TELEFONAKTIEBOLAGET LM ERICSSON (PUBL)

Patent Trials and Appeals Board

May 11, 2020

2019001560 (P.T.A.B. May. 11, 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.
14/910,166 02/04/2016 Jens Bergqvist 1009-1744 / P46086 US2 1791
102721 7590 05/11/2020
Murphy, Bilak & Homiller/Ericsson
1255 Crescent Green
Suite 200
Cary, NC 27518
EXAMINER
CHENG, CHI TANG P
ART UNIT PAPER NUMBER
2463
NOTIFICATION DATE DELIVERY MODE
05/11/2020 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):
official@mbhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENS BERGQVIST, OLOF LIBERG,
PAUL SCHLIWA-BERTLING, and MÅRTEN SUNDBERG

Appeal 2019-001560
Application 14/910,166
Technology Center 2400
BEFORE ELENI MANTIS MERCADER, ST. JOHN COURTENAY III,
and KRISTEN L. DROESCH, Administrative Patent Judges.
DROESCH, 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 rejecting claims 51–98. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). Appellant indicates the real party-in-interest is
Telefonaktiebolaget LM Ericsson. Appeal Br. 2.
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Application 14/910,166
2

BACKGROUND
The disclosed invention relates to load balancing in a wireless
communications network. Spec. Abstract, 1:5–7.
CLAIMED SUBJECT MATTER
Claim 51, which is representative of the subject matter of the appeal
and is reproduced from the Claims Appendix of the Appeal Brief, reads as
follows:
51. A method performed by a radio network node for
load balancing in a wireless communications network, wherein
the radio network node is configured to communicate with a
wireless device supporting both normal coverage and extended
coverage, wherein the radio network node and the wireless
device are operating in the wireless communications network,
and wherein the method comprises:

determining an indication informing the wireless device of
at least one of the following:

that the wireless device, when in normal coverage, is to
monitor one of a downlink legacy resource and an
extended coverage resource for information, and that the
wireless device, when in normal coverage, is to use one
of an uplink legacy resource and an extended coverage
resource when accessing the wireless communications
network; and

transmitting the indication to the wireless device.

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Haapaniemi et al. (“Haapaniemi”) US 2013/0294319 A1 Nov. 7, 2013
Pandey et al. (“Pandey”) US 2014/0370895 A1 Dec. 18, 2014
Gong et al. (“Gong”) US 2017/0142718 A1 May 18, 2017
REJECTIONS ON APPEAL
Claims 51, 60, 81, and 90 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter.2 Final Act. 3–6
Claims 51–54, 56, 60–63, 65, 69, 73, 75, 79, 81–86, and 90–95 stand
rejected under 35 U.S.C. § 102(a)(1) as anticipated by Haapaniemi. Final
Act. 7–16.
Claims 57–59, 66–68, 70–72, 76–78, 88–89, 97, and 98 stand rejected
under 35 U.S.C. § 103 as unpatentable over Haapaniemi and Gong. Final
Act. 16–19.
Claims 55, 64, 74, 80, 87, and 96 stand rejected under 35 U.S.C. § 103
as unpatentable over Haapaniemi and Pandey. Final Act. 19–20.
Claim 51–98 stand rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 2–3.
ANALYSIS
Rejection Under 35 U.S.C. § 101
Appellant disputes the Examiner’s determination that claims 51, 60,
81, and 90 are directed to patent-ineligible subject matter. See Appeal Br.
13–17. Appellant argues claims 51 and 60 together as a group. See id.
Appellant’s arguments addressing independent claims 81 and 90 incorporate

2 The rejection of independent claims 69 and 75 under 35 U.S.C. § 101 are
withdrawn. Ans. 3.
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Appellant’s arguments addressing claims 51 and 60. See Appeal Br. 17.
Consequently, we choose claim 51 as representative of the group consisting
of claims 51, 60, 81, and 90. 37 C.F.R. § 41.37(c)(1)(iv).
