Telefonaktiebolaget LM Ericsson (publ)

Patent Trials and Appeals Board

Jan 11, 2022

2020006564 (P.T.A.B. Jan. 11, 2022)

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. 15/403,231 01/11/2017 Iana Siomina 4015-9788 / P33145-US3 7338 24112 7590 01/11/2022 COATS & BENNETT, PLLC 1400 Crescent Green, Suite 300 Cary, NC 27518 EXAMINER AGA, SORI A ART UNIT PAPER NUMBER 2476 MAIL DATE DELIVERY MODE 01/11/2022 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte IANA SIOMINA and ELENA MYHRE ____________________ Appeal 2020-006564 Application 15/403,231 Technology Center 2400 ____________________ Before ST. JOHN COURTENAY, III, ERIC S. FRAHM, and JOHN A. EVANS, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-22, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Telefonaktiebolaget LM Ericsson (publ) (Appeal Br. 2). Appeal 2020-006564 Application 15/403,231 2 STATEMENT OF THE CASE Disclosed Invention and Exemplary Claim Appellant’s disclosed invention “relate[s] to a method in a network node and a network node for enabling configuration of at least two patterns for a cell” and “a method in a user equipment and a user equipment for configuring measurement” (Spec. ¶ 2), such that intercell interference is reduced in a heterogeneous cellular radio communication system (see Spec., Title) by using different radio measurement patterns (see claims 1, 9, 16). Exemplary independent claim 1 under appeal reads as follows: 1. A method performed by a user equipment configured for use in a wireless communication system, the method comprising: [A] configuring a radio measurement to be performed by the user equipment using [A1] one of multiple different measurement patterns that are to be used in different restricted areas of a cell, respectively, [B] wherein the different measurement patterns comprise different patterns of resources in time which are usable for performing radio measurements, [B1] wherein the different restricted areas of the cell are each smaller than an entire area of the cell; and performing the configured radio measurement. Appeal Br. 11, Claims App. (emphases and bracketed lettering added). Remaining independent claims 9 and 16 recite user equipment (claim 9) and a non-transitory computer-readable medium (claim 16) for performing the method in user equipment in a wireless communication system (claim 1) having limitations commensurate in scope with limitations A, A1, B, and B1 of claim 1. As discussed below, limitations A1, B, and B1, which recite using multiple different measurement patterns in different restricted areas of Appeal 2020-006564 Application 15/403,231 3 respective cells, where the restrictive areas of the cells are each smaller than the entire area of the cell (claim 1), will be dispositive of the instant appeal. The Examiner’s Rejections (1) Claims 1, 9, 16, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ji et al. (US 2005/0096062 A1; published May 5, 2005) (hereinafter, “Ji”) and Szufarska et al. (US 2012/0202490 A1; published Aug. 9, 2012) (hereinafter, “Szufarska”). Final Act. 3-4. (2) Claims 2-8, 10-15, 17-20, and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ji, Szufarska, and Krishnamurthy (US 2012/0113844 A1; published May 10, 2012). Final Act. 4-70. Appellant’s Dispositive Contention Appellant contends that the Examiner erred in rejecting claims 1, 9, and 16 under 35 U.S.C. § 103(a) based on the failure of the base reference of Szufarska to teach or suggest using multiple different measurement patterns in different restricted areas of respective cells, where the restrictive areas of the cells are each smaller than the entire area of the cell, as recited in claim 1 (see Appeal Br. 5-8). Principal Issue on Appeal Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 4- 10), the following dispositive issue is presented on appeal: Has Appellant shown that the Examiner erred in rejecting claims 1-22 under 35 U.S.C. § 103(a), because Szufarska fails to teach or suggest configuring a radio measurement to be performed by user equipment (see claim 1, limitation A) using multiple different measurement patterns in different restricted areas of a cell, respectively (see claim 1, limitation A1), and “wherein the different restricted areas of the cell are each smaller than Appeal 2020-006564 Application 15/403,231 4 an entire area of the cell” (see claim 1, limitation B1), as recited in claim 1, and as commensurately recited in remaining independent claims 9 and 16? ANALYSIS We have reviewed Appellant’s arguments in the Brief (Appeal Br. 4- 10), the Examiner’s rejection as to claims 1, 9, and 16 (see Final Act. 3-4), and the Examiner’s response (Ans. 3-4) to Appellant’s arguments in the Appeal Brief. We are persuaded by Appellant’s contentions that the Examiner has not sufficiently shown that Szufarska teaches or suggests the subject matter recited in limitations A, A1, and B1 of claim 1 (see Appeal Br. 10-12; Reply Br. 3), and the commensurate limitations found in remaining independent claims 9 and 16. Our reasoning follows. The USPTO “must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal quotation marks and citation omitted); see Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an administrative agency, the PTAB “must articulate logical and rational reasons for [its] decisions” (internal quotation marks and citation omitted)). We will not resort to speculation or assumptions to cure the deficiencies in the Examiner’s fact finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). In formulating the obviousness rejections, with regard to limitations A1, B, and B1 of claim 1 (which includes using multiple different measurement patterns in different restricted areas of respective cells, where Appeal 2020-006564 Application 15/403,231 5 the restrictive areas of the cells are each smaller than the entire area of the cell, and the commensurate limitations found in claims 9 and 16, the Examiner maps limitations A1, B, and B1 to paragraphs 23 and 62 Szufarska (see Final Act. 3; Ans. 3). The Examiner makes the following determination: “In this rejection the one sector [of Szufarska] is equated with the claimed ‘smaller area of a cell’. Para. 0062” (Ans. 3; see also Final Act. 3). Szufarska describes “UE based de-synchronization of measurement patterns” of access points (i.e., at base stations) with other cells (see Szufarska ¶ 62), where “[a] base station site typically provides one or more cells of a cellular system” (see Szufarska ¶ 23). Specifically, Szufarska describes a “base station 12 is configured to provide a cell, but could provide, for example, three sectors, each sector providing a cell” (Szufarska ¶ 23, see Fig. 1). In other words, Szufarska discloses an embodiment where a base station provides either (i) one cell, or (ii) three sectors/cells. However, Szufarska is silent as to using “different restricted areas of the cell are each smaller than an entire area of the cell” as recited in limitation B1 of claim 1. The Examiner does not sufficiently explain how one would modify Szufarska, or why it would be obvious, to perform the operations of limitations A1, B, and B1 in claim 1. Although Szufarska’s invention measures different patterns in cells (see Szufarska ¶¶ 23, 62), Szufarska is silent as to using multiple different measurement patterns in different restricted areas of respective cells, where the restrictive areas of the cells are each smaller than the entire area of the cell, as claimed. Therefore, regarding limitations A1, B, and B1 in claim 1, and the commensurate Appeal 2020-006564 Application 15/403,231 6 limitations found in claims 9 and 16, the Examiner makes insufficient findings as to how/why Szufarska discloses, teaches, or suggests using multiple different measurement patterns in different restricted areas of respective cells, where the restrictive areas of the cells are each smaller than the entire area of the cell as required by claims 1, 9, and 16 (see, e.g., claim 1, limitations A1, B, and B1). At best, the Examiner’s proposed combination leaves us to speculate as to how or why one of ordinary skill in the art would modify Szufarska to meet limitations A1, B, and B1 recited in claim 1, and the commensurate limitations recited in claims 9 and 16. See In re Warner, 379 F.2d at 1017; Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999) (unpublished) (“The review authorized by 35 U.S.C. [§] 134 is not a process whereby the examiner . . . invite[s] the [B]oard to examine the application and resolve patentability in the first instance.”). In view of the foregoing, we agree with Appellant’s contentions (see Appeal Br. 5-9) that the Examiner has not adequately shown that the base combination of Ji and Szufarska, or the base combination taken with Krishnamurthy, teaches or suggests the disputed limitations A1, B, and B1 of claim 1, and the commensurate limitations recited in claims 9 and 16. Based on the record before us, we find that the Examiner (i) incorrectly relies upon Szufarska to teach or suggest limitations A1, B, and B1 in claim 1, and the commensurate limitations recited in claims 9 and 16; and thus, (ii) has not properly established factual determinations and articulated reasoning with a rational underpinning to support the legal conclusion of obviousness for claims 1, 9, and 16, resulting in a failure to establish a prima facie of obviousness. The Examiner has not sufficiently Appeal 2020-006564 Application 15/403,231 7 shown the combination of applied references teaches or suggests limitation ii recited in claim 1, and as commensurately recited in claims 9 and 16. As a result, based on the record before us, Appellant has shown the Examiner erred in rejecting independent claims 1, 9, and 16, and thus claim 21 depending from claim 1, under 35 U.S.C. § 103(a), and we cannot sustain the Examiner’s obviousness rejection of claims 1, 9, 16, and 21 over Ji and Szufarska. For similar reasons, because claims 2-8, 10-15, 17-20, and 22 ultimately depend from claims 1, 9, and 16, respectively, and based on Appellant’s reliance on the arguments presented as to claims 1, 9, and 16 as to the patentability of claims 2-8, 10-15, 17-20, and 22, we, likewise, cannot sustain the Examiner’s obviousness rejection of claims 2-8, 10-15, 17-20, and 22 over the same base combination of Ji and Szufarska, further in view of Krishnamurthy. CONCLUSION For all of the reasons above, we hold as follows: In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 9, 16, 21 103(a) Ji, Szufarska 1, 9, 16, 21 2-8, 10-15, 17-20, 22 103(a) Ji, Szufarska, Krishnamurthy 2-8, 10-15, 17-20, 22 Overall Outcome 1-22 REVERSED