Telefonaktiebolaget LM Ericsson (publ)

Patent Trials and Appeals BoardApr 21, 2021

2019004576 (P.T.A.B. Apr. 21, 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. 14/913,717 02/23/2016 Selim Ickin 1009-1776 / P048654US01 9577 102721 7590 04/21/2021 Murphy, Bilak & Homiller/Ericsson 1255 Crescent Green Suite 200 Cary, NC 27518 EXAMINER DEAN, RAYMOND S ART UNIT PAPER NUMBER 2645 NOTIFICATION DATE DELIVERY MODE 04/21/2021 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): official@mbhiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SELIM ICKIN, ASA BERTZE, STEVEN CORROY, and JING FU ____________ Appeal 2019-004576 Application 14/913,717 Technology Center 2600 ____________ Before JOHNNY A. KUMAR, SCOTT B. HOWARD, and SCOTT E. BAIN, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant1 filed a Request for Rehearing (“Request”) under 37 C.F.R. § 41.52(a)(1) for reconsideration of our Decision on Appeal, mailed February 4, 2021 (“Dec.”). Our Decision affirmed the Examiner’s decision rejecting claims 33–63 as being obvious under 35 U.S.C. § 103, over the cited combinations of references. Dec. 7. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). According to Appellant, the real party in interest is Telefonaktiebolaget LM Ericsson. See Appeal Br. 2. Appeal 2019-004576 Application 14/913,717 2 We have reconsidered our Decision, in light of Appellant’s arguments in the Request, and are not persuaded that we misapprehended or overlooked any points in rendering our Decision. In the Request, Appellant does not substantively traverse the analysis set forth in our Decision. Rather, Appellant seeks acknowledgment that our analysis of the Examiner’s obviousness rejection in the Decision qualifies as an undesignated new grounds of rejection: The Appellant respectfully submits that the Decision on Appeal, in its analysis of the pending rejections under 35 U.S.C. § 103, substitutes a new ground of rejection for the grounds presented by the examiner and appealed by the Appellant. This new ground of rejection was not designated as such. Reconsideration and modification of the Decision on Appeal at least to the extent of designating its analysis as a new ground of rejection is respectfully requested. Request 1. Appellant enumerates several reasons why it is believed that our Decision presents a new grounds of rejection in conflict with the Examiner’s rejection. See Request 2–5. For example, Appellant argues: The Final Office Action found, at page 3, that all of the features of the claimed method can be found in Palanki, except that “Palanki does not teach UEs with existing wireless connections.” (Final Office Action p. 3.) The Final Office Action is unequivocal on this point. In its Appeal Brief dated 28 December 2018, the Appellant argued that, in fact, more than simply “UEs with existing wireless connections” are absent from Palanki's teachings. (Appeal Brief pp. 10, 11.) Nevertheless, the ground of rejection presented in the Final Office Action and appealed to the Board was that (a) Palanki teaches all of the limitations of claim 33 except that “Palanki does not teach UEs with existing wireless connections,” (b) Banister “teaches UEs with already existing wireless connections,” and (c) it would Appeal 2019-004576 Application 14/913,717 3 have been obvious to modify Palanki’s with Banister’s teaches regarding “sleeping” UEs, “for the purpose of achieving significant savings in power consumption at a negligible cost of coverage.” (Final Office Action p. 3; Appeal Brief pp. 10, 11.). … The Decision on Appeal followed up with the explicit statement that: ... we find Palanki teaches existing connections between eNBl 10 and Relay stations 120 in Figure 1. (Decision on Appeal p. 6.) This finding that Palanki teaches, “or at least suggests,” existing wireless connections contradicts the Final Office Action’s express finding otherwise. The Decision on Appeal thus relies on a new ground of rejection, one that the Appellant has not yet had an opportunity to address. The Appellant notes that there are several issues with the Decision on Appeal’s brief discussion that could benefit from a more fully developed record. For instance, the Decision on Appeal suggests that Palanki’s disclosure “necessarily implies ... the disputed existing wireless connection.” (Decision on Appeal p. 5.) This is a finding of inherency. While some sort of existing wireless connection might be inherent in Palanki’s disclosure, the Appellant has not yet had an opportunity to address whether any existing connection inherent to Palanki’s disclosure is one that otherwise meets the limitations of claim 33, or any of the other pending claims. … Palanki’s paragraph 0033, intentionally omitted by the Final Office Action, but relied on by the Decision on Appeal, briefly discusses the “primary embodiment” mentioned by the Decision on Appeal. Palanki’s paragraphs 0034-0037 describe in detail the “second, alternative embodiment.” The Decision on Appeal thus finds that a key element of the claims is at least implicit in Palanki’s primary embodiment, but does not discuss whether or how it would have been obvious to combine features from Palanki’s primary and secondary embodiments. This is another area that can benefit from further development of the record. … Appeal 2019-004576 Application 14/913,717 4 The Appellant should have the opportunity to provide evidence, e.g., in the form of other references or an expert affidavit, to demonstrate that there is in fact no need for the UEs in Palanki’s first design to have an existing wireless connection when transmitting their discovery signals, and that an existing connection is thus not necessarily implied by Palanki's disclosure. Request 2–5. We have reviewed Appellant’s arguments in the Request, our Decision, and have again reviewed the Examiner’s obviousness rejection, and the Examiner’s responses to Appellant’s arguments as set forth in the Answer. As correctly noted by Appellant (Request 1), the new argument that the Board’s Decision purportedly contains an undesignated new ground of rejection is expressly permitted under 37 C.F.R. § 41.52(a)(4). For essentially the same reasons argued by Appellant in the Request, and to accord Appellant procedural due process on appeal, we agree to modify our Decision only to the extent that we designate our Decision as a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). DECISION We grant Appellant’s Request for Rehearing only to the extent that we have reconsidered our Decision and have modified it to be a new ground of rejection under 37 C.F.R. § 41.50(b). Appeal 2019-004576 Application 14/913,717 5 Section 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Thus, WITHIN TWO MONTHS FROM THE DATE OF THIS REHEARING DECISION, Appellant must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the newly rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner;2 or (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. 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). 2 Regarding option (1), “Reopen prosecution,” and particularly regarding the requirement to submit an amendment and/or new evidence, please note MPEP 1214.01(I): “If the appellant submits an argument without either an appropriate amendment or new evidence as to any of the claims rejected by the Board, it will be treated as a request for rehearing under 37 C.F.R. 41.50(b)(2).” If for any reason Appellant desires to reopen prosecution before the Examiner without submitting an amendment and/or new evidence, a Request for Continued Examination (RCE) that complies with 37 C.F.R. § 114 will remove the application from the jurisdiction of the Board under 37 C.F.R. § 41.35, and will reopen prosecution before the Examiner. Appeal 2019-004576 Application 14/913,717 6 MODIFIED DECISION SUMMARY Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Denied Granted New Grounds 33–63 103 Palanki, Banister 33–63 33–63 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Grounds 33–63 103 Palanki, Banister 33–63 33–63 REHEARING GRANTED