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 573 U.S. 208, 217 (2014). In addition, the Office published revised
guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
specifically with respect to applying the Alice framework. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Guidance”). If a claim falls within one of the statutory categories of
patent eligibility (i.e., a process, machine, manufacture, or composition of
matter) then the first inquiry is whether the claim is directed to one of the
judicially recognized exceptions (i.e., a law of nature, a natural phenomenon,
or an abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must
“look at the ‘focus of the claimed advance over the prior art’ to determine if
the claim’s ‘character as a whole’ is directed to excluded subject matter.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed.
Cir. 2016). According to the Guidance, this first inquiry has two prongs of
analysis (i) does the claim recite a judicial exception (e.g., an abstract idea)
and (ii) if so, is the judicial exception integrated into a practical application.
See Guidance, 84 Fed. Reg. at 54. Under the Guidance, if the judicial
exception is integrated into a practical application, the claim is patent
eligible under § 101. See id. at 54–55. If the claims are not directed to a
judicial exception, the inquiry ends. See McRO Inc. v. Bandai Namco
Games Amer. Inc., 837 F.3d 1299, 1312 (Fed Cir. 2016). However, if the
claim is directed to a judicial exception (i.e., recites a judicial exception and
does not integrate the exception into a practical application), the next step is
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to determine whether any element, or combination of elements, amounts to
significantly more than the judicial exception. See Alice, 573 U.S. at 217;
Guidance, 84 Fed. Reg. at 56.
Here, we determine that claim 51 recites determining an indication
informing a wireless device that, when in normal coverage, the wireless
device is to monitor one of a downlink legacy resource and an extended
coverage resource for information, and/or the wireless device is to use one of
an uplink legacy resource and an extended coverage resource when
accessing the wireless communications network. This is consistent with
how Appellant describes the claimed invention. See, e.g., Spec. 4:14–17,
4:25–29, 6:1–4, 6:12–15, 17:23–34, 22:8–11.
Consistent with the Guidance and case law, we conclude the step of
determining an indication informing a wireless device that, when in normal
coverage, the wireless device is to monitor one of a downlink legacy
resource and an extended coverage resource for information, and/or the
wireless device is to use one of an uplink legacy resource and an extended
coverage resource when accessing the wireless communications network,
could be performed alternatively as a mental process and, thus, is an abstract
idea. See Guidance, 84 Fed. Reg. at 52; see also Mortg. Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (holding that
computer-implemented method for “anonymous loan shopping” was an
abstract idea because it could be “performed by humans without a
computer”); Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed.
Cir. 2015) (“Courts have examined claims that required the use of a
computer and still found that the underlying, patent-ineligible invention
could be performed via pen and paper or in a person’s mind.”).
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We are not persuaded by Appellant’s argument that the claims do not
recite an abstract idea because “the claims involve specific instructions, for
carrying out specific physical operations (e.g., monitoring one radio resource
or another, or using one radio resource or another for accessing a wireless
communications network).” Appeal Br. 13; Reply Br. 10; see also Appeal
Br. 14–15 (“The present claims are directed to techniques where a network
node formulates specific instructions . . . specific and concrete techniques
for directing the operation of wireless devices within a communications
network.”).
We agree with the Examiner that Appellant mischaracterizes the
claimed invention. See Ans. 5. In particular, we agree with the Examiner
that there are two affirmative steps claimed: “determining an indication”
and “transmitting the indication,” and the remaining recited technical
features do not require the performance of any physical or non-abstract act.
See id. at 5–6. Although claim 51 recites determining an indication
informing the wireless device of what Appellant characterizes as “specific
instructions,” we observe that claim 51 does not recite or require
determining the “specific instructions” themselves, or performing “specific
and concrete techniques” of said instructions.
Contrary to Appellant’s argument that claim 51 recites specific
signaling to the wireless device whether it should use legacy resources or
extended coverage resources for certain operations (see Reply Br. 11), the
broadest reasonable interpretation of “determining an indication informing
the wireless device of at least one of the following: that the wireless device,
when in normal coverage, is to monitor one of a downlink legacy resource
and an extended coverage resource for information, and that the wireless
device, when in normal coverage, is to use one of an uplink legacy resource
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and an extended coverage resource when accessing the wireless
communications network” may include determining a particular binary code
(e.g., 00, 01, 001, 101, 111, 000) that would inform the wireless device to
implement corresponding preprogrammed instructions stored in the wireless
device. Following receipt of the indication, the preprogrammed instructions
would cause the wireless device, when in normal coverage, “to monitor one
of a downlink legacy resource and an extended coverage resource for
information,” and/or “to use one of an uplink legacy resource and an
extended coverage resource when accessing the wireless communications
network.” In any event, determining an indication informing the wireless
device of “specific instructions” could be performed alternatively as a
mental process, regardless of the content of those “specific instructions.”
Because the claim recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. See Guidance, 84 Fed. Reg. at 54. To determine whether the
judicial exception is integrated into a practical application, we identify
whether there are “any additional elements recited in the claim beyond the
judicial exception(s)” and evaluate those elements to determine whether they
integrate the judicial exception into a recognized practical application.
Guidance, 84 Fed. Reg. at 54–55 (emphasis added); see Manual of Patent
Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018).
The additional element recited in claim 51 is “transmitting the
indication to the wireless device.” Here, we find the additional element does
not integrate the judicial exception into a practical application. Specifically,
the additional element does not: (1) reflect an improvement to the
functionality of a computer or other technology or technical field (see
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MPEP § 2106.05(a)); (2) implement a “particular machine” to apply or use
the judicial exception (see MPEP § 2106.05(b)); (3) effect a particular
transformation of an article to a different thing or state
(see MPEP § 2106.05(c)); or (4) apply the judicial exception in some other
meaningful limitation beyond generally linking the use of the judicial
exception to a particular technological environment, such that the claim as a
whole is more than a drafting effort to designed to monopolize the exception
(see MPEP § 2106.05(e)). See Guidance, 84 Fed. Reg. at 55.
We are not persuaded by Appellant’s argument that “the claims at
issue are patent eligible because they improve a technological process, i.e.,
the existing processes for how a wireless communication network handles
extended coverage and related resource usage for wireless devices.” Appeal
Br. 16 (citing Diamond v. Diehr, 450 U.S. 175, 191 (1981)); see id. at 15–16
(“the present application [discloses] certain problems that may occur . . . and
which proposes a novel scheme for allowing the load on the network
resources to be dynamically spread between the two sets of resources.”
(citing Spec. 8:3–9:14, 9:16–19)); id. at 16 (reproducing Spec. 7:1–14, citing
McRO, 837 F.3d at 1312, to support its argument that the specification can
be used to indicate a claim is directed to an improvement in computer related
technology); Reply Br. 10–11 (citing Spec. 3:3–5, 7:1–14; McRO).
Appellant’s arguments do not sufficiently address whether the additional
element (i.e., “transmitting the indication to the wireless device”) reflects an
improvement in the functioning of a computer, or to other technology or
technical field. “[A] claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016).
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The additional element “transmitting the indication to the wireless
device,” recited in claim 51 is the type of extra-solution activity (i.e., in
addition to the judicial exception), the courts have determined insufficient to
transform judicially excepted subject matter into a patent-eligible
application. See MPEP § 2106.05(g); OIP Techs., Inc. v. Amazon.com, 788
F.3d 1359, 1363–64 (Fed. Cir. 2015) (determining additional elements of
sending a first set of electronic messages over a network to devices,
presenting offers, and gathering statistics were insufficient to transform the
abstract idea into a patent eligible application); Elec. Power Grp. v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (“merely presenting the results of
abstract processes of collecting and analyzing information, without more
(such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis”); Apple v. Ameranth, Inc., 842
F.3d 1229, 1242 (Fed. Cir. 2016) (agreeing with Board’s finding that
printing a menu at a printer is an insignificant post-solution activity);
FairWarning IP, LLC v. Iatric Sys. Inc., 839 F.3d 1089, 1093–1094 (Fed.
Cir. 2016) (determining claims directed to collecting and analyzing
information to detect misuse and notifying a user when misuse is detected
are directed to an abstract idea (citing Elec. Power Grp., 830 F.3d at 1353)).
