Richard Mackenzie et al.

Patent Trials and Appeals Board

Dec 10, 2019

15118967 - (D) (P.T.A.B. Dec. 10, 2019)

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.
15/118,967 08/15/2016 Richard MACKENZIE RYM-36-2595 2809
23117 7590 12/10/2019
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
TRAN, MONG-THUY THI
ART UNIT PAPER NUMBER
2645
NOTIFICATION DATE DELIVERY MODE
12/10/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD MACKENZIE and MICHAEL FITCH
____________

Appeal 2018-0090291
Application 15/118,967
Technology Center 2600
____________

Before JEAN R. HOMERE, JAMES B. ARPIN, and
ADAM J. PYONIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant2 appeals under 35 U.S.C. § 134(a), the rejections of claims
1–14, all of the pending claims. Final Act. 2. We have jurisdiction under

1 In this Decision, we refer to Appellant’s Response After Final Action
(“Resp.,” mailed March 18, 2018), Appeal Brief (“App. Br.,” filed June 18,
2018), and Reply Brief (“Reply Br.,” filed September 19, 2018); the Final
Office Action (“Final Act.,” mailed January 17, 2018), the Advisory Action
(“Adv. Act.,” mailed April 4, 2018), and the Examiner’s Answer (“Ans.,”
mailed August 3, 2018); and the originally-filed Specification (“Spec.,” filed
August 15, 2016). Rather than repeat the Examiner’s findings and
determinations and Appellant’s contentions in their entirety, we refer to
these documents.
2 “Appellant” here refers to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party-in-interest as British Telecommunications
public limited company. App. Br. 3.
Appeal 2018-009029
Application 15/118,967

2

35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellant’s claimed subject matter relates to Physical Cell ID (PCI)
allocation in mobile telecommunication networks. Spec., 1:4–5. In
particular, the Specification explains, “[s]mall cells can reside in a coverage
area of a larger macro cell, and must each include a [PCI] to identify itself to
other cells and User Equipment, UE, on the mobile network.” Id. at 1:15–
17. The Specification’s Figure 4 is reproduced below.

Figure 4 depicts a schematic diagram for the macrocell and small cell system
showing a plurality of bands. Id. at 5:16–17. The Specification explains
that, as shown in Figure 4, first femtocell 7a is positioned within first band
Appeal 2018-009029
Application 15/118,967

3

9a (i.e., the signal strength for first femtocell 7a is within the signal strength
range of first band 9a); second femtocell 7b similarly is positioned within a
second band 9b; third femtocell 7c similarly is positioned within third band
9c; and fourth, fifth, and sixth femtocells 7d, 7e, and 7f similarly are
positioned within fourth band 9d. Id. at 7:32–8:5. Macrocell eNodeB 3
selects a group for each femtocell 7a–7f and then allocates a PCI to each
femtocell 7a–7f. Id. at 8:7–21.
As noted above, claims 1–14 are pending. Claims 1 and 7 are
independent. App. Br. 14 (claim 1), 15 (claim 7) (Claims App’x).
Claims 2–6 and 13 depend directly or indirectly from claim 1, and claims 8–
12 and 14 depend directly from claim 7. Id. at 14–16.
Claim 7 recites “[a] device for allocating a Physical Cell ID, PCI, to a
cell, wherein the cell is one of a plurality of cells disposed within a coverage
area of a second cell’s base station, the device comprising” a receiver and a
processor that perform methods recited in claim 1. Id. at 15. Appellant does
not contest the rejection of independent claim 7 separately from the rejection
of claim 1 and relies on its contentions with respect to independent claim 1
to overcome the rejections to the dependent claims. App. Br. 12. Therefore,
we focus our analysis on claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
Claim 1, reproduced below with disputed limitations emphasized, is
illustrative.
1. A method of allocating a Physical Cell ID, PCI, to a cell,
wherein the cell is one of a plurality of cells disposed within a
coverage area of a second cell's base station, the method
comprising the steps of:
receiving signal strength data for a plurality of cells,
wherein the signal strength data relates to the strength of a
Appeal 2018-009029
Application 15/118,967

4

signal from the second cell’s base station at each cell of the
plurality of cells;
defining a plurality of bands in a coverage area of the
second cell’s base station based on the received signal strength
data, wherein each band has a predetermined signal strength
range; and
allocating a PCI to a cell of the plurality of cells based on
the strength of the signal from the second cell’s base station at
the cell and its corresponding band of the plurality of bands.
Id. at 14 (emphasis added).
REFERENCES AND REJECTIONS
The Examiner relies upon the following references in rejecting the
pending claims:
Name3 Number Published Filed
So US 2011/0086652 A1 Apr. 14, 2011 Oct. 7, 2010
Henderson US 2013/0143541 A1 Jun. 6, 2013 Dec. 6, 2011
Sadeghi US 2013/0086173 A1 Mar. 27, 2014 Sep. 25, 2013
Li US 2014/0369285 A1 Dec. 18, 2014 Apr. 29, 2014
Claims 1–3, 6–9, and 12 stand rejected as unpatentable under
35 U.S.C. § 103 over the combined teachings of Li and So or over Li alone.
Final Act. 4–6; Adv. Act. 2; see Ans. 11 (clarifying that these rejections are
in the alternative). Claims 4, 5, 10, and 11 stand rejected as unpatentable
under 35 U.S.C. § 103 over the combined teachings of Li, So, and Sadeghi.

3 All reference citations are to the first named inventor only.
Appeal 2018-009029
Application 15/118,967

5

Final Act. 6–7. Claims 13 and 14 stand rejected as unpatentable under 35
U.S.C. § 103 over the combined teachings of Li and Henderson. Id. at 8–10.
We determine that the reversal or affirmance of the rejection of the
independent claim 1 is dispositive; except for our ultimate decisions and
conclusion, we do not discuss the merits of the obviousness rejections of
claims 2–14 further herein. We review the appealed rejection to
independent claim 1 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). Unless otherwise
indicated, we adopt the Examiner’s findings in the Final Action and the
Answer as our own and add any additional findings of fact for emphasis.
We address the rejections of claim 1 below.
ANALYSIS
A. Obviousness of Claim 1 Over Li and So or Over Li Alone
In the Final Action, the Examiner finds that Li teaches the majority of
the limitations of claim 1. Final Act. 4–5. In particular, the Examiner finds
that Li discloses “receiving signal strength data for a plurality of cells.” Id.
at 4; see App. Br. 14 (Claims App’x). Specifically, Li discloses “[t]he
maximum distance D can be obtained by measuring the signal strength
within the cell and determining the boundary of the cell. To facilitate the
automatic configuration, the invention proposes to use existing cell distance
relation models to estimate the boundary of the cell.” Li ¶ 32; see id., Fig. 3.
Appeal 2018-009029
Application 15/118,967

6

Li’s Figure 4 is reproduced below.

Figure 4 depicts an inner boundary circle and an outer boundary circle for a
cell. Id. ¶ 17. Li explains:
FIG. 4 illustratively shows an inner boundary circle and an
outer boundary circle for a cell. The radius of the inner circle is
denoted by R and the radius of the outer circle is denoted by R'.
Signal strength within the inner boundary is greater than a first
threshold and signal strength within the outer boundary is
greater than a second threshold which is lower than the first
threshold. . . . The inner boundary can be considered as the cell
coverage where the signal strength is high enough for the UE to
communicate with the antenna.
Id. ¶ 42 (emphasis added). Li further explains that “[t]he signal strength can
be represented by e.g. by Received Signal Code Power (RSCP).” Id. ¶ 39.
Thus, Li teaches the recited bands that may contain other cells. See Li,
Fig. 5A. A person of ordinary skill in the art would understand that RSCP
can indicate power levels of respective signals associated with the
macrocells and received by femtocells. See So ¶¶ 45, 46; see also Okajima
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of
specific findings on the level of skill in the art does not give rise to
reversible error ‘where the prior art itself reflects an appropriate level and a
Appeal 2018-009029
Application 15/118,967

7

need for testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v.
Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985).
In the Final Action, the Examiner acknowledges, “Li does not disclose
wherein the received signal strength data relates to the strength of a signal
from a second cell’s base station at each cell of the plurality of cells.” Final
Act. 5. The Examiner finds, however, that So teaches this limitation. Id.;
Ans. 9–11.
The Examiner finds So discloses
the received signal strength data relates to the strength of a signal
from a second cell's base station at each cell of the plurality of
cells (see So, Fig. 3, [0044] - [0047] for the eNB estimates the
received signal strengths of the cells, collects the Reference
Signal Received Power (RSRP) information of the cell using
each PCID).
Final Act. 5. In particular, So discloses:
The eNB acquires the PCID information causing a
collision through the measurement report of a user terminal, or
estimates the received signal strengths of the cells according to
the respective PCIDs to determine a cell likely to cause
interference and to acquire the PCID information of the cell. . . .
Thereafter, the eNB collects the received signal strength
value of the cell 300/310 using each PCID included in the
candidate PCID list 327. In other words, the eNB collects the
Reference Signal Received Power (RSRP) information of the
cell using each PCID (302, 312). The RSRP represents the
received power of a cell-specific downlink reference signal
transmitted in every downlink subframe for downlink channel
estimation. Because the sequence of the reference signal is
determined by the PCID of each cell, the RSRP of the cell using
the acquired PCID may be known by acquiring the PCID used
by each cell. Thus, the PCID of each cell may be acquired
through a synchronization signal broadcast by the cell. An
example of this information collection method is eNB scanning.
Appeal 2018-009029
Application 15/118,967

8

So ¶¶ 44–45; see id. ¶¶ 3 (“Node-B (eNB, also referred to as a base station
(BS))”), 53 (“That is, the BS may use the measurement report of a user
terminal or may estimate the received signal strength of the cell using each
PCID to determine an interference-causing cell, thereby acquiring collision-
causing PCID information.” (emphasis added)).
The Examiner notes the claim language does not require any
particular method of acquiring “signal strength data” and interprets the
phrase “relates to” broadly to describe almost any relationship between
signal strength data and the strength of a signal from the second cell’s base
station at each cell of the plurality of cells, including measuring or
estimating signal cell strength. Adv. Act. 2; Ans. 6–7. Thus, because So
teaches that eNB, i.e., the base station, receives measurements of or
estimates the signal strength at surrounding cells, the Examiner finds that So
teaches “wherein the received signal strength data relates to the strength of a
signal from the second cell's base station at each cell of the plurality of
cells.” Final Act. 5; Adv. Act. 2; Ans. 7, 9, 10–11.
Li and So teach the goal of avoiding signal “collision” and
“confusion,” and So teaches a method of avoiding such conflicts. See Li ¶ 3;
So ¶ 44; cf. Spec., 1:23–27. Consequently, the Examiner concludes that a
person of ordinary skill in the art would have had a reason to combine their
teachings to achieve the recited method. Final Act. 5 (citing So ¶ 46); Adv.
Act. 2.
Appellant proposes a narrower interpretation for the phrase “relates
to” and contends, because So relies on estimates of signal strength, So does
not teach or suggest, “the signal strength data relates to the strength of a
signal from the second cell’s base station at each cell of the plurality of
Appeal 2018-009029
Application 15/118,967

9

cells.” App. Br. 9–12. For the reasons given below, we disagree with
Appellant’s interpretation of the disputed phrase and with Appellant’s
understanding of So’s teachings.
First, Appellant contends that the phrase “relates to” “[p]ositively
characterizes the signal strength data such that it must either indicate (or
make derivable) the strength of a signal from the second cell’s base station at
each cell of the plurality of cells.” App. Br. 10 (emphasis added). We note,
however, that the Specification uses neither the word “indicate” nor the
word “derivable” in association with the relationship between cell “signal
strengths” and “signal strength data.”
Although the Specification discloses with respect to Figure 3 that:
As a first step, the macrocell eNodeB 3 receives signal strength
data from a plurality of femtocells within the macrocell coverage
area (step S1). Thus, each femtocell measures the strength of a
signal from the macrocell eNodeB 3, and reports the measured
signal strength to the macrocell eNodeB 3. The macrocell
eNodeB 3 may then collate all these measurements to 20 produce
the signal strength data.
Spec., 6:15–20 (emphasis added). This is only an embodiment of the recited
methods, and this description is not sufficient to limit the scope of the claims
to the single embodiment. See Glaxo Wellcome, Inc. v. Andrx Pharm., Inc.,
344 F.3d 1226, 1233 (Fed. Cir. 2003) (“It is established that ‘as a general
rule claims of a patent are not limited to the preferred embodiment . . . or to
the examples listed within the patent specification.’” (citations omitted)).
Thus, although the claim language encompasses measuring cell signal
strength, it is not limited to measuring. We agree with the Examiner that the
recited phrase “relates to” is broad enough to encompass estimating. As
Appeal 2018-009029
Application 15/118,967

10

noted above, we also are persuaded that So teaches both measuring and
estimating signal strengths. See, e.g., So ¶¶ 3, 44, 45, 53.
Second, Appellant contends So’s cells do not map to the cells recited
in the disputed limitation. App. Br. 10–12. In particular, referring to So’s
Figure 1, Appellant contends that So’s “New Cell 320” maps to a cell that is
one of the plurality of cells; “Cell B 310” maps to “the second cell”; and
“Cell A 300,” “New Cell 320,” and “Cell 340” map to others of the plurality
of cells. Resp. 3–4; App. Br. 10–11. Appellant contends, however, that this
mapping is inconsistent with the language of the claim. In particular,
Appellant contends:
While the signal strength data relates to the strength of the
signal from Cell B 310 to New Cell 320, there is no disclosure
that the signal strength data relates to the strength of the signal
from Cell B 310 to Cell A 300, to the strength of the signal from
Cell B 310 to Cell 330, or to the strength of the signal from Cell
B 310 to Cell 340. Thus, there is no disclosure of the claimed
step, “the signal strength data relates to the strength of a signal
from the second cell’s base station at each cell of the plurality
of cells” (emphasis added).
Resp. 4; see App. Br. 11. Thus, Appellant asserts that, although So may
teach that Cell B 310 receives the signal strength from Cell B 310, So does
not teach that signal strength from Cell B 310 is received from each of the
other plurality of cells, i.e., Cell A 300 and Cell 340. Therefore, Appellant
contends that combining the teachings of Li and So would change
impermissibly the principle of operation of So. Resp. 4–5; App. Br. 11–12.
The Examiner disagrees and notes that So is not being bodily
incorporated into Li. Ans. 13. Li teaches receiving signal strength data
from the surrounding cells. Final Act 4 (citing Li ¶¶ 32, 52); Ans. 5 (citing
Li ¶¶ 32, 38, 39). So teaches that measured or estimated signal strengths
Appeal 2018-009029
Application 15/118,967

11

may be received at a base station from each of the surrounding cells. Final
Act. 5 (citing So ¶¶ 44–47, Fig. 3.). Moreover, So discloses:
Collecting the RSRP value for each candidate PCID
means acquiring the propagation environments between the new
cell and the cell using each candidate PCID. This information
may be used to suitably control the PCID reuse efficiency and
the interference. In general, the received signal strength is
inversely proportional to the path loss and decreases with an
increase in the distance. Therefore, using the PCID with a low
received signal strength reduces the interference.
So ¶ 46 (emphasis added). Thus, we agree with the Examiner that So
teaches that signal strength is obtained from each of the surrounding cells
and may be used to achieve the same goal as Li and, for that matter, the
claimed method.
The Examiner also finds that Li inherently teaches the limitations
supplied by So in the combined teachings of Li and So. Adv. Act. 2
(“However because Li did not explicitly call out the inherent feature the
Examiner applied So.”); Ans. 5–7; see PAR Pharm., Inc. v. TWI Pharm.,
Inc., 773 F.3d 1186, 1194–96 (Fed. Cir. 2014) (“We have recognized that
inherency may supply a missing claim limitation in an obviousness analysis.
. . . [However,] the limitation at issue necessarily must be present[ ] or the
natural result of the combination of elements explicitly disclosed by the prior
art.”). Nevertheless, because we find that the combined teachings of Li and
So teach or suggest the claimed method, we do not reach this alternative
basis for finding the claim’s obviousness, and we express no opinion on the
merits of the Examiner’s findings regarding the inherent teachings of Li.
Ans. 11. Thus, we sustain the Examiner’s rejection to claim 1 as rendered
obvious over the combined teachings of Li and So.
Appeal 2018-009029
Application 15/118,967

12

B. Obviousness of claims 2–14 Over Li and So, Alone or in Combination
with Sadeghi, or Over Li and Henderson4
Because Appellant does not contest the rejections of claims 2–14
separately from the rejection to claim 1, we also sustain the rejections to
those claims. App. Br. 12.
DECISIONS
1. The Examiner did not err in rejecting claims 1–3, 6–9, and 12 as
unpatentable under 35 U.S.C. § 103 over the combined teachings of Li
and So.
2. We do not reach whether the Examiner erred in rejecting claims 1–3,
6–9, and 12 as unpatentable under 35 U.S.C. § 103 over Li alone.
3. The Examiner did not err in rejecting claims 4, 5, 10, and 11 as
unpatentable under 35 U.S.C. § 103 over the combined teachings of
Li, So, and Sadeghi.
4. The Examiner did not err in rejecting claims 13 and 14 as
unpatentable under 35 U.S.C. § 103 over the combined teachings of Li
and Henderson.
5. Thus, on this record, claims 1–14 are unpatentable.

4 With respect to “new ground(s)” of rejection of claims 13 and 14, the
Examiner finds that Henderson teaches substantially the same limitations
supplied by So with respect to claims 1 and 7, respectively. Final Act. 9
(citing Henderson ¶¶ 12, 72, 77, 78, 83). Appellant does not challenge
separately and in detail the application of Henderson’s teachings to
claims 13 and 14, and, as noted above, we treat such arguments as waived.
See App. Br. 12 (“The above described deficiencies of the combination of Li
and So with respect to these base independent claims also apply to these
dependent claims. Sadeghi et al. and Henderson et al. each fails to resolve
these deficiencies.”).
Appeal 2018-009029
Application 15/118,967

13

CONCLUSION
We affirm the rejections of claims 1–14.
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–3, 6–9,
and 12
103 Li and So 1–3, 6–9,
and 12

4, 5, 10,
and 11
103 Li, So, and Sadeghi 4, 5, 10,
and 11

13 and 14 103 Li and Henderson 13 and 14
Overall
Outcome
1–14
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).

AFFIRMED