Skog, Robert et al.

Patent Trials and Appeals Board

Dec 4, 2019

14769223 - (D) (P.T.A.B. Dec. 4, 2019)

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.
14/769,223 08/20/2015 Robert Skog 1009-1490 / P39571 US1 3979
102721 7590 12/04/2019
Murphy, Bilak & Homiller/Ericsson
1255 Crescent Green
Suite 200
Cary, NC 27518
EXAMINER
SWEET, LONNIE V
ART UNIT PAPER NUMBER
2467
NOTIFICATION DATE DELIVERY MODE
12/04/2019 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 ROBERT SKOG, ANDERS AXELSSON, JOHAN KÖLHI,
THORSTEN LOHMAR, and DAN MATHIASEN
Appeal 2019-000988
Application 14/769,223
Technology Center 2400
Before KARL D. EASTHOM, JASON V. MORGAN, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 12–14, 16–18, 20, and 21, which are all
of the pending claims.2 Final Act. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as the
applicant, Telefonaktiebolaget LM Ericsson. Appeal Br. 2.
2 Claims 1–11, 15, and 19 have been canceled. Final Act. 2.
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CLAIMED SUBJECT MATTER
By way of background, Appellant’s Specification describes mobile
telecommunications systems in which mobile operators “offer subscriptions
for mobile Internet where the total amount of data that a subscriber can
download during a predetermined period is restricted.” Spec. 1:9–11.
Appellant’s Specification notes that the restriction on data is “known as [a]
download quota.” Id. at 1:11. Appellant’s Specification states that once a
quota or “cap” has been reached, the subscriber downloads may be
“throttled” to a much lower rate “until the turn of the month when the
subscriber again is assigned full rate.” Id. at 1:13–16.
Appellant’s Specification also notes that, even if a transmission rate is
decreased when the download cap is reached, a “steady and continuous flow
of data” is still provided to the user’s device. Id. at 3:27–28. This may be
undesirable, according to Appellant’s Specification, because a continuous
stream of data (albeit at a lower rate) will not allow the user device to
transition to a mode (such as Discontinuous Reception (DRX)) that would
decrease power consumption during periods of inactivity. See id. at 3:13–
29.
Appellant’s Specification states that “[a]n object of the present
invention is to solve, or at least mitigate these problems in the art and
provide an improved method and network node for controlling data to be
delivered to a mobile terminal.” Id. at 4:1–4.
This object is attained in a first aspect of the present
invention by a method of a network node of controlling data to
be delivered to a mobile terminal. The method comprises the
steps of acquiring the data to be delivered to the mobile
terminal, receiving an indication that a data download cap for
the mobile terminal has been reached, and buffering the
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acquired data. The method further comprises the step of
delivering the acquired data to the mobile terminal in bursts.
This object is attained in a second aspect of the present
invention by a network node arranged to control data to be
delivered to a mobile terminal. The network node comprises a
processing unit being arranged to acquire the data to be
delivered to the mobile terminal, receive an indication that a
data download cap for the mobile terminal has been reached,
and buffer the acquired data. The processing unit is further
arranged to deliver the buffered data to the mobile terminal in
bursts.
Id. at 4:5–18.
Claims 12, 16, and 21 are independent. Claim 12, reproduced below,
is illustrative of the claimed subject matter:
12. A method by a network node of controlling data to be
delivered to a mobile terminal, the method comprising:
receiving an indication that a data download cap has been
reached in a current download quota period, for a
subscription associated with the mobile terminal; and
responsive to receiving the indication, throttling further data
downloads to the mobile terminal during a remaining
portion of the current quota period, based on:
buffering data received for delivery to the mobile
terminal;
delivering the buffered data to the mobile terminal in
bursts; and
controlling the period between the bursts in order to
control transition by the mobile terminal into a lower-
power state of operation between the bursts.

