal strength data to the macro node that
identifies a signal strength between the UE and the LPN;
receive a request from the macro node to provide
information that indicates whether the UE is interference cancellation
capable;
in response to the request, send a message to the macro
node indicating that the UE is not interference cancellation capable;
receive a direction from the macro node to execute a
handover to the LPN; and
in response to the direction, execute the handover to the
LPN.
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Application 14/370,538
References and Rejections
The following is the prior art relied upon by the Examiner in rejecting
the claims on appeal:
Bhattad
Yavuz
Cheong
Li
Kim2
Yoo
US 2009/0245195 Al
US 2010/0015921 Al
US 2010/0093358 Al
US 2011/0116480 Al
US 2012/0028645 Al
US 2013/0044697 Al
Oct. 1, 2009
Jan. 21, 2010
Apr. 15, 2010
May 19, 2011
Feb.2,2012
Feb.21,2013
Claims 1, 3-7, 10-12, 14--18, 20-22, and 25 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Li, Kim, and Cheong. Final Act.
10.
Claims 2, 9, and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Li, Kim, Cheong, and Yoo. Final Act. 23.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Li, Kim, Cheong, and Yavuz. Final Act. 26.
Claims 19, 23, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Li, Yoo, Bhattad, and Kim. Final Act. 27.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. Any arguments Appellants could have made but chose not to
make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv). We agree with Appellants that the Examiner erred in
2 The Examiner refers to Kim as both the US patent publication and the PCT
publication, WO 2010/093198 A2 (publ. Aug. 18, 2010). See Final Act. 10.
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Application 14/370,538
rejecting claims 1-18, 20-22, and 25. We disagree with Appellants that the
Examiner erred in rejecting claims 19, 23, and 24.
A. Independent Claim 1
Appellants argue the Examiner's rejection of independent claim 1 is in
error because the Examiner "has failed to make a prima facie case of
obviousness and, moreover, ... a [person of ordinary skill in the art] would
not have been motivated to combine the prior art references." App. Br. 11.
Particularly, Appellants contend "Li does not utilize signaling between a
macro node and an LPN to effect the handover," "Kim utilizes a different
mechanism that does not require knowledge of the UE," "Cheong discloses a
system that has a goal and function that is opposite to that of Li and Kim,"
and the Examiner does not explain how the combination of references would
"be of benefit in [the] system." Id.
We are persuaded by Appellants' argument. 3 "[A] patent composed
of several elements is not proved obvious merely by demonstrating that each
of its elements was, independently, known in the prior art," thus "rejections
on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness." KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)). Here, the Examiner finds an artisan of ordinary
skill would combine the teachings of Li, Kim, and Cheong in the manner
3 Appellants present additional issues with respect to claim 1. Because the
identified issues are dispositive of the appeal, we do not reach the additional
ISsues.
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Application 14/370,538
claimed, because each reference discloses handover techniques, and "when
the field of invention in the secondary reference (Kim et al. and Cheong et
al.) relates to technical field of which a primary reference discloses (Li et
al.), the motivation for the combination is provided." Ans. 7-8. Such
conclusory analysis is insufficient to establish obviousness, as it does not
"identify a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed new invention
does." KSR, 550 U.S. at 418 (emphasis added).
We agree with Appellants that the rejection of independent claim 1 is
in error, as well as the rejection of independent claims 16, 20, 22, and 25,
which are rejected under the same grounds and rationale as claim 1. See
Ans. 9. Accordingly, we are constrained by the record before us to not
sustain the rejection of these claims, or the claims that depend therefrom.
B. Independent Claim 19
Appellants argue the Examiner's rejection of independent claim 19 is
in error because "none of the cited references teach or suggest a UE that
'receive[ s] a request from the macro node to provide information that
indicates whether the UE is interference cancellation capable"' as required
by the claim. App. Br. 14 (emphasis omitted). Particularly, Appellants
contend Bhattad is silent "regarding the receipt of a request to provide
information that indicates whether the UE is interference capable." Id.
(emphasis omitted)
We are unpersuaded of Examiner error in the rejection of claim 19.
We adopt the Examiner's findings and conclusions therein as our own, and
we add the following primarily for emphasis.
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Appellants' arguments attack the individual teachings of Bhattad, and
thus fail to address the Examiner's findings with respect to the combination.
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references."). Here, the Examiner correctly finds "Bhattad et al. does not
need to disclose UE sending a message to the macro node indicating that the
UE is not interference cancellation capable since it is disclosed in Yoo et al."
Ans. 11. Appellants do not challenge the Examiner's findings with respect
to Yoo, and thus do not persuade us the Examiner erred in finding the
disputed limitation is obvious in view of Yoo' s teaching that "the ability of
the victim UE to perform interference cancellation (IC) is determined" and
Bhattad's teaching which "discloses a base station node requesting
information that indicates the UE's capability." Ans. 11-12; see also Yoo,
Fig. 7, ifif 3, 90; Bhattad, Fig. 3 if 6, 43.
Further, we are unpersuaded by Appellants' arguments that the
Examiner "has failed to make a prima facie case of obviousness because the
Patent Office has failed to provide any reasoning as to why one skilled in the
art would be motivated to combine the four references." App. Br. 14. The
Examiner finds one of ordinary skill in the art would combine Li, Yoo,
Bhattad, and Kim for the advantages as taught in the references, including
"improved interference cancellation" and signaling that is "useful to support
communication between the base station and the UE." Final Act. 30.
Appellants do not present arguments to persuade us these findings are
erroneous. Accordingly, we are not persuaded the Examiner erred in finding
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the limitations of independent claim 19 are obvious in view of the combined
teachings of the cited references. See Final Act. 27-31.
We sustain the Examiner's rejection of independent claim 19, and
claims 23 and 24 not separately argued. See App. Br. 15.
DECISION
The Examiner's decision rejecting claims 1-18, 20-22, and 25 is
reversed.
The Examiner's decision rejecting claims 19, 23, and 24 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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