Telefonaktiebolaget L M Ericsson (publ)Download PDFPatent Trials and Appeals BoardMay 15, 202014895293 - (D) (P.T.A.B. May. 15, 2020) 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. 14/895,293 12/02/2015 Gunnar Bergquist 4015-9396 / P45245-US2 1055 24112 7590 05/15/2020 COATS & BENNETT, PLLC 1400 Crescent Green, Suite 300 Cary, NC 27518 EXAMINER OHRI, ROMANI ART UNIT PAPER NUMBER 2413 MAIL DATE DELIVERY MODE 05/15/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GUNNAR BERGQUIST and DAVID BETTER Appeal 2019-001413 Application 14/895,293 Technology Center 2400 Before MICHAEL J. STRAUSS, JUSTIN BUSCH, and SCOTT RAEVSKY, Administrative Patent Judges. BUSCH, 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 27–42, 45–50, and 53–56, which are all the claims pending. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and ENTER A NEW GROUND OF REJECTION. See 37 C.F.R. § 41.50(b). 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 Telefonaktiebolaget L M Ericsson. Appeal Br. 2. Appeal 2019-001413 Application 14/895,293 2 CLAIMED SUBJECT MATTER The claims relate to “methods and devices to achieve a coupling between DRX schemes and the required level of connectivity.” Spec. 5:8–9. More specifically, the claimed subject matter relates to user equipment (UE) determining a level of connectivity, sending a node a message indicating the level of connectivity, the node selecting a discontinuous receive (DRX) operation mode associated with the level of connectivity, and the node sending a response to the UE to activate the selected operation mode. Spec. 5:8–19; 16:16–25. Claims 27, 39, and 41 are independent claims directed to a method, device, and computer readable medium at a UE, and claims 45, 47, and 49 are independent claims directed to a method, device, and computer readable medium at a node. Claims 27 and 45 are reproduced below: 27. A method, by a user equipment (UE), for performing discontinuous receive (DRX) operation, the method comprising: preconfiguring, by the UE, the UE for the DRX operation in a connected state, wherein the DRX operation includes DRX operation modes with each mode corresponding to a level of connectivity of the UE; and while the UE is in the connected state: determining, by the UE the level of connectivity of the UE; and sending, by the UE and to a network node, a request for the DRX operation, the request including an indication of the level of connectivity of the UE. 45. A method, by a network node, for performing discontinuous receive (DRX) operation, the method comprising: the network node receiving, from a user terminal (UE) operating in a connected state, a request for the DRX operation, wherein the request includes an indication of a level of connectivity of the UE; Appeal 2019-001413 Application 14/895,293 3 the network node selecting one of a plurality of DRX operation modes that is associated with the level of connectivity; and the network node sending, to the UE, a response to activate the selected DRX operation mode of the UE. REJECTIONS Claims 27–30, 37–39, 41, 45, 47, 49, 54, and 55 stand rejected under 35 U.S.C. § 102 as anticipated by Vannithamby (US 2015/0201375 A1; July 16, 2015). Final Act. 3–11. Claims 31, 40, and 42 stand rejected under 35 U.S.C. § 103 as obvious in view of Vannithamby and Pelletier (US 2010/0130137 A1; May 27, 2010). Final Act. 11–12. Claims 32–35 stand rejected under 35 U.S.C. § 103 as obvious in view of Vannithamby, Pelletier, and Wei (US 2015/0327324 A1; Nov. 12, 2015). Final Act. 12–15. Claim 36 stands rejected under 35 U.S.C. § 103 as obvious in view of Vannithamby and Takahashi (US 2015/0173104 A1; June 18, 2015). Final Act. 15–16. Claims 46, 48, and 50 stand rejected under 35 U.S.C. § 103 as obvious in view of Vannithamby and Wei. Final Act. 16–17. Claim 53 stands rejected under 35 U.S.C. § 103 as obvious in view of Vannithamby and Futaki (US 2016/0255665 A1; Sept. 1, 2016). Final Act. 17–18. Claim 56 stands rejected under 35 U.S.C. § 103 as obvious in view of Vannithamby and Bontu (US 2014/0334439 A1; Nov. 13, 2014). Final Act. 18. Appeal 2019-001413 Application 14/895,293 4 OPINION The Examiner rejects independent claims 27, 39, 41, 45, 47, and 49 as anticipated by Vannithamby. Final Act. 3–5, 7–10. Of particular relevance to this Appeal, the Examiner finds Vannithamby’s determination of a preferred power consumption configuration and communication of that preferred power consumption configuration to a node discloses “determining . . . the level of connectivity of the UE” and “sending, by the UE and to a network node, a request for the DRX operation, the request including an indication of the level of connectivity of the UE,” as recited in independent claim 27 and commensurately recited in independent claims 39 and 41. Final Act. 3–5. The Examiner finds the same portions in Vannithamby also disclose a “network node receiving, from a user terminal (UE) operating in a connected state, a request for the DRX operation, wherein the request includes an indication of a level of connectivity,” as recited in independent claim 45 and commensurately recited in independent claims 47 and 49. Final Act. 7–10. In general, Appellant argues: (1) The Examiner fails to demonstrate that Vannithamby discloses a UE determining a level of connectivity “while the UE