Because we determine claim 1 is directed to a judicial exception, next
we analyze the claims under step two of Alice to determine if there are
additional elements that individually, or as an ordered combination, ensure
the claims amount to “significantly more” than the abstract idea. Alice, 573
U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., 566
U.S. 66, 77–79 (2012)). As stated in the Guidance, many of the
considerations to determine whether the claims amount to “significantly
more” under step two of the Alice framework are already considered as part
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of determining whether the judicial exception has been integrated into a
practical application. See Guidance, 84 Fed. Reg. at 56. Therefore, at this
point of our analysis, we determine if the claims add a specific element, or
combination of elements, that is not well-understood, routine, conventional
activity in the field, or simply append well-understood, routine, conventional
activities at a high level of generality. See id. “Whether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination.” Berkheimer v. HP Inc., 881 F.3d 1360,
1369 (Fed. Cir. 2018).
Here, Appellant’s claims do not recite specific elements or a
combination of elements that are not well-understood, routine, and
conventional. Again, the additional element of claim 1 is “transmitting the
indication to the wireless device.” We are not persuaded by Appellant’s
argument that the Final Office Action provides no evidence to support the
assertion that the additional element recites no more than routine or well-
known operations. See Reply Br. 11–12. Our reviewing courts have
determined that transmitting information is well understood, routine, or
conventional. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d
1307, 1321 (Fed. Cir. 2017) (utilizing an intermediary computer to forward
information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610
(Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., 788
F.3d at 1363 (sending messages over a network); buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (computer receives and sends
information over a network).
We are not persuaded by Appellant’s argument that the claims provide
a way to spread the load from wireless devices between legacy network
resources and new “extended coverage” resources that involves non-
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conventional and non-routine signaling mechanisms. See Appeal Br. 16.
Appellant’s arguments do not address sufficiently whether the additional
element (i.e., “transmitting the indication to the wireless device”) is well
understood, routine, or conventional. “What is needed is an inventive
concept in the non-abstract application realm.” SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). For the foregoing reasons, we
find that the additional element “transmitting the indication to the wireless
device” does not provide an inventive concept such that claim 51 amounts to
significantly more than the recited judicial exception.
Accordingly, for the foregoing reasons we are not persuaded the
Examiner erred in rejecting claims 51, 60, 81, and 90 under 35 U.S.C. § 101.
Therefore, we sustain the rejection of claims 51, 60, 81, and 90 under 35
U.S.C. § 101 as directed to patent-ineligible subject matter.
Rejection under 35 U.S.C. § 102
The Examiner finds that Haapaniemi discloses “determining an
indication informing the wireless device . . . that the wireless device, when
in normal coverage, is to monitor one of a downlink legacy resource and an
extended coverage resource for information,” as recited in independent
claim 51, based on Haapaniemi’s disclosure of machine type communication
(MTC) devices receiving an indication of the presence of a hybrid MTC
channel. See Final Act. 8–10 (citing Haapaniemi ¶¶ 65–66, 76–98, 81–85,
88–89, 91, 112); see also id. at 10 (applying Haapaniemi in a similar manner
to address the claim 51 limitation “determining an indication informing the
wireless device . . . that the wireless device, when in normal coverage, is to
use one of an uplink legacy resource and an extended coverage resource
when accessing the wireless communications network”). The Examiner
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explains that the presence of a hybrid MTC channel provides an indication
informing the MTC device to utilize the hybrid MTC channel, and further
explains that the hybrid MTC channel discloses an “extended coverage
resource,” in light of the broadest reasonable interpretation of that term. See
id. at 8–10.
Appellant argues that Haapaniemi does not disclose that the hybrid
MTC channel is an extended coverage resource. See Appeal Br. 20.
Appellant contends that “‘extended coverage’ is explicitly defined on page 2
of the specification as referring to ‘a coverage wherein operation at a path
loss or radio coverage range exceeding the coverage range earlier supported
by 3GPP cellular networks, such as GSM, is supported.’” Id. at 19; Reply
Br. 13 (quoting Spec. 3:3–5), 15 (citing Spec. 3:3–5). According to
Appellant, “Haapaniemi expresses no concern about ‘coverage’ at all and
does not describe any operation or techniques that involve or provide ‘a
coverage wherein operation at a path loss or radio coverage range exceeding
the coverage range earlier supported by 3GPP cellular networks, such as
GSM, is supported.’” Appeal Br. 20.
The Examiner contends that there is no explicit redefinition of
“extended coverage resource” in the Specification. See Ans. 8–9 (case
citations omitted). The Examiner reproduces the following portions of the
Specification:
By the expression “extended coverage” when used in this
disclosure is meant a coverage wherein operation at a path loss
or radio coverage range exceeding the coverage range earlier
supported by 3GPP cellular networks, such as GSM, is
supported.
By the expression “resource” when used in this disclosure is
meant a channel or part(s) of a channel used for communication
between a wireless device and a wireless communication
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network, e.g. between the wireless device and a radio network
node. For example, in a GSM/EDGE network a resource refers
to a time slot, or part(s) of a time slot, on a certain frequency
channel. Thus, a legacy channel or part(s) of a legacy channel
may be referred to as legacy resource and an extended coverage
channel or part(s) of an extended coverage channel may be
referred to as an extended coverage resource.
Ans. 8 (reproducing Spec. 3:3–5, 8:15–21).
The Examiner asserts that these portions of the Specification do not
convey an unambiguous intent to restrict the metes and bounds of the claim
terms because the excerpts use exemplary language, “e.g.,” “[f]or example,”
“may be referred to as . . .”. See Ans. 8–9. According to the Examiner, “the
language of this disclosure does not elevate it to the status of a lexicographic
re-definition.” The Examiner instead posits that “[b]y ‘extended coverage
resource’, a PHOSITA would readily comprehend a network communication
resource, such as bandwidth, timeslots or time-frequency resources, that
would be involved in implementing network coverage that would be more
extensive than during conventional scenarios.” Id. at 9.
In reply, Appellant argues that the Specification clearly and
unambiguously states the meanings for “extended coverage” and “resource.”
See Reply Br. 15 (quoting Spec. 3:3–5, 8:15–21). Appellant asserts that the
expressions “e.g.” and “for example,” do not suggest any equivocation in
these definitions, but indicate specific but not limiting examples of the
defined terms. See id. Similarly, Appellant argues the expression “may be
referred to as” is not an equivocation on the meaning of “extended coverage
resource” or “resource.” See id. at 16. According to Appellant, the
Specification “is simply saying that the term ‘extended coverage resource’
may correspond to all or part of an ‘extended coverage channel’” in these
definitions, but indicate specific but not limiting examples of the defined
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terms. See id. Appellant further asserts that the ordinary and customary
meaning for “extended coverage resource” offered by the Examiner
discounts the Specification’s express statement that “extended coverage”
refers to coverage beyond that provided by earlier 3GPP cellular networks.
See id. at 16–17.
We agree with Appellant that the Specification provides explicit
definitions for “extended coverage” and “resource.” Spec. 3:3–5, 8:15–21.
Appellant has acted as their own lexicographer because the Specification
sets forth definitions for these terms in the Specification “with reasonable
clarity, deliberateness, and precision” and “give[s] one of ordinary skill in
the art notice of the change.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994). That the Specification provides examples regarding the meaning of
“extended coverage resource” does not detract from, nor add ambiguity to,
the explicit definitions for “extended coverage” and “resource” provided in
the Specification. Taking into account at least the explicit definition for
“extended coverage” in the Specification, we agree with Appellant that
Haapaniemi does not disclose resources for “a coverage wherein operation at
a path loss or radio coverage range exceeding the coverage range earlier
supported by 3GPP cellular networks, such as GSM, is supported.”
