Wang, He et al.

Patent Trials and Appeals Board

Aug 17, 2020

2019002938 (P.T.A.B. Aug. 17, 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.
14/239,087 06/04/2014 He Wang LUTZ 201789US01 7878
48116 7590 08/17/2020
FAY SHARPE/NOKIA
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
EXAMINER
SCHEIBEL, ROBERT C
ART UNIT PAPER NUMBER
2467
NOTIFICATION DATE DELIVERY MODE
08/17/2020 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):
docketing@faysharpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HE WANG and CHANDRIKA WORRALL
____________________

Appeal 2019-002938
Application 14/239,087
Technology Center 2400
____________________

Before JOHN A. EVANS, JAMES W. DEJMEK, and
JOYCE CRAIG, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 5, 7–9, 17, 25, 29, 31, 32, and 41–44. Appellant has canceled
claims 2–4, 6, 10–16, 18–24, 26–28, 30, and 33–40. Appeal Br. 17–22. We
have jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b).
We affirm in part.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies
Alcatel Lucent as the real party in interest. Appeal Br. 1.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to
“notifying a user terminal of multimedia broadcast multicast service MBMS
service information of at least one neighboring cell of a cell of a base station
where the user terminal camps.” Spec. 1. In a disclosed embodiment, the
MBMS service information may be transmitted in a system information
block (SIB) other than SIB 13 so that the information may be transmitted in
a cell where there is no MBMS service transmission. Spec. 4.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
1. A method of notifying a user terminal of multimedia
broadcast multicast service MBMS service information of at
least one neighboring cell of a cell of a base station where the
user terminal camps, comprising:
in a system information block SIB, which is independent
of a SIB 13,
transmitting, in the system information block SIB, to the
user terminal the multimedia broadcast multicast service MBMS
service information of the at least one neighboring cell, wherein
the multimedia broadcast multicast service MBMS service
information of the at least one neighboring cell comprises a
carrier frequency and a list of an identifier of an MBMS service
supported at the carrier frequency.

The Examiner’s Rejections
1. Claims 9, 17, 43, and 44 stand rejected under pre-AIA
35 U.S.C. § 112, second paragraph, as being indefinite. Final Act. 3–4.
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2. Claims 1, 7, 8, 25, 31, 32, 41, and 42 stand rejected under pre-
AIA 35 U.S.C. § 102(e) as being anticipated by Zhang et al. (US
2012/0236776 A1; Sept. 20, 2012) (“Zhang”). Final Act. 5–9.
3. Claims 5, 9, 17, 29, 43, and 44 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Zhang and Maeda et al. (US
2010/0178895 A1; July 15, 2010) (“Maeda”). Final Act. 9–15.

ANALYSIS2
Rejection under pre-AIA 35 U.S.C. § 112, second paragraph
a. Claims 9 and 43
Independent claim 9 recites, in relevant part, “an indicating module
configured to indicate to the user terminal a change of the multimedia
broadcast multicast service MBMS service information of the at least one
neighboring cell included in the system information block SIB by setting bits
in a downlink control information DCI format 1C to be all zero.” The
Examiner determines that the claimed “indicating module” invokes the
provisions of pre-AIA 35 U.S.C. § 112, sixth paragraph, and further
determines the Specification lacks sufficient corresponding structure for the
indicating module. Final Act. 3–4; see also Ans. 3–4.
Appellant disputes that the claim language invokes pre-AIA 35 U.S.C.
§ 112, sixth paragraph. Appeal Br. 6–7. Moreover, Appellant argues the

