NOKIA SOLUTIONS AND NETWORKS OY

Patent Trials and Appeals BoardAug 19, 2020

15093253 - (D) (P.T.A.B. Aug. 19, 2020)

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. 15/093,253 04/07/2016 Thomas STARK 089229.01217 2580 11051 7590 08/19/2020 SQUIRE PB (Nokia) Nokia Technologies Oy ATTN: IP Department 2550 M Street, NW Washington, DC 20037 EXAMINER WYCHE, MYRON ART UNIT PAPER NUMBER 2644 NOTIFICATION DATE DELIVERY MODE 08/19/2020 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): IP-Squire@SquirePB.com sonia.whitney@squirepb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS STARK, PATRYCJA BUKOWIECKA, and BIRGER HAETTY Appeal 2019-001306 Application 15/093,253 Technology Center 2600 Before JENNIFER S. BISK, BETH Z. SHAW, and SCOTT E. BAIN, Administrative Patent Judges. BISK, Administrative Patent Judge. DECISION ON APPEAL1 1 Throughout this Decision we have considered the Specification filed April 7, 2016 (“Spec.”), the Final Rejection mailed December 28, 2017 (“Final Act.”), the Appeal Brief filed May 29, 2018 (“Appeal Br.”), the Examiner’s Answer mailed September 26, 2018 (“Ans.”), and the Reply Brief filed November 26, 2018 (“Reply Br.”). Appeal 2019-001306 Application 15/093,253 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–20. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to an enhanced frequency selection. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method implemented in a processor of an access node, comprising: identifying a set of possible frequencies for measurement by a user equipment in a mobile communication network; selecting a subset of frequencies from the possible frequencies based on parameters configured by a mobile network operator; and causing a communication of the selection to the user equipment in a list. Appeal Br. 20 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Warrior U.S. 2005/0216227 A1 Sept. 29, 2005 Kazmi U.S. 2016/0269919 A1 Sept. 15, 2016 2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Nokia Solutions and Networks Oy of Espoo, Finland. Appeal Br. 2. Appeal 2019-001306 Application 15/093,253 3 REJECTIONS Claims 1–4, 7, 9–12, 15, and 17–20 are rejected under 35 U.S.C. § 102(a)(2) as being anticipated by Kazmi. Final Act. 2–7. Claims 5, 6, 13, and 14 are rejected under 35 U.S.C. § 103 as being unpatentable over Kazmi. Final Act. 8. Claims 8 and 16 are rejected under 35 U.S.C. § 103 as being unpatentable over Kazmi and Warrior. Final Act. 8. OPINION 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). To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). We have considered all of Appellant’s arguments and any evidence presented. We highlight and address specific findings and arguments for emphasis in our analysis below. Rejection of Claims 1–4, 7, 9–12, 15, and 17–20 under 35 U.S.C. § 103 The Examiner rejects claims 1–4, 7, 9–12, 15, and 17–20 as anticipated by Kazmi. Final Act. 2–7. Claims 1–4, 7, 9–12, and 15 Appellant argues that Kazmi does not disclose “selecting a subset of frequencies from the possible frequencies based on parameters configured by a mobile network operator” (“the selecting frequencies limitation”) as Appeal 2019-001306 Application 15/093,253 4 recited in claims 1 and 9.3 Appeal Br. 7–10. According to Appellant, Kazmi discloses “the first and second sets of carrier frequencies are determined based on pre-defined measurement requirements,” but that this disclosure “is not the same as” the selecting frequencies limitation. Id. at 10 (citing Kazmi Fig. 5, block 530, ¶ 114). Reply Br. 4 (emphasis added). Appellant adds that “Kazmi does not disclose or suggest that the total number of carriers per RAT [mi], is selected from the total number of carriers across all RATs [M].” Reply Br. 4. The Examiner responds that Kazmi discloses determining mi to be the total number of carriers per radio access technology (“RAT”) and determining M to be the total number of carriers across all RATs. Ans. 3 (citing Kazmi ¶ 57). According to the Examiner, “‘mi’ is a subset of frequencies from possible frequencies’ ‘M.’” Id. And because Kazmi discloses “perform[ing] radio measurements on cells belonging to a plurality of carrier frequencies,” (Kazmi ¶ 57) “it is obvious to one of ordinary skill in the art that one needs to know both the [mi] and the ‘parameters of the carrier frequencies to be measured.” Id. at 3. The Examiner adds that Kazmi’s disclosure of “a network node may, prior to configuring a UE to perform radio measurements on cells belonging to a plurality of carrier frequencies” (Kazmi ¶ 57) “clearly suggests the claimed: ‘mobile network operator’ in the form of ‘a network node’ and the concept of: ‘based on parameters configured’ that is suggested by ‘configuring a UE to perform radio measurements.” Id. 3 Claim 9 recites “select a subset of frequencies from the possible frequencies based on parameters configured by a mobile network operator.” Appeal 2019-001306 Application 15/093,253 5 We agree with Appellant that the Examiner does not sufficiently explain, nor is it clear from the cited portions of Kazmi, if or how the determination of mi is “based on parameters configured by a mobile network operator.”4 And the Examiner’s Answer does not persuade us otherwise. First, the Examiner appears to concede that Kazmi does not explicitly disclose parameters of the carrier frequencies configured by a mobile network operator. Instead, the Examiner explains that Kazmi’s disclosure would make it obvious to a person of ordinary skill in the art that such parameters would be known. Ans. 3. However, anticipation requires that the four corners of the document “describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Spansion, Inc. v. Int’l Trade Comm’n, 629 F.3d 1331, 1356 (Fed. Cir. 2010) (internal quotation marks omitted) (emphasis added). Inherency can be established when “prior art necessarily functions in accordance with, or includes, the claimed limitations.