Telefonaktiebolaget LM Ericsson (publ)

Patent Trials and Appeals BoardMay 25, 2021

2019006860 (P.T.A.B. May. 25, 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. 15/097,710 04/13/2016 Muhammad KAZMI 0110-356-CON-3/ P025409US5 5292 113648 7590 05/25/2021 Patent Portfolio Builders, PLLC 754 Warrenton Road Suite 113-314 Fredericksburg, VA 22406 EXAMINER SKRIPNIKOV, ALEX ART UNIT PAPER NUMBER 2416 NOTIFICATION DATE DELIVERY MODE 05/25/2021 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): Mailroom@ppblaw.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MUHAMMAD KAZMI, JINGYI LIAO, RONG HU, and STEFAN WAGER ____________________ Appeal 2019-006860 Application 15/097,710 Technology Center 2400 ____________________ MARC S. HOFF, JOHNNY A. KUMAR, and STEVEN M. AMUNDSON, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 2, and 10–12.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, TELEFONAKTIEBOLAGET L M ERISSON (PUBL) is the real party in interest. Appeal Br. 2. 2 Claims 3–9, 13–19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claim. Final Act. 8. Claim 20 is canceled. Appeal Br. 20. Appeal 2019-006860 Application 15/097,710 2 Appellant’s Invention Appellant’s invention relates to a method and arrangement for limiting the CQI reporting in a telecommunication system, and in particular to providing conditional CQI reporting in an enhanced CELL_FACH state. See Spec. ¶ 2.3 Illustrative Claims Claims 1 and 11, reproduced below, are representative of the subject matter on appeal. 1. A method for limiting Channel Quality Indicator (CQI) reporting from a User Equipment to a network node, comprising: [L1] selecting, [L2] by the User Equipment,[L3] between at least a first CQI reporting mode and a second CQI reporting mode; [L4] determining, by the User Equipment, that at least one CQI reporting trigger rule is satisfied, wherein the at least one CQI reporting trigger rule depends at least on whether the first or the second CQI reporting mode is selected; and transmitting, responsive to the determination that at least one CQI reporting trigger rules [sic] is satisfied, at least one CQI report to said network node by said User Equipment. 11. A method at a network node for limiting Channel Quality Indicator (CQI) reporting from a User Equipment to the network node, comprising: determining rules for triggering reporting of CQIs specified for the User Equipment; transmitting CQI specific information to the User Equipment, wherein the CQI specific information includes the rules for triggering reporting of CQIs 3 We refer to Appellant’s Published Specification, Application No. US 2016/0226604 A1 published on August 4, 2016. Appeal 2019-006860 Application 15/097,710 3 specified for the User Equipment, wherein the rules for triggering reporting of CQIs include at least one first rule applied in a first CQI reporting mode and at least one second rule applied in a second CQI reporting mode; [L5] determining updated CQI reporting trigger rules; and transmitting the updated CQI reporting trigger rules to the User Equipment. Appeal Br. 16–20 (Claims Appendix) (paragraphing and emphases added). REFERENCES AND REJECTIONS Claim 1 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Xu (US 2008/0232310 A1, published Sept. 25, 2008 (“Xu”)) and CQI Reporting with Regards to DRX Operation (R2-071394 3GPP TSG-RAN WG2 Meeting #57 bis, March 2007 (“R2-071394”)). Claim 2 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Xu, R2-071394, and Seo et al. (US 2003/0123396 A1, published July 3, 2003 (“Seo”)). Claim 10 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Xu, R2-071394, and Marinier et al. (US 2007/0047502 A1, published Mar. 1, 2007 (“Marinier”)). Claim 11 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Jersenius et al. (US 2010/0202306 A1, published Aug. 12, 2010 (“Jersenius”)) and Marinier. Claim 12 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Jersenius, Marinier, and Seo. Appeal 2019-006860 Application 15/097,710 4 Appellant’s Contentions4 1. Appellant contends that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a), because the combination of Xu and R2-071394 fails to establish a sufficient case of obviousness with respect to the required limitations L1, L2, L3, and L4 of independent claim 1. Appeal Br. 7. 2. Appellant contends that the Examiner erred in rejecting claim 11 under 35 U.S.C. § 103(a), because the combination of Jersenius and Marinier fails to establish a sufficient case of obviousness with respect to the required limitation L5 of independent claim 11. Appeal Br. 12 Issues Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 103(a) as being obvious because the combination of Xu and R2-071934 fails to teach or suggest the argued limitations? Did the Examiner err in rejecting claim 11 under 35 U.S.C. § 103(a) as being obvious because the combination of Jersenius and Marinier fails to teach or suggest the argued limitation? Analysis 35 U.S.C. § 103(a) Rejection of Exemplary Claim 15 We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We disagree with Appellant’s conclusions. The Examiner has provided a comprehensive response, supported by sufficient evidence, to each of the contentions raised by Appellant. We adopt as our own the 4 Throughout this Decision, we refer to the Appeal Brief filed May 30, 2019 (“Appeal Br.”); Final Office Action mailed April 4, 2019 (“Final Act.”); and the Examiner’s Answer mailed June 27, 2019 (“Ans.”). 