Telefonaktiebolaget LM Ericsson (publ)

Patent Trials and Appeals Board

Aug 24, 2020

15528005 - (D) (P.T.A.B. Aug. 24, 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.
15/528,005 05/18/2017 Olof Liberg 1009-2300 / P49151 US2 9043
102721 7590 08/24/2020
Murphy, Bilak & Homiller/Ericsson
1255 Crescent Green
Suite 200
Cary, NC 27518
EXAMINER
NGUYEN, PHUONGCHAU BA
ART UNIT PAPER NUMBER
2464
NOTIFICATION DATE DELIVERY MODE
08/24/2020 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 OLOF LIBERG, JOHN WALTER DIACHINA,
STEFAN ERIKSSON LÖWENMARK, and MARTEN SUNDBERG
________________

Appeal 2019-004960
Application 15/528,005
Technology Center 2400
________________

Before DENISE M. POTHIER, JASON J. CHUNG, and
STEPHEN E. BELISLE, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 36–68.2 Appeal Br. 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
INVENTION
The invention relates to managing information about signal quality
and/or signal strength received by a wireless device in a downlink. Spec.
1:7–8. Claim 36 is illustrative of the invention and is reproduced below:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Telefonaktiebolaget LM Ericsson
is the real party in interest. Appeal Br. 2.
2 Claims 1–35 are cancelled. Appeal Br. 2.
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36. A method, performed by a wireless device operative
in a wireless communication network, for managing downlink
signal information, the downlink signal information being
information about signal quality and/or signal strength received
by the wireless device in a downlink, wherein the method
comprises:
obtaining the downlink signal information;
sending, to the wireless communication network, a
message indicating said obtained downlink signal information
and which message is associated with the wireless device
requesting access to the wireless communication network, the
obtained downlink information being indicated in the message
by a range that indicates how much the obtained downlink signal
information exceeds a certain threshold, wherein the range is
determined based on a certain factor, the wireless device having
received information about said certain factor from the wireless
communication network.
Appeal Br. 22 (Claims Appendix) (emphases added).

REJECTIONS
The Examiner rejects claims 36–68 under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 2.
The Examiner rejects claims 36, 37, 40, 42–46, 49, 51–55, 58, 60–63,
66, and 68 under 35 U.S.C. § 102(a)(1–2) as being anticipated by
DiGirolamo (US 2008/0095185 A1; published Apr. 24, 2008).3 Final
Act. 7–12.

3 Although the Examiner does not provide a separate paragraph for
claim 58’s analysis, the Examiner includes claim 58 in the rejection heading
(Final Act. 7) and the Examiner groups claim 58 with claim 40 (id. at 12
(“Regarding claims 49 & 66. (New) Claims 46 & 63 are rejected with the
same reasons as set forth in claims 40 & 58.”)), which recites similar
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WITHDRAWN REJECTIONS
The rejection of claims 36–44, 46–61, and 63–68 under 35 U.S.C.
§ 101 is withdrawn. Ans. 3.
The rejection of claims 38, 39, 47, 48, 56, 57, 64, 65, and 67 under
35 U.S.C. § 103 is withdrawn. Ans. 3, 6 (page 6 of the Answer states the
§ 103 rejection for claim 67 is withdrawn); see also Reply Br. 2–3 (we
interpret the Examiner’s withdrawn rejections statement as intending to
include claims 47 and 48 in the withdrawn § 103 rejections).4
ANALYSIS
I. Claims 36–68 Rejected Under 35 U.S.C. § 112(b)
A. The Examiner’s Findings and Appellant’s Arguments
The Examiner concludes the limitation “a certain factor” is indefinite
because although the range may be “less than X dB” or “between X and 2X
dB,” where “X” is the certain factor, the boundaries of “X” is unclear. Final
Act. 2; Ans. 3–4.
Appellant argues “X” is the certain factor such that the range is “less
than X dB” or “between X and 2X dB.” Appeal Br. 8–9; Reply Br. 3–5
(citing Spec. 13–14). We find Appellant’s argument unpersuasive.
Pages 13 and 14 of the Specification states:
The margin may be indicated in the form of a range or
interval and/or be indicated relative to a certain factor. The factor
may be named “X” elsewhere in the present disclosure. For

features. We, therefore, interpret claim 58 as rejected for the same reasons
provided for claim 40’s rejection.
4 Although the Examiner includes claim 61 under withdrawn rejections,
claim 61 was rejected by the Examiner under 35 U.S.C. § 102, not 35 U.S.C.
§ 103. We, therefore, interpret the Examiner’s statement including claim 61
under withdrawn rejections as an inadvertent inclusion.

