Nokia Solutions and Networks Oy

Patent Trials and Appeals Board

Oct 1, 2021

2019006601 (P.T.A.B. Oct. 1, 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.
15/513,073 03/21/2017 Ling Yu 800.2469.U1(US) 4884
29683 7590 10/01/2021
Harrington & Smith, Attorneys At Law, LLC
4 RESEARCH DRIVE, Suite 202
SHELTON, CT 06484-6212
EXAMINER
SOE, KYAW Z
ART UNIT PAPER NUMBER
2412
NOTIFICATION DATE DELIVERY MODE
10/01/2021 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 LING YU, VINH VAN PHAN, and
JUHA KORHONEN
Appeal 2019-006601
Application 15/513,073
Technology Center 2400
Before JOHN A. JEFFERY, LARRY J. HUME, and
JASON J. CHUNG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 27–29, 31, 33, 36, 37, and 39–46.
Appellant has canceled claims 1–26, and the Examiner objects to claims 30,
32, 34, 35, and 38, which are otherwise indicated as being drawn to
allowable subject matter. See Final Act. 10. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 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. Appeal Br. 1.
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STATEMENT OF THE CASE2
The claims are directed to “DEVICE DISCOVERY IN A DEVICE
TO DEVICE COMMUNICATION USING TWO TYPES OF
DISCOVERY.” See Spec. (Title). In particular, Appellant’s disclosed
embodiments and claimed invention “relate[] to communications in a
wireless communication system and more particularly to wireless device to
device communications.” Spec. 1:5–6.
Exemplary Claim
Claim 27, reproduced below, is illustrative of the subject matter on
Appeal (emphases and formatting added to dispositive prior-art limitations):
27. A method for device discovery, comprising:
determining, by a communication device configured for
access to a communication system, a type of device discovery to
be used by the communication device for proximity services
involving at least one other device,
wherein the available types of device discovery comprise
at least a first type of device discovery where additional
resource information is received from the communication
system for the communication device and
a second type of device discovery where no additional
resource information is received by the communication device;
and

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
May 8, 2019); Reply Brief (“Reply Br.,” filed Sept. 5, 2019); Examiner’s
Answer (“Ans.,” mailed Aug. 20, 2019); Final Office Action (“Final Act.,”
mailed Dec. 31, 2018); and the original Specification (“Spec.,” filed
Mar. 21, 2017) (claiming benefit of PCT/EP2014/070297, filed
Sept. 24, 2014).
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signalling information based on the determined type of
device discovery.
Appeal Br. 21 (Claims App.).
REFERENCES
The Examiner relies upon the following prior art as evidence:
Name Reference Date
Pragada et al. (“Pragada”) US 2013/0288668 A1 Oct. 31, 2013
Kuusilinna et al. (“Kuusilinna”) US 2015/0201317 A1 July 16, 2015
3GPP TSG-RAN WG2, “Data flow for D2D intra-cell and inter-cell
discovery,” Apr. 4, 2014. (hereinafter “3GG”).
REJECTIONS3
R1. Claims 27, 31, 33, 36, and 39–45 stand rejected under 35
U.S.C. § 103 as being unpatentable over the combination of 3GPP and
Kuusilinna. Final Act. 3–7.
R2. Claims 28, 29, 37, and 46 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of 3GPP, Kuusilinna, and
Pragada. Final Act. 7–10.
ISSUES AND ANALYSIS
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellant with respect
to claim 27 for the specific reasons discussed below. We highlight and

3 The Examiner’s indefiniteness rejection of claim 27 was withdrawn in the
Answer. Ans. 15.
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address specific findings and arguments regarding claim 27 and, by
extension, claims 36 and 45, for emphasis as follows.
1. § 103 Rejection R1 of Claims 27, 31, 33, 36, and 39–45
Issue 1
Appellant argues (Appeal Br. 9–12; Reply Br. 4–7) the Examiner’s
rejection of claim 27 under 35 U.S.C. § 103 as being obvious over the
combination of 3GPP and Kuusilinna is in error. These contentions present
us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] method for device discovery” that includes the step of
“determining, by a communication device configured for access to a
communication system, a type of device discovery to be used by the
communication device,” wherein, inter alia,
the available types of device discovery comprise
[(a)] at least a first type of device discovery where
additional resource information is received from the
communication system for the communication device and
[(b)] a second type of device discovery where no
additional resource information is received by the
communication device,
as recited in claim 27?
Principles of Law
The test for obviousness is what the combined teachings of the prior
art would have suggested to the hypothetical person of ordinary skill in the
art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
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Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007).
Analysis
The Examiner finds 3GPP teaches two types of device-to-device
(D2D) discovery, i.e., Type 1 and Type 2 D2D discovery between UEs and
eNB, relying upon 3GPP Figures 1 through 3 showing providing eNB
broadcast resource pool information to UE, and 3GPP § 2.2.1, and finds this
disclosure teaches or suggests dispositive limitations (b) and (a),
respectively, above. See Final Act. 3–4. Specifically, the Examiner finds:
In the 3GPP reference, the type 1 and Type 2 discovery
resources are obtained by eNB via OAM [3GPP. Section 2.2.1
and 2.2.2]. In addition, the receiving UE monitored/ determined
the resource pool and detect the discovery reception for both
Type 1 and Type 2 [See 3GPP section 2.2.2]. Therefore,
although the information of Type 1 and Type 2 are from server/
eNB, the monitoring UE is the device that determined/
monitored the type of discovery and detect the signal.
Ans. 4 (emphases omitted).
Appellant argues the Examiner erred in finding the prior art teaches or
suggests “determining, by a communication device . . . a type of device
discovery to be used by the communication device for proximity services,”
as recited in claim 27. Appeal Br. 10 (emphasis added). Specifically,
Appellant argues that in 3GPP, the monitoring user equipment “performs the
intra-cell and inter-cell D2D discovery procedures at the OAM [Operations,
Administration and Maintenance],” (Appeal Br. 11 (emphasis omitted)) and
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in contrast, claim 27 requires the determination of the discovery technique is
“performed by a communication device.” Appeal Br. 12. Appellant further
argues, in Kuusilinna “any additional information provided is by use of the
first type of discovery device” rather than “at least one other device,” as
recited in claim 27. We are persuaded by Appellant’s arguments.
We are persuaded the Examiner erred because of the unclear mapping
of the recited “communication device configured for access to a
communication system” to the disclosure of 3GPP.
Figure 2 of 3GPP illustrating a first type of D2D discovery is
replicated below.

Figure 2 illustrates Type 1 intra-cell D2D discovery procedure. See
3GPP § 2.2.1 “Intra-cell 020 discovery procedure.”
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Figure 3 of 3GPP illustrating a second type of D2D discovery is
replicated below.

Figure 3 illustrates Type 2 intra-cell D2D discovery procedure. See
id.
By way of explanation, Appellant argues that the “determining” step
of claim 27 is not carried out by the recited “communication device”
because:
Cell-specific Type 1 and/or Type 2 discovery resource pools are
obtained by eNB via OAM (Operations, Administration and
Maintenance), and the corresponding D2D resource pool
information is broadcast by eNB to the monitoring UE(s)
served by the cell of the eNB. The inter-cell D2D discovery
procedure indicates that each monitoring UE served by the cell
of eNBl receives D2D resource pool information of its serving
cell and “additional” D2D resource pool information of
neighboring cells, whereas the two intra-cell D2D discovery
procedures indicate that each monitoring UE served by the cell
of eNB receives D2D resource pool information of its serving
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cell and no “additional” D2D resource pool information of
neighboring cells.
The method as recited in claim 27 is different from the
procedures of the 3GPP reference because in the method as
recited in claim 27 the determination of the type of discovery
device to be used is made at the communication device itself.
This is markedly different from the 3GPP reference where the
monitoring UE performs the intra-cell and inter-cell D2D
discovery procedures at the OAM. Because determining the
type of device discovery, in the method of claim [27], is made
at the communication device, one of ordinary skill in the art
would not be motivated to look to a monitoring UE that
performs the intra-cell and inter-cell D2D discovery procedures
at the OAM, as in 3GPP. . . .
Appeal Br. 10–11.
We find that 3GPP is deficient because the Examiner does not clearly
identify which communication device in 3GPP is relied upon for teaching
the recited “communication device,” and further does not clearly explain
how the discovery procedures of 3GPP relate to the claimed types of
discovery procedures carried out at the recited communication device. For
example, the Examiner confusingly states:
Figs. 1–3 teaches eNB broadcast resource pool information to
UE] and a second type of device discovery where no additional
resource information is received by the communication device
[3GPP: Fig. 2, 3; section 2.2.1 teaches of Type 1 and Type 2
Discovery where first type of discovery includes the
transmission of broadcast resource pool information while the
second type of discovery includes in addition to the broadcast
resource pool information, some discovery resource is
allocated. The first type of discovery of D3 corresponds to the
second type of resource discovery of claim 1. The second type
of discovery of D3 corresponds to the first type of resource
discovery of claim 1], and signaling information [3GPP: Fig. 2
step 3a].
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Final Act. 4 (underlining added).4
Based upon the unclear mapping between the claims and the reference
disclosure regarding which communication device of 3GPP makes the
“determination” and Appellant’s arguments, we are unable on this record to
determine that 3GPP teaches or suggests the dispositive “determining” step
of claim 27.
Based upon the findings above, on this record, we are persuaded of at
least one error in the Examiner’s reliance on the cited prior art combination
to teach or suggest the dispositive limitations of claim 27 such that we find
error in the Examiner’s resulting legal conclusion of obviousness.
Therefore, we do not sustain the Examiner’s obviousness rejection of
independent claim 27, and independent claims 36 and 45, which recite the
dispositive limitations in commensurate form. For the same reasons, we do
not sustain the Examiner’s Rejection R1 of dependent claims 31, 33, and
39–44, which stand therewith.
2. § 103 Rejection R2 of Claims 28, 29, 37, and 46
In light of our reversal of the rejections of independent claims 27, 36,
and 45, supra, we also reverse obviousness Rejection R2 under § 103 of
claims 28, 29, 37, and 46, which variously and ultimately depend from
claims 27, 36, and 45. On this record, the Examiner has not shown how the
additionally cited Pragada reference overcomes the aforementioned

4 It is also unclear the meaning of the term “D3” mentioned by the
Examiner.
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deficiencies with the combination of 3GPP and Kuusilinna, as discussed
above regarding claim 27.
CONCLUSIONS
We reverse the Examiner’s rejections. More specifically, Appellant
has persuasively argued that the Examiner erred with respect to obviousness
Rejections R1 and R2 of claims 27–29, 31, 33, 36, 37, and 39–46 under 35
U.S.C. § 103 over the cited prior art combinations of record, and we do not
sustain the rejections.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/
Basis Affirmed Reversed
27, 31, 33, 36,
39–45 103
3GPP,
Kuusilinna
27, 31, 33, 36,
39–45
28, 29, 37, 46 103
3GPP,
Kuusilinna,
Pragada
28, 29, 37, 46
Overall
Outcome
27–29, 31, 33,
36, 37, 39–46
REVERSED