QUALCOMM Incorporated

Patent Trials and Appeals Board

May 28, 2021

2020001373 (P.T.A.B. May. 28, 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.
13/939,869 07/11/2013 Gavin Bernard Horn QLXX.P0117US/1000357517 7148
15757 7590 05/28/2021
Qualcomm /Norton Rose Fulbright US LLP
2200 Ross Avenue
Suite 3600
Dallas, TX 75201-7932
EXAMINER
NGUYEN, CHUONG M
ART UNIT PAPER NUMBER
2411
NOTIFICATION DATE DELIVERY MODE
05/28/2021 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):
doipdocket@nortonrosefulbright.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte GAVIN BERNARD HORN, PETER GAAL, and
DURGA PRASAD MALLADI
_______________

Appeal 2020-001373
Application 13/939,869
Technology Center 2400
_______________

Before ROBERT E. NAPPI, ST. JOHN COURTENAY, III, and
MICHAEL T. CYGAN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 4–34, and 37–67. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). According to Appellant, QUALCOMM
Incorporated is the real party in interest. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The disclosed and claimed invention relates generally to using user
equipment (UE) environmental status information to make decisions
regarding mobility handling and data offloading. Spec., Abstr. The UE
generates and transmits to a network entity a control message having the
environmental status information, and the network entity manages a
connection of the UE based at least in part on the environmental status
information. Id. Claim 1 is reproduced below.
1. A method of wireless communication, comprising:
determining, by a user equipment (UE), UE environmental
status information based on input from at least one non-radio
frequency (RF) sensor located in the UE;
generating a control message comprising the UE environmental
status information, wherein the control message comprises a radio
resource control (RRC) message, the control message comprises a
non-access stratum (NAS) message encapsulated in the RRC message,
and the NAS message comprises a location area update directed to a
network entity of the wireless communication network;
transmitting the control message to a base station in
communication with the UE via a connection with the UE, wherein
the UE environmental status information relates to managing the
connection with the UE by an associated wireless communication
network, wherein the transmitting is performed in response to one or
more of:
expiration of a timer associated with the UE
environmental status information,
connection establishment to register by the UE to the
base station, and
detecting a change in the UE environmental status
information; and
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receiving, in response to the control message, an instruction for
managing the connection, wherein the instruction is based at least in
part on the UE environmental status information.

EXAMINER’S REJECTIONS2
The Examiner rejects claims 1, 4–7, 9–20, 23–34, 37–40, 42–53, 56–
63, and 67 under 35 U.S.C. § 103(a) as unpatentable over the combined
teachings of Velev et al. (US 2014/0016614 A1, pub. Jan. 16, 2014)
(“Velev”), Aghili et al. (US 2013/0100895 A1, pub. Apr. 25, 2013)
(“Aghili”), Fox et al. (US 2012/0129517 A1, pub. May 24, 2012) (“Fox”),
and Yamagishi et al. (US 2004/0002349 A1, pub. Jan. 1, 2004)
(“Yamagishi”). Final Act. 9–53.
The Examiner rejects claims 8 and 41 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Velev, Aghili, Fox, Yamagishi,
and Alameh et al. (US 2011/0273378 A1, pub. Nov. 10, 2011) (“Alameh”).
Final Act. 53–56.
The Examiner rejects claims 21, 22, 54, 55, 64, 65 and 66 under 35
U.S.C. § 103(a) as unpatentable over the combined teachings of Velev,
Aghili, Fox, Yamagishi, and Han et al. (US 2012/0122515 A1, May 17,
2012) (“Han”). Final Act. 56–63.

2 Throughout this Decision, we refer to the Appeal Brief filed July 15, 2019
(“Appeal Br.”); Final Office Action mailed March 20, 2019 (“Final Act.”);
the Examiner’s Answer mailed September 23, 2019 (“Ans.”); and the
Specification filed July 11, 2013 (“Spec.”).
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ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief, Reply
Brief, the Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in some of the
Examiner’s rejections of the claims under 35 U.S.C. § 103.