2 Throughout this Decision, we have considered the Appeal Brief, filed
September 19, 2018 (“Appeal Br.”); the Examiner’s Answer, mailed
January 2, 2019 (“Ans.”); and the Final Office Action, mailed February 20,
2018 (“Final Act.”), from which this Appeal is taken. Appellant did not file
a Reply Brief. To the extent Appellant has not advanced separate,
substantive arguments for particular claims or issues, such arguments are
considered waived. See 37 C.F.R. § 41.37(c)(1)(iv).
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Specification sets forth a corresponding structure for the claimed indicating
module, identifying Figure 3 (item 320) and the corresponding description
on page 13 of the Specification. Appeal Br. 6. In addition, Appellant asserts
that one of ordinary skill in the art would understand that an indicating
module is a component within the base station and would “necessarily
involve processors, memory, cooperating circuits and software and/or ASIC
devices.” Appeal Br. 6.
The presumption that a limitation that does not recite a “means for” or
a “step for” and, therefore, is not subject to § 112, sixth paragraph is not a
strong one. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed.
Cir. 2015) (concluding “that such a heightened burden is unjustified and that
we should abandon characterizing as ‘strong’ the presumption that a
limitation lacking the word ‘means’ is not subject to § 112, para. 6”).
Rather, the Williamson Court explained:
The standard is whether the words of the claim are understood
by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure. When a claim term
lacks the word “means,” the presumption can be overcome and §
112, para. 6 will apply if the challenger demonstrates that the
claim term fails to “recite sufficiently definite structure” or else
recites “function without reciting sufficient structure for
performing that function.”
Williamson, 792 F.3d at 1349 (internal citations omitted). Further, the Court
stated:
“Module” is a well-known nonce word that can operate as a
substitute for “means” in the context of § 112, para. 6. . . .
Generic terms such as “mechanism,” “element,” “device,” and
other nonce words that reflect nothing more than verbal
constructs may be used in a claim in a manner that is tantamount
to using the word “means” because they “typically do not
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connote sufficiently definite structure” and therefore may invoke
§ 112, para. 6.
Williamson, 792 F.3d at 1350.
We agree with the Examiner that, as recited, the “indicator module”
configured to indicate a change of the MBMS information by setting bits in
a DCI format 1C to all zero invokes pre-AIA 35 U.S.C. § 112, sixth
paragraph.
Figure 3 from the Specification is reproduced below.

Figure 3 is a block diagram of a base station. Spec. 3. Although an
indicating module (320) is included in the block diagram, we agree with the
Examiner that this is simply a black box, devoid of the requisite
corresponding structure. Similarly, the Specification fails to describe the
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corresponding structure for the indicating module, but instead recites the
function it performs. See Spec. 13.
A patentee cannot avoid providing specificity as to structure
simply because someone of ordinary skill in the art would be able
to devise a means to perform the claimed function. To allow that
form of claiming under section 112, paragraph 6, would allow
the patentee to claim all possible means of achieving a function.
Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1385 (Fed. Cir.
2009).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claim 9 under
pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite.3 In
addition, we sustain the Examiner’s rejection under pre-AIA 35 U.S.C.
§ 112, second paragraph, of claim 43, which depends therefrom and was not
argued separately with particularity. See Appeal Br. 6–7; see also 37 C.F.R.
§ 41.37(c)(1)(iv).

3 We note that Manual of Patent Examining Procedure (“MPEP”)
§ 2163(II)(A)(3)(a) (9th ed. Rev. 08.2017, Jan. 2018) states that “when a
claim is rejected as indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C.
112, second paragraph, because there is no corresponding structure,
materials, or acts, or an inadequate disclosure of corresponding structure,
materials, or acts, for a means- (or step-) plus-function claim limitation, then
the claim must also be rejected under 35 U.S.C. 112(a) or pre-AIA
35 U.S.C. 112, first paragraph, for lack of an adequate written description.”
In the event of further prosecution, we leave it to the Examiner to determine
whether a rejection of under pre-AIA 35 U.S.C. § 112, first paragraph, is
also appropriate. Although the Board is authorized to reject claims under
37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects
not to do so. See MPEP § 1213.02.
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b. Claims 17 and 44
Independent claim 17 recites, in relevant part, “a determining module
configured to determine whether the multimedia broadcast multicast service
MBMS service information of the at least one neighboring cell included in
the system information block SIB is changed by determining whether bits in
a downlink control information DCI format 1C are set to zero.” The
Examiner determines that the claimed “determining module” invokes the
provisions of pre-AIA 35 U.S.C. § 112, sixth paragraph, and further
determines the Specification lacks sufficient corresponding structure for the
indicating module. Final Act. 3–4; see also Ans. 3–4.
Similar to the arguments presented with respect to the “indicating
module,” Appellant again disputes that the “determining module” invokes
pre-AIA 35 U.S.C. § 112, sixth paragraph, but that the Specification
nonetheless provides sufficient corresponding structure. Appeal Br. 7 (citing
Spec. 14, Fig. 4 (item 420).
Similar to Figure 3, Figure 4 merely illustrates a high-level block
diagram of a user terminal and represents the determining module as a box
with an arrow pointing into it. See Fig. 4. Similarly, the Specification fails
to provide any corresponding structure for the determining module, instead
reciting the function it performs.
Thus, for similar reasoning as that discussed with respect to claim 9
and the “indicating module,” we sustain the Examiner’s rejection under pre-
AIA 35 U.S.C. § 112, second paragraph, of independent claim 17. In
addition, we sustain the Examiner’s rejection under pre-AIA 35 U.S.C.
§ 112, second paragraph, of claim 44, which depends therefrom and was not
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argued separately with particularity. See Appeal Br. 7; see also 37 C.F.R.
§ 41.37(c)(1)(iv).

