Nokia Siemens Networks Oy

Patent Trials and Appeals Board

Jun 7, 2021

2019006705 (P.T.A.B. Jun. 7, 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.
14/115,884 11/06/2013 Chunli Wu 863.0877.U1(US) 1032
29683 7590 06/07/2021
Harrington & Smith, Attorneys At Law, LLC
4 RESEARCH DRIVE, Suite 202
SHELTON, CT 06484-6212
EXAMINER
THOMAS, WILFRED
ART UNIT PAPER NUMBER
2416
NOTIFICATION DATE DELIVERY MODE
06/07/2021 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):
USPTO@HSPATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHUNLI WU and BENOIST PIERRE SEBIRE
____________

Appeal 2019-006705
Application 14/115,884
Technology Center 2400
____________

Before CAROLYN D. THOMAS, JASON V. MORGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–24. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 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 Nokia
Solutions and Networks OY. Appeal Br. 5.
Appeal 2019-006705
Application 14/115,884

2
The present invention relates generally to timings of discontinuous
reception (DRX) for carrier aggregation in a communication system. See
Spec. 1:8–9.
Claim 1 is illustrative:
1. A method, for a device capable of communicating
with at least two different serving cells, comprising:
counting subframes of different time division
duplexing uplink-downlink configurations for at least two
different serving cells according to a same counting rule for a
common discontinuous reception operation to the at least two
different serving cells,
wherein the same counting rule counts a subframe
as a downlink sub-frame for the common discontinuous
reception operation if the subframe is configured as a downlink
subframe on any one of the different time division duplexing
uplink-downlink configurations for the at least two different
serving cells; and
operating at least one timer function for the
common discontinuous reception operation based on the
counting.

Appellant appeals the following rejections:
R1. Claims 1–8, 10–18, and 20–24 are rejected under 35 U.S.C.
§ 102(e) as being anticipated by Charbit (US 2014/0036742 A1, pub. Feb. 6,
2014). Final Act. 3–8.
R2. Claims 9 and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Charbit and Tseng (US 2012/0281600
A1, pub. Nov. 8, 2012). Final Act. 9.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Appeal 2019-006705
Application 14/115,884

3

ANALYSIS
Issue: Did the Examiner err in finding that Charbit discloses a
common discontinuous reception (DRX) operation, as set forth in each of
the independent claims?
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to the Appellant’s
arguments. We concur with Appellant’s conclusion that the Examiner erred
in finding that Charbit discloses a common discontinuous reception
operation to the at least two different serving cells, as set forth in
representative claim 1.
As identified by Appellant, in the claimed subject matter “at least two
different serving cells have a common DRX [operation]. In contrast,
Charbit discusses a subset of the DRX parameters are defined to be
common for both the primary and secondary cells.” Appeal Br. 17. As a
result, Appellant contends, and we agree, that “the current invention is
directed to a common DRX [operation] while Charbit only discusses DRX
parameters, where a subset of those parameters are common to a primary
and a secondary cell.” Id. at 17 (emphasis added).
Appellant’s Specification indicates that “[w]ith carrier aggregation
(CA), common DRX can be used such that same DRX configuration and
operation applies to all serving cells.” Spec. 10:2–3. Stated differently, a
common DRX is when the same DRX configuration and operation applies to
all serving cells. Thus, we interpret the claimed “a common discontinuous
reception operation” as a single/same DRX that includes the same
configuration/parameters.
Appeal 2019-006705
Application 14/115,884

4
Contrary to indicating that the same DRX configuration and operation
is used, Charbit merely discloses that “the mobile terminal of one
embodiment may configure the discontinuous reception so as to
appropriately respond to the overlapped subframes of the primary and
secondary cells” (Charbit ¶ 58), without expressly indicating that it is using
a common DRX.
Charbit further discloses:
In particular, a subset of the DRX parameters are defined to be
common for both the primary and secondary cells, while
another subset of the DRX parameters are defined to be unique
to the respective primary and secondary cells. In this regard,
the set of DRX parameters that are common or identical for the
primary and secondary cells may include the DRX cycle, the
on-duration timer, the DRX short cycle and the DRX short
cycle timer. . . . In this embodiment, the set of DRX parameters
that are specific and unique to individual ones of the primary
and secondary cells include the DRX inactivity timer and, in
one embodiment, the DRX re-transmission timer.
Charbit ¶ 69. In other words, Charbit expressly states that its DRX
operation merely includes a subset of common DRX parameters for the
different primary and secondary cells. However, we agree with Appellant
that “[a] DRX operation is uniquely determined in multidimensional space
by its corresponding entire set of DRX parameters, not just by a subset of the
DRX parameters.” Reply Br. 5. Stated differently, a DRX operation is not
the same if any one parameter is different/changed.
Because the Examiner has merely directed our attention to a subset of
common parameters, i.e., some common parameters (see Final Act. 3;
Ans. 3)—instead of an entire DRX operation that is common for a primary
and secondary cell, we disagree with the Examiner’s finding that Charbit
discloses a common discontinuous reception operation, as recited in each of
Appeal 2019-006705
Application 14/115,884

5
the independent claims. The Examiner also has not found that Tseng teach
this feature. Since we agree with at least one of the arguments advanced by
Appellant, we need not reach the merits of Appellant’s other arguments.
Accordingly, we will not sustain the Examiner’s anticipation or obviousness
rejection of claims 1–24.

CONCLUSION
The Examiner’s rejection of claims 1–8, 10–18, and 20–24 under
35 U.S.C. § 102(e) as being anticipated by Charbit is reversed.
The Examiner’s rejection of claims 9 and 19 under 35 U.S.C. § 103(a)
as being unpatentable over Charbit and Tseng is reversed.
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 10–18,
20–24
102(e) Charbit 1–8, 10–
18, 20–24
9, 19 103(a) Charbit, Tseng 9, 19
Overall
Outcome
1–24

REVERSED