Rejection of Independent Claim 1
Appellant argues, with respect to claim 1, that the Examiner’s
rejection is in error as the combination of Velev, Aghili, Fox, and Yamagishi
does not teach a control message including UE environmental status
information, which message comprises a non-access stratum (NAS) message
encapsulated in a radio resource control (RRC message), and the NAS
message comprises a location area update. Appeal Br. 13–17. Appellant
contends that the Examiner has not set forth a prima facie obviousness
rejection of the claim, because the Examiner cites to different embodiments
or unconnected elements of the references, and “the asserted elements are
performing different tasks, have different purposes, etc.” Id. at 12–13, 17–
19. Further, Appellant argues, the Examiner “merely includes a blanket
statement” that “a person of skill in the art would combine each of the
references because each of the elements of the references are performing the
same function as the element did in its corresponding reference,” rather than
describing the particular modification being made and providing a
motivation for the modification. Id. at 13, 18–19. Appellant additionally
asserts that Fox and Velev teach sensor data, which is not UE environmental
status information under a broadest reasonable interpretation of the term. Id.
at 16, 19–20.
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We are not persuaded of error in the Examiner’s rejection. Claim 1
recites generating a control message comprising UE environmental status
information and a NAS message encapsulated in a RRC message, the NAS
message comprising a location area update directed to a network entity of a
wireless communication network. The Examiner has found, and we concur,
that Velev teaches generating a control message comprising environmental
information or data and a NAS message encapsulated in a RRC message.
Final Act. 9–10 (citing Velev ¶¶ 9, 11, 176–82, 488, 664); Ans. 59–61. In
particular, Velev teaches that control signaling between UE and Radio
Access occurs using RRC messages. Velev ¶ 9. The RRC messages carry
NAS messages between the UE and an access node. Id. ¶ 11. Furthermore,
Velev teaches using the NAS messages to carry environmental information
or data. Id. ¶¶ 176–82, 488.
The Examiner has relied upon Fox for teaching UE environmental
status information in the form of sensor data. Final Act. 11–12 (citing Fox
¶¶ 97–100, 493); Ans. 59. We are unpersuaded by Appellant’s argument that
such sensor data does not fall under a broadest reasonable interpretation of
“UE environmental status information.” Appeal Br. 19. Notably, paragraphs
66, 68, and 87 of the Specification disclose example, but not limiting,
embodiments. See Spec. ¶ 66 (“[s]uch [environmental status information]
may also include” (emphasis added)); id. ¶ 68 (“[i]n one example of
operation”); id. ¶¶ 85, 87 (“[A]ccording to one aspect of the present
disclosure [,] . . . the UE environmental status information for UE 915
indicat[es] ‘in vehicle[ ]’”). Appellant’s additional citations to claims 5, 7,
and 11–14 for support (Appeal Br. 19) is similarly unavailing, because those
dependent claims merely provide further limitations—not present in claim
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1—narrowing those claims to the example embodiments disclosed in the
Specification. Accordingly, we find the Examiner’s interpretation of “UE
environmental status information” as reasonable.
As to the claimed NAS message comprising a location area update,
the Examiner has found that Aghili teaches a NAS message comprising a
location area update. Ans. 61–62 (citing Aghili, Fig. 6A, ¶¶ 71, 149, Claim
20); Final Act. 11. Appellant’s argument, that Aghili teaches the location
area update is in a second separate message from the RRC message (i.e., UE
environmental status information and a location area update in two separate
messages), is unavailing. Appeal Br. 15, 18, citing Aghili ¶¶ 13, 16–22, 71,
149. Claim 1 does not preclude there being more than one message. Claim 1
recites “a control message,” which does not require only a single message.
“[A]n indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of
‘one or more’ in open-ended claims containing the transitional phrase
‘comprising.’” See KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351,
1356 (Fed. Cir. 2000). Here, the indefinite article “a” is recited in an open-
ended claim containing the transitional phrase “comprising,” and therefore,
the term “a control message” (emphasis added) means “one or more control
messages.” See Claim 1. As such, a broadest reasonable interpretation of “a
control message,” consistent with the Specification, encompasses one or
more control messages comprising the UE environmental status information
and a RRC message encapsulating a NAS message that comprises a location
area update. Therefore, Appellant has not persuaded us the Examiner erred
in finding Aghili teaches a NAS message comprising a location area update.
Appellant’s remaining arguments directed to alleged shortcomings of
Velev, Aghili, Fox, and Yamagishi individually are unpersuasive because
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they contend the prior art do not teach features the Examiner has not relied
upon them for teaching. Appeal Br. 13–17. As discussed above, Appellant
has not demonstrated error in the Examiner’s findings. Accordingly, we are
unpersuaded that the Examiner erred in finding the combined teachings of
Velev, Aghili, Fox, and Yamagishi teaches the claimed generating a control
message comprising UE environmental status information, wherein the
control message comprises a RRC message and a NAS message
encapsulated in the RRC message, and the NAS message comprises a
location area update directed to a network entity of the wireless
communication network.
We are unpersuaded by Appellant’s arguments that the Examiner has
not provided rationale as to why a skilled artisan at the time of the invention
would have combined the teachings of Velev, Aghili, Fox, and Yamagishi.
Appeal Br. 12–13, 17–19. Notably, the Examiner has determined:
it would have been obvious to one of ordinary skill in the art to
modify Velev's short message transmission and handover
procedures, as modified by Aghili's method for providing a
proximity service in a wireless communication system and
Fox's mobile device equipped with non-RF sensors, to include
Yamagishi's mobile telephone with environment sensor and
timers, in order to effectively manage the connection between
UE and network based on UE environmental status information
. . . . [T]he claimed invention is merely a combination of old
elements, and in the combination each element merely would
have performed the same function as it did separately, and one
of ordinary skill in the art would have recognized that the
results of the combination were predictable.