Rejection under pre-AIA 35 U.S.C. § 102(e)
Appellant argues Zhang fails to disclose that the multimedia broadcast
multicast service information of at least one neighboring cell comprises a
carrier frequency and a list of an identifier of an MBMS service supported at
the carrier frequency. Appeal Br. 7–10.
Claim construction is an important step in a patentability
determination. A finding of anticipation is a two-step inquiry wherein first,
the claims are properly construed, and second, the properly construed claims
are compared to the prior art. See Medichem, S.A. v. Rolabo, S.L., 353 F.3d
928, 933 (Fed. Cir. 2003); see also In re Crish, 393 F.3d 1253, 1256
(Fed. Cir. 2004).
“Claim limitations directed to printed matter are not entitled to
patentable weight unless the printed matter is functionally related to the
substrate on which the printed matter is applied.” Praxair Distribution, Inc.
v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1031 (Fed. Cir. 2018)
(emphasis added). Our reviewing court has also explained that this printed
matter doctrine is not strictly limited to “printed” materials. Mallinckrodt,
890 F.3d at 1032. More specifically, “a claim limitation is directed to
printed matter ‘if it claims the content of information.’” Mallinckrodt,
890 F.3d at 1032 (quoting In re Distefano, 808 F.3d 845, 848 (Fed. Cir.
2015)).
“Where the printed matter is not functionally related to the substrate,
the printed matter will not distinguish the invention from the prior art in
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terms of patentability.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)
(footnote omitted). As a general proposition, we need not give patentable
weight to non-functional descriptive material absent a new and nonobvious
functional relationship between the descriptive material and the substrate.
See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also King Pharm.,
Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010); and Manual of
Patent Examining Procedure (MPEP) § 2111.05 (9th ed. Rev. 08.2017,
Jan. 2018).
In Ex parte Nehls, 88 USPQ2d 1883, 1888 (BPAI 2008)
(precedential), the Board held that the nature of the information being
manipulated by the computer should not be given patentable weight absent
evidence that the information is functionally related to the process “by
changing the efficiency or accuracy or any other characteristic” of the steps.
See also Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (non-
precedential) (holding “wellness-related” data stored in a database and
communicated over a network was non-functional descriptive material as
claimed because the data “does not functionally change” the system).
Here, we find the content of the multimedia broadcast multicast
service MBMS service information of at least one neighboring cell (i.e., a
carrier frequency and a list of an identifier of an MBMS service supported at
the carrier frequency) does not change the recited methods of at least
independent claims 1 and 25. The content of the MBMS service information
is not functionally related to the transmission of a system information block
(SIB) from a base station to a user terminal. Further, the recited content of
the MBMS service information is not used in the claim—it is merely data
sent from the base station to a user terminal. Accordingly, the content of the
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multimedia broadcast multicast service MBMS service information of at
least one neighboring cell is merely non-functional descriptive material.
Having determined independent claim 1 recites non-functional
descriptive material, we are mindful to read the claim as a whole in our
analysis. See Gulack, 703 F.2d at 1385 (“[T]he board cannot dissect a claim,
excise the printed matter from it, and declare the remaining portion of the
mutilated claim to be unpatentable. The claim must be read as a whole.”)
(footnote omitted).
Based on the foregoing discussion, claim 1 is interpreted as follows:
1. A method of notifying a user terminal of multimedia
broadcast multicast service MBMS service information of at
least one neighboring cell of a cell of a base station where the
user terminal camps, comprising:
in a system information block SIB, which is independent
of a SIB 13,
transmitting, in the system information block SIB, to the
user terminal the multimedia broadcast multicast service MBMS
service information of the at least one neighboring cell, wherein
the multimedia broadcast multicast service MBMS service
information of the at least one neighboring cell comprises [non-
functional descriptive material].
As an initial matter, we do not find Appellant’s arguments persuasive
of Examiner error because, at least, they rely on the MBMS service
information to comprise specific content (i.e., a carrier frequency and a list
of an identifier of an MBMS service supported at the carrier frequency),
which we have concluded to be non-functional descriptive material.
Zhang, as relied on by the Examiner, discloses a mobile entity (i.e.,
user terminal) “obtains information about MBMS service support of cells in
its neighbor list.” Zhang ¶ 94. Zhang describes that the information in a
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system information block other than SIB 13 of a Broadcast Control Channel
(BCCH). Zhang ¶ 94.
Thus, Zhang describes notifying a user terminal of MBMS service
information of a neighboring cell by transmitting to a user terminal such
information in a system information block other than SIB 13. Accordingly,
having properly construed claim 1, we find Zhang anticipates claim 1 and
we sustain the Examiner’s rejection. For similar reasons, we also sustain the
Examiner’s rejection of independent claim 25, which recites commensurate
limitations and for which Appellant relies on similar arguments (see Appeal
Br. 10). In addition, we sustain the Examiner’s rejection of claims 7, 8, 31,
32, 41, and 42, which depend therefrom and were not argued separately. See
37 C.F.R. § 41.37(c)(1)(iv).