is in the connected state,” as recited in claims 27, 39, and 41, Reply Br. 2; (2) Vannithamby discloses the UE selecting a DRX configuration, but node claims 45, 47, and 49 recite that the network node selects a DRX operation mode, Appeal Br. 9; Reply Br. 5–6; and (3) Vannithamby sends a message to the node indicating the UE-determined preferred power consumption configuration, but (a) UE claims 27, 39, and 41 require the UE to determine a “level of connectivity” and send the node an indication of that level of connectivity and (b) node claims 45, 47, and 49 require receiving a Appeal 2019-001413 Application 14/895,293 5 message from a UE that indicates a level of connectivity, Appeal Br. 8–11; Reply Br. 2–3, 5–6. Vannithamby relates to a UE sending a node a DRX reconfiguration request message to indicate a preferred power consumption configuration. Vannithamby, Abstract. The node “may determine to reconfigure the DRX configuration of the UE based on the DRX reconfiguration request message . . . by adjusting one or more parameters of the DRX configuration.” Id. More specifically, Vannithamby’s “UE may communicate a power preference indication (PPI) to an evolved node B (eNB) . . . that improves power efficiency in the context of background traffic.” Id. ¶ 33 (emphases added). “In other words, the UE may communicate its preferred power consumption configuration (i.e., PPI information) to the eNB.” Id. The PPI may be represent a default power consumption configuration or a lower power consumption configuration. Id. The default “may be optimized for active traffic, such as delay sensitive applications . . . [and] may include a time period when a user is actively interacting with the UE.” Id. (emphases added). “The lower power consumption configuration may . . . [be] optimized for device power saving and is suitable for background traffic . . . [that] may represent a duration when the user is not directly interacting with the UE.” Id. (emphases added). The UE sends the DRX configuration request including the PPI to a node to request either a default or lower power configuration, and the node “may grant the UE’s request to transition into the default . . . or lower power DRX configuration.” Id. ¶ 35 (emphasis added); see also id. ¶¶ 45 (“UE may communicate a DRX reconfiguration request message to the eNB”), 46 (“eNB may determine to reconfigure the UE’s DRX configuration by Appeal 2019-001413 Application 14/895,293 6 adjusting at least one of” various parameters (emphasis added)). If the node grants the UE’s DRX reconfiguration request, the node “may reconfigure the DRX configuration, and then communicate a Radio Resource Connection (RRC) reconfiguration message to the UE” that “may contain a request to reinitialize or restart the UE’s DRX configuration.” Id. ¶ 48 (emphasis added). “In other words, the request to reinitialize or restart the [UE’s] DRX configuration may indicate, to the UE, that the eNB reconfigured the UE’s DRX configuration,” and, in response, “the UE may reinitialize the DRX configuration.” Id. (emphasis added). We start by addressing Appellant’s belated assertion that the Examiner failed to establish Vannithamby discloses that the UE determines the level of connectivity “while the UE is in the connected state,” as recited in claims 27, 39, and 41. Reply Br. 2. Appellant raised this argument for the first time in the Reply Brief even though Appellant could have raised the argument in the Appeal Brief, and the argument is not responsive to new evidence or findings set forth by the Examiner in the Answer. In the absence of a showing of good cause, such arguments are untimely and deemed waived. 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer . . . will not be considered by the Board for purposes of the present appeal, unless good cause is shown.”); MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 1205.02 (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it unless the examiner subsequently withdrew the rejection in the examiner's answer.”) Appeal 2019-001413 Application 14/895,293 7 Moreover, we find this argument unpersuasive on the merits because Vannithamby discloses the UE sending messages to the node to request DRX reconfiguration, which a person of ordinary skill in the art would have understood to mean that the node has an existing configuration for the particular UE and, therefore, the UE is in a connected state to the node. See Vannithamby, Abstract, Fig. 3. More specifically, Vannithamby discloses various parameters that may be configured “in the RRC_CONNECTED state,” and Vannithamby discloses altering one or more of those parameters in response to a UE request to reconfigure a DRX configuration. Id. ¶¶ 25, 36, 37. We also find unpersuasive Appellant’s argument that Vannithamby discloses the UE selects a DRX operation mode and, therefore, fails to disclose the node “select[s] one of a plurality of DRX operation modes,” as recited in claims 45, 47, and 49. See Appeal Br. 9; Reply Br. 5–6. As discussed above, Vannithamby’s UE sends a request message to the node indicating a preferred power configuration and, in response, the node determines whether to reconfigure the UE’s DRX configuration and, if the node grants the request, the node reconfigures the DRX configuration and communicates a