Final Act. 16 (emphasis added). The Examiner has explained that the above
statement “is an accumulative rationale of all the previous references with
the last reference.” Ans. 59. Appellant’s arguments that the references
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themselves do not provide a rationale to modify (id. at 18–19 (“Aghili does
not provide a motivation for the modification”; “Fox cannot provide a
motivation for modifying”)), are unpersuasive to show Examiner error,
because they amount to arguments that the Examiner has not satisfied the
teaching, suggestion, or motivation (TSM) test. In KSR, the Supreme Court
rejected the rigid application of the TSM test in favor of a more expansive
and flexible approach to the determination of obviousness. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 415 (2007). The determination of obviousness
may be supported with an “articulated reasoning with [a] rational
underpinning to support the legal conclusion of obviousness.” Id. The
Examiner has concluded, consistent with KSR, that“[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results” (id. at 416), and the claimed
invention recites merely “the predictable use of prior art elements according
to their established functions.” Id. at 417. Appellant has not addressed this
conclusion by the Examiner except to assert that “the references are doing
different things for different reasons,” and “the asserted elements are
performing different tasks, have different purposes, etc.” Appeal Br. 17–18.
We are not persuaded of error by these assertions, as Appellant has not
provided analysis or citations to support these assertions.
For the foregoing reasons, Appellant’s arguments have not persuaded
us of error in the Examiner’s rejection of claim 1, nor independent claims
18, 30–34, 51, and 63, which each recite similar features. Accordingly, we
sustain the Examiner’s obviousness rejection of claims 1, 4–6, 8, 11, 12, 15–
22, 25–34, 37–55, and 58–63 depending therefrom.

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Rejections of Remainder of the Dependent Claims
Appellant presents several arguments directed to the remainder of the
dependent claims, which present us with four issues.
– The first issue is presented with respect to claim 7 and is based
upon the assertion the Examiner erred in finding the combined
references teach the claimed estimated duration for the mobility
level of the UE. Appeal Br. 21–22.
– The second issue is presented with respect to claim 9 and is based
upon the assertion the Examiner erred in finding the combined
references teach transmitting in response to detecting a change in
the UE environmental status information. Id. at 22–23.
– The third issue is presented with respect to claims 13, 23, and 56
and is based upon the assertion the Examiner erred in finding the
combined references teach the UE environmental status
information comprising four claimed statuses. Id. at 23.
– The fourth issue is presented with respect to claims 64–66 and is
based upon the assertion the Examiner erred in finding the
combined references teach all of the limitations in those claims and
has provided little or no rationale to combine their teachings. Id. at
25.

