Ex Parte Sloan et al

Patent Trial and Appeal Board

Dec 6, 2017

14321190 (P.T.A.B. Dec. 6, 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.
14/321,190 07/01/2014 Charles SLOAN 089229.00857 8854
32294 7590 12/08/2017
Squire PB (NVA/DC Office)
8000 TOWERS CRESCENT DRIVE
14TH FLOOR
VIENNA, VA 22182-6212
EXAMINER
ELMEJJARMI, ABDELILLAH
ART UNIT PAPER NUMBER
2462
NOTIFICATION DATE DELIVERY MODE
12/08/2017 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):
IPGENER ALTY C <§> SQUIREpb.COM
SONIA. WHITNEY @ SQUIREpb.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES SLOAN, MATHIAS PIEROTH, and
IOANNIS MANIATIS1
Appeal 2017-005883
Application 14/321,190
Technology Center 2400
Before MAHSHID D. SAADAT, ERIC S. FRAHM, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-34, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Nokia Solutions and Networks Oy of Espoo, Finland
the real parties in interest. App. Br. 3.
Appeal 2017-005883
Application 14/321,190
STATEMENT OF THE CASE
Appellants’ disclosed and claimed invention is generally directed to
enhanced inter-cell interference coordination (eCIC) partnership
establishment among base stations. Spec. 1, 27.2
Claims 1 and 12 are illustrative and read as follows (with the disputed
limitation emphasized):
1. A method, comprising:
determining at a base station of an interference
coordination partnership pair a corresponding partner base
station of the pair, wherein the partner base station is unaware
of the partnership pair, and
setting up the partnership pair with the partner base
station.
12. A method, comprising:
receiving at candidate base station of an interference
coordination partnership pair, a message regarding the
partnership pair, wherein the candidate base station was
unaware of an identity of another base station of the pair prior
to receiving the message',
determining the identity of the other base station of the
pair based on the message; and
setting up the partnership pair with the partner base
station.
App. Br. 34, 36 (App’x 1).
2 Our Decision refers to the Final Office Action mailed Feb. 24, 2016 (“Final
Act.”), Appellants’ Appeal Brief filed Sept. 15, 2016 (“App. Br.”) and Reply
Brief filed Feb. 24, 2017 (“Reply Br.”), the Examiner’s Answer mailed Jan.
17, 2017 (“Ans.”), and the original Specification filed July 1, 2014
(“Spec.”).
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Application 14/321,190
Rejections on Appeal
Claims 7, 10, 24, and 27 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1-9 and 18-26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over 3GPP TS 36.423 (version 10.1.0 ReleaselO)
(“3GPP”) in view of Applicant Admitted Prior Art (Spec. 4-6) (AAPA).
Claims 10, 11, 27, and 28 stand rejected under 5 U.S.C. § 103(a) as
being unpatentable over 3GPP, AAPA, and Zhang et al. (US 2013/0150044
Al; published June 13, 2013) (“Zhang”).
Claims 12-17 and 29-34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over 3GPP, AAPA, and 3GPP TSG RAN WG3#69-BIS
Meeting, Xi’an, China (October 11-15, 2010) (“3GPP 2”).
ANALYSIS
Rejection of Claims 7, 10, 24, and 27 under § 112, second paragraph
Appellants argue that the term “special purpose” is not indefinite and
the Examiner has given no reason why the term is not clear. App. Br. 11;
Reply Br. 2. Appellants also argue, inter alia, that “[t]he specification
provides adequate light for understanding the term, and the expression
‘special purpose’ is a well understood phrase.” App. Br. 11. The Examiner
finds that Appellants “failed to properly argue and/or point out how the
phrase ‘special purpose’ is defined in the specification.” Ans. 5.
We note that in each of the claims at issue, the term “special purpose”
modifies “information element.” For example, claim 7 recites “wherein the
cell identification is included in a special purpose information element in an
X2AP load information message.” Paragraph 9 of the Specification states
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Application 14/321,190
“[tjhere are other X2AP messages that have information elements (IEs) that
identify both the cell ID of the cell sending the message and the cell ID of
the cell receiving the message.” We also observe that paragraph 71 of the
Specification provides examples of “special purpose information elements]”
to “indicate a partnership termination request” and to confirm acceptance of
a termination request.
Considering the context in which the term “special purpose” is used in
each of the claims at issue, and when considered in light of the
Specification’s examples of “special purpose information elements],” we
conclude the term “special purpose” is not indefinite because it is not vague
or unclear {see In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014)) and
informs, with reasonable certainty, persons of ordinary skill in the art about
the scope of the claim {see Nautilus, Inc. v. Biosig Instruments, Inc., 572
U.S.__, 134 S. Ct. 2120, 2124 (2014)). Thus, we do not sustain the
Examiner’s rejection of claims 7, 10, 24, and 27 for indefmiteness under
§112, second paragraph.
Rejection of Claims 19 and 18—26 under § 103(a)
The Examiner finds that AAPA, paragraphs 4-6 of Appellants’
Specification, teaches the limitation “the partner base station is unaware of
the partnership pair,” as recited in claim 1 and similarly recited in claim 18.
Ans. 5-7 (emphasis added); see also Final Act. 4, 6. Specifically, the
Examiner finds paragraph 6 of the Specification discloses that “[ujpon
receipt of the X2AP: LOAD INFORMATION message, the macro eNB 2
looks up in its database the pair of elCIC partner cells that includes eNB 1
cell 1 and determines that its own cell 1 is the elCIC partner of eNB 1 cell 1 .
. . .” Ans. 7 (emphasis omitted). The Examiner further finds that, because
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Application 14/321,190
the load information exchange determines how a partnership pair is
established, “the 2nd base station can’t know about the partnership pair
before it’s established.” Id. (see also id. at 6, citing Spec. Fig. 1, 51). The
Examiner also finds the 3 GPP reference could be used to teach the limitation
at issue. Id.
We are persuaded by Appellants’ arguments that the Examiner erred.
See App. Br. 12-14; Reply Br. 2^1. First, Appellants argue, and we agree,
the background section of the Specification—AAPA—teaches that both base
stations are aware (not unaware) of the partnership pair because, in referring
to the scenario of paragraphs 4-6 cited by the Examiner, paragraph 8 states
“[t]his scenario requires that eCIC partnership pairs are configured at both
the macro and micro eNBs.” App. Br. 13 (citing Spec. ^ 8); see also Spec.
^ 3. As Appellants also argue, and we agree, it is not reasonable to find “the
base station is unaware of things that are in its own memory, namely its own
database.” Id. at 13. Second, Appellants argue, and we agree, the Examiner
erred by relying on Fig. 1 and paragraph 53 of the Specification because
they “refer to certain embodiments of the present invention, and do not refer
to the approach described in the background section.” Reply Br. 3. Third,
regarding the 3GPP reference, we agree with Appellants’ argument that
“there is nothing in the 3 GPP reference that the Examiner identified that
states that ‘the partner base station is unaware of the partnership pair’ as
recited in the claim.” Id. at 4.
Thus, we are persuaded by Appellants’ arguments that neither AAPA
nor 3GPP teaches or suggests the disputed limitation of claims 1 and 18.
Accordingly, we do not sustain the Examiner’s rejection of independent
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claims 1 and 18, and dependent claims 2-9 and 19-26, for obviousness
under § 103(a).
Rejection of Claims 10, 11, 27, and 28 under § 103(a)
The Examiner cites an additional reference, Zhang, for the
obviousness rejection of claims 10, 11, 27, and 28. Final Act. 6-8. The
Examiner does not, however, rely on Zhang in any manner that remedies the
deficiencies of the underlying rejection of claims 1 and 18 under § 103(a).
Thus, we do not sustain the Examiner’s rejection of claims 10, 11, 27, and
28 for obviousness under § 103(a).
Rejection of Claims 12—17 and 29—34 under § 103(a)
The Examiner cites an additional reference, 3GPP 2, for the
obviousness rejection of claims 12-17 and 29-34. Final Act. 8-10. The
Examiner does not, however, rely on 3GPP 2 in any manner that teaches or
suggests the limitation “wherein the candidate base station was unaware of
an identity of another base station of the pair prior to receiving the
message,” as recited in claim 12 and similarly recited in claim 29. Thus, for
the reasons discussed supra regarding the deficiencies of the Examiner’s
rejection of claims 1 and 18 under § 103(a), we are persuaded by
Appellants’ arguments that neither AAPA nor 3GPP teaches or suggests the
disputed limitation of claims 12 and 29. See App. Br. 26, 27, and 29. Thus,
we do not sustain the Examiner’s rejection of independent claims 12 and 29,
and dependent claims 13-17 and 30-34, for obviousness under § 103(a).
DECISION
We reverse the Examiner’s rejection of claims 7, 10, 24, and 27 under
35 U.S.C. § 112, second paragraph.
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We reverse the Examiner’s rejections of claims 1-34 under
35 U.S.C. § 103(a).
REVERSED
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