Nokia Technologies Oy

Patent Trials and Appeals Board

Dec 14, 2020

2019005333 (P.T.A.B. Dec. 14, 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.
15/129,135 09/26/2016 Lars DALSGAARD 49700-012N01US/
NC85771US
2054
12358 7590 12/14/2020
Mintz Levin/Nokia Technologies Oy
One Financial Center
Boston, MA 02111
EXAMINER
WANG, YAOTANG
ART UNIT PAPER NUMBER
2474
NOTIFICATION DATE DELIVERY MODE
12/14/2020 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):
IPDocketingBOS@mintz.com
IPFileroomBOS@mintz.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LARS DALSGAARD, ILKKA KESKITALO,
JORMA JOHANNES KAIKKONEN, and
JUSSI-PEKKA KOSKINEN
____________________

Appeal 2019-005333
Application 15/129,135
Technology Center 2400
____________________

Before ERIC S. FRAHM, JOHNNY A. KUMAR, and
MICHAEL T. CYGAN, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a final rejection of
claims 27–46. Claims 1–26 have been canceled (see Appeal Br. 15). We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

DISCLOSED AND CLAIMED INVENTION
According to Appellant, the disclosed invention “relates to wireless
communications and, in particular, mobility” (Spec. ¶ 1). Appellant
discloses and claims user equipment (UE) 114A–C,2 configured to operate
using a plurality of radio access technologies when located in a coverage
area of a cell or plurality of cells 112A–C (see Fig. 1; Spec. ¶¶ 22–24).
According to Appellant, user equipment can operate using a discontinuous
reception (DRX) mode having a power saving or DRX state, a standby DRX
state, and a non-DRX or higher power consumption state (see Spec. ¶ 2).
DRX configuration information can be sent to UEs from an access point or
base station as part of a radio resource control configuration (see Spec. ¶¶
26–28). Independent claims 27 (method of operating a UE) and 37
(apparatus having a processor and memory to perform the method) recite a
method for receiving information about the operation mode (e.g., DRX
configuration information) and measuring transmissions providing a model

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). “The word ‘applicant’ when used in this title refers
to the inventor or all of the joint inventors, or to the person applying for a
patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as Nokia Technologies Oy (Appeal Br. 2).
2 UE 114A–C shown in Figure 1 may be “for example, a wireless device, a
mobile station, a mobile unit, a subscriber station, a wireless terminal, a
tablet, a smart phone, and/or the like” (Spec. ¶ 23).
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for identification of threats and weaknesses specific to an application, using
heuristics and conclusions to generate a model of the application (see e.g.,
claim 27). Claim 27, reproduced below, is illustrative of the claimed subject
matter:
27. A method comprising:
[A] receiving, by a user equipment, an indication of a
monitoring requirement for at least one of [1] an idle mode of
operation at the user equipment or [2] a connected mode of
operation at the user equipment;
[B] receiving, by the user equipment, information for
one or more transmissions that are multicast or broadcast; and
[C] measuring, by the user equipment, the one or more
transmissions that are multicast or broadcast, the measuring
performed [1] in accordance with the received information
and [2] without regard to the indication of the monitoring
requirement for at least one of the idle mode of operation or
the connected mode of operation.

Appeal Br. 15, Claims Appendix (bracketed lettering and emphases added).

REJECTION
The Examiner made the following rejection:
Claims 27–46 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Etemad et al. (US 2012/0039229 A1; published Feb. 16,
2012) (hereinafter, “Etemad”) and Kim et al. (US 2015/0282132 A1;
published Oct. 1, 2015 and filed Oct. 8, 2013) (hereinafter, “Kim”). Final
Act. 5–9.

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ISSUE
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 9–
14) and the Reply Brief (Reply Br. 2–9),3 the following principal issue is
presented on appeal:
Has Appellant shown the Examiner erred in rejecting claims 27–46
under 35 U.S.C. § 103 as being unpatentable over the combination of
Etemad and Kim because the combination fails to teach or suggest
measuring multicast or broadcast transmissions (see claim 27, limitation C)
as set forth in representative claim 27?

ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 5–9) in light
of Appellant’s arguments (Appeal Br. 9–14; Reply Br. 2–9) that the
Examiner has erred, as well as the Examiner’s response to Appellant’s
arguments in the Appeal Brief (Ans. 3–7). With regard to representative
claim 27, we agree with and adopt as our own the Examiner’s findings of
facts and conclusions as set forth in the Final Rejection (Final Act. 5–6) and
Answer (Ans. 3–7). We provide the following explanation for emphasis
only.
Appellant contends that “[t]he method of claim 27 advantageously
provides for two parallel running measurement processes at a user

3 Appellant argues claims 27–46 on the basis of claim 27, and primarily
argues claim 27 (see Appeal Br. 9–13; Reply Br. 4–7), arguing the
remaining independent claim 37, and all dependent claims (claims 28–36
and 38–46) on that same basis (see Appeal Br. 13–14; Reply Br. 7–9).
Based on Appellant’s arguments, and pursuant to our authority under 37
C.F.R. § 41.37(c)(1)(iv), we select claim 27 as representative of claims 27–
46.
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equipment:” (Appeal Br. 10) (emphasis added), (1) the monitoring for idle or
connected modes of operation (see claim 27, limitation A); and (2) the
measuring of multicast or broadcast transmission (see claim 27, limitation
C). Appellant further contends that Etemad, relied upon by the Examiner as
teaching or suggesting limitation C, “does not at all describe a parallel
monitoring or measuring with respect to multicast or broadcast
transmissions, as required by claim 27” (Appeal Br. 11; see also Appeal Br.
13 (arguing Etemad fails to provide for parallel running measurement
processes)). We agree with the Examiner’s determination that the negative
limitation C2 of claim 27 does not necessarily require a reading of claim 27
that parallel measuring or monitoring processes are occurring at a UE (see
Ans. 4, 5).
Notably, claim 27 calls for the performance of three individual
operations:
(1) Receiving an indication of a monitoring requirement (see claim 27,
limitation A);
(2) Receiving information for one or more multicast or broadcast
transmissions (see claim 27, limitation B); and
(3) Measuring the one or more multicast or broadcast transmissions
(see claim 27, limitation C).
Although Appellant refers to the operations being performed in
limitations A and C of claim 27 as parallel measurement processes that are
run simultaneously (see Appeal Br. 10, 13) (emphasis added), this
distinction is not born out in the actual language of claim 27, which sets
forth two reception processes (see claim 27, limitations A and B), and one
measuring process (see claim 27, limitation C). Furthermore, the only
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required connection between limitations A and C is that the measurement of
the one or more multicast or broadcast transmissions be “performed in
accordance with the received information” (see claim 27, limitation C1), and
the only information that is received is the “information for one or more
transmissions that are multicast or broadcast” (see claim 27, limitation B).
This is because there is no information is received in limitation A, only “an
indication of a monitoring requirement” (see claim 27, limitation A)
(emphasis added), which is not a measurement, but an indication of which
mode, and thus monitoring requirement, is being used.
Therefore, claim 27 requires (i) receiving a monitoring requirement
indication (see claim 27 limitation A); and (ii) measuring multicast or
broadcast information (see claim 27, limitation C), but claim 27 does not
require any of the three recited steps be performed simultaneously or in
parallel as Appellant contends.
Notably, Appellant’s arguments use the terms “measure” and
“monitor” interchangeably (see Appeal Br. 10–13). As a result, we find
Appellant’s contentions that Etemad teaches reading (i.e., monitoring)
information about one or more transmissions, and not measuring one or
more transmissions (see Appeal Br. 12), to be unsupported by limiting
language in claim 27, and not persuasive. Appellant’s contention that
Etemad fails to address measuring or monitoring (see Appeal Br. 11) also
misses the mark, as the contention itself uses the terms measuring and
monitoring interchangeably.
In any event, we agree with the Examiner’s finding (see Final Act. 5–
6; Ans. 5–6) that Etemad’s reading of information disclosed in paragraph 18
and monitoring of transmission channels in paragraph 28 is encompassed by
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claim 27’s recitation of measuring one or more transmissions in accordance
with received information about the transmission(s), i.e., whether multicast
or broadcast/unicast transmission information is present. In fact, this is
supported by Appellant’s Specification, describing measurements related to
a multicast broadcast “may be assumed to be done only on the occasions
where the user equipment is decoding MBSFN data” (Spec. ¶ 17). In other
words, Appellant discloses that measurements may be assumed to only be
taken when a transmission is being decoded (id.), i.e., broadcast, which is
analogous to Etemad’s description of reading or monitoring for the presence
of multicast and broadcast services (see Etemad ¶¶ 18, 28).
As the Examiner points out (see Ans. 5–6), and we agree, measuring
is a broad term, especially because the process of claim 27 “does not specify
what criterion of the transmissions is being measured by the UE, nor an
outcome of the measurement” (Ans. 6). Indeed, under the condition that
Etemad is measuring or monitoring for the presence of one or more
multicast or broadcast transmissions, this is done without regard to the
received monitoring requirement indication, as set forth in claim 27, because
Etemad does not receive an indication of a monitoring requirement for an
idle mode or connected mode of operation at the user equipment, as
required by claim 27. Appellant has not sufficiently shown, on this record,
how or why Etemad’s measuring process is linked to the reception of a
monitoring requirement indication.
In view of the foregoing, Appellant’s arguments are unpersuasive in
overcoming the Examiner’s reliance upon Etemad’s reading and monitoring
as teaching or suggesting measuring one or more transmissions (see claim
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27, limitation C), in accordance with information received “for one or more
transmissions” (claim 27, limitation B), as recited in claim 27.
Unless the steps of a method actually recite an order in which the step
must be performed, the steps are not ordinarily construed to require one.
Interactive Gift Express, Inc. v. CompuServe, Inc., 256 F.3d 1323, 1342
(Fed. Cir. 2001). See also Altiris, Inc. v. Symantec Corp., 318 F.3d 1363,
1369–71 (Fed. Cir. 2003) (district court erred in claim construction by
reading a step order from the written description into the claims).
“[A]lthough a method claim necessarily recites the steps of the method in a
particular order, as a general rule the claim is not limited to performance of
the steps in the order recited, unless the claim explicitly or implicitly
requires a specific order.” Baldwin Graphics Systems, Inc. v. Siebert Inc.,
512, F.3d 1338, 1345 (Fed. Cir. 2008); see also Interactive Gift Exp., Inc. v.
Compuserve Inc., 256 F.3d 1323, 1343-44 (Fed. Cir. 2001).
As discussed above, the performance of the processes recited in
limitation A and B are not dependent upon each other, and the performance
of the measurement process recited in limitation C only positively requires it
be done “in accordance with” the information received in limitation B (see
claim 27, limitation C1), and without regard to the indication received in
limitation A (see claim 27, limitation C2). And, we agree with the
Examiner’s finding that Etemad’s monitoring of transmission channels in a
cell for the presence of unicast or multicast transmissions (see Final Act. 5–6
citing Etemad ¶¶ 18, 28) is encompassed by the measuring of transmissions
set forth in limitation C, in accordance with transmission information as set
forth in limitations B and C1, and without regard to the monitoring
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requirement indication received in limitation A of claim 27 (see claim 27
limitation C2).
It is improper to read a specific order of steps (such as requiring the
reception of a monitoring requirement indication in limitation A and the
measuring of one or more transmissions in limitation C to be performed in
parallel) into method claims where, as a matter of logic or grammar, the
language of the method claims does not impose a specific order on the
performance of the method steps, and the specification does not directly or
implicitly require a particular order. See Altiris Inc. v. Symantec Corp., 318
F.3d 1363, 1371 (Fed. Cir. 2003) citing Interactive Gift Express, Inc. v.
CompuServe Inc., 256 F .3d 1323, 1343 (Fed. Cir. 2001). See Mantech
Envtl. Corp. v. Hudson Envtl. Servs., Inc., 152 F.3d 1368, 1375–76 (Fed.
Cir. 1998) (holding that the steps of a method claim had to be performed in
their written order because each subsequent step referenced something
logically indicating the prior step had been performed).
And, while the specification can be examined for proper context of a
claim term, limitations from the specification will not be imported into the
claims. CollegeNet, Inc. v. ApplyYourself Inc., 418 F.3d 1225, 1231 (Fed.
Cir. 2005). Appellant asserts that Etemad fails to describe parallel
monitoring or measuring (see Appeal Br. 11), however, such differences are
not set forth in the claims. See CollegeNet, Inc. v. ApplyYourself Inc., 418
F.3d at 1231.
The Examiner finds, and we agree, that Kim discloses a UE that
receives “an indication of a monitoring requirement for at least one of an
idle mode of operation at the user equipment or a connected mode of
operation at the user equipment” (claim 27, limitation A), as set forth in
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claim 27 (see Final Act. 6 citing Kim ¶¶ 97–99; Fig. 1). Appellant does not
dispute this finding with evidence or argument (see generally Reply Br. 7–
8). And, although Appellant contends Kim utilizes “paging messages” (see
Appeal Br. 12–13), whereas Etemad deals with “switching considerations”
(see Appeal Br. citing Etemad ¶ 30), the Examiner’s prima facie case of
obviousness (see Final Act. 5–6) does not rely on any findings regarding
Etemad’s process for switching, and notably, Appellant utilizes a similar
paging process (see Spec. ¶ 16) (“idle mode paging reception may be
governed by paging reception, an example of which is described in 3GPP TS
36.304”).
Kim describes that the power consumption of UEs may be decreased
when in an “idle state” and not a “connected state” is detected in the radio
resource control (Kim ¶ 97), similar to Appellant’s disclosure of sending
DRX configuration information to UEs from an access point or base station
as part of a radio resource control configuration (see Spec. ¶¶ 26–28). And,
notably, although DRX is not explicitly recited in claim 27, Kim uses DRX
configuration information and procedures in a manner similar to that
disclosed by Appellant (compare Kim ¶¶ 97–99 with Spec. ¶¶ 2, 15–21, 25–
27). And, as correctly pointed out by the Examiner, limitation A of claim 27
merely requires “a UE receives an indication of monitoring requirement, but
the UE is not performing monitoring regarding the indication” (Ans. 4)
(emphasis added).
We emphasize that the Examiner’s ultimate legal conclusion of
obviousness is based upon the combined teachings of the cited references.
Moreover, “‘the question under 35 USC 103 is not merely what the
references expressly teach but what they would have suggested to one of
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ordinary skill in the art at the time the invention was made.’” Merck & Co.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)) (emphasis added); see also
MPEP § 2123. In this light, we agree with the Examiner that the combined
teachings and suggestions of Etemad and Kim support the legal conclusion
of obviousness as to claim 21. And, Appellant’s contentions that Kim does
not disclose limitation C, including limitations C1 and C2, recited in claim
27 (see Appeal Br. 12–13), are not persuasive since the Examiner relies
upon Etemad, and not Kim, as teaching or suggesting limitation C.
As explained above, Appellant’s arguments are not persuasive insofar
as being incommensurate with the scope of the claimed invention. See In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts …
are not commensurate with the claim scope and are therefore
unpersuasive.”). Appellant’s arguments are not persuasive of Examiner
error because they are not responsive to the Examiner’s rejection and are not
commensurate in scope to the language of claim 27. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be
relied upon for patentability).
In view of the foregoing, Appellant has not overcome the Examiner’s
prima facie case of obviousness with respect to independent claim 27, and
we are not persuaded the Examiner erred in rejecting claim 27.
Accordingly, we sustain the Examiner’s rejection of claim 27, as well as
claims 28–46 grouped therewith.

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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
References/Basis Affirmed Reversed
27–46 103 Etemad, Kim 27–46

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).

AFFIRMED