Moreover, there is insufficient evidence offered to support the
proffered ordinary and customary meaning for “extended coverage
resource.” See Ans. 9. The ordinary and customary meaning offered by the
Examiner discounts the meaning of “coverage.” Instead of addressing
“coverage,” the ordinary and customary meaning offered by the Examiner
introduces a new concept: “network coverage that would be more extensive
than during conventional scenarios.” As evidenced by the applied prior art,
the ordinary and customary meaning for “coverage” is “a maximum
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coverage area in which a user can obtain a service (properly receiving and
transmitting data according to a specific proportion).” Gong ¶ 3; see also
Pandey ¶ 22 (disclosing service in a coverage area). The proffered ordinary
and customary meaning does not address an extended maximum coverage
area in which a user can obtain service.
For these reasons, we are constrained to reverse the rejection of claim
51 under 35 U.S.C. § 102(a)(1) as anticipated by Haapaniemi. The
remaining independent claims 60, 69, 75, 81, and 90 recite limitations nearly
identical to claim 51. Therefore, for the same reasons as claim 51, we are
constrained to reverse the rejection of independent claims 60, 69, 75, 81, and
90, as well as claims 52–54, 56, 61–63, 65, 73, 79, 82–86, and 91–95,
dependent therefrom, under 35 U.S.C. § 102(a)(1) as anticipated by
Haapaniemi.
Rejections under 35 U.S.C. § 103
Claims 55, 57–59, 64, 66–68, 70–72, 74, 76–78, 80, 87–89, and 96–98
depend from independent claims 51, 60, 69, 75, 81, and 90, respectively. As
applied by the Examiner, the teachings of Gong and Pandey do not remedy
the deficiencies identified with respect to the rejection of independent claims
51, 60, 69, 75, 81, and 90 under 35 U.S.C. § 102(a)(1) as anticipated by
Haapaniemi. See Final Act. 16–20. Accordingly, for the same reasons as
those explained above addressing independent claims 51, 60, 69, 75, 81, and
90, we are constrained to reverse the rejections of claims 55, 57–59, 64, 66–
68, 70–72, 74, 76–78, 80, 87–89, and 96–98 under 35 U.S.C. § 103.
Rejection under 35 U.S.C. § 112(b)
The Examiner rejects claims 51–98 under 35 U.S.C. § 112(b) as
indefinite for failing to particularly point out and distinctly claim the subject
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matter for which the inventor or a joint inventor regards as the invention.
Final Act. 2–3. The Examiner points out that in each of independent claims
51, 60, 69, 75, 81, and 90, and the claims dependent therefrom, “an extended
coverage resource” is recited at least twice. See id. at 3; see also Ans. 3
(clarifying the basis of the § 112(b) rejection, withdrawing recitation of
“information” as basis for rejection). According to the Examiner, it is
unclear whether the recitations are referring to the same or different
extended coverage resource(s). Final Act. 3.
Appellant argues “[i]n the context of the claim, especially as read in
light of the specification, it is not unclear whether these recitations are
referring to the same or different resources.” Appeal Br. 12; see Reply Br. 6
(similar argument). According to Appellant, the “language is used precisely
to convey that these separate recitations might refer to the same or different
[resources].” Appeal Br. 12. Appellant further argues that the first and
second instructions recited in claim 51
involve completely distinct operations that are undertaken at
different times and under different conditions. Thus, the person
of ordinary skill in the art would appreciate that the claim
implies no particular relationship at all between the “extended
coverage resource” in the first instruction and the “extended
coverage resource” in the second instruction.
Appeal Br. 12; see Reply Br. 6 (similar argument). Appellant further
contends that changing the second instance of “an extended coverage
resource” to “the extended coverage resource” would change the claim to
mean something different than intended. See Appeal Br. 12–13.
The Examiner asserts that due to the explicit claim language, the
claims encompass two separate embodiments, and asserts that the issue of
different claim scopes is compounded by the recitations of “an extended
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coverage resource” in the dependent claims. See Ans. 4–5. The Examiner
contends that this result is contrary to the purpose of § 112(b). See id. at 5.
The Examiner further contends that the appearance of multiple instances of
“an extended coverage resource” would confuse a member of the public
regarding whether these recitations are referring to the same “extended
coverage resource” or to different extended coverage resources. See id.
Appellant argues that the Examiner’s Answer appears to be confusing
the possibility of multiple alternative embodiments with claim ambiguity.
See Reply Br. 7. Appellant asserts that claim breadth should not be confused
with ambiguity. See id.
We agree with Appellant that the Examiner’s rejection based on
multiple recitations of “an extended coverage resource” does not render
these claims indefinite. The Examiner’s rejection amounts to conflating the
breadth of the claims with indefiniteness. Just because the claims cover two
alternatives, the same extended coverage resource or different extended
coverage resources, it does not render the claim indefinite. The breadth of a
claim is not to be equated with indefiniteness. In re Miller, 441 F.2d 689,
693 (CCPA 1971).
The Examiner also asserts that claims 51–98 are indefinite because
“[i]t is unclear whether the subject matter appearing in the preamble in each
of these claims should be given patentable weight. If so, such subject matter
should be recited in the body of these claims.” Final Act. 2; see id. at 3
(applying rejection to dependent claims). The Examiner notes that the
Appellant has not presented any remarks traversing the rejection as to the
preamble of the independent claims. See Ans. 3.
Appellant argues in the Reply that the Appeal Brief addressed the
claims as a whole, and included arguments that a person of ordinary skill in
Appeal 2019-001560
Application 14/910,166
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the art would have no difficulty in ascertaining the metes and bounds of the
claimed invention, when read in light of the Specification. See Reply Br. 3.
Appellant further contends that it is not clear that the Final Office Action
articulates an independent, free-standing, ground of rejection directed to the
preambles of the independent claims. See id. at 3–4 (quoting Final Act. 2).
Appellant asserts that the Examiner’s explanation “is not a cognizable
ground of rejection.” Id. at 4. Appellant contends that it is not the law that
the subject matter must appear in the body of the claims if the subject matter
is to receive patentable weight. See id. at 4–5 (case citations omitted).
We agree with Appellant that the Examiner’s rejection is improper under
35 U.S.C. § 112(b). A preamble is generally not accorded any patentable
weight where it merely recites the purpose of a process or the intended use
of a structure, and where the body of the claim does not depend on the
preamble for completeness but, instead, the process steps or structural
limitations are able to stand alone. See In re Hirao, 535 F.2d 67 (CCPA
1976) and Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951). Even if the
Examiner did not accord patentable weight to the preamble resulting in a
broader claim scope, it does not render the claim indefinite.

Accordingly, for all these reasons, we are constrained to reverse the
rejection of claims 51–98 under 35 U.S.C. § 112(b) as indefinite.
CONCLUSION
We affirm the Examiner’s rejection of claims 51, 60, 81, and 90 under
35 U.S.C. § 101. We reverse the Examiner’s rejection of claims 51–54, 56,
60–63, 65, 69, 73, 75, 79, 81–86, and 90–95 under 35 U.S.C. § 102(a)(1).
We reverse the Examiner’s rejections of claims 55, 57–59, 64, 66–68, 70–
Appeal 2019-001560
Application 14/910,166
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72, 74, 76–78, 80, 87–89, and 96–98 under 35 U.S.C. § 103. We reverse the
Examiner’s rejection of claim 51–98 under 35 U.S.C. § 112(b).
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis Affirmed Reversed
51, 60, 81, 90 101 Eligibility 51, 60, 81, 90
51–54, 56, 60–
63, 65, 69, 73,
75, 79, 81–86,
90–95
102(a)(1) Haapaniemi
51–54, 56,
60–63, 65, 69,
73, 75, 79,
81–86, 90–95
57–59, 66–68,
70–72, 76–78,
88–89, 97, 98
103 Haapaniemi, Gong
57–59, 66–68,
70–72, 76–78,
88–89, 97, 98
55, 64, 74, 80,
87, 96 103
Haapaniemi,
Pandey
55, 64, 74, 80,
87, 96
51–98 112(b) Indefiniteness 51–98
Overall
Outcome
51, 60, 81, 90 52–59, 61–80, 82–89, 91–98
TIME PERIOD FOR RESPONSE
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 IN PART