5 Claims 2 and 10 are not argued separately from claim 1 in the Appeal Brief and will not be addressed separately. Appeal 2019-006860 Application 15/097,710 5 findings and reasons set forth by the Examiner in the Answer in response to Appellant’s Appeal Brief (see Ans. 3–11). Among other things, although a Reply Brief is not required, we note that Appellant did not respond to the Examiner’s additional findings and explanations in the Answer. We highlight and address specific findings and arguments regarding representative claim 1 for emphasis as follows. A. Limitations L1 and L3 The Examiner finds that Xu teaches selecting between multiple Discontinuous Reception (DRX) modes because Xu’s User Equipment (UE) selects one set of DRX parameters among many different sets of DRX parameters. Ans. 3 (citing Xu ¶¶ 44–45). The Examiner finds that R2-071394 teaches UE changes Channel Quality Indicator (CQI) reporting mode whenever a DRX mode changes because R2-071394’s UE adapts the CQI reporting mode to a new DRX scheme. Ans. 4 (citing R2-071394 §§ 1–2). In addition, the Examiner finds that the combination of Xu and R2-071394 teaches L1 and L3 because a selection of DRX mode by Xu’s UE triggers a selection of R2-071394’s CQI reporting mode. Ans. 4 (citing Xu ¶ 43; R2-071394 § 2). Appellant argues that Xu does not teach L1 and L3 because Xu does not disclose CQI reporting modes, but only discloses selecting between two different DRX modes. Appeal Br. 8. Appellant also argues that the combination of Xu and R2-071394 does not teach L1 and L3 because nothing in either Xu or R2-071394 suggests multiple different CQI reporting modes, or selecting between multiple CQI reporting modes. Appeal Br. 8. According to Appellant, Appeal 2019-006860 Application 15/097,710 6 there is no hint or suggestion in the art that a teaching of multiple DRX modes in Xu would somehow motivate one of ordinary skill in the art to change R2-071394 from a single CQI reporting mode technology to a multiple CQI reporting mode technology even if R2- 071394 describes a transmission relationship timing relationship between CQI reporting and DRX active time. Id. Based on the record before us, the Examiner did not err in finding that the combination of Xu and R2-071394 teaches the disputed limitations L1 and L3. More particularly, Appellant’s arguments with respect to Xu and R2-071394 do not reflect the specific findings made by the Examiner. In particular, the Examiner finds that the combination of Xu and R2-071394, rather than only Xu as Appellant argues, teaches L1 and L3. See Ans. 4–5; Final Act. 4–5. Therefore, Appellant’s arguments amount to a misplaced attack on Xu, where the Examiner relies upon the combination of references to teach L1 and L3. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Similarly, Appellant’s argument that R2-071394 does not suggest multiple CQI reporting modes and selecting between multiple CQI reporting modes (Appeal Br. 8) attacks R2-071394 for not teaching L1 and L3. Here, however, the Examiner finds that R2-071394 in combination with Xu teaches L1 and L3. Final Act. 4–5. Appellant’s arguments above ignore the combined teachings of Xu and R2- 071394. Specifically, we find no error with the Examiner’s proffered findings and conclusions that an ordinarily skilled artisan would have had motivation to apply the teachings of Xu—UE selects a DRX mode from multiple DRX modes (see Appeal 2019-006860 Application 15/097,710 7 Ans. 4)—and the teachings of R2-071394—UE changes CQI reporting mode every time DRX mode changes (id.)—collectively to arrive at limitations L1 and L3. Accordingly, based on the evidence before us, we are not persuaded that the Examiner erred in finding that the combination of Xu and R2-071394 teaches L1 and L3. B. Limitations L1 and L2 The Examiner finds that Xu teaches a UE that makes selection because Xu’s UE selects a desired DRX level/period. Ans. 6 (citing Xu ¶¶ 43–15). The Examiner determines that an event eNodeB of a network in Xu instructs the UE to make the selection does not conflict with the teaching of a UE making the selection. Id. The Examiner concludes that R2-071394 does not teach away from L1 and L2 because R2-071394 teaches that eNB (i.e. base station) configures a CQI reporting scheme, rather than eNB selects the CQI reporting scheme. Ans. 6. The Examiner determines that configuring does not mean selecting, and eNB can configure UE to select the CQI reporting scheme. Id. at 6–7. Appellant argues that Xu does not teach L1 and L2 because Xu does not teach CQI reporting modes. Appeal Br. 9. According to Appellant, even if Xu’s DRX mode is equivalent to a CQI mode, Xu teaches eNodeB, rather than UE, that selects between multiple modes. Appeal Br. 9. Appellant argues that R2-071394 teaches away from L1 and L2 because R2- 071394 discloses CQI reporting scheme should be configured by eNB. Appeal Br. 10 (citing R2-071394 § 3). We disagree with Appellant’s teaching-away arguments. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be Appeal 2019-006860 Application 15/097,710 8 led in a direction divergent from the path that was taken by the applicant.” Ricoh Co. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations and internal quotation marks omitted) (emphasis added). Teaching an alternative or equivalent method, however, does not teach away from the use of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965). A reference does not teach away if it merely expresses a general preference for an alternative invention from amongst options available to the ordinarily skilled artisan, and the reference does not discredit or discourage investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Appellant’s teaching-away arguments are misplaced for two reasons. First, we agree with the Examiner that Xu teaches that UE selects a desired DRX level/period. Ans. 6 (citing Xu ¶¶ 43–45). Second, R2-071394’s eNB configuring the CQI reporting scheme does not suggest that R2-071394 teaches away from the UE selecting the CQI reporting scheme. Ans. 6–7. As such, Appellant’s arguments are not persuasive. Accordingly, based on the evidence before us, we are not persuaded that the Examiner erred in finding that the combination of Xu and R2-071394 teaches L1 and L2. C. Limitation L4 The Examiner finds the combination of Xu and R2-071394 teaches the limitation L4 because Xu teaches a UE that selects a CQI reporting trigger rule such as a particular DRX cycle length, and R2-071394 teaches that UE reports CQI in accordance with the DRX cycle length. Ans. 7–8 (citing Xu ¶ 25 and R2- 071394 § 2). Appeal 2019-006860 Application 15/097,710 9 The Examiner concludes that in R2-071394 “no report should be sent” suggests that a CQI report is not sent while UE should sleep, and R2-071394’s UE sends the CQI report when it is awake. Ans. 8–9 (citing R2-071394 § 2). Appellant argues that the combination of Xu and R2-071394 does not teach L4 because both neither Xu nor R2-071394 discloses first and second CQI reporting modes. Appeal Br. 11. Appellant further argues that even if the combination of Xu and R2-071394 could be interpreted to disclose the first and second CQI reporting modes, the cited portion of R2-071394 teaches against CQI reporting because it discloses “no report should be sent.” Appeal Br. 11 (citing R2-071394 § 2). Based on the record before us, the Examiner did not err in finding that the combination of Xu and R2-071394 teaches the disputed limitation L4. More particularly, Appellant’s arguments with respect to Xu and R2-071394 do not reflect the specific findings made by the Examiner. For the same reasons as discussed above with respect to the limitation L1 and L3, we conclude that the combination of Xu and R2-071394 teach first and second CQI reporting modes. Furthermore, Appellant’s arguments above ignore the combined teachings of Xu and R2-071394. Specifically, we find no error with the Examiner’s proffered findings and conclusions that an ordinarily skilled artisan would have had motivation to combine the teachings of Xu—UE selects a CQI reporting trigger rule such as DRX cycle length (see Ans. 7–8)—with the teachings of R2-071394— report CQI in accordance with the DRX cycle length (id. at 8–9)—collectively to arrive at limitation L4. We disagree with Appellant’s contention (Appeal Br. 11) that R2-071394 teaches away from CQI reporting. Although R2-071394 does not send a report Appeal 2019-006860 Application 15/097,710 10 while UE should sleep, R2-071394 does not teach away from CQI reporting—a fact evidenced by the document’s very title (“CQI reporting with regards to DRX operation”). In addition, R2-071394 teaches that a UE sends the CQI report when it is awake (R2-071394 § 2). In other words, that R2-071394’s UE does not send a report while it is sleep does not mean that it teaches away from CQI reporting as the Examiner indicates. Ans. 8–9. Accordingly, based on the evidence before us, we are not persuaded that the Examiner erred in finding that the combination of Xu and R2-071394 teaches L4. D. Reasons for Combining Xu and R2-071394 The Examiner concludes that Xu is directed to Long Term Evolution (LTE) and CQI is required to be implemented in LTE as a standard feature. Ans. 9. The Examiner further determines that it would have been obvious to a person having ordinary skill in the art at the time of the invention (“PHOSITA”) to combine Xu and R2-071394’s adapting CQI to a new DRX scheme in order to fully utilize the power saving benefits of configured DRX cycle. Ans. 9 (citing R2-071394 § 2). Appellant argues that combining Xu and R2-071394 is based on prohibited hindsight because the rationale statement “fully utilize the power saving benefits of configured DRX cycle while performing channel quality measurement” is not found either in Xu or R2-071394. Appeal Br. 11–12. We are cognizant that our reviewing courts have not established a bright-line test for hindsight. In KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the Supreme Court guides that “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of argument reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 36 (1966)). Nevertheless, the Supreme Court qualified the issue of hindsight by stating, “[r]igid preventative rules that deny factfinders Appeal 2019-006860 Application 15/097,710 11 recourse to common sense, however, are neither necessary under our case law nor consistent with it.” Id. In reviewing the record here, we find Appellant has not identified any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of ordinary skill in the art at the time of application filing. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). In this case, the Examiner relies on § 2 of R2-071394 for the finding that a PHOSITA would have combined Xu and R2-071394. Ans. 9; Final Act. 5 (citing R2-071394 § 2). Therefore, the Examiner’s knowledge was not gleaned from Appellants’ disclosure. Moreover, Appellants have not provided persuasive evidence that combining the respective teachings of the references (as proffered by the Examiner – Final Act. 8) would have been “uniquely challenging or difficult for one of ordinary skill in the art,” or that such a combination would have “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Nor has Appellant provided any objective evidence of secondary considerations, which, as our reviewing court explains, “operate[] as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). Accordingly, we are not persuaded of error in the Examiner’s finding that a PHOSITA would have combined Xu and R2-071394. 35 U.S.C. § 103(a) Rejection of Exemplary Claim 116 The Examiner finds that Marinier teaches limitation L5 because Marinier teaches updating the CQI feedback period and sending updated information to at 6 Claim 12 is not argued separately from claim 11 in the Appeal Brief and will not be addressed separately. Appeal 2019-006860 Application 15/097,710 12 least one wireless transmit/receive unit (WTRU). Ans. 10 (citing Marinier ¶¶ 26– 27; Ex parte Kazmi, 2018 WL 4357085 at *3). The Examiner concludes that it would have been obvious for a PHOSITA to combine Jersenius and Marinier’s determining and sending updated CQI reporting trigger rules in order to increase uplink capacity in the system. Ans. 10–11 (citing Marinier ¶¶ 26–27 and Title). Appellant argues that Marinier does not teach limitation L5 because Marinier fails to teach (1) CQI reporting trigger rules, (2) updated CQI reporting trigger rules, and (3) determining the updated CQI reporting rules and sending them to UE. Appeal Br. 13. According to Appellant, Marinier merely discloses a base station that sends a command to increase or decrease CQI feedback period, rather than determining and transmitting the CQI reporting trigger rules as claimed. Id. Appellant also argues that combining Jersenius with Marinier is based on prohibited hindsight because the rationale statement “increase uplink capacity in the system” is not cited from either Jersenius or Marinier. Appeal Br. 14. Regarding the limitation “CQI reporting trigger rules,” we agree with the Examiner’s determination that Marinier’s CQI feedback period corresponds to CQI reporting trigger rules. Ans. 10 (citing Marinier ¶¶ 26–27 and Ex parte Kazmi, 2018 WL 4357085 at *3). Moreover, the cited portions of Marinier relied upon by the Examiner teach a base station that determines updating the CQI feedback period and sends a command with updated information to at least one WTRU, and we find that those portions teach or suggest the limitation L5 when interpreting the claim using a broadest reasonable construction. Final Act. 7 (citing Marinier ¶¶ 26–27). Appeal 2019-006860 Application 15/097,710 13 We find Appellant’s hindsight argument to be unpersuasive because in this case, the Examiner relies on paragraphs 26, 27, and the Title of Marinier for the finding that a PHOSITA would have combined Jersenius and Marinier. Final Act. 11 (citing Marinier, Title); Final. Act. 5 (citing Marinier ¶¶ 26–27). Accordingly, we are not persuaded of error in the Examiner’s finding that Marinier teaches L5 and the Examiner’s finding that a PHOSITA would have combined Jersenius and Marinier. Based on this record, Appellant does not persuade us of error in the rejection of independent claim 1 over Xu and R2-071394 or the rejection of independent claim 11 over Jersenius and Marinier. Appellant does not argue the other pending claims separately with particularity. Accordingly, we affirm the rejection of claim 2 over Xu, R2-071394, and Seo, the rejection of claim 10 over Xu, R2-071394, and Marinier, and the rejection of claim 12 over Jersenius, Marinier, and Seo. CONCLUSION The Examiner did not err in rejecting claims 1, 2, 10–12 under 35 U.S.C. § 103(a) over the combined teachings and suggestions of the cited references. DECISION In summary: Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 103 Xu, R2-071394 1 2 103 Xu, R2-071394, Seo 2 10 103 Xu, R2-071394, Marinier 10 11 103 Jersenius, Marinier 11 12 103 Jersenius, Marinier, Seo 12 Appeal 2019-006860 Application 15/097,710 14 Overall Outcome 1, 2, 10–12 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. § 1.136(a)(1)(iv). AFFIRMED