Filip Mestanov et al.

Patent Trials and Appeals Board

Jun 18, 2020

2018008959 (P.T.A.B. Jun. 18, 2020)

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.
15/115,194 07/28/2016 Filip Mestanov P41653 US1 5608
152435 7590 06/18/2020
SAGE PATENT GROUP/ZACCO
PO BOX 30789
RALEIGH, NC 27622-0789
EXAMINER
CHO, HONG SOL
ART UNIT PAPER NUMBER
2467
NOTIFICATION DATE DELIVERY MODE
06/18/2020 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):
outsourcing@zacco.com
zaccoinstructions@sagepat.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FILIP MESTANOV, TOMAS HEDBERG,
OUMER TEYEB, and JARI VIKBERG
____________

Appeal 2018-008959
Application 15/115,194
Technology Center 2400
____________

Before MARC S. HOFF, JOHNNY A. KUMAR, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 23, 26–28, 30–40, and 42–44. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). Appellant identifies the real party in interest
as Telefonaktiebolaget LM Ericsson. Appeal Br. 2.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the invention “relates to a method
of establishing a communications interface between a first access node
arranged to operate according to a first radio access technology and one or
more second access nodes arranged to operate according to a second radio
access technology.” Spec. 1:3–6.2 The Specification explains that “user
equipments, such as mobile phones,” typically support “wireless
technologies such as Wireless Local Area Networks, commonly referred
to as WLAN, in addition to the cellular standards,” such as Universal
Terrestrial Radio Access Network (“UTRAN”) and Long Term Evolution
(“LTE”). Id. at 1:26–28; see id. at 1:12–22. According to the Specification,
however, “there is insufficient coordination and control of the combined
cellular and WLAN network” because “the WLAN network is still not
sufficiently tightly integrated with the cellular network.” Id. at 2:12–14.
Hence, the invention endeavors “to provide embodiments solving the
problem of integrating access nodes arranged to operate according to a
second radio access technology,” e.g., WLAN, “with access nodes arranged
to operate according to a first radio access technology,” e.g., UTRAN or
LTE. Spec. 2:17–20. In addition, the invention endeavors “to provide
embodiments establishing a direct communications interface between one or
more second radio access nodes and a first radio access node, thus providing

