Telefonaktiebolaget LM Ericsson (publ)

Patent Trials and Appeals Board

Mar 10, 2022

2021000280 (P.T.A.B. Mar. 10, 2022)

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. 15/535,452 06/13/2017 Gunnar Mildh 4015-9931 / P51666-US2 4876 24112 7590 03/10/2022 COATS & BENNETT, PLLC 1400 Crescent Green, Suite 300 Cary, NC 27518 EXAMINER PHAM, BRENDA H ART UNIT PAPER NUMBER 2412 MAIL DATE DELIVERY MODE 03/10/2022 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 MILDH, and PAUL SCHLIWA-BERTLING Appeal 2021-000280 Application 15/535,452 Technology Center 2600 Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and PHILLIP A. BENNETT, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 37-40, 44-46, 54, 56, and 57. Appeal Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We refer to the Specification, filed June13, 2017 (“Spec.”); Final Office Action, mailed Jan 31, 2020 (“Final Act.”); Appeal Brief, filed June 3, 2020 (“Appeal Br.”); Examiner’s Answer, mailed Aug. 24, 2020 (“Ans.”); and Reply Brief, filed Oct. 5, 2020 (“Reply Br.”). 2 “Appellant” refers to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Telefonaktiebolaget LM Ericsson. Ltd, Appeal Br. 2. Claims 37-69 are pending in the instant application as follows: Claims 37-40, 44-46, 54, 56, and 57 stand rejected. Final Act. 2. Claims 58-69 are allowed over the prior art of record. Id. at 7. Claims 41-43, 47-53, and 55 are objected to as dependent object a rejected base claim, but would otherwise be allowable if rewritten in independent Appeal 2021-000280 Application 15/535,452 2 II. CLAIMED SUBJECT MATTER According to Appellant, the claimed subject matter relates to a method and system for handing over a wireless device from a source base station to a target base station. Spec. 1:5-7. In particular, the source base station sends to the target base station, a current mapping between two or more flow identifiers and a first set of data radio bearers used for communication between the wireless device and the source base station. Id. at Figure 1, reproduced below, is useful for understanding the claimed subject matter: form to include the limitation of the base claim and any intervening claims. Id. Appeal 2021-000280 Application 15/535,452 3 Figure 1 above depicts system 10 for handing over a wireless device 300 from source base station 100 to target base station 200. Spec. 6: 20-27. In particular, source base station 100 sends to target base station 200 a current mapping between two or more flow identifiers and a first set of data radio bearers used for communication between wireless device 300 and source base station 200. Spec. 9: 5-11 Claims 37, 44, 45, 57, 58, and 69 are independent. Claim 37, with disputed limitations emphasized, is illustrative: 37. A method performed by a source base station of handing over a wireless device from the source base station to a target base station, said method comprising: determining that a wireless device is to be handed over from the source base station to the target base station; and sending, to the target base station, a current mapping between two or more flow identifiers and a first set of data radio bearers used for communication between the wireless device and the source base station. Appeal Br. 12 (emphasis added). III. REFERENCES The Examiner relies upon the following references as evidence.3 Name Reference Date Kojima US 2010/0054208 A1 March 4, 2010 Cai US 2011/0080891 A1 Apr. 7, 2011 3 All reference citations are to the first named inventor only. Appeal 2021-000280 Application 15/535,452 4 IV. REJECTION The Examiner rejects claims 37-40, 44-46, 54, 56, and 57 under 35 U.S.C. § 103 as unpatentable over the combined teachings of Cai and Kojima. Final Act. 2-7. V. ANALYSIS We consider Appellant’s arguments seriatim, as they are presented in the Appeal Brief, pages 5-11 and the Reply Brief, pages 2-6.4 We are unpersuaded by Appellant’s contentions. Except as otherwise indicated herein below, we adopt as our own the findings and reasons set forth in the Final Action, and the Examiner’s Answer in response to Appellant’s Appeal Brief.5 Final Act. 2-7; Ans. 3-16. However, we highlight and address specific arguments and findings for emphasis as follows. As an initial matter, Appellant argues Examiner commits a procedural error by failing to address the argument raised by Appellant in the Response to the Final Action that the proposed modification of Cai with Kojima would 4 We have considered in this Decision only those arguments Appellant actually raised in the Briefs. Arguments not made are forfeited. See 37 C.F.R. § 41.37(c)(1)(iv) (2017). Belated arguments are waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not.”) 5 See ICON Health and Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1042 (Fed. Cir. 2017) (“As an initial matter, the PTAB was authorized to incorporate the Examiner’s findings.”); see also In re Brana, 51 F.3d 1560, 1564 n.13 (Fed. Cir. 1995) (upholding the PTAB’s findings, although it “did not expressly make any independent factual determinations or legal conclusions,” because it had expressly adopted the examiner’s findings). Appeal 2021-000280 Application 15/535,452 5 render Cai inoperable for its intended use. Appeal Br. 5-6. According to Appellant, the Examiner’s proposed combination constitutes a new basis for the rejection. Id. at 6. Appellant is reminded that concern about a new ground of rejection is a petitionable, not an appealable matter and is, therefore, not properly raised before the Board. See MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition . . . .”). See 37 C.F.R. § 1.181. Accordingly, we do not reach the issue regarding the Examiner’s alleged new ground of rejection. Appellant argues that the Examiner errs in combining of Cai and Kojima to teach “sending, to the target base station, a current mapping between two or more flow identifiers… between the wireless device and the source base station”, as recited in independent claim 37. Appeal Br. 6. In particular, Appellant argues that the Examiner’s proposed combination of Kojima’s alleged plurality of flow IDs to modify Cai’s handover of a UE wherein a single flow ID is used at the SDeNB to identify packets in a buffer would render Cai inoperable for its intended use. Id. at 6-9 (citing Cai ¶¶ 40, 42, 43, 47, 67, 68, 70-72). Further, Appellant argues that even if Kojima’s several service flows could be incorporated into Cai’s fourth architecture, the proposed combination would not result in an architecture that sends any type of current mapping between flow IDs to a target node. Id. at 10. Accordingly, Appellant argues that the proposed modification is not factually or legally sufficient. Id. at 9. Appellant’s arguments are not persuasive of reversible Examiner error. The argument that the proposed combination of references would render one of the references unsuitable for its intended purpose, or would change its principle of operation, is a teaching away argument. In re Gordon, Appeal 2021-000280 Application 15/535,452 6 733 F.2d 900, 902 (Fed. Cir. 1984) (The court concluded that in effect, “French teaches away from the board’s proposed modification” because “if the French apparatus were turned upside down, it would be rendered inoperable for its intended purpose”).6 As correctly noted by the Examiner, and undisputed by Appellant, Cai discloses a fourth architecture for performing a handover of a user equipment (UE) from a source base station (SRN) to a target base station TRN) by processing a request message containing UE context information including UE logical flow ID along with relay node bearer context information. Ans. 12-13 (citing Cai ¶¶ 43, 72), Appeal Br. 6-9. As further correctly noted by the Examiner, and undisputed by Appellant, Kojima discloses performing the handover of a mobile station using different service flows having different quality of service (QoS) between a base station and a mobile station Ans. 13-14 (citing Kojima ¶¶ 7, 55), Appeal Br. 10. We do not agree with Appellant that Kojima’s teaching of using a plurality of service flows to perform a handover between a source node and a destination node would render Cai’s handover of a UE using one service flow unsuitable for its intended purpose. Cai’s disclosure of using the service flow as part of the service message request between the source node 6 “If references taken in combination would produce a ‘seemingly inoperative device,’ . . . such references teach away from the combination and thus cannot serve as predicates for a prima facie case of obviousness.” McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001) (citation omitted); see also ICON, 496 F.3d at 1382 (“[A] reference teaches away from a combination when using it in that combination would produce an inoperative result,” but the obviousness analysis must account for “modifications that one skilled in the art would make to a device borrowed from the prior art”). Appeal 2021-000280 Application 15/535,452 7 (SRN) and the SDeNB, which forwards the packets to the destination node (TRN) via the TDeNB is not intended as a criticism or a disparagement against using multiple service flows to handover the UE from SRN to TRN.7 As correctly noted by the Examiner, it is, instead, intended as an alternative for improving the quality of service of the UE handover between the SRN and TRN, thereby optimizing the transmission of packets from a specified source to destination. Ans. 15-16. Accordingly, we are not persuaded that the proposed combination of Cai and Kojima teaches away from the claimed subject matter or renders Cai unsuitable for its intended purpose.8 Because Appellant has not demonstrated that the Examiner’s proffered combination would have been “uniquely challenging or difficult for one of ordinary skill in the art,” we agree with the Examiner that the proposed modification would have been within the purview of the ordinarily skilled artisan. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Ans. 15-16. Consequently, we are satisfied that, on this record, the Examiner has established that the combination of Cai and Kojima teaches or suggests the disputed claim limitations. Because we are not persuaded of Examiner error, we sustain the Examiner’s rejection of claim 37 as unpatentable over the combination of Cai and Kojima. 7 The Federal Circuit has held “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). 8 Id. Appeal 2021-000280 Application 15/535,452 8 Regarding the rejections of claims 38-40, 44-46, 54, 56, and 57, Appellant either does not present separate patentability arguments or reiterates substantially the same arguments as those discussed above for the patentability of claim 37. As such, claims 38-40, 44-46, 54, 56, and 57 fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv). On this record, we affirm the Examiner’s rejection of claims 38-40, 44-46, 54, 56, and 57. VII. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 37-40, 44-46, 54, 56, 57 103 Cai, Kojima 37-40, 44- 46, 54, 56, 57 VIII. 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED