Richard Mackenzie et al.Download PDFPatent Trials and Appeals BoardDec 10, 201915118967 - (D) (P.T.A.B. Dec. 10, 2019) Copy Citation 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 Copy with citationCopy as parenthetical citation