Skog, Robert et al.Download PDFPatent Trials and Appeals BoardDec 4, 201914769223 - (D) (P.T.A.B. Dec. 4, 2019) Copy Citation 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. Appeal 2019-000988 Application 14/769,223 2 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 Appeal 2019-000988 Application 14/769,223 3 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. Appeal 2019-000988 Application 14/769,223 4 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. Appeal 2019-000988 Application 14/769,223 5 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 Appeal 2019-000988 Application 14/769,223 6 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 Appeal 2019-000988 Application 14/769,223 7 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 Appeal 2019-000988 Application 14/769,223 8 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 Appeal 2019-000988 Application 14/769,223 9 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 Copy with citationCopy as parenthetical citation