Ex Parte Rune et al

Patent Trial and Appeal Board

Dec 29, 2017

14438724 (P.T.A.B. Dec. 29, 2017)

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.
14/438,724 04/27/2015 Johan Rune 1009-1348 /P37261 US1 8889
7590
Murphy, Bilak & Homiller/Ericsson
1255 Crescent Green
Suite 200
Cary, NC 27518
EXAMINER
MILLER, BRANDON J
ART UNIT PAPER NUMBER
2645
NOTIFICATION DATE DELIVERY MODE
01/03/2018 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 JOHAN RUNE, PAVI FRENGER, and
FREDRIK GUNN ARS SON
Appeal 2017-008257
Application 14/438,724
Technology Center 2600
Before THU A. DANG, ERIC S. FRAHM, and JOHN P. PINKERTON,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-008257
Application 14/438,724
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 19—36. Claims 1—18 have been canceled.1 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Disclosed Invention and Exemplary Claim
Appellants’ disclosed invention relates to a method for sending
system information in a wireless network using a version message that omits
a system information table (Spec. 7:19—8:7, Spec. 18:27—29 (see also claims
19, 24, 29, 33)). Appellants disclose network nodes or radio network nodes
1 a-c in a cellular network 9 in the form of radio base stations that broadcast
in radio cells 4a-c (Spec. 6:16—7:12). Appellants describe the “network
nodes la-c” (Spec. 6:18) as being one and the same with the first, second,
and third radio network nodes la-c (Spec. 6:29—7:5).2 Independent claims
19 and 24 recite broadcasting a system information table (Spec. 7:19-8:7, SI
Table 1) from a network node (Figs. 1, 2A, 2B, 5 (see element 1)), and
independent claims 29 and 33 recite receiving a system information table
from a network node at a wireless terminal (Figs. 1 (element 2), 2A, 2B, and
6).
1 Claims 1—18 were canceled in the amendment filed April 27, 2015,
contemporaneously with the filing of the application.
2 Appellants also use the term “first network node la” (Spec. 7:5)
interchangeably with the term “first radio network node” (Spec. 6:30).
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Application 14/438,724
Claim 19 is exemplary, and is reproduced below with emphases on
disputed portions of the claim:
19. A method, performed in a network node, for sending
system information, the method comprising:
broadcasting, using at least one message, a system
information table and a version indicator of the system
information table, wherein each entry of the system information
table comprises an entry identifier and a set of system
access parameters, such that a radio node broadcasting an
entry identifier is accessible through system access by a
wireless terminal having access to the system information table,
and
broadcasting, a version message comprising the version
indicator of the system information table, the version message
omitting the system information table.
Examiner’s Rejections
(1) The Examiner rejected claims 19—23 and 29—32 as being
unpatentable under 35 U.S.C. § 103(a) over Ma et al. (EP 2 323 426 Al;
published May 18, 2011, hereinafter “Ma”) and Iimori (US 2007/0111751
Al; published May 17, 2007).3 Final Act. 4—8.
(2) The Examiner rejected claims 24—28, and 33—36 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Ma, Iimori, and
3 Appellants present arguments primarily as to the patentability of claim 19
(App. Br. 7—12), and rely on those arguments as to remaining dependent
claims 20-36 (App. Br. 12—14). We select independent claim 19 as
representative of the group of claims rejected under § 103(a) over Ma and
Iimori (claims 19—23 and 29—32). Because claims 24 and 33 contain similar
limitations as claims 19 and 24, and Appellants argue claims 24 and 33 for
the same reasons as claims 19 and 29 (App. Br. 13—14), we will decide the
outcome of claims 24—28 and 33—36 rejected over the same base
combination of Ma and Iimori, based on the outcome for claim 19.
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Application 14/438,724
Singh et al. (US 9,001,723 Bl; issued April 7, 2015, hereinafter “Singh”).
Final Act. 8—11.
Principal Issue on Appeal
Based on Appellants’ arguments (App. Br. 6—15; Reply Br. 2—8), the
following principal issue is presented:
Did the Examiner err in rejecting claims 19—36 as being obvious
because the base combination of Ma and Iimori is not properly combinable
to teach or suggest a method for sending system information including
broadcasting and receiving a system information table having an entry
identifier and a set of access parameters “such that a radio node broadcasting
an entry identifier is accessible through system access by a wireless terminal
having access to the system information table,” as set forth in representative
claim 19?
ANALYSIS
We have reviewed the Examiner’s Final Rejection (mailed July 15,
2016, “Final Act.”) 4—11 in light of Appellants’ contentions in the Appeal
Brief (filed December 19, 2016, hereinafter “App. Br.”) 6—15 and the Reply
Brief (filed May 8, 2017, hereinafter “Reply Br.”) 2—8 that the Examiner has
erred, as well as the Examiner’s response to Appellants’ arguments in the
Appeal Brief (Ans. 2—6). We disagree with Appellants’ contentions. With
regard to representative claim 19, we adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 5—6); (2) the additional findings and reasoning set forth in
the Advisory Action (mailed October 4, 2016) 2; and (3) the reasons set
forth by the Examiner in the Examiner’s Answer (mailed March 8, 2017,
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Application 14/438,724
hereinafter “Ans.”) in response to Appellants’ Appeal Brief (see Ans. 2—6).
We provide the following for emphasis.
Appellants admit that Ma’s femtocell broadcasts system information
and a version indicator of the system information, and Iimori disclose a
system information table (App. Br. 8). Appellants also admit (App. Br. 9)
that Ma discloses an indoor node (i.e., network node). Because we agree
with the Examiner that Ma therefore teaches a network node from which
system information is broadcast (Final Act. 5; Ans. 3—4), Appellants’
argument (App. Br. 8) that Iimori fails to teach broadcasting a system
information table from a network node is unpersuasive.4 In sum,
Appellants’ arguments as to representative independent claim 19 (App. Br.
8—10) concerning the individual shortcomings in the teachings of Ma and
Iimori are not persuasive, and are not convincing of the non-obviousness of
