Telefonaktiebolaget L M Ericsson (publ)

Patent Trials and Appeals Board

May 15, 2020

2019001413 (P.T.A.B. May. 15, 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.
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.
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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;
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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.
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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
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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
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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.”)
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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
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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;
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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
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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.
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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.
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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
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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
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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)