Rejection of dependent claim 7
Appellant presents multiple arguments with respect to the Examiner’s
rejection of claim 7, based upon the combined teachings of Velev, Aghili,
Fox, and Yamagishi. Appeal Br. 21–22. The dispositive issue presented is
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whether Velev teaches an estimated duration for the mobility level of the
UE. Id.
Appellant’s argument has persuaded us of error in the Examiner’s
rejection of claim 7. The Examiner has relied upon Velev paragraphs 15 and
278 for teaching the estimated duration. Ans. 63 (citing Velev ¶¶ 15, 278);
Final Act. 18. The Examiner has explained that, “[t]he mobility management
entity is responsible to set up radio resources for the UE, and uses a timer to
keep track (i.e.[,] ‘estimated duration’) when the UE is in [a] certain status.”
Ans. 63. However, Velev’s timer is for postponing release of radio resources
if they will be used by the UE within a certain period of time, rather than for
estimating a duration of time. Velev ¶¶ 277–78. Therefore, we disagree with
the Examiner’s finding that Velev teaches an estimation duration for the
mobility level of the UE.
For the foregoing reasons, Appellant has persuaded of error in the
Examiner’s rejection of dependent claim 7. Accordingly, we do not sustain
the Examiner’s rejection of claim 7.

Rejection of dependent claims 9, 10, and 67
With respect to the second issue, Appellant asserts that neither Velev
nor Fox teaches that “the transmitting is performed in response to detecting
the change in the UE environmental status information,” as recited in claim
9. Appeal Br. 22–23.
These arguments have persuaded us of error in the Examiner’s
rejection. The Examiner has found that Velev teaches the transmitting as
claimed “via the use of various non-RF sensors as discussed in claim 1.”
Ans. 63 (citing Velev ¶¶ 176–82, 448, 664); Final Act. 18 Alternatively, the
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Examiner has relied upon teachings in Fox. Final Act. 19 (citing Fox ¶ 567,
Fig. 22); Ans. 64. However, the cited portions of Velev and Fox are silent as
to transmitting being performed in response to detecting a change. For
example, as Appellant argues, the cited portion of Fox relates to prioritizing
specific sensors and transmission of data therefrom. Appeal Br. 23; Fox
¶ 567, Fig. 22. Notably, the transmitting discussed in Fox occurs regardless
of which of a day light camera or night time camera, i.e., sensor, captures
images. Fox. ¶ 567. Fox teaches that selection of a type of camera, rather
than transmitting, is performed in response to detecting a change in the UE
environmental status information. Id. Therefore, we disagree with the
Examiner’s finding that Velev or Fox teaches “the transmitting [being]
performed in response to detecting the change in the UE environmental
status information,” as required by claim 9.
For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s rejection of dependent claim 9. Accordingly, we do not sustain
the Examiner’s rejection of claim 9 and claims 10 and 67 depending
therefrom.

Rejection of dependent claims 13, 14, 23, 24, 56, and 57
With respect to the third issue, we note at the outset that claim 13
recites similar, but not identical, limitations as claims 23 and 56. We treat
these claims together because the substance of Appellant’s arguments
regarding claim 13 are the same as those regarding claims 23 and 56. See
Appeal Br. 23. Appellant contends that Fox does not teach that the UE
“stores a list of UE environmental statuses” or generates a UE environmental
status based on sensor data. Id.
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Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection because they are not commensurate with the scope of
the claims. In particular, the claims do not require either a list of UE
environmental statuses, or that the UE stores statuses of the environmental
status information. See Claims 13, 23, 56. Appellant’s second argument,
namely that Fox does not teach generating UE environmental status
information based on sensor data (Appeal Br. 23), is similar to Appellant’s
argument that a broadest reasonable construction of “UE environmental
status information” excludes sensor data. For the same reasons as discussed
above, Appellant’s argument is unpersuasive. See supra, at 5–6. The
Examiner has found, and we concur, that Fox teaches the claimed in transit
status, in vehicle status, outdoors status, and indoors status. Final Act. 22–
23, 34–35, 48–49 (citing Fox ¶¶ 519, 484, 496). Appellant does not contest
the Examiner’s findings in this regard. Appeal Br. 23.
For the foregoing reasons, we are unpersuaded of error in the
Examiner’s rejections of claims 13, 23, and 56. Accordingly, we sustain the
Examiner’s obviousness rejections of claims 13, 23, and 56 and claims 14,
24, and 57 depending therefrom.