the claimed invention set forth in independent claims 19, 24, 29, and 30.
Appellants’ contention (App. Br. 9—10) that there is no reason for
Ma’s network node to transmit system information relevant to other cells is
not persuasive inasmuch as this argument is not commensurate with the
scope of claim 19. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998) (“[The] proffered facts ... are not commensurate with the claim scope
and are therefore unpersuasive.”). Claim 19 does not limit the system
information to any particular cell information. Claim 19 merely requires the
4 Each reference cited by the Examiner must be read, not in isolation, but
for what it fairly teaches in combination with the prior art as a whole. See In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (Finding one cannot
show non-obviousness by attacking references individually where the
rejections are based on combinations of references.).
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system information table “comprises an entry identifier and a set of system
access parameters.” And, we agree with the Examiner (Final Act. 5; Ans. 4)
that Iimori (Fig. 10; H 101, 102) teaches a system information table as
recited in claim 19.
With every limitation of the asserted claims thus disclosed in the cited
references, the question becomes whether a person of ordinary skill in the art
would have been motivated to combine those teachings to derive the claimed
subject matter with a reasonable expectation of success. See, e.g., Unigene
Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011)
(“Obviousness requires more than a mere showing that the prior art includes
separate references covering each separate limitation in a claim under
examination. Rather, obviousness requires the additional showing that a
person of ordinary skill at the time of the invention would have selected and
combined those prior art elements.”) (citing KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418, 421 (2007)). As long as some motivation or suggestion
to combine the references is provided by the prior art taken as a whole, the
law does not require that the references be combined for the precise reasons
contemplated by the inventor. In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir.
1992) (citing In re Kronig, 539 F.2d 1300, 1304 (CCPA 1976)). In other
words, some motivation to combine is necessary, but it does not have to be
the same motivation cited by Appellants.5
5 Any motivation, “whether articulated in the references themselves or
supported by evidence of the knowledge of a skilled artisan, is
sufficient.” Outdry Technologies Corp. v. Geox S.p.A., 859 F.3d 1364,
1370-71 (Fed Cir. 2017). “Under the correct [obviousness] analysis, any
need or problem known in the field of endeavor at the time of invention and
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The Examiner has provided a factual basis and articulated reasoning
with a rational underpinning to support the conclusion of obviousness with
regard to claim 19 (see Final Act. 5—6; Adv. Act. 2; and Ans. 3—5). See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We agree with the
Examiner (Final Act. 5—6; Ans. 4—5) that (i) it would have been obvious to
modify Ma’s system information to include the system information table of
Iimori; (ii) Timori’s system information table can be broadcast in the same
way as Ma’s system information; and (iii) Ma and Iimori both use entry
identifiers and system access parameters to provide/allow a network
connection. We also agree with the Examiner that “[combining the system
information in Iimori with the system information in Ma would have
predictably resulted in the wireless terminal being provided with the
information needed for system access as taught or suggested by both Ma and
Iimori (see Ma, paragraph [0005] and Iimori, paragraphs [0101] — [0102])”
(Ans. 5). Accordingly, we disagree with Appellants’ assertions (App. Br. 8—
10) that there is no proper reason to combine Ma and Iimori by modifying
Ma with Iimori.
Appellants contend (Reply Br. 3 4) the Examiner’s obviousness
determination is hinged upon impermissible hindsight and is thus
conclusory. To support their hindsight argument, Appellants argue “Ma
does not disclose or suggest that Iimori’s table should be moved to the
network node and then broadcast from the network node.” Reply Br. 3.
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007) (emphasis added).
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However, the Examiner has provided proper motivation for sending Iimori’s
system information table — to provide “the information needed for system
access as taught or suggested by both Ma and Iimori (see Ma, paragraph
[0005] and Iimori, paragraphs [0101] — [0102]).” Ans. 5. Accordingly,
Appellants’ contentions (App. Br. 8) that it would not have been obvious to
combine Ozeki and Bade because the Examiner’s reasoning is conclusory
and involves hindsight are unconvincing.
In view of the foregoing, we sustain the Examiner’s obviousness
rejection of representative claim 19. For similar reasons, and because (i)
claims 20—36 each contain all of the salient limitations of claim 19, and (ii)
Appellants argue claims 20-36 are patentable for the same reasons as claim
19 (see App. Br. 12—14), we also sustain the Examiner’s obviousness
rejections of claims 20—36.
CONCLUSIONS
Ma and Iimori are properly combinable, and the combination teaches
or suggests a method for sending system information including broadcasting
and receiving a system information table having an entry identifier and a set
of access parameters “such that a radio node broadcasting an entry identifier
is accessible through system access by a wireless terminal having access to
the system information table,” as set forth in representative claim 19, and as
similarly recited in remaining independent claims 24, 29, and 33.
Appellants have not sufficiently shown that the Examiner erred in rejecting
independent claims 19, 24, 29, and 33, as well as remaining claims 20-23,
25—28, 30-32, and 34—36, depending therefrom, under 35 U.S.C. § 103(a).
Thus, we sustain the rejections before us.
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DECISION
The Examiner’s rejections of claims 19-36 under 35 U.S.C. § 103(a)
are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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