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed January 31, 2014; “Final Act.” for the Final Office
Action, mailed February 27, 2018; “Appeal Br.” for the Appeal Brief, filed
June 27, 2018; “Ans.” for the Examiner’s Answer, mailed July 19, 2018; and
“Reply Br.” for the Reply Brief, filed September 17, 2018.
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for a full integration of the second radio access nodes toward a first radio
access network.” Id. at 2:22–25, code (57).
Exemplary Claims
Independent claims 23 and 39 exemplify the claims at issue and read
as follows:
23. A method, performed in a first access node in a wireless
network, of establishing a communications interface between
the first access node, arranged to operate according to a first
radio access technology (RAT), and one or more second access
nodes arranged to operate according to a second radio access
technology, the method comprising:
discovering one or more second access nodes based on
receipt of respective radio signals representative of each second
access node, wherein said discovering one or more second
access nodes comprises intercepting, by the first access node,
radio signals originating from respective second access nodes;
selecting a second access node of the discovered one or
more second access nodes for establishing a communications
interface with;
deriving a transport address for the selected second
access node from a node-related identity retrieved in the radio
signal;
sending an interface setup request message to the
selected second access node; and
receiving an interface setup response message from
the selected second access node.
39. A method, performed in a second access node, arranged
to operate according to a second radio access technology, in a
wireless network, of establishing a communications interface to
a first access node arranged to operate according to a first radio
access technology (RAT), the method comprising the steps of:
receiving an interface setup request message from the
first access node; and
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sending an interface setup response message to the
first access node.
Appeal Br. 14, 16–17 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability under 35 U.S.C. § 103, the Examiner
relies on the following prior art:
The Rejections on Appeal
Claims 23, 26–28, 30, 32, 33, 36–40, and 44 stand rejected under
35 U.S.C. § 103 as unpatentable over Lee and Lim. Final Act. 2–4.
Claims 31, 34, and 35 stand rejected under 35 U.S.C. § 103 as
unpatentable over Lee, Lim, and Gage. Final Act. 4–5.
Claims 42 and 43 stand rejected under 35 U.S.C. § 103 as
unpatentable over Lee, Lim, and Zhang. Final Act. 5.
ANALYSIS
We have reviewed the rejections in light of Appellant’s arguments
that the Examiner erred. For the reasons explained below, we agree with the
Examiner’s unpatentability determinations. We adopt the Examiner’s
findings and reasoning in the Final Office Action and Answer. See Final
Act. 2–7; Ans. 3–4. We add the following to address and emphasize specific
findings and arguments.
Lee et al. (“Lee”) US 2012/0264418 A1 Oct. 18, 2012
Gage et al. (“Gage”) US 2014/0341182 A1 Nov. 20, 2014
(filed May 15, 2013)
Lim US 9,179,375 B2 Nov. 3, 2015
(filed Sept. 28, 2010)
Zhang US 9,591,677 B2 Mar. 7 ,2017
(filed Mar. 25, 2013)
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The § 103 Rejection of Claims
23, 26–28, 30, 32, 33, 36–40, and 44
CLAIM 23: A FIRST ACCESS NODE INTERCEPTING
RADIO SIGNALS FROM A SECOND ACCESS NODE
As noted above, the § 103 rejection of claim 23 rests on Lee and Lim.
See Final Act. 2–3. Appellant asserts that the Examiner erred in rejecting
claim 23 because Lee fails to teach or suggest “an access node, operating
according to a first RAT, intercepting, i.e., listening to (and decoding), over-
the-air signals from access nodes of a different (second) RAT, and thereby
discovering those access nodes of the different RAT.” Appeal Br. 9
(emphasis omitted); see Reply Br. 2, 6, 8. Appellant contends that Lee
“is only concerned with details of a single RAT, namely the LTE RAT.”
Appeal Br. 9 (citing Lee ¶¶ 4–5); see id. at 10–11; Reply Br. 7.
As for Lim, Appellant concedes that Lim discloses different base
stations “operating at different RATs.” Appeal Br. 9 (quoting Final Act. 3);
see Reply Br. 8. But Appellant contends that Lim fails to teach or suggest
one of the base stations “operating according to a first RAT, intercepting
radio signals originating from access nodes operating according to a second
RAT, as required by claim 23.” Appeal Br. 9–10 (emphasis omitted).
Further, Appellant urges that Lim lacks a “suggestion that an access node
operating to one RAT can or should intercept radio signals originating from
access nodes operating according to” a different RAT. Reply Br. 8.
Appellant’s arguments do not persuade us of Examiner error because
they attack the references individually. For instance, Appellant argues that
Lee does not disclose different RATs according to claim 23, while the
Examiner cites Lim as teaching or suggesting that feature. Similarly,
Appellant argues that Lim does not disclose intercepting radio signals
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according to claim 23, while the Examiner cites Lee as teaching or
suggesting that feature. Where, as here, a rejection rests on the combined
disclosures in the references, an appellant cannot establish nonobviousness
by attacking the references individually. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986); Ans. 3. For the reasons explained below, the
combined disclosures in Lee and Lim teach or suggest the disputed
limitations in claim 23. See Final Act. 3, 7; Ans. 3.
Specifically, Lee explains that macrocell base stations “may perform
handover and load balancing by exchanging information through the X2
interface.” Lee ¶ 4. Lee also explains that femtocell base stations “may
perform various tasks similar to those of macrocell base stations” but the
“LTE standard specification does not define an X2 interface for femtocell
base stations.” Id. ¶ 5. Hence, Lee discloses a method “for establishing an
X2 interface between a femtocell base station and a neighbor femtocell base
station.” Id. ¶ 8; see id. ¶¶ 36, 40, 61–66, Fig. 4.
In Lee’s method, a femtocell base station in a listening mode
intercepts “signals broadcast from the one or more neighbor base stations.”
Lee ¶¶ 10, 13, 41; see id. ¶¶ 21, 61–63, Fig. 4; Final Act. 3, 7. Then, the
intercepting femtocell base station extracts cell information from the
intercepted signals and based on the extracted cell information identifies
femtocell base stations among the neighbor base stations. Lee ¶¶ 10–11, 41;
see id. ¶¶ 63–64, Fig. 4; Final Act. 3.
To establish an X2 interface between an intercepting femtocell base
station and a neighbor femtocell base station, the base stations exchange
messages. Lee ¶¶ 71–75, Fig. 6; see id. ¶ 18; Final Act. 3. In particular, an
intercepting femtocell base station transmits an “X2 setup request message”
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to a neighbor femtocell base station. Lee ¶¶ 72, 74, Fig. 6; see id. ¶¶ 26, 54;
Final Act. 3. “In response to the X2 setup request message,” the neighbor
femtocell base station transmits an “X2 setup response message” to the
intercepting femtocell base station. Lee ¶¶ 73–74, Fig. 6; see id. ¶¶ 26, 54;
Final Act. 3. “By exchanging the X2 setup request message and the X2
setup response message,” the femtocell base stations establish an X2
interface that enables the “femtocell base stations to perform various
functions of [an] X2 interface, including handover and load balancing.”
Lee ¶¶ 74–75; see id. ¶¶ 19, 40, claim 11.
Lim discloses femtocell base stations equipped with “a plurality of
radio access technologies (RATs),” namely, “a first RAT such as 3GPP
LTE” and “a second ratio [sic] access technology (RAT) such as a wireless
local area network (WLAN).” Lim 7:54–61, 8:50–56; see id. at 3:7–11,
3:22–27, 6:43–44, 8:62–67; Final Act. 3, 7. Lim explains that equipping
femtocell base stations with multiple RATs permits a terminal to
communicate with a target femtocell base station “by using the most suitable
radio access technology (RAT)” when the terminal initially accesses the
target femtocell base station or performs handover. Lim 3:34–38; see
Ans. 3–4.
Lim also explains that equipping femtocell base stations with multiple
RATs permits a terminal to “selectively use [the] RAT having the best
access quality according to a channel state among the RATs provided by”
different base stations when communicating simultaneously with different
base stations. Lim 8:4–11; see id. at 7:54–61, 8:62–67; Ans. 3–4 (citing Lim
7:54–61, 8:4–12). Using the RAT having the best access quality for each
base station distributes a terminal’s traffic between different base stations,
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and thus “improv[es] communication quality and the bandwidth of the
terminal.” Lim 8:4–24; see id. at 2:7–12, 6:1–7, 9:19–26; see Ans. 3–4.
As the Examiner correctly finds, (1) Lee discloses femtocell base
stations that intercept radio signals originating from other femtocell base
stations, (2) Lim discloses femtocell base stations using different RATs, and
(3) the femtocell base stations correspond to the claimed “access nodes.”
See Final Act. 3, 7; Ans. 3; Lee ¶¶ 10, 13, 21, 41, 61–63, Fig. 4; Lim 3:7–11,
7:54–61, 8:50–56, 8:62–67. Thus, the combined disclosures in Lee and
Lim teach or suggest a first access node operating according to a first RAT,
a second access node operating according to a second RAT, and
“intercepting, by the first access node, radio signals originating from
respective second access nodes” according to claim 23. See, e.g., Final
Act. 3, 7; Ans. 3.
CLAIM 23: MOTIVATION TO COMBINE
Appellant disputes that a person of ordinary skill would have had a
motivation to combine Lim’s teachings with Lee’s teachings. See Appeal
Br. 10–11; Reply Br. 8–9. In particular, Appellant contends that “Lee’s
technique solves a problem that is LTE-specific” because the “LTE standard
specification does not define an X2 interface for femtocell base stations.”
Appeal Br. 11 (quoting Lee ¶ 5). Appellant asserts that a person of ordinary
skill “would not modify Lee to detect non-LTE base stations when Lee
specifically seeks to address a definition missing from the LTE standards for
LTE base stations.” Id.
We disagree. A primary reference and a secondary reference may
address different problems because any “need or problem known in the field
of endeavor at the time of invention and addressed by the patent can provide
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a reason for combining” the teachings of references. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007). A motivation to combine may come
from the references themselves, “from the knowledge of those skilled in the
art,” or “from the nature of the problem to be solved.” Acoustic Tech., Inc.
v. Itron Networked Solutions, Inc., 949 F.3d 1366, 1375 (Fed. Cir. 2020).
The “desire to enhance commercial opportunities by improving a product or
process is universal . . . .” DyStar Textilfarben GmbH v. C.H. Patrick Co.,
464 F.3d 1356, 1368 (Fed. Cir. 2006); see In re Peterson, 315 F.3d 1325,
1330 (Fed. Cir. 2003). Hence, an “implicit motivation to combine” may
result from a desire to make a product or process “stronger, cheaper, cleaner,
faster, lighter, smaller, more durable, or more efficient.” DyStar, 464 F.3d
at 1368.
Here, as discussed above, Lim explains that equipping femtocell base
stations with multiple RATs permits a terminal to “selectively use [the] RAT
having the best access quality according to a channel state among the RATs
provided by” different base stations when communicating simultaneously
with different base stations. Lim 8:4–11; see id. at 7:54–61, 8:62–67;
Ans. 3–4 (citing Lim 7:54–61, 8:4–12). Using the RAT having the best
access quality for each base station distributes a terminal’s traffic between
different base stations, and thus “improv[es] communication quality and the
bandwidth of the terminal.” Lim 8:4–24; see id. at 2:7–12, 6:1–7, 9:19–26;
see Ans. 3–4. Improving communication quality and terminal bandwidth
constitute reasons that would have prompted a person of ordinary skill to
combine Lim’s teachings with Lee’s teachings.
Appellant admits that Lim provides “a very clear explanation of a
benefit that arises from allowing a mobile terminal to simultaneously
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communicate with two different base stations, using different RATs.” Reply
Br. 9 (emphasis omitted) (quoting Lim 8:4–11). But Appellant asserts that
Lim “provides no explanation at all” about “why Lee’s base stations, which
operate according to the LTE RAT, should be modified to intercept
transmissions from other access nodes, using a different RAT.” Id.
(emphasis omitted).
Appellant’s assertion does not persuade us of Examiner error because
Lim explains that a femtocell base station with multiple RATs operating
simultaneously consumes “much power” and that deactivating unused RATs
conserves power. Lim 8:62–67; see id. at 9:27–33. In light of that
explanation, a person of ordinary skill would have understood that a
femtocell base station according to the combined disclosures in Lee and
Lim should listen for all potential RATs because a neighbor femtocell base
station may have deactivated certain RATs to conserve power.
An obviousness analysis “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR,
550 U.S. at 418; see In re Preda, 401 F.2d 825, 826 (CCPA 1968).
“A person of ordinary skill is also a person of ordinary creativity” and “in
many cases . . . will be able to fit the teachings of multiple patents together
like pieces of a puzzle.” KSR, 550 U.S. at 420–21. “The rationale of KSR
does not support [the] theory that a person of ordinary skill can only perform
combinations of a puzzle element A with a perfectly fitting puzzle
element B.” ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir.
2016). Here, for the reasons discussed above, a person of ordinary skill
would have been able to fit Lim’s teachings with Lee’s teachings to yield
claim 23’s subject matter.
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SUMMARY FOR CLAIM 23
For the reasons discussed above, Appellant’s arguments have not
persuaded us that the Examiner erred in rejecting claim 23 for obviousness
based on Lee and Lim. In our view, 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. Thus, we sustain the § 103
rejection of claim 23.
CLAIM 39: ESTABLISHING A COMMUNICATIONS INTERFACE
Appellant asserts that the Examiner erred in rejecting claim 39
because “Lim does not disclose or suggest, alone or in combination with
Lee, a second access node operating according to a second RAT that
establishes a communications interface to a first access node operating
according to a first RAT.” Appeal Br. 13 (emphasis by Appellant).
We disagree. For the reasons discussed above for claim 23, the
combined disclosures in Lee and Lim teach or suggest a first access node
operating according to a first RAT (e.g., LTE) and a second access node
operating according to a second RAT (e.g., WLAN). See Final Act. 3, 7;
Ans. 3; Lee ¶¶ 10, 13, 21, 41, 61–63, Fig. 4; Lim 3:7–11, 7:54–61, 8:50–56,
8:62–67.
In addition, the combined disclosures in Lee and Lim teach or suggest
establishing a communications interface by exchanging messages between
access nodes. Lee ¶¶ 71–75, Fig. 6; see id. ¶ 18; Final Act. 3. In Lee, an
intercepting femtocell base station transmits an “X2 setup request message”
to a neighbor femtocell base station. Lee ¶¶ 72, 74, Fig. 6; see id. ¶¶ 26, 54;
Final Act. 3. “In response to the X2 setup request message,” the neighbor
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femtocell base station transmits an “X2 setup response message” to the
intercepting femtocell base station. Lee ¶¶ 73–74, Fig. 6; see id. ¶¶ 26, 54;
Final Act. 3. “By exchanging the X2 setup request message and the X2
setup response message,” the femtocell base stations establish an X2
interface. Lee ¶¶ 74–75; see id. ¶¶ 19, 40, claim 11.
Because the combined disclosures in Lee and Lim teach or suggest
claim 39’s subject matter, we sustain the § 103 rejection of claim 39.
INDEPENDENT CLAIMS 40 AND 44 AND
DEPENDENT CLAIMS 26–28, 30, 32, 33, AND 36–38
Appellant does not argue patentability separately for independent
claims 40 and 44 or dependent claims 26–28, 30, 32, 33, and 36–38. See
Appeal Br. 7–13; Reply Br. 2–9. Hence, we sustain the § 103 rejection
of these claims for the same reasons as claims 23 and 39. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The § 103 Rejections of Claims 31, 34, 35, 42, and 43
Claims 31, 34, and 35 depend indirectly from claim 23, while
claims 42 and 43 depend directly from claim 40. Appellant does not argue
patentability separately for these dependent claims. See Appeal Br. 7–13;
Reply Br. 2–9. Hence, we sustain the § 103 rejections of these dependent
claims for the same reasons as claims 23 and 40. See 37 C.F.R.
§ 41.37(c)(1)(iv).
CONCLUSION
We affirm the Examiner’s decision to reject claims 23, 26–28, 30–40,
and 42–44.
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In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
23, 26–28,
30, 32, 33,
36–40, 44
103 Lee, Lim
23, 26–28,
30, 32, 33,
36–40, 44

31, 34, 35 103 Lee, Lim, Gage 31, 34, 35
42, 43 103 Lee, Lim, Zhang 42, 43
Overall
Outcome
23, 26–28,
30–40,
42–44

TIME PERIOD FOR RESPONSE
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