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Here, the Examiner does not even assert that parameters of the carrier frequencies configured by a mobile network operator are inherently disclosed by Kazmi, much less support such an assertion with explanation or evidence. Second, even if Kazmi inherently discloses parameters of the carrier frequencies configured by a mobile network operator, the Examiner does not explain how the selection of mi is based on these parameters. To the 4 We note that we review solely the rejection presented by the Examiner and do not speculate as to any other potential rejection, including whether the selecting frequencies limitation may be obvious over Kazmi, as this issue is not before us for review. Appeal 2019-001306 Application 15/093,253 6 contrary, Kazmi states that the value of mi “generally depend[s] upon the current deployment scenario, e.g., the carriers on which different RATs operate.” Kazmi ¶ 57. Moreover, as pointed out by Appellant (Reply Br. 5– 6), Kazmi discloses that configuring the UE is completed after the frequencies have been selected, and, therefore, does not support a finding that the frequencies are selected prior to or based on parameters used for such configuring. Accordingly, on this record, the Examiner has not sufficiently shown that Kazmi discloses the selecting frequencies limitation. We, therefore, do not sustain the Examiner’s rejection of independent claims 1 and 9 and of claims 2–4, 7, 10–12, and 15, which depend from claims 1 and 9. Claims 17–20 Appellant also argues that Kazmi does not disclose “group available frequencies for measurement by a user equipment in a mobile communication network into a plurality of groups” (“the group frequencies limitation”) and “configure parameters to an access node for selecting frequencies for measurement based on groups” (“the configure parameters limitation”) as recited in claim 17 for reasons similar to those discussed above with respect to the selecting frequencies limitation of claim 1. Appeal Br. 14–15; Reply Br. 7–8. Similar to the rejection of independent claims 1 and 9, the Examiner relies on paragraph 57 of Kazmi as disclosing the group frequencies and configure parameters limitations of claim 17. Final Act. 16–17. The Examiner asserts that Kazmi discloses the group frequencies limitation because it “clearly suggests that there are a plurality of ‘i’ different RATs, each of which has a ‘group of available frequencies’ where ‘mi is the ‘total number of carriers for RATi.’” Ans. 4. The Examiner further asserts that Appeal 2019-001306 Application 15/093,253 7 Kazmi discloses the configure parameters limitation based on the disclosure that “a network node may, prior to configuring a UE to perform radio measurements on cells belonging to a plurality of carrier frequencies,” which “clearly suggests the claimed ‘configuring parameters to an access node.’” Id. For reasons similar to those discussed above with respect to independent claims 1 and 9, we agree with Appellant that the Examiner does not sufficiently explain, nor is it clear from the cited portions of Kazmi, if or how parameters are configured for selecting frequencies for measurement based on groups. Again, the Examiner relies on Kazmi’s disclosure that “prior to configuring a UE to perform radio measurements,” as “suggest[ing]” that parameters are configured. Ans. 4. However, as explained above, even if inherently disclosing parameters as recited, this UE configuration is done after the frequencies are selected and, thus, does not support a finding that they are configured “for selecting frequencies” as recited by claim 17. Accordingly, we are persuaded of error in the Examiner’s rejection of claim 17 as anticipated by Kazmi. Accordingly, we do not sustain the rejection of claims 17–20 as anticipated by Kazmi. Claims 5, 6, 8, 13, 14, and 16 The Examiner rejects dependent claims 5, 6, 13, and 14, under 35 U.S.C. §103, as obvious over Kazmi and dependent claims 8 and 16, under 35 U.S.C. §103, as obvious over Kazmi and Warrior. Final Act. 8. However, because the Examiner relies on the anticipation rejection for the limitations inherited from claims 1 and 9, the rejection of these claims suffers from the same problems as those discussed above. See Final Act. 8 Appeal 2019-001306 Application 15/093,253 8 (relying on the anticipation analysis for the inherited limitations of claims 5, 6, 8, 13, 14, and 16). Accordingly, we also do not sustain the rejection of claims 5, 6, 8, 13, 14, and 16. CONCLUSION We reverse the Examiner’s rejections. DECISION SUMMARY Claim(s) 35 U.S.C. § Basis/Reference(s) Affirmed Reversed 1–4, 7, 9– 12, 15, 17– 20 102(a)(2) Kazmi 1–4, 7, 9– 12, 15, 17– 20 5, 6, 13, 14 103 Kazmi 5, 6, 13, 14 8, 16 103 Kazmi, Warrior 8, 16 Overall Outcome 1–20 REVERSED