Rejection of dependent claims 64–66
With respect to the fourth issue, Appellant argues that “[t]he entire
claim language of claims 64–66 has not been addressed in the rejection[,]
and little or no motivation is given for the combination.” Appeal Br. 25.
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection. Appellant’s general contention that the Examiner has
not addressed the language of the claims is not persuasive of error. These
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conclusory arguments, that the additional claims are patent eligible are
considered to be nothing more than a general allegation of patentability and
are not considered separate patentability arguments. See In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”). Therefore,
Appellant’s arguments are not persuasive of error. Moreover, we note that
claims 64, 65, and 66 each recite alternative limitations, only one of which
need be met. See Claims 64–66 (“establishing . . .; activating . . .; controlling
. . .; or combinations thereof” (emphasis added)). The Examiner has found,
and Appellant has not contested, that the combination of Velev, Aghili, Fox,
and Yamagishi teaches that “the associated wireless communication network
is configured to respond to the UE environment status information by: . . .
activating booster cells for Wi-Fi offloading” (Final Act. 59–60 (citing Fox
¶ 57)); or, alternatively, “by: . . . controlling simultaneous communication
with the macro layer and the small cell layer using multi-flow techniques.”
Id. at 60 (citing Fox, Figs. 1, 2). Thus, we are not persuaded by Appellant’s
argument that the Examiner has not found all of the claim limitations.
Furthermore, we are unpersuaded by Appellant’s contention that the
Examiner has provided “little or no motivation” to combine the teachings of
Velev, Aghili, Fox, Yamagishi, and Han. Appeal Br. 25. The Examiner has
determined that a skilled artisan would have combined the teachings of Han
with those of Velev, Aghili, Fox, and Yamagishi, because “the claimed
invention is merely a combination of old elements, and in the combination
each element merely would have performed the same function as it did
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separately, and one of ordinary skill in the art would have recognized that
the results of the combination were predictable.” Final Act. 57–58.
Appellant has not explained why the Examiner’s proffered rationale is
allegedly insufficient. Without more, Appellant’s argument is unpersuasive
to show error. Therefore, we are not persuaded that the Examiner has not
found all of the limitations of claims 64–66 in the references, and that the
Examiner’s rationale to modify is inadequate.
For the foregoing reasons, we are unpersuaded of error in the
Examiner’s rejections of claims 64–66. Accordingly, we sustain the
Examiner’s rejections of claims 64–66.
CONCLUSION
In summary:
Claim
Rejected
35
U.S.C. §
Reference(s)/
Basis
Affirmed Reversed
1, 4–7, 9–
20, 23–
34, 37–
40, 42–
53, 56–
63, 67
103(a) Velev, Aghili,
Fox,
Yamagishi
1, 4–6, 11–
20, 23–34,
37–40, 42–
53, 56–63

7, 9, 10, 67
8, 41 103(a) Velev, Aghili,
Fox,
Yamagishi,
Alameh
8, 41
21, 22,
54, 55,
64, 65, 66
103(a) Velev, Aghili,
Fox,
Yamagishi,
Han
21, 22, 54,
55, 64, 65, 66

Overall
Outcome
1, 4–6, 8, 11–
34, 37–66

7, 9, 10, 67
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R.
§ 41.50(f).
AFFIRMED IN PART