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example, the margin may be indicated as “less than X dB”,
“between X and 2X dB” etc. The factor X may by predetermined
and/or predefined in e.g. a technical specification, and/or be
configurable by the wireless communication network and/or an
operator thereof. For example, said factor may represent a
margin between said certain threshold, e.g. a DL CC1 threshold,
and the received signal quality and/or signal strength. The factor
X may have been e.g. broadcasted over an Extended Coverage
BCCH (ECBCCH) and/or been received as part of SI from the
wireless communication network, such as in Action 201.
Spec. 13:30–14:4 (emphases added). The disparate descriptions of the
“certain factor” (or “X”) provide no meaningful boundaries to this term. Id.
For instance, a “certain factor” being “predefined” does not have any metes
or bounds. Id. Notably, even the claimed “range” (i.e., Appellant argues the
range is “less than X dB” or “between X and 2X dB”) is problematic
because it is determined based on a “certain factor,” which the Examiner
finds (and we agree) is indefinite. Therefore, Appellant has not persuaded
us of error in the Examiner’s conclusion.
Accordingly, we sustain the Examiner’s rejection of: (1) independent
claims 36, 44, 54, and 61; and (2) dependent claims 37–43, 45–53, 55–60,
and 62–68 under 35 U.S.C. § 112(b).
II. Claims 36, 37, 40, 42–46, 49, 51–55, 58, 60–63, 66, and 68 Rejected
Under 35 U.S.C. § 102
A. The Examiner’s Findings and Appellant’s Arguments
The Examiner finds DiGirolamo discloses a channel quality indication
(CQI) exceeding a predetermined value triggering a CQI reporting, which
the Examiner maps to the limitation “the obtained downlink information
being indicated in the message by a range that indicates how much the
obtained downlink signal information exceeds a certain threshold” recited in
claim 36. Ans. 5 (citing DiGirolamo ¶¶ 28, 42, 44). The Examiner finds
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DiGirolamo discloses hybrid automatic repeat request block error rate
(HARQ BLER), which the Examiner maps to the limitation “wherein the
range is determined based on a certain factor, the wireless device having
received information about said certain factor from the wireless
communication network.” Ans. 5–6 (citing DiGirolamo ¶ 47).
Appellant argues DiGirolamo fails to disclose the limitation
“the obtained downlink information being indicated in the message by a
range that indicates how much the obtained downlink signal information
exceeds a certain threshold” because DiGirolamo discloses a technique for
determining when to send a CQI report to the base station, where this CQI
report might be an encoded measurement value (rather than a range) or
up/down command. Reply Br. 7–8; Appeal Br. 7. Appellant argues
DiGirolamo’s HARQ BLER serves as a basis to trigger CQI reporting,
which is not a basis for determining the “range of the CQI.” Reply Br. 8–9.
We find Appellant’s arguments unpersuasive. To resolve these issues, we
first construe certain limitations in the independent claims.
B. Claim Construction
Claim construction is an issue of law that is left for a court or a
tribunal. “[W]hen the district court reviews only evidence intrinsic to the
patent (the patent claims and specifications, along with the patent’s
prosecution history), the judge’s determination will amount solely to a
determination of law.” Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S.
318, 331 (2015). “[T]he ultimate issue of the proper construction of a claim
should be treated as a question of law.” Id. at 326.
We construe claim terms according to their broadest reasonable
construction in light of the specification of the patent or application in which
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they appear. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). Consistent
with the broadest reasonable construction, claim terms are generally given
their ordinary and customary meaning, as understood by a person of
ordinary skill in the art, in the context of the entire specification. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Also, we must
be careful not to read a particular embodiment appearing in the written
description into the claim if the claim language is broader than the
embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(“[L]imitations are not to be read into the claims from the specification.”).
However, a term may be defined in the specification with reasonable clarity,
deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994).
We note that the italicized portions of claim 36 shown on page 2 of
this Decision above recite non-functional descriptive material. The
informational content of non-functional descriptive material is not entitled to
weight in the patentability analysis. See Ex parte Nehls, 88 USPQ2d 1883,
1887–90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272
(BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003), aff’d,
Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005)
(informative), aff’d, 191 F. App’x 959 (Fed. Cir. 2006).
As an initial matter, we note that claim 36 does not recite using the
“obtained downlink signal information.” Nor does claim 36 require the
“message” include the “obtained downlink signal information”; rather,
claim 36 merely requires the “message” that is sent to the wireless
communication network indicate the “obtained downlink signal
information.” Claim 36 does not recite what (if anything) receives the
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“obtained downlink signal information” or what is done with the “obtained
downlink signal information.” Thus, we determine the “obtained downlink
signal information” is non-functional descriptive material.
In addition, the “certain factor” appears to be functional when reading
“wherein the range is determined based on a certain factor” in a vacuum.
However, the “certain factor” is also non-functional descriptive material