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REFERENCES
The prior art relied upon by the Examiner is:
Pekonen
Yamasaki et al. (“Yamasaki”)
Menezes et al. (“Menezes”)
Jafarian et al. (“Jafarian”)
US 2003/0152107 A1
US 2009/0170556 A1
US 2012/0157038 A1
US 2014/0112405 A1
Aug. 14, 2003
July 2, 2009
June 21, 2012
Apr. 24, 2014

REJECTIONS3
Claims 12, 14, 16, 18, 20, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Yamasaki, Pekonen, and Menezes.4
Final Act. 2–10.
Claims 13 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yamasaki, Pekonen, Menezes, and Jafarian. Final Act.
10–11.

OPINION
We reverse the rejection. We need address only claim 12, which is
the broadest independent claim and is argued by Appellant collectively with

3 The Leahy-Smith America Invents Act (“AIA”) includes revisions to 35
U.S.C. § 103 that became effective on March 16, 2013. Because the present
application claims the benefit of priority to an application that was filed
before March 16, 2013, the Examiner applies the pre-AIA version of the
statutory basis for unpatentability. See Final Act. 2.
4 The Examiner’s statement of this ground rejection in the Final Action
refers to “[c]laims 12, 14–16, and 18–21.” Final Act. 2. Claims 15 and 19,
however, were canceled by way of amendment dated July 18, 2017. The
Examiner does not otherwise reference a rejection to claims 15 and 19, and
we deem the apparent inclusion of claims 15 and 19 in this ground of
rejection to be inadvertent.
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independent claims 16 and 21, and we deem it to be representative on
appeal. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner rejects claim 12 as unpatentable over Yamasaki,
Pekonen, and Menezes. Final Act. 2–10. The Examiner finds Yamasaki
teaches “receiving an indication that a data download cap . . . has been
reached” (id. at 3 (citing Yamasaki ¶¶ 33–34, 74–75)) and “responsive to
receiving the indication . . . , buffering the acquired data received for
delivery to the mobile terminal” (id. (citing Yamasaki ¶¶ 7, 43–49, Fig. 1)).
The Examiner further finds Pekonen teaches “delivering the buffered data to
the mobile terminal . . . in bursts” (id. (citing Pekonen ¶ 3, Fig. 4)) and
“controlling the period between the bursts in order to control transition by
the mobile terminal into a lower-power state of operation between the
bursts” (id. (citing Pekonen ¶¶ 3, 40, 93)). The Examiner finds the
combination of Yamasaki and Pekonen “does not teach wherein the data cap
has been reached in a current download quota period, for a subscription
associated with the terminal and throttling further data downloads to the
mobile terminal during the remaining portion of the current quota period.”
Id. at 4. The Examiner then finds “Menezes teaches wherein the data cap
has been reached in a current download quota period, for a subscription
associated with the terminal and throttling further data downloads to the
mobile terminal during the remaining portion of the current quota period.”
Id. (citing Menezes ¶¶ 4, 86, 93).
With regard to motivation to combine the teachings of the references
as stated, the Examiner concludes:
It would have been obvious to one of ordinary skill in the
art at the time of the invention to combine the teachings of
[Yamasaki] and Pekonen [which] teaches a mobile
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communication system which transmits data to a UE from the
eNB which throttles data received and buffered to a reduced
rate upon detected conditions which exceed a threshold for the
UE, with the teachings of Menezes which teaches a charging
policy may be utilized monthly cap for data usage for a mobile
device which when reached future downloads for the month
will be throttled. The resulting benefit of the combination
would have been the ability reduce costs and preserve some of
the user experience.
Id. at 4–5.
Appellant argues, first, that the Examiner’s finding that Yamasaki
teaches an “indication that [a] data download cap has been reached” is in
error because Yamasaki discloses a “buffer fill-level threshold” that “is
unrelated to a data quota.” Appeal Br. 6–7. We agree, for the reasons
argued by Appellant. See id.; see also Reply Br. 2–4. We note, however,
that the Examiner also finds that Menezes discloses a “data download cap”
and discloses that this cap is tied to a “subscription associated with the
mobile terminal,” as recited in claim 12. See Ans. 22. We agree that such
finding is supported by Menezes, which discloses a mobile data network in
which a “service plan may have a monthly usage cap,” wherein “the network
may throttle data transmissions above the cap such that a user who exceeds
the cap may experience reduced service.” Menezes ¶ 4.
Although Menezes discloses throttling data that exceeds the usage
cap, Menezes does not disclose a particular mechanism for throttling other
than briefly noting that throttling may be accomplished “any suitable way
including buffering the data within [a] stack.” Menezes ¶ 145. As noted
above, the Examiner does not rely on Menezes (or Yamasaki) for delivering
data in bursts or controlling the period between bursts, as claimed, but relies
on Pekonen for those teachings. Final Act. 3. Appellant argues the
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Examiner’s combination of these references is in error because it is premised
on “hindsight recreation of the claimed invention, based on a piecemeal
cobbling together of disparate references with no discernable interrelations.”
Appeal Br. 10.
We are persuaded of Examiner error. Setting forth a prima facie case
of obviousness requires establishing that the applied prior art would have
provided one of ordinary skill in the art with an apparent reason to modify
the prior art to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Here, the Examiner’s findings in that regard
are deficient. The art relied on by the Examiner to teach data caps and
throttling excess data (Menezes) does not suggest transmitting the excess
(throttled) data in controlled bursts. The art relied on by the Examiner to
teach delivering data in controlled bursts (Pekonen) does not disclose a
triggering event for delivering data in bursts. That is, although Pekonen
discloses burst transmissions and devices operating with reduced power
between bursts (see Pekonen ¶ 3), the Examiner does not cite anything in
Pekonen that discloses the burst transmissions are triggered by reaching a
data download cap, or by any other logical trigger. Instead, as Appellant
contends and we agree, Pekonen’s bursts are an inherent part of the digital
TV broadcast signals being transmitted and received in Pekonen’s system.
See Appeal Br. 10, 12 (citing, e.g., Pekonen ¶¶ 3, 40, and 93). In other
words, Pekonen does not disclose the purposeful use of burst transmissions
in response to some trigger condition being fulfilled; rather, Pekonen’s
signal inherently uses bursts. See id.
The Examiner does not make findings sufficient to bridge the gap
between “throttling” data, as disclosed by Menezes (and Yamasaki), and
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delivering data in bursts, as disclosed by Pekonen. In the Answer, the
Examiner states “the concept of transmission bursts (only transmitting
during scheduled short intervals over a channel to a receiving device)” is
“inherently known to have a reduced rate of transmission in contrast to a
constant transmission (which is set to continuously transmit over a channel
to the receiving device).” Ans. 24. The Examiner cites no support for this
statement, nor is the truth of it inherently logical. An amount of data may be
delivered in a continuous stream at one rate over a period of time, or the
same amount of data may be delivered in bursts separated by some smaller
period of time—in the latter case, for example, using a higher data rate
during the transmission periods could still deliver the same overall amount
of data in the same time frame. Thus, the Examiner does not explain why
using data bursts would necessarily result in a “reduced rate of
transmission,” as the Examiner contends. Id. The only evidence we have
before us tying delivering data in bursts to a form of throttling is Appellant’s
disclosure.
Thus, the record indicates that the Examiner’s rejection is based upon
impermissible hindsight in view of the Appellant’s disclosure. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section
103 clearly must rest on a factual basis, and these facts must be interpreted
without hindsight reconstruction of the invention from the prior art.”). In
particular, the Examiner relies on hindsight in finding the combined
disclosures of the cited references teach or suggest receiving an indication
that a “data download cap has been reached,” and then “responsive to” that
indication, “throttling further data” based on delivering buffered data “in
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bursts,” as recited in independent claim 12 and commensurately recited in
independent claims 16 and 21.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of independent claim 12, or of independent claims 16 and 21. The
dependent claims stand with the independent claims.
CONCLUSION
The Examiner’s decision to reject claims 12–14, 16–18, 20, and 21
under 35 U.S.C. § 103(a) is reversed.
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
12, 14, 16,
18, 20, 21
103(a) Yamasaki, Pekonen,
Menezes
12, 14, 16,
18, 20, 21
13, 17 103(a) Yamasaki, Pekonen,
Menezes, Jafarian
13, 17
Overall outcome 12–14, 16–
18, 20, 21
REVERSED