Rejection under pre-AIA 35 U.S.C. § 103(a)
The Examiner rejects claims 5, 9, 17, 29, 43, and 44 under pre-AIA
35 U.S.C. § 103(a) over the combined teachings and suggestions of Zhang
and Maeda. See Final Act. 9–15. In relevant part, the Examiner relies on
Maeda to teach indicating (or determining) a change of the MBMS service
information of a neighboring cell by setting bits in a downlink control
information DCI format 1C to be all zero. See, e.g., Final Act. 11, 13–15
(citing Maeda ¶ 144). In particular, the Examiner finds “the use of certain
values in a given field to indicate a change in an information field is known
in the art” and that Maeda describes using a value of 11 to indicate a change
(00 indicates no change), but that it would have been obvious to one of
ordinary skill in the art to use any value (such as 00) to indicate a change.
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Final Act. 11. Additionally, the Examiner finds it would have been obvious
“to apply this teaching to another field (the DCI format 1C).” Ans. 6.
Appellant asserts that Maeda relates to notifying emergency
information using a broadcast type multimedia service and “fails to
specifically mention 8 bits in the DCI format 1C set to be all zero.” Appeal
Br. 13–14. Instead, Appellant argues Maeda only describes an indicator for
notification being 2-bit digital data. Appeal Br. 14 (citing Maeda ¶ 144).
As an initial matter, although the Specification describes the current
DCI format 1C has 8 bits, we note the claim language does not specify a
specific number of bits being set to zero. Thus, Appellant’s arguments are
not commensurate with the scope of the claims and, as such, do not
demonstrate error in the Examiner’s rejection of those claims. See In re Self,
671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims
cannot be relied upon for patentability).
However, the claim does recite that the indication information (i.e., all
bits being set to zero) is within a DCI format 1C. The Examiner’s reasoning
to apply the teaching of Maeda “to another field” such as the DCI format 1C
lacks adequate support.
A proper finding of obviousness based on an “obvious to try”
rationale requires, inter alia, a showing that, at the time Appellant’s
invention was filed, (1) there was a recognized problem and a design need or
market pressure to solve the problem; (2) there were a finite number of
identified, predictable solutions; and (3) one of ordinary skill would have
had good reason to pursue the known options within his or her technical
grasp, with a reasonable expectation of success. See KSR, 550 U.S. at 421.
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Although, as Appellant states in the Specification, “the DCI format 1C
is used for a base station to notify a UE [(user equipment)] of a change of a
MBMS point-to-multipoint Control Channel MCCH message” (Spec. 7) and
it may be, therefore, a logical selection by one of ordinary skill in the art to
apply the teaching of Maeda to the DCI format 1C to indicate a change in
MBMS service information of a neighboring cell, the Examiner has not set
forth sufficient persuasive evidence or technical reasoning to support
applying Maeda’s teaching to the DCI format 1C field.
Accordingly, constrained by the record before us, we do not sustain
the Examiner’s rejection of claims 5, 9, 17, and 29, which each recite the
disputed limitation. In addition, we do not sustain the Examiner’s rejection
under pre-AIA 35 U.S.C. § 103(a) of claims 43 and 44, which depend from
claims 9 and 17, respectively.

CONCLUSION
We affirm the Examiner’s decision rejecting claims 9, 17, 43, and 44
under pre-AIA 35 U.S.C. § 112, second paragraph.
We affirm the Examiner’s decision rejecting claims 1, 7, 8, 25, 31, 32,
41, and 42 under pre-AIA 35 U.S.C. § 102(e).
We reverse the Examiner’s decision rejecting claims 5, 9, 17, 29, 43,
and 44 under pre-AIA 35 U.S.C. § 103(a).

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
9, 17, 43, 44 112, second
paragraph
Indefiniteness 9, 17, 43,
44

1, 7, 8, 25,
31, 32, 41,
42
102(e) Zhang 1, 7, 8, 25,
31, 32, 41,
42

5, 9, 17, 29,
43, 44
103(a) Zhang, Maeda 5, 9, 17,
29, 43, 44
Overall
Outcome
1, 7–9, 17,
25, 31, 32,
41–44
5, 29

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). See
37 C.F.R. § 41.50(f).

AFFIRMED IN PART