message to the UE to reconfigure or restart its DRX configuration. See Vannithamby ¶¶ 35, 45, 48. Moreover, Vannithamby discloses that the node adjusts the various configuration parameters so that the UE may transition between operation modes (i.e., from default to low power mode or from low power to default power mode). Id. ¶ 46, Abstract. Finally, we address Appellant’s contentions regarding the differences between Vannithamby’s preferred power consumption configurations and the recited level of connectivity—i.e., whether Vannithamby discloses the Appeal 2019-001413 Application 14/895,293 8 disputed limitations related to the level of connectivity. See Appeal Br. 8– 11; Reply Br. 2–3, 5–6. Appellant argues Vannithamby’s DRX operation modes relate to preferred power consumption configurations, not the recited “level of connectivity.” Appeal Br. 10; see Reply Br. 2–3, 5. Appellant argues the recited “level of connectivity” is a level of activity, whereas Vannithamby’s configuration is based on preferred power consumption. Appeal Br. 10; Reply Br. 4 (“The level of connectivity is defined on p. 11 of the specification as ‘the level of activity of the UE.’”). Appellant acknowledges that power consumption may be related to or impacted by the level of activity but asserts that determining a preferred power consumption configuration and the UE sending a message to a node indicating that UE-selected power consumption or DRX configuration is not identical to determining a level of connectivity and sending a message including an indication of that level of connectivity, as recited in claims 27, 39, and 41. Appeal Br. 10; Reply Br. 2–3. For the same reasons, Appellant asserts the message Vannithamby’s node receives from a UE at most indicates a UE-selected power consumption level, not the recited level of connectivity. Appeal Br. 8–9; Reply Br. 5–6. Appellant also contends Vannithamby’s node merely implements a UE-selected DRX configuration, so Vannithamby fails to disclose “the network node selecting one of a plurality of DRX operation modes that is associated with the level of connectivity” and “sending, to the UE, a response to activate the selected DRX operation mode of the UE.” Appeal Br. 9; Reply Br. 5–6. The Examiner finds the claimed “UE level of connectivity reads on [Vannithamby’s] UE’s power consumption configuration.” Final Act. 3, 8; Appeal 2019-001413 Application 14/895,293 9 Ans. 7. The Examiner provides no further explanation of how a power consumption configuration is the same as the recited “level of connectivity.” “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Additionally, to anticipate, a prior art reference must disclose more than “multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008); see also In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“[T]he [prior art] reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.”). Without further findings, explanations, or evidentiary support indicating that a person of ordinary skill in the art would have determined that Vannithamby’s determination of a preferred power consumption configuration is the same as the recited “level of connectivity” or why Vannithamby inherently determines a level of connectivity, we are persuaded Vannithamby fails to explicitly disclose determining a level of connectivity and sending an indication of the level of connectivity to a node, as required by independent claims 27, 39, and 41. For similar reasons, on this record, we are persuaded Vannithamby fails to explicitly disclose a node receiving a request that “includes an indication of a level of connectivity of the UE,” as recited in independent claims 45, 47, and 49. Therefore, we reverse the rejection of claims 27–30, 37–39, 41, 45, 47, 49, 54, and 55 as Appeal 2019-001413 Application 14/895,293 10 anticipated by Vannithamby. Although the Examiner includes additional references in rejection the remaining claims as obvious, the Examiner provides no additional findings or explanation with respect to limitations related to the level of connectivity. Thus, we also reverse the rejection of dependent claims 31–36, 40, 42, 46, 48, 50, 53, and 56 as obvious in view of Vannithamby in combination with one or more of Pelletier, Wei, Takahashi, Futaki, and Bontu. We enter a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). In particular, we newly reject independent claims 27, 39, 41, 45, 47, and 49 under 35 U.S.C. § 103(a) as obvious in view of Vannithamby. For the reasons discussed above, we find Vannithamby discloses the majority of the limitations recited in independent claims 27, 39, 41, 45, 47, and 49. The only aspects Vannithamby fails to explicitly disclose relate to the recited “level of connectivity.” Specifically, Vannithamby discloses each limitation recited in independent claims 27, 39, and 41 except that Vannithamby’s UE determines a preferred power consumption configuration and sending a request message including an indication of the power preference to the node, whereas Appellant’s claims recite determining a “level of connectivity of the UE” and sending a request message including an indication of that level of connectivity to the node. Similarly, Vannithamby discloses each limitation recited in independent claims 45, 47, and 49 except that Vannithamby’s node receives a request message from a UE that includes an indication of a power preference, whereas Appellant’s claims recite receiving a request message that includes an indication of the level of connectivity of the UE. Appeal 2019-001413 Application 14/895,293 11 Appellant acknowledges that Vannithamby’s “power consumption configuration may be related to and/or impacted by the traffic/activity/ discontinuous operation, i.e., may be optimized for active traffic,” but asserts determining “such a power consumption configuration is not the same as actually determining the level of connectivity of the UE.” Appeal Br. 10. We agree that Vannithamby does not explicitly disclose determining the level of connectivity, which is why we reverse the anticipation rejection of the independent claims. However, although Vannithamby does not explicitly disclose determining a level of connectivity, we find Vannithamby at least suggests “determining, by the UE the level of connectivity of the UE” and “sending, by the UE and to a network node, a request . . . including an indication of the level of connectivity of the UE,” as recited in claim 27 and commensurately recited in claims 39 and 41. Vannithamby describes the UE entering a power saving state during non-active states. Vannithamby ¶ 24; see also id. ¶ 33 (explaining that the default power configuration is optimized for active traffic when the user is actively interacting with the UE). Vannithamby also discloses the UE communicates a power preference indicator (PPI) to the node to improve “the UE’s power efficiency in the context of background traffic.” Id. (emphasis added); see also id. (explaining that the lower power consumption configuration is optimized for power saving that “is suitable for background traffic . . . when the user is not directly interacting with the UE,” such as when applications are running in the background). While the UE is in the RRC_CONNECTED state, the node can then alter various parameters to configure the UE to use more or less power. Id. ¶¶ 25, 36, 37. Appeal 2019-001413 Application 14/895,293 12 Therefore, when considered as a whole, Vannithamby’s disclosures link an inactive UE to a lower power consumption (or “power saving”) state and an active UE to a default power consumption state. Although these disclosures do not explicitly state that the preferred power consumption configuration necessarily requires determining, they at least suggest to a person of ordinary skill in the art that the UE determines a level of connectivity (i.e., whether the device is in, or expects to be in, an active state or a non-active state) in order to determine whether to enter a power saving state. Given the disclosed link between the UE’s activity level to the preferred power consumption configuration, in addition to indicating the preferred power consumption configuration, Vannithamby’s PPI teaches or suggests an “indication of the level of connectivity of the UE,” as recited in the independent claims. For the reasons discussed above, we conclude independent claims 27, 39, 41, 45, 47, and 49 are obvious under 35 U.S.C. § 103 in view of the teachings and suggestions of Vannithamby. The Patent Trial and Appeal Board is a review body rather than a place of initial examination. We have made a new rejection regarding independent claims 27, 39, 41, 45, 47, and 49 under 35 U.S.C. § 103, pursuant to 37 C.F.R. § 41.50(b). However, we have not reviewed the remaining claims to the extent necessary to determine whether these claims are unpatentable over Vannithamby, or other prior art, either alone or in combination. We leave it to the Examiner to ascertain the appropriateness of any further rejections based on Vannithamby or other references. Our decision not to enter a new ground of rejection for all claims, however, should not be considered as an indication regarding the Appeal 2019-001413 Application 14/895,293 13 appropriateness of further rejection or allowance of the non-rejected claims. See MPEP§ 1213.02. CONCLUSION The Examiner’s rejections are reversed, and we enter a new ground of rejection. More specifically, we reverse the Examiner’s anticipation rejection of claims 27–30, 37–39, 41, 45, 47, 49 54, and 55 as anticipated by Vannithamby. We also reverse the Examiner’s obviousness rejection of claims 31–36, 40, 42, 46, 48, 50, 53, and 56 in view of Vannithamby in combination with one or more of Pelletier, Wei, Takahashi, Futaki, and Bontu. We enter a new ground of rejection under 35 U.S.C. § 103 of independent claims 27, 39, 41, 45, 47, and 49 as obvious in view of Vannithamby. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s) Affirmed Reversed New Ground 27–30, 37–39, 41, 45, 47, 49, 54, 55 102 Vannithamby 27–30, 37– 39, 41, 45, 47, 49 54, 55 31, 40, 42 103 Vannithamby, Pelletier 31, 40, 42 32–35 103 Vannithamby, Pelletier, Wei 32–35 36 103 Vannithamby, Takahashi 36 46, 48, 50 103 Vannithamby, Wei 46, 48, 50 53 103 Vannithamby, Futaki 53 56 103 Vannithamby, Bontu 56 27, 39, 41, 45, 47, 49 103 Vannithamby 27, 39, 41, 45, 47, 49 Appeal 2019-001413 Application 14/895,293 14 Claims Rejected 35 U.S.C. § Reference(s) Affirmed Reversed New Ground Overall Outcome 27–42, 45– 50, 53–56 27, 39, 41, 45, 47, 49 TIME PERIOD FOR RESPONSE Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation