Ex Parte Larsson et al

Patent Trial and Appeal Board

Jun 2, 2017

13818127 (P.T.A.B. Jun. 2, 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.
13/818,127 02/21/2013 Daniel Larsson 1009-0389/ P39013US1 9888
7590 06/06/2017
Murphy, Bilak & Homiller/Ericsson
1255 Crescent Green
Suite 200
Cary, NC 27518
EXAMINER
BHATTI, HASHIM S
ART UNIT PAPER NUMBER
2472
NOTIFICATION DATE DELIVERY MODE
06/06/2017 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):
official@mbhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL LARS SON, ROBERT BALDEMAIR,
JUNG-FU CHENG, MATTIAS FRENNE, and
TELEFONAKTIEBOLAGET L M ERICSSON (PUBL)
Appeal 2017-000195
Application 13/818,127
Technology Center 2400
Before BRADLEY W. BAUMEISTER, MICHAEL M. BARRY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 34-42, 44-48, 50-55, 57—61, and 63—65.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Claims 49, 56, 62, and 66 stand objected to, but “allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claims.” Final Act. 11. Our decision does not address those
claims. Also, although the Final Office Action indicates claim 43 stands
rejected (see Final Act. 1—2), this claim is not pending. See App. Br. 28—37
(Claims App’x); Final Act. 2—11 (no merits discussion for claim 43).
Appeal 2017-000195
Application 13/818,127
Introduction
Appellants state the invention “is generally related to wireless
communication networks, and is more particularly related to the use of
enhanced control channel structures for paging messages.” Spec. 1:3—4.
Claims 34, 41, and 51 are illustrative (reproduced here with emphasis to
show the claims respectively are directed to control nodes, base stations, and
user terminals):
34. A method, in a control node of a radio
communications network that comprises one or more first base
stations configured to support transmission of broadcast
messages using either or both of a first type of control channel
and a second type of control channel and one or more second
base stations configured to support transmission of broadcast
messages using only the first type of control channel, the
method comprising:
receiving, at the control node, a message from each of a
plurality of user terminals, each message indicating whether the
corresponding user terminal supports the receipt of broadcast
messages via the second type of control channel; and
initiating, at the control node, a transmission of a
broadcast message to a first one of the user terminals from one
or more base stations in a tracking area for the first one of the
user terminals, wherein said initiating comprises indicating to
the one or more base stations whether the first one of the user
terminals supports the receipt of broadcast messages via the
second type of control channel.
41. A method, in a base station configured to support
transmission of broadcast messages using either or both of a
first type of control channel and a second type of control
channel, the method comprising:
receiving, from a control node, a paging initiation
message for each of a plurality of user terminals;
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receiving, from the control node, for each user terminal,
an indication of whether the corresponding user terminal
supports the receipt of broadcast messages via the second type
of control channel; and
transmitting a paging message to each of the user
terminals, wherein said transmitting comprises selectively using
the first type of control channel or the second type of control
channel, based on whether the targeted user terminal supports
the receipt of broadcast messages via the second type of control
channel.
51. A method, in a user terminal that supports
reception of broadcast messages using either or both of a first
type of control channel and a second type of control channel,
the method comprising:
detecting that the user terminal has moved from a first
tracking area of a radio communications network into a second
tracking area; and
sending a message to the radio communications network
in response to said detecting, the message indicating that the
user terminal supports reception of broadcast messages using
the second type of control channel.
App. Br. 28—30, 32 (Claims App’x).
Rejections and References
Claims 34, 35, 38-40, and 57 stand rejected under 35 U.S.C. § 103(a)
as unpatentable overNory et al. (US 2014/0036747 Al, published Feb. 6,
2014 (hereinafter “Nory”)) and Ahluwalia et al. (US 2011/0014912 Al,
published Jan. 20, 2011 (hereinafter “Ahluwalia”)). Final Act. 2-4.
Claims 36, 37, 41, 42, 44-48, 50-55, 58—61, and 63—65 stand rejected
under 35 U.S.C. § 103(a) as unpatentable overNory, Ahluwalia, and Donthi
et al. (US 2014/0161007 Al, published June 12, 2014 (hereinafter
“Donthi”)). Final Act. 4-11.
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Application 13/818,127
ANALYSIS
Appellants separately argue the Examiner errs in rejecting claims 34
(App. Br. 11—16), 41 {id. at 16—20), 51 {id. at 21—23), 50 {id. at 23—25), 54
{id. at 25—26), and 55 {id. at 26—27).
Independent Claim 34
Appellants argue the Examiner errs in rejecting claim 34 because the
combination of Nory and Ahluwalia fails to teach or suggest both of
claim 34’s recited steps, and specifically “where the initiating includes
indicating to the one or more base stations whether the first one of the user
terminals supports the receipt of broadcast messages via the second type of
control channel as required.” App. Br. 11. Appellants contend “Nory does
not describe any detailed techniques directed to a control node at all.” Id.
at 12. Appellants additionally contend that “while Nory discloses the
reception of information indicating that a UE [user terminal] supports
EPDCCH [a second type of control channel] at ‘the network, ’ it does not
disclose that this indication is received at a control node that, inter alia,
sends indications to ‘one or more base stations in a tracking area,’ as
required by claim 34” {id. at 13). Appellants further contend “there is no
apparent reason provided in Nory for sending the message indicating a UE’s
EPDCCH capability from Nory’s base station to such a control node.”
Reply Br. 3.
Appellants’ argument does not persuade us because the Examiner
relies on Ahluwalia, not Nory, for teaching a control node. One cannot
show nonobviousness by attacking references individually when the
rejection is based on a combination of references. In re Merck & Co. Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413,
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425 (CCPA 1981). The Examiner answers, and we agree, that although
Nory does not teach the recited control node, Nory teaches a base station
(eNB) that receives a message that indicates whether a user terminal can
receive broadcast messages over a second type of control channel (E-
PDCCH), and that Ahluwalia teaches the user terminal sending such
capability information to a control node (MME) that, in turn, will inform
relevant base stations. Ans. 11 (citing Ahluwalia Nory || 68—71, ]Hf 27—29);
see also Final Act. 2—3.
Appellants also argue Nory does not teach a control node sending
indications to base stations in a tracking area, and Ahluwalia’s “capability
information” does not indicate whether a user terminal “supports the receipt
of broadcast messages via the second type of control channel.” App. Br. 13;
see also id. at 14—16. These arguments do not persuasively rebut the
Examiner’s reliance on Ahluwalia’s teaching for the recited control node
and tracking area requirements and Nory’s teaching for user terminals that
receive broadcast messages via the second type of control channel. One
cannot show nonobviousness by attacking references individually when the
rejection is based on a combination of references. In re Merck, 800 F.2d at
1097; In re Keller, 642 F.2d at 425.
Appellants also argue that the Examiner does not explain why it would
have been obvious to combine the teachings of Nory and Ahluwalia to
achieve the claimed invention. App. Br. 15—16. The Examiner answers:
It would have been obvious to add the indication of Nory
(terminal capable of receiving broadcast message via E-
PDCCH) to Ahluwalia’s capability information, which is being
sent from the UE to the control node (MME) and the reason for
doing so would have been to let the control node (MME) know
terminal’s capability, so that the MME can inform other base
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stations (eNBs) of terminal’s or UE’s specific capability, in
order to enable the base stations (eNBs) to determine the
service that is required to be provided to the terminal (See para
27 of Ahluwalia), in this case, to let the base station know that
the terminal or UE is capable of receiving the broadcast
message via E-PDDCh. The use of E-PDCCh by the terminal
or UE will decrease interference between control region from
different cells and increase the reliability of reception by
applying BeamForming.
Ans. 11.
We find the Examiner has “articulated reasoning with [sufficient]
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Appellants do not point to any
evidence of record that the combinations would have been “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 418-19 (2007)).
We further note Appellants provide no objective evidence of
secondary considerations, which our reviewing court guides “operates as a
beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese &
Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). We are persuaded
the claimed subject matter exemplifies the principle that “[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” KSR, 550 U.S. at 416.
Accordingly, we sustain the rejection of claim 34. In doing so, we
adopt the findings and reasons of the Examiner. We also sustain the
rejection of claims 35—40 and 57—59, for which Appellants provide no
substantive arguments separate from claim 34.
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Independent Claim 41
In arguing Examiner error in the rejection of claim 41, which “largely
complements] the (control node) techniques of claim[] 34” (App. Br. 16),
Appellants contend, for the same reasons as for claim 34, “there is no
suggestion in the prior art of record that Ahluwalia’s generically described
‘capability information’ includes any indication of whether the
corresponding user terminal supports the receipt of broadcast messages via
the second type of control channel” (App. Br. 17). For the same reasons
discussed above for claim 34, we find this argument unpersuasive. The
Examiner relies on Nory and Donthi, not Ahluwalia, for teaching claim 41 ’s
requirements related to an indication of whether user terminals support
broadcast messages via the second type of control channel. See Final
Act. 5—6; see also Ans. 11—12.
Appellants also argue “there is no suggestion anywhere in the prior art
or in the common knowledge of the person of ordinary skill in the art that an
indication of this sort could or should be sent to one or more base stations as
part of initiating the transmission of paging messages.” App. Br. 17—18.
This argument is unpersuasive because it is not commensurate with the
scope of claim 41, which does not require an indication of whether a user
terminal supports the receipt of broadcast messages via the second type of
control channel be sent as part of initiating transmission of paging messages.
In other words, there is no limitation that the recited receiving steps be “part
of’ each other. “The invention disclosed . . . may be outstanding in its field,
but the name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998). Claim 41 does not preclude the second receiving step
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from occurring separately from the first receiving step, as mapped by the
Examiner. See Ans. 12.
Appellants further argue the Examiner errs in combining Nory’s
teaching of sending scheduling messages to the user terminal over an
established connection between a base station and the user terminal with
Donthi’s teaching of paging messages, which are sent prior to establishment
of such a connection. App. Br. 18—20. Appellants contend nothing in Nory,
Donthi, or Ahluwalia “suggests that paging via an EPDCCH is desirable or
even possible and, importantly, nothing in the prior art of record suggests
how the base station would know whether a given UE supports EPDCCH,
such that a selective use of EPDCCH for paging, based on this information,
would be possible.” Id. at 20.
This argument is unpersuasive. For the reasons discussed above for
the analogous limitation in claim 34, we agree with the Examiner that the
combination of Nory and Ahluwalia teaches claim 41 ’s “receiving ... an
indication of whether the corresponding user terminal supports the receipt of
broadcast messages via the second type of control channel.” We also agree
Donthi’s disclosure that “[u]pon receiving the paging message from the
MME 126 [control node], the relevant eNB [base station] . . . may perform
paging of the relevant UE [user terminal] in the cell(s) which belong to TAs
[tracking areas] indicated” (130) teaches claim 41’s step of “receiving ... a
paging initiation message.” See Final Act. 6; Ans. 12. We further agree the
combination of Donthi and Nory teaches claim 41 ’s step of “transmitting a
paging message to each of the user terminals [as per Donthi’s teachings]. . .
selectively using the first type of control channel or the second type of
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control channel [as per Nory’s teachings],” as recited. Ans. 12. As the
Examiner explained,
It would have been obvious to add Nory’s message (base
station sending control information using EPDDCh, see paras
67-71) to the paging message (control information) of Donthi
(See para 30). The motivation or suggestion for doing so would
have been to alert (engage) the UE to provide information (See
Donthi para 02). In this case, the information could be control
information provided via E-PDCCh in Nory. In Donthi prior to
paging message from the eNB to the UE, the RRC connection
was released (See fig. 6 steps 610-612). For this purpose in
Donthi, the eNB sends a paging message to engage the UE to
deliver the control information, since there is no RRC
connection. In Nory, that control information could be
delivered via E-PDCCh. In this way, it would make sense to
use Donthi’s paging technique (because of lack of RRC
connection) to deliver Nory’s control information (via E-
PDCCh).
Ans. 12.
In reply to this explanation from the Examiner, Appellants contend
that “Donthi does not describe its paging message as containing ‘control
information’” (Reply Br. 5) and that the Examiner “treats Donthi’s paging
messages and Nory’s scheduling messages as if they are interchangeable, but
provides no factual basis for such treatment” {id. at 6). This argument does
not persuade us. “The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference. . . . Rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art.”
In re Keller, 642 F.2d at 425. The Examiner has articulated how the claimed
features are suggested by the proposed combination of the reference
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teachings with sufficient rational underpinning. In re Kahn, 441 F.3d at 988;
KSR, 550 U.S. at 418.
Accordingly, we sustain the rejection of claim 41. In doing so, we
adopt the findings and reasons of the Examiner. We also sustain the
rejection of claims 42, 44-48, 60, 61, and 63, for which Appellants provide
no substantive arguments separate from claim 41.
Dependent Claims 50 and 63
Claim 50 depends from claim 41 and further requires, “for each of one
or more additional [user] terminals,”
receiving, from the control node, a paging initiation
message for each of one or more additional user terminals,
without receiving a corresponding indication of whether the
corresponding additional user terminal supports the receipt of
broadcast messages via the second type of control channel; and
simultaneously transmitting first and second paging
messages to each of the one or more additional user terminals,
using the first type of control channel and the second type of
control channel, respectively.
App. Br. 31—32 (Claims App’x).
Appellants argue the Examiner errs because Nory’s “serial
transmission of messages ... is quite different from the simultaneous
transmission using first and second types of control channels, as recited.”
App. Br. 23. The Examiner answers that “[t]he difference of using two
control channels simultaneously, is a mere alteration of an obvious concept
and anyone of ordinary skills in art with the use of common sense can arrive
at this solution. The motivation for doing so would have been a design
choice.” Ans. 12—13. Appellants disagree, contending “[s]uch simultaneous
transmission represents wasted bandwidth, increases the complexity of both
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the transmission and reception processes, and would not be an obvious
design choice without some reasoning for doing so.” Reply Br. 9.
While it can be a simple design choice as to whether certain steps are
performed serially or in parallel, we agree with Appellants that such is not
the case here. Claim 50 does not require merely “using two control channels
simultaneously,” as the Examiner oversimplifies; rather it is specifically
directed to simultaneously transmitting at least two different paging
messages over two possible types of control channels based on previously
processed information. Appellants recognized in their Specification that
embodiments of their broader invention may not support embodiments of
claim 50. See Spec. 20:10—20. The Examiner’s assertion that revising the
prior art’s serial transmission approach to instead use a simultaneous
transmission approach is conclusory, and the assertion does not provide
sufficient evidence to support the conclusion that claim 50 would have been
obvious. See In re Chu, 66 F.3d 292, 299 (Fed. Cir. 1995).
Accordingly, we do not sustain the rejection of claim 50. We also do
not sustain the rejection of claim 63, which contains commensurate
limitations.
Independent Claim 51
For claim 51, Appellants argue (1) the rejection “fails to provide any
rationale at all to support its conclusion of obviousness,” (2) neither Donthi
nor Nory “discloses the ‘sending’ step,” and (3) the Examiner “does not (and
cannot) explain why the person of ordinary skill in the art would be led to
combine Donthi’s discussion of tracking area update procedures with Nory’s
connection establishment procedures and scheduling procedures, to obtain
the invention as claimed.” App. Br. 21—22.
