Mohammad R. Khawer et al.

Patent Trials and Appeals Board

Aug 15, 2019

14686066 - (D) (P.T.A.B. Aug. 15, 2019)

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.
14/686,066 04/14/2015 Mohammad R. Khawer 4100-817861-US 6344
114592 7590 08/15/2019
Nokia Technologies Oy
C/O Davidson Sheehan LLP
6836 Austin Center Blvd.
Suite 320
Austin, TX 78731
EXAMINER
BEAMER, TEMICA M
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
08/15/2019 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):
Nokia.IPR@nokia.com
docketing@ds-patent.com
nokia@ds-patent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MOHAMMAD R. KHAWER and YIGANG CAI
____________________

Appeal 2018-008687
Application 14/686,0661
Technology Center 2600
____________________

Before JOSEPH L. DIXON, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–20. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.

1 Appellants identify Alcatel-Lucent USA, Inc. as the real party in interest.
App. Br. 1.
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STATEMENT OF THE CASE
Introduction
Appellants’ disclosed and claimed invention is generally directed to
“providing charging [(i.e., billing)] information in wireless communication
systems.” Spec. ¶ 2. In a disclosed embodiment, a user device is handed off
from a base station operating according to a first radio access technology to
a second base station operating according to a second (different) radio access
technology. Spec. ¶¶ 5, 15. As part of the handover process, charging
information from each base station may be gathered and used to allocate
charges incurred by the user throughout the call session. Spec. ¶ 16. As an
example of different radio access technologies (RATs), the Specification
identifies a first base station operating according to the 3G standard and a
second base station (or access point) operating according to IEEE 802
(Wi-Fi) standards. Spec. ¶ 17.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A method comprising:
transmitting an identifier over an interface between a first
base station and a second base station in response to initiation of
a handover of a call session between the first and second base
stations, wherein the first and second base stations operate
according to different radio access technologies; and
transmitting, from the first base station to a network
charging system, a data usage report including the identifier,
first charging information collected by the first base station for
the call session, and second charging information collected by
the second base station for the call session.

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The Examiner’s Rejection
Claims 1–20 stand rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by Hassan et al. (US 8,185,120 B2; May 22, 2012) (“Hassan”).
Final Act. 4–10.

ANALYSIS2
a. Claims 1–5, 7–13, and 15–20
Appellants assert Hassan does not anticipate independent claim 1
because
Hassan does not disclose that either the base station 120A or the
base station 120B aggregates bandwidth usage information for
both base stations and then transmits the aggregated bandwidth
usage information back to the other base station, as would be
required to meet the limitations of claim 1 using the Examiner’s
identification of the first or second base station as the claimed
network charging system.
App. Br. 5. In particular, Appellants argue Hassan describes exchanging
bandwidth information such that a base station may independently determine
whether the communication system is operating above a designated
congestion threshold “without transmitting its own bandwidth usage
information to another base station.” App. Br. 5–6 (citing Hassan, col. 10,
ll. 8–12). Accordingly, Appellants argue Hassan fails to disclose
“transmitting, from the first base station to a network charging system, a
data usage report including the identifier, first charging information