because it determines the claimed “range” and the “range” indicates how
much the “obtained downlink signal information,” which is not used by
claim 36 as discussed above, exceeds a certain threshold. Stated another
way, the “certain factor” is an appendage of the non-functional descriptive
limitation “obtained downlink signal information.”
Because the emphasized text above are construed as merely
descriptive labels that do not impart any functionality to claim 36, we
conclude the italicized limitations above amount to non-functional
descriptive material. We further note the Specification describes “obtained
downlink signal information” in non-limiting nomenclature (see, e.g., Spec.
5:11–18 (describing obtained downlink signal information in the context of a
first aspect of embodiments), 6:18–28 (describing obtained downlink signal
information in the context of a seventh aspect of embodiments), 13:18–22
(using open-ended non-limiting terminology such as “may” and “e.g.”)),
rather than specifically defining this phrase.
As a result, we construe the claim 36 limitation:
sending, to the wireless communication network, a
message indicating said obtained downlink signal information
and which message is associated with the wireless device
requesting access to the wireless communication network, the
obtained downlink information being indicated in the message
by a range that indicates how much the obtained downlink signal
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information exceeds a certain threshold, wherein the range is
determined based on a certain factor, the wireless device having
received information about said certain factor from the wireless
communication network.
(emphases added) as sending, to the wireless communication network, a
message indicating information and which message is associated with the
wireless device requesting access to the wireless communication network.
Similarly, we construe the claim 44 limitation:
receiving, from the wireless device, a message indicating
said downlink signal information and which message is
associated with the wireless device requesting access to the
wireless communication network, the downlink signal
information being indicated in the message by a range that
indicates how much the downlink signal information exceeds a
certain threshold, wherein the range is determined based on a
certain factor, the wireless communication network having sent
information about said certain factor to the wireless device.
(emphases added) as receiving, from the wireless device, a message
indicating information and which message is associated with the wireless
device requesting access to the wireless communication network.
In addition, we construe the claim 54 limitation:
send, to the wireless communication network, a message
indicating said obtained downlink signal information and which
message is associated with the wireless device requesting access
to the wireless communication network, the obtained downlink
information being indicated in the message by a range that
indicates how much the obtained downlink signal information
exceeds a certain threshold, wherein the range is determined
based on a certain factor, the wireless device having received
information about said certain factor from the wireless
communication network.
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(emphases added) as send, to the wireless communication network, a
message indicating information and which message is associated with the
wireless device requesting access to the wireless communication network.
Lastly, we construe the claim 61 limitation:
receive, from the wireless device, a message indicating
said downlink signal information and which message is
associated with the wireless device requesting access to the
wireless communication network, the downlink signal
information being indicated in the message by a range that
indicates how much the downlink signal information exceeds a
certain threshold, wherein the range is determined based on a
certain factor, the wireless communication network having sent
information about said certain factor to the wireless device.
(emphases added) as receive, from the wireless device, a message indicating
information and which message is associated with the wireless device
requesting access to the wireless communication network.
C. Discussion
We need not decide whether DiGirolamo discloses the limitations in
dispute discussed above in § II.A. because these limitations related to certain
information recite non-functional descriptive material as discussed above in
§ II.B. Therefore, Appellant has not persuaded us of error in the Examiner’s
findings, which show DiGirolamo teaches sending, to the wireless
communication network, a message indicating information and which
message is associated with the wireless device requesting access to the
wireless communication network. See Final Act. 8–9 (citing DiGirolamo
¶¶ 24–30, 32, 33, 42, 44, 45, 49, 55)
Accordingly, we sustain the Examiner’s rejection of: (1) independent
claims 36, 44, 54, and 61; and (2) dependent claims 37, 42, 43, 45, 46, 51–
53, 55, 60, 62, 63, and 68 under 35 U.S.C. § 102(a)(1–2).
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We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).
D. Dependent claims 40, 49, 58, and 66
The Examiner rejects claims 40, 49, 58, and 66 under 35 U.S.C.
§ 102(a)(1–2) as being anticipated by DiGirolamo. Final Act. 7–12.
However, claims 40, 49, 58, and 66 depend from claims 39, 48, 56, and 65,
respectively. The § 103 rejection for claims 39, 48, 56, and 65 is withdrawn.
Ans. 3.
Accordingly, we do not sustain the Examiner’s rejection for claims
40, 49, 58, and 66 under 35 U.S.C. § 102(a)(1–2).

CONCLUSION

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). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
36–68 112(b) Indefiniteness 36–68
36, 37, 40,
42–46, 49,
51–55, 58,
60–63, 66,
68
102(a)(1–2) DiGirolamo 36, 37, 42–
46, 51–55,
60–63, 68
40, 49, 58,
66
Overall
Outcome
36–68