APPLE INC.Download PDFPatent Trials and Appeals BoardMay 18, 20212020001480 (P.T.A.B. May. 18, 2021) Copy Citation 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. 15/179,010 06/10/2016 Zhu JI 30134/21801(P30123US1) 3712 114746 7590 05/18/2021 Apple Inc. -- FKM 150 Broadway Suite 702 New York, NY 10038 EXAMINER KHAWAR, SAAD ART UNIT PAPER NUMBER 2412 NOTIFICATION DATE DELIVERY MODE 05/18/2021 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): fhall@fkmiplaw.com mmarcin@fkmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ZHU JI, BEIBEI WANG, and JOHNSON O. SEBENI Appeal 2020-001480 Application 15/179,010 Technology Center 2400 Before ALLEN R. MACDONALD, JEAN R. HOMERE, and ERIC B. CHEN, 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 1–4, 6–8, 10–14, 16–18, and 20, which constitute all of the claims pending. Appeal Br. 1. Claims 5, 9, 15, and 19 have been canceled. Id. at 14–16 (Claims App.) We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We refer to the Specification, filed June 10, 2016 (“Spec.”); Final Office Action, mailed Mar. 1, 2019 (“Final Act.”); Appeal Brief, filed Aug. 5, 2019 (“Appeal Br.”); Examiner’s Answer, mailed Oct. 16, 2019 (“Ans.”), and Reply Brief, filed Dec. 16, 2019 (“Reply Br.”). 2 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 Apple Inc. Appeal Br. 2. Appeal 2020-001480 Application 15/179,010 2 II. CLAIMED SUBJECT MATTER According to Appellant, the claimed subject matter relates to a method and system for allowing a user equipment (UE) to adaptively monitor acknowledgments (ACKs) received from a Voice over IP Long Term Evolution network (VoLTE) during communication therewith to subsequently optimize power consumption. Spec. ¶ 3. Figures 1 and 4d, reproduced below, are useful for understanding the claimed subject matter: Figure 1 illustrates arrangement (100) including UE (110, 112, 114) monitors ACKs received from LTE network (120, 122, 124). Id. ¶ 13. Appeal 2020-001480 Application 15/179,010 3 Figure 4d illustrates monitoring schedule (475) during which UE (110, 112, 114) monitors and intermittently measures ACKs (481, 489) received from LTE-RAN (122) to assess the validity thereof. Id. ¶¶ 52, 53. As depicted in Figures 1 and 4d above, during an evaluation transmission, the UE monitors and measures network parameters to evaluate whether a received ACK is a true ACK. Id. ¶ 52. In particular, the UE uses a timer set to a predetermined value for maximizing power conservation. Id. ¶ 53. Upon determining that the network parameter satisfies the predetermined value (i.e., ACK is true), the timer’s predetermined value is used for a subsequent monitoring schedule in a non-evaluation transmission during which the UE omits monitoring further opportunities thereby declining to measure subsequent network parameters. Id. ¶¶ 52–54. Independent claim 1 is illustrative of the claimed subject matter: 1. A method, comprising: at a user equipment (UE) configured to control an operation of a transceiver, the transceiver configured to enable the UE to establish a connection with a Long Term Evolution (LTE) network, the user equipment and the LTE network configured with and utilizing a Connected Discontinuous Reception (CDRX) functionality for a first duration, wherein a plurality of uplink transmissions, a plurality of acknowledgements (ACKs) and a plurality of monitoring Appeal 2020-001480 Application 15/179,010 4 opportunities to verify the plurality of ACKs occur within the first duration: utilizing a first monitoring schedule at a start of the first duration, wherein during the first monitoring schedule, the UE is configured to perform operations comprising: receiving a response from the LTE network for one of the plurality of uplink transmissions; measuring a network parameter; when the response is a first ACK of the plurality of ACKs, determining a status of the first ACK based on whether a value of the network parameter associated with the connection with the L TE network satisfies a predetermined threshold; when the network parameter satisfies the predetermined threshold, setting a timer to a predetermined value and utilizing a second monitoring schedule during a time duration corresponding to the predetermined value; and wherein during the second monitoring schedule, the UE is configured to (i) omit each monitoring opportunity of the plurality of monitoring opportunities and (ii) omit measuring the network parameter. III. REFERENCES The Examiner relies upon the following references.3 Name Reference Date Tabet US 2015/0092645 A1 Apr. 2, 2015 Hwang US 2015/0341858 A1 Nov. 26, 2015 Dortmund US 2016/0285591 A1 Sept. 29, 2016 Uchino US 2017/0099635 A1 Apr. 6, 2017 3 All reference citations are to the first named inventor only. Appeal 2020-001480 Application 15/179,010 5 IV. REJECTIONS The Examiner rejects claims 1–4, 6–8, 10–14, 16–18, and 20 as follows: Claims 1–4, 6–8, 10–14, 16–18, and 20 are rejected under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. Final Act. 3–4. Claims 1, 2, 4, 6–8, 11, 12, 14, 16–18, and 20 are rejected under 35 U.S.C. § 103 as unpatentable over the combined teachings of Dortmund and Uchino. Id. at 4–16.4 Claims 3 and 13 are rejected under 35 U.S.C. § 103 as unpatentable over the combined teachings of Dortmund, Uchino, and Tabet. Id. at 16–17. Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable over the combined teachings of Dortmund, Uchino, and Hwang. Id. at 17–14. V. ANALYSIS We consider Appellant’s arguments seriatim, as they are presented in the Appeal Brief, pages 4–11 and the Reply Brief, pages 2–9.5 1. Written Description Rejection Appellant argues that the Examiner erred in determining that the originally-filed Specification does not adequately support the following claim limitations: 4 The Examiner inadvertently included claim 10 as part of this statement of the rejection. However, claim 10 is discussed as part of the Dortmund, Uchino, and Hwang combination infra. 5 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). Appeal 2020-001480 Application 15/179,010 6 when the network parameter satisfies the predetermined threshold, setting a timer to a predetermined value and utilizing a second monitoring schedule during a time duration corresponding to the predetermined value; and wherein during the second monitoring schedule, the UE is configured to (i) omit each monitoring opportunity of the plurality of monitoring opportunities and (ii) omit measuring the network parameter, as recited in independent claim 1. Appeal Br. 5–6, Reply Br. 2. According to Appellant, because the originally-filed Specification describes that, to maximize power conservation, the UE sets a timer to a predetermined time period during which it intermittently measures and assesses the received network parameters, the Specification supports the disputed limitations. Reply Br. 3 (citing Spec. ¶ 53). In particular, Appellant argues that when the UE determines during an evaluation transmission schedule that the measured network parameters do not exceed the timer’s predetermined value, the UE uses the predetermined timer value to thereby omit measurement of subsequent network parameters during a non- transmission evaluation schedule. Id. at 3–4 (citing Spec. ¶¶ 52–54). Appellant’s arguments are persuasive of reversible Examiner error. To satisfy the written description requirement, a patent Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319 (Fed. Cir. 2003). An applicant may show possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. American Airlines, Appeal 2020-001480 Application 15/179,010 7 Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). However, our reviewing court guides that “[a] description [that] renders obvious the invention for which an earlier filing date is sought is not sufficient.” Lockwood 107 F.3d at 1572 (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)). “[I]t is ‘not a question of whether one skilled in the art might be able to construct the patentee's device from the teachings of the disclosure . . . . Rather, it is a question whether the application necessarily discloses that particular device’” (Id., emphasis added). We do not agree with the Examiner that the Specification’s disclosure of a UE measuring network parameters intermittently does not support the disputed claim limitations. Ans. 4–5 (citing Spec. ¶ 53). Instead, the cited amended claim language must be given its broadest reasonable interpretation consistent with Appellant’s disclosure, as explained in In re Morris: [T]he PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); see also In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (stating that “claims must be interpreted as broadly as their terms reasonably allow.”). Our reviewing court further states, “the ‘ordinary meaning’ of a claim term is its meaning to the ordinary artisan after reading the entire patent.” Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc). In particular, Appellant’s Specification states in-relevant parts the following: Appeal 2020-001480 Application 15/179,010 8 The monitoring schedule 475 may also specifically relate to when the monitoring application 345 determines that the network parameter monitoring 483 results in relatively good network conditions such that the probability that the ACK is a true ACK has the necessary confidence. Under non-evaluation periods according to the exemplary embodiments, the UE 110 may omit any further HARQ opportunity. Spec. ¶ 52. In this manner, the monitoring application 345 is only required to perform the monitoring functionality intermittently for the power conservation to be maximized while still utilizing the exemplary embodiments. For example, the monitoring application 345 may perform the monitoring functionality every 32 or 64 uplink transmissions. The timer may also be dynamic. Specifically, when the network parameters do not satisfy the predetermined minimum probability, the timer may be a first value. When the network parameters satisfy the predetermined minimum probability, the timer may be a second value greater than the first value. Id. ¶ 53. However, particularly when the network parameters are measured intermittently, since the network parameters in the fourth monitoring schedule 475 indicate that the probability the ACK is a true ACK is greater than the predetermined value, the fourth monitoring schedule 475 may resume with omitting the further HARQ opportunity for each subsequent PUSCH transmission until an ensuing evaluation PUSCH transmission. Id. ¶ 54. As persuasively argued by Appellant, the cited portions of the originally-filed Specification indicate that the UE’s intermittent monitoring of network parameters to enhance power conservation pertains to the UE, upon determining during an evaluation transmission schedule that the Appeal 2020-001480 Application 15/179,010 9 measured network parameters do not exceed the timer’s predetermined value, uses the predetermined timer value to thereby omit measurement of subsequent network parameters during a non-transmission evaluation schedule. That is, upon confirming that a received ACK value is true in a first schedule based on a timer’s predetermined value, the UE omits any further measurement of ACK values in a second schedule to save power. Although the written description requirement does not impose an “in haec verba” recitation of the disputed claim language in the original Specification, it nonetheless requires a sufficient description of the claimed subject matter so as to enable one of ordinary skills in the art to make and use the invention. In re Wright, 866 F. 2d 422, 425 (Fed. Cir 1989); see Agilent Techs., Inc. v. Affymetrix, Inc., 567 F. 3d 1366, 1374 (Fed. Cir. 2009). Here, the ordinarily-skilled artisan would readily appreciate that the originally filed portions of Appellant’s Specification cited above support the notion of using a timer’s predetermined value to measure network parameters only to the extent to confirm that the parameters are valid thereby conserving power by limiting the amount of monitoring and measurement performed by the UE. Accordingly, we agree with Appellant that the originally-filed Specification adequately supports the disputed limitations. Because Appellant has demonstrated possession of the amended claim recitation, we are persuaded of error in the Examiner’s written description rejection of claim 1. Accordingly, we do not sustain the written description Appeal 2020-001480 Application 15/179,010 10 rejection of claim 1, and claims 2–4, 6–8, 10–14, 16–18, and 20, which recite commensurate limitations. 2. Obviousness Rejections Appellant argues that the Examiner erred in finding that the combination of Dortmund and Uchino teaches or suggests the following claim limitations: when the network parameter satisfies the predetermined threshold, setting a timer to a predetermined value and utilizing a second monitoring schedule during a time duration corresponding to the predetermined value; and wherein during the second monitoring schedule, the UE is configured to (i) omit each monitoring opportunity of the plurality of monitoring opportunities and (ii) omit measuring the network parameter as recited in independent claim 1. Appeal Br. 7–9, Reply Br. 5–8. In particular, Appellant argues that Dortmund’s disclosure of a power saving mode having a network-defined value for a number of transmission grant occasions does not teach a timer having a predefined value. Appeal Br. 7, Reply Br. 6 (citing Dortmund ¶¶ 7, 21, 25). According to Appellant, Dortmund does not teach or suggest utilizing a timer to omit monitoring retransmission grant occasions following an ACK or to omit measuring a network parameter. Appeal Br. 8. Further, Appellant argues that Uchino’s inactivity timer to trigger an operation from a non-DRX state to a DRX state is irrelevant to the timer recited in the claim, and thereby does not cure the noted deficiencies of Dortmund. Id. at 9 (citing Uchino ¶ 6). Appellant’s arguments are not persuasive of reversible Examiner error because they are tantamount to an individual attack against Dortmund and Appeal 2020-001480 Application 15/179,010 11 Uchino, as opposed to addressing the combined teachings of cited references, as relied upon by the Examiner in the rejection of claim 1. One cannot show non-obviousness by attacking the references or the embodiments thereof individually where the rejections are based on the combined teachings of the references and/or embodiments. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 426 (CCPA 1981). Dortmund relates to a UE executing an uplink HARQ process to monitor feedback channel by minimizing retransmission grant occasions following reception of ACKs from a base station to conserve battery power. Dortmund ¶ 21. In particular, the UE only listens to k (e.g., 0<=k<= 3) number of transmission grant occasions after receiving an ACK, and skips monitoring during these retransmission grant occasions of a current HARQ cycle upon reaching the selected k value. Id. ¶¶ 25, 66, 117. The UE may adapt the value of k based on the radio link conditions, or packet loss rate. Id. ¶¶ 83–93. Further, Uchino discloses a UE using a DRX inactivity timer to transition from an inactive state to an active state upon receiving an ACK in response to a transmitted signal in an LTE communications system. Uchino ¶¶ 98–101. As an initial matter, we agree with the Examiner that the claim does not preclude selecting a timer that is not dependent upon the value of a network parameter. Ans. 7. As correctly noted by the Examiner, the claim only requires that the timer be set to a predetermined value. Id. We agree with the Examiner that Dortmund’s UE selecting a predetermined k value based on radio conditions to determine the amount of time retransmission Appeal 2020-001480 Application 15/179,010 12 grant occasions it will entertain after receiving an ACK from a base station does operate as a timer having a duration set to a predetermined value to omit further monitoring opportunities, and to omit further measuring the network parameters. Id. at 7–8 (citing Dortmund ¶¶ 85, 87, 119). Because Dortmund does not explicitly recite using a timer, the Examiner relies upon Uchino’s disclosure of using a timer to transition from a state to another when an ACK is received from a base station. Ans. 4, Final Act. 7 (citing Uchino ¶ 98).6 We find the Examiner’s proposed combination of the cited teachings of Dortmund and Uchino is no more than a simple arrangement of old elements with each performing the same function it had been known to perform, yielding no more than what one would expect from such an arrangement. See KSR, 550 U.S. at 416. Therefore, the ordinarily skilled artisan, being “[a] person of ordinary creativity, not an automaton,” would have been able to fit the teachings of the cited references together like pieces of a puzzle to predictably result in a UE that conserves power in an LTE communication system by using a timer with a predetermined value to limit the amount of network monitoring and measuring of network parameters thereby omitting any further monitoring/measuring activities on the network based on the preselected duration/value of the timer. Id. at 420–21. 6 “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Keller, 642 F.2d 413, 425. “The obviousness analysis cannot be confined by [the] formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of . . . the explicit content of issued patents.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Appeal 2020-001480 Application 15/179,010 13 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). Consequently, we are satisfied that, on this record, the Examiner has established by a preponderance of the evidence that the combination of Dortmund and Uchino teaches or suggests the disputed claim limitations. Because we are not persuaded of Examiner error, we sustain the Examiner’s rejection of claim 1 as unpatentable over the combination of Dortmund and Uchino. Regarding the rejections of claims 2–4, 6–8, 10–14, 16–18, and 20, because Appellant does not present separate patentability arguments or reiterates substantially the same arguments as those previously discussed for the patentability of claim 1 above, claims 2–4, 6–8, 10–14, 16–18, and 20 fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv). VI. CONCLUSIONS We affirm the Examiner’s rejections of claims 1–4, 6–8, 10–14, 16– 18, and 20 as being unpatentable under 35 U.S.C. § 103(a). However, we reverse the Examiner’s rejection of claims 1–4, 6–8, 10–14, 16–18, and 20 as failing to comply with the written description requirement under 35 U.S.C. § 112, 1st paragraph. Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). Appeal 2020-001480 Application 15/179,010 14 In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 6–8, 11, 12, 14, 16–18, 20 103 Dortmund, Uchino, 1, 2, 4, 6–8, 11, 12, 14, 16–18, 20 3, 13 103 Dortmund, Uchino, Tabet 3, 13 10 Dortmund, Uchino, Hwang 10 1–4, 6–8, 10– 14, 16–18, 20 112 Written Description 1–4, 6–8, 10–14, 16– 18, 20 Overall Outcome 1–4, 6–8, 10–14, 16– 18, 20 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation