Nokia Technologies Oy

Patent Trials and Appeals BoardMay 4, 2021

2019006228 (P.T.A.B. May. 4, 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. 15/498,950 04/27/2017 Guillaume Decarreau 800.2518.U1(US) 1824 10948 7590 05/04/2021 Harrington & Smith, Attorneys At Law, LLC 4 Research Drive, Suite 202 Shelton, CT 06484 EXAMINER SEFCHECK, GREGORY B ART UNIT PAPER NUMBER 2477 NOTIFICATION DATE DELIVERY MODE 05/04/2021 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 GUILLAUME DECARREAU, SHEYAM LAL DHOMEJA, AMAANAT ALI, and BINDHYA VASHINI TIWARI Appeal 2019-006228 Application 15/498,950 Technology Center 2400 Before JOHN A. JEFFERY, MARC S. HOFF, and ELENI MANTIS MERCADER, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–12 and 14–21. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 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 Technologies Oy. Appeal Br. 1. Appeal 2019-006228 Application 15/498,950 2 CLAIMED SUBJECT MATTER The claims are directed to an optimized cell update for multi connectivity. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: when a new cell of a second radio interface is selected according to cell reselection parameters provided in a system information block, sending a message, by a user equipment, to inform a network of cell update via a connection on a first radio interface; wherein the user equipment is radio resource control connected, wherein the user equipment is connected to a first cell in the first radio interface and is connected to a second cell in the second radio interface, and wherein the first radio interface is different from the second radio interface, where: the first radio interface comprises a first radio access technology and the second radio interface comprises a different radio access technology, or the first radio interface comprises a subdivision of the first radio access technology and the second radio interface comprises a different subdivision of the first radio access technology. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Yi US 2015/0289144 A1 Oct. 8, 2015 Smith US 2016/0373935 A1 Dec. 22, 2016 Baldemair US 9,584,204 B2 Feb. 28, 2017 Lee US 9,900,793 B2 Feb. 20, 2018 Appeal 2019-006228 Application 15/498,950 3 REJECTIONS Claims 1–5, 7–12, 14–18, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Lee in view of Baldemair. Final Act. 3. Claims 6 and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Lee and Baldemair in view of Smith. Final Act. 6. Claim 21 is rejected under 35 U.S.C. § 103 as being unpatentable over Lee and Baldemair in view of Yi. Final Act. 7. Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1–5, 7–12, 14–18, 20 103 Lee, Baldemair 6, 19 103 Lee, Baldemair, Smith 21 103 Lee, Baldemair, Yi OPINION Except where indicated, we adopt the Examiner’s findings in the Answer and Final Office Action and we add the following primarily for emphasis. We note that if Appellant failed to present arguments on a particular rejection, we decline to review unilaterally those uncontested aspects of the rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential); Hyatt v. Dudas, 551 F.3d 1307, 1313–14 (Fed. Cir. 2008) (the Board may treat arguments Appellant failed to make for a given ground of rejection as waived). 1. Is There Sufficient Motivation to Combine Lee and Baldemair? Appellant argues that the Examiner’s proposed motivation of “improving throughput and spectral efficiency” does not explain why a person of ordinary skill in the art would combine a mention of the availability of specific frequency bands and use of different discovery Appeal 2019-006228 Application 15/498,950 4 signals to detect a wideband carrier. Appeal Br. 10. Also, Appellant argues that [u]sing different discovery signals to discover a carrier may improve efficiency in Baldemair et al., but there is no reason to expect a similar efficiency improvement to result from combination with the teachings of Lee et al., i.e., as disclosed at Col. 2, lines 44-49, a method for user equipment based secondary cell addition and release in a dual connectivity scenario. Appeal Br. 10. We do not agree. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner finds that Baldemair teaches “discovery of both cmW and mmW regions of allocable spectrum.” Final Act. 3 (citing col. 4, ll. 42– 55). The Examiner also finds that the motivation to combine Baldemair’s teachings with Lee is “improving throughput and spectral efficiency for next generation mobile system.” Final Act. 3. In other words, Lee teaches user equipment connected to two cells. See id. Lee does not explicitly teach what interface is used by each of the two cells. See id. Baldemair teaches or suggests that today’s cellular systems largely use frequency bands below 3GHz but that next generation mobile systems may use the cm-Wave region (3-30GHz) and the mm-Wave region (30-300GHz). See col. 4, ll. 42–56. That is, one of the cells taught in Lee could use cm-Wave 3-30GHz and the other cell taught in Lee could use mm-Wave 30-300GHz (e.g. different subdivisions of a radio access technology). The motivation to combine Appeal 2019-006228 Application 15/498,950 5 articulated by the Examiner is that using additional frequency ranges may improve throughput by allowing for less congestion on already used frequency ranges and may allow for certain devices that are well suited to the mm-Wave and cm-Wave characteristics (e.g. propagation, range, latency) to use these frequency ranges and thus leave other frequency ranges available to other devices (e.g. spectrally efficient). See Final Act. 3. Appellant further argues that there is insufficient motivation to incorporate discovery signals used for wideband carrier detection, as taught in Baldemair, into the invention of Lee. Appeal Br. 10-11. The Examiner did not rely on these portions of Baldemair regarding discovery signals used for wideband carrier detection. That is, Appellant is attempting to bodily incorporate all the features of Baldemair into Lee. See Keller, 642 F.2d at 425. Accordingly, we agree with the Examiner’s conclusion that Baldemair teaches or suggests that the next generation wireless communication systems may be used wherein one of the cells of Lee uses cm-Wave 3-30GHz and the other cell of Lee uses mm-Wave 30-300GHz for the reasons explained supra with respect to the motivation to combine. 2. Does the Combined Teachings of Lee and Baldemair Render Claim 1 Obvious? Appellant argues that “[a] person of ordinary skill in the art could only be motivated to use mmW or cmW for both the first and second radio interfaces, given the scenario disclosed in Lee et al.” Appeal Br. 13. Appellant also argues that “there is not, in either reference, a motivation to combine different subdivisions of a radio access technology with a method for secondary cell addition in dual connectivity; there is no reason to expect Appeal 2019-006228 Application 15/498,950 6 an improvement in the process of secondary cell addition by using different subdivisions of a radio access technology.” Reply Br. 3 (underlining omitted). We do not agree with Appellant’s argument. The Examiner finds, and we agree, that Lee teaches the use of first and second interfaces for connecting different types of base stations such as the macro and “low power” small cells, whereas Baldemair describes mmW and cmW as demonstrating the most promising regions of spectrum for use in mobile applications that allows for low data rate/low power modes of operation in different types of small cells. Ans. 10. In other words, depending on the application and desirability of certain characteristics of the mmW and cmW frequency bands, one of ordinary skill in the art would be motivated to combine the teachings of Lee with those of Baldemair to achieve optimal use of a limited wireless spectrum. 3. Is Claim 1 Obvious in Light of the Prior Art and Has a Prima Facie Case of Obviousness Been Established? Appellant argues that “Examiner has not provided evidence (as required by MPEP 2142) which, as a whole, shows that the legal determination to be proved (i.e., the reference teachings establish a prima facie case of obviousness) is more probable than not.” Appeal Br. 14. We do not agree. The Examiner must make the factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C. § 103 leads to three basic factual inquiries: the scope and content of the prior art, the differences between the prior art and the claims at issue, and the level of ordinary skill in the art). Appeal 2019-006228 Application 15/498,950 7 As outlined above, the Examiner’s conclusion of obviousness is based upon the scope and teachings of Lee and Baldemair; the difference between the claim and Lee and the proposed modification of Lee using the teachings of Baldemair; and an explanation as to why the claimed invention would have been obvious to one of ordinary skill in the art at the time the invention was made by stating motivation of “improving throughput and spectral efficiency” thereby resolving the level of one or ordinary skill in the art. We find that the Examiner has met the burden of establishing a proper obviousness conclusion by providing the necessary factual determinations as outlined in Graham v. Deere and Appellant has not provided a convincing rebuttal of the Examiner’s findings. Furthermore, Baldemair describes mmW and cmW as demonstrating the “most promising” regions of spectrum for use in mobile applications that allows for low data rate/low power modes of operation in different types of small cells. See Ans. 10. Thus, Baldemair teaches or suggests a finite number of identified, predictable solutions and the “person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Furthermore, “a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. 4. Does Lee Teach All of the Limitations of Claim 4? Appellant argues, with regard to claim 4 and the teachings of Lee, that the SCell transmits a SCell addition response to the PCell at S170 that is not a response comparable to the update confirmation recited in claim 4 because that message is not received by the UE from the network. Appeal Br. 15. Appellant also argues that Lee does not teach or suggest that a cell update Appeal 2019-006228 Application 15/498,950 8 confirmation would be directly communicated using an interface between the SCell and the UE. Reply Br. 5. We do not agree with Appellant’s argument. At the outset, we note that the claim does not recite the term “directly” and thus indirect communication between the SCell and the UE is not precluded. The Examiner finds that Lee discloses the claim 4 limitations of “receiving cell update confirmation from the network using the second radio interface.” Final Act. 5 (citing Fig. 9, parts S170-S180). Figure 9 shows in S170 a “SCell Addition Response” message sent from the SCell to the PCell and as a result in S180 the PCell sends an “RRC Connection Reconfiguration” (SCell reconfiguration or SCell addition confirm message) to the UE. See Lee’s Fig. 9. Therefore, the message is received by the UE. In other words, the claim language does not require that the UE receive the message directly from the network. Accordingly, we affirm the Examiner’s rejection of claims 1 and 4 and also the Examiner’s rejection of claims 2, 3, 5–12 and 14–21 not argued separately. CONCLUSION The Examiner’s rejections are AFFIRMED. The Examiner’s decision to reject claims 1–12 and 14–21 is AFFIRMED. Appeal 2019-006228 Application 15/498,950 9 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 7–12, 14–18, 20 103 Lee, Baldemair 1–5, 7–12, 14–18, 20 6, 19 103 Lee, Baldemair, Smith 6, 19 21 103 Lee, Baldemair, Yi 21 Overall Outcome 1–12, 14–21 RESPONSE 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. § 1.136(a)(1)(iv). AFFIRMED