2 Throughout this Decision, we have considered the Appeal Brief, filed
March 20, 2018 (“App. Br.”); the Reply Brief, filed September 4, 2018
(“Reply Br.”); the Examiner’s Answer, mailed July 24, 2018 (“Ans.”); and
the Final Office Action, mailed December 28, 2017 (“Final Act.”), from
which this Appeal is taken.
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collected by the first base station for the call session, and second charging
information collected by the second base station for the call session.” App.
Br. 6 (emphases omitted); Reply Br. 2. Moreover, Appellants assert Hassan
does not disclose that spectrum information (i.e., which the Examiner finds
discloses the claimed identifier) and bandwidth usage information
(i.e., which the Examiner finds discloses the claimed charging information)
at the same time or within the same message. App. Br. 4, 8. Therefore,
Appellants assert Hassan fails to disclose the claimed data usage report,
comprising the identifier, first charging information, and second charging
information. App. Br. 8.
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)).
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“Where the printed matter is not functionally related to the substrate,
the printed matter will not distinguish the invention from the prior art in
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 charging information content (i.e., first charging
information collected by the first base station for the call session and second
charging information collected by the second base station for the call
session) of the data usage report does not change the recited methods of
independent claims 1, 7, and 15. The charging information content of the
data usage report is not functionally related to the generation of the data
usage report or the transmission of such a report. Further, the charging
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information content is not used in the claim—it is merely data sent from the
first base station to a network charging system. Accordingly, the charging
information content of the data usage report 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 comprising:
transmitting an identifier over an interface between a first
base station and a second base station in response to initiation of
a handover of a call session between the first and second base
stations, wherein the first and second base stations operate
according to different radio access technologies; and
transmitting, from the first base station to a network
charging system, a data usage report including the identifier,
[and non-functional descriptive material].
Contrary to Appellants’ assertions that the Examiner has
adopted an overly broad interpretation of claim 1 (see Reply Br. 2–3),
the claim construction applied by the Examiner is consistent with our
claim interpretation. See Ans. 2–3 (construing claim 1 as “a method
wherein first and second base stations operate according to different
radio access technologies, and includes two transmitting steps:
transmitting an identifier over an interface . . . in response to initiation
of a handover; and transmitting a data usage report.”); see also Ans. 4
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(determining that the details of the data usage report are not relied
upon by any step of the method and are considered to be non-
functional descriptive limitations).
Hassan is generally directed to avoiding overload (i.e., congestion) of
a base station “by offering users the option to communicate using a spectrum
outside of the spectrum allocated for cellular communication.” Hassan,
Abstract. Thus, upon detection of a trigger condition, such as an overloaded
base station, the frequency spectrum used by the base station to
communicate with selected user devices is altered. Hassan, col. 1, ll. 60–66.
Hassan describes the assigned frequency spectrum as configured to offer 3G
cellular communication services and the alternate frequency spectrum as
white space within a frequency spectrum allocated for digital television
(DTV). Hassan, col. 5, ll. 1–19. Figure 7 of Hassan is illustrative and is
reproduced below:

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Figure 7 of Hassan is a block diagram of a base station in the disclosed
communication system. Hassan, col. 2, ll. 55–56. As shown, the base
station (720) includes a 3G transceiver (724) and a DTV transceiver (726).
Hassan, col. 12, l. 59–col. 13, l. 24. Hassan describes “[a]s a specific
example, DTV transceiver 726 may be configured for communicating using
a WiFi or WiMAX standard.” Hassan, col. 13, ll. 31–33.
Additionally, Hassan describes that “[h]andover of mobile devices
from a base station to an adjacent base station is known in the art.” Hassan,
col. 9, ll. 52–53. Figure 4 is illustrative and is reproduced below:

Figure 4 of Hassan illustrates handover and additional information
exchanged between a first base station (120A) and a second base station
(120B). Hassan, col. 9, ll. 56–59, col. 10, ll. 23–24. In addition to handover
information (410) and spectrum type (412), Hassan discloses the exchange
of bandwidth usage information (414) “such that each base station may
determine whether cellular communications system 100 in the aggregate is
operating above a congestion threshold. Hassan, col. 10, ll. 4–12.
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Moreover, in the example flowchart illustrated in Figure 5 of Hassan,
Hassan describes a handover scenario (e.g., when a trigger condition exists
due to a congestion threshold being determined) wherein a user device is
handed over from a first base station operating according to a first radio
access technology (3G) to a second base station operating according to a
second radio access technology (DTV). Hassan, col. 10, l. 33–col. 11, l. 43,
Fig. 5.
Regarding Hassan, the Examiner finds Hassan discloses transmitting
spectrum type information (i.e., the claimed identifier) over an interface
between a first and second base station in response to initiation of a
handover of a call session between the first and second base stations.
See Final Act. 4 (citing Hassan, col. 9, ll. 44–64, Fig. 4). In addition, the
Examiner finds Hassan discloses transmitting from the first base station to a
network charging system (for which the Examiner finds Hassan’s base
stations (120A, 120B) read on the claimed network charging system as they
record billing and usage information) a data usage report including the
identifier (i.e., spectrum type information). Final Act. 4–5 (citing Hassan,
col. 10, ll. 4–22, col. 11, l. 44–col. 12, l. 5, Figs. 4, 7); Ans. 4–5.
As described above, the Examiner’s findings are supported by a
preponderance of the evidence. Thus, we agree that Hassan discloses, inter
alia, transmitting an identifier over an interface between a first base station
and a second base station in response to initiation of a handover of a call
session between the first and second base stations, and transmitting a data
usage report including the identifier and additional information, as recited in
claim 1. See, e.g., Hassan, col. 9:60–col. 10, l. 32, Fig. 4.
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In addition, we do not find Appellants’ arguments persuasive of
Examiner error because, at least, they rely on a data usage report to include
specific information (charging information for the first and second base
stations), which we have concluded to be non-functional descriptive
material.3
Appellants also assert “the base stations disclosed in Hassan do not
operate according to different radio access technologies.” App. Br. 10;
Reply Br. 3. Instead, Appellants argue Hassan describes that the base
stations operate according to the same combination of radio access
technologies—i.e., 3G and DTV radio access technologies. Reply Br. 3
(citing Hassan, col. 12, l. 59–col. 13, l. 24).
We disagree. As shown in Figure 5 of Hassan (and the accompanying
disclosure), Hassan describes a handover scenario (i.e., an admission request
by a mobile device) in which a trigger condition (i.e., congestion threshold)
is met and the mobile device accepts service over an alternate frequency
spectrum (e.g., DTV). Hassan, col. 10, l. 33–col. 11, l. 43, Fig. 5 (510, 514,
520, 522, 530, 532). Thus, Hassan describes a mobile device being handed
over from a first base station operating according to a first radio access
technology (i.e., Hassan’s assigned frequency spectrum (3G)) to a second

3 In addition, to the extent Appellants are arguing (see App. Br. 5) claim 1
requires a base station to aggregate bandwidth usage information and
transmit the aggregated bandwidth information back to the other base
station, or network charging system, we disagree. Claim 1 is silent
regarding the aggregation of bandwidth information or the transmission of
aggregated bandwidth information. Cf. claim 6. As such, Appellants’
arguments are not persuasive of error at least because they are not
commensurate in scope with the claim language. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be
relied upon for patentability).
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base station operating according to a second radio access technology
(i.e., Hassan’s alternate frequency spectrum (DTV)). Moreover, merely that
Hassan’s base stations are capable of operation in multiple radio access
technologies is not precluded by Appellants’ claim language. Rather, during
the scenario described by Hassan, the base stations operate according to
different radio access technologies, as claimed.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 1. Regarding independent claims 7 and 15, Appellants advance
similar arguments to those presented with respect to independent claim 1.
See App. Br. 7–11. For similar reasons as those discussed with respect to
claim 1, we do not find Appellants’ arguments persuasive of Examiner error.
Accordingly, we sustain the Examiner’s rejection of independent claims 7
and 15. Additionally, we sustain the Examiner’s rejection of claims 2–5, 8–
13, and 16–20, which depend directly or indirectly therefrom and were not
argued separately. See App. Br. 11; see also 37 C.F.R. § 41.37(c)(1)(iv)
(2017).

b. Claims 6 and 14
Claim 6 depends from claim 1 and recites “aggregating, at the first
base station, the first and second charging information before providing the
data usage report including the identifier and the aggregated charging
information to the network charging system.” Claim 14 depends from claim
7 and recites a commensurate limitation.
Similar to an argument presented with respect to claim 1 regarding the
content of the data usage report, Appellants assert “as discussed above
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[(referring to previously made arguments)] . . . . Hassan does not disclose
‘providing [a] data usage report including the identifier and the aggregated
charging information.’” App. Br. 11.
For similar reasons discussed above, and as presently recited in the
claims, we conclude that the content of the data usage report is non-
functional descriptive material. Thus, we do not find Appellants’ arguments
persuasive of Examiner error. Accordingly, we sustain the Examiner’s
rejection of claims 6 and 14.

DECISION
We affirm the Examiner’s decision rejecting claims 1–20 under
35 U.S.C. § 102(a)(1).
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.
§ 41.50(f).

AFFIRMED