APPLE INC.

Patent Trials and Appeals Board

May 18, 2021

2020001480 (P.T.A.B. May. 18, 2021)

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.
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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.
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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
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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.
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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).
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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,
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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:
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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
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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
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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
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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
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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).
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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).
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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