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The Examiner relies on Donthi for teaching “sending a message to the
radio communication network in response to said detecting” and Nory for
teaching “the message indicating that the user terminal supports reception of
broadcast messages using the second type of control channel.” Final Act. 9—
10 (citing Nory || 67—68; Donthi || 28—29).
We agree with these findings. As discussed above, Nory teaches a
user terminal sending a message to indicate whether it supports receiving
EPDCCH broadcast messages (i.e., broadcast messages over a second type
of control channel). Donthi paragraph 29 teaches that under certain
circumstances, when a user terminal detects a tracking area it “may initiate a
TAU [tracking area update] procedure.”
The Examiner finds that it would have been “common sense” for an
ordinarily skilled artisan to have combined information identifying support
of control channels, as taught by Nory, with the tracking area update
message, as taught by Donthi. Ans. 12. The Examiner further sets forth the
motivation would have been to save resources and efficiently convey the
information, so that the control node gets the tracking area update and
information about the user terminal’s support of the second type of control
channel. Id.
Appellants reply that “there is no disclosure or suggestion that Nory’s
EPDCCH support indication is transmitted from a UE responsive to the UE
detecting a change in tracking area, as required.” Appellants do not
persuade us. As discussed above, the Examiner relies on Donthi, not Nory,
for sending the message in response to detecting the user terminal moved to
a new tracking area. We find the Examiner articulates sufficient reasoning,
with rational underpinning, to support the conclusion of obviousness.
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Accordingly, we sustain the rejection of claim 51. In doing so, we
adopt the findings and reasons of the Examiner. We also sustain the
rejection of claims 52, 53, 64, and 65, for which Appellants provide no
substantive arguments separate from claim 51.
Dependent Claim 54
Claim 54 depends from independent claim 51 and further requires “for
each of one or more additional [user] terminals,”
receiving a broadcast message from a base station in said
second tracking area, the broadcast message indicating that the
base station is configured to support transmission of broadcast
information via the second type of control channel; and
monitoring a search space in a control channel of the
second type of control channel for a paging message, in
response to receiving said broadcast message.
App. Br. 32—33 (Claims App’x).
Appellants argue the Examiner errs in finding Nory teaches these
requirements, see Final Act. 10 (citing Nory || 84—87), because “the cited
passages do not disclose the techniques of these claims at least because they
do not describe broadcast messages or a second tracking area. As indicated
in the Final Office Action statements, the cited Nory passages describe
handover procedures.” App. Br. 25 (emphasis omitted). The Examiner
answers that while Nory teaches sending the indication of a user terminal’s
support of the second channel is in a handover message, it would have been
“common sense” and a “mere alteration of an obvious concept” to instead
“send[] the indication in a broadcast message after handing over from one
tracking area to another.” Ans. 13.
Appellants reply that the Examiner’s finding is unsupported and
erroneously “appears intended to imply that handovers and tracking area
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updates (TAUs) are interchangeable.” ReplyBr.il. We agree. The
network infrastructure initiates and controls handovers, see Nory || 84—85,
whereas the user terminal initiates tracking updates, see Donthi || 28—29.
While handoff between cells can be between cells in different tracking areas,
we agree with Appellants “that a tracking area is not equivalent to a cell,
and that tracking areas and cells are not interchangeable, as implied by the
Examiner’s Answer.” Reply Br. 11. In view of the record before us, we
find the Examiner’s reliance on “common sense” for why an ordinarily
skilled artisan would have arrived at claim 54 does not articulate sufficient
reasoning to support the conclusion of obviousness. In re Chu, 66 F.3d at
299.
Accordingly, we do not sustain the rejection of claim 54. We likewise
do not sustain the rejection of claim 55, which depends from claim 54.
DECISION
For the above reasons, we affirm the rejection of claims 34-42, 44—
48, 51—53, and 57—61, 64, and 65, and we reverse the rejection of claims 50,
54, 55, and 63.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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