Christopher Williams et al.

Patent Trials and Appeals Board

Jul 23, 2019

14420173 - (D) (P.T.A.B. Jul. 23, 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.
14/420,173 02/06/2015 Christopher Williams 4015-9087 / P42902-US3 3440
152435 7590 07/23/2019
Sage Patent Group/Zacco
PO BOX 30789
RALEIGH, NC 27622-0789
EXAMINER
NOWLIN, ERIC
ART UNIT PAPER NUMBER
2474
NOTIFICATION DATE DELIVERY MODE
07/23/2019 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):
outsourcing@zacco.com
zaccoinstructions@sagepat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER WILLIAMS, AROOSH ELAHI,
EVANGELOS PARAVALOS, and STEPHEN RAYMENT
____________

Appeal 2018-0072761
Application 14/420,173
Technology Center 2400
____________

Before ALLEN R. MacDONALD, MICHAEL J. STRAUSS, and
MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 19–40, which are all the pending claims. See App. Br. 3–9 and Final
Act. 1–24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants identify Telefonaktiebolaget LM Ericsson (publ) as the real
party in interest. App. Br. 2.
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Introduction
Appellants describe the disclosed and claimed technology as relating
“to connection management for dual mode user equipments (UEs) and, more
particularly, to methods and apparatus for steering UEs between a Wireless
Local Area Network (WLAN) and cellular networks, or between different
access points in a WLAN.” Spec. 1:9–12.
Independent claim 19 is illustrative:
19. A method implemented by an access point in a
Wireless Local Area Network (WLAN) for steering traffic for
one or more user equipment (UEs), connected to the access
point, from the access point to a cellular network to which the
one or more UEs are not connected when connected to the
WLAN, said method comprising:
determining, based on at least a user experience of the
one or more UEs, a need to steer traffic for the one or more UEs
to the cellular network;
in response to determining the need to steer traffic,
lowering a transmit power of frames sent by the access point in
the WLAN to steer the one or more UEs to connect to the
cellular network.
App. Br 19 (Claims App’x).
Rejections & References
Claims 19, 26–28, and 35–38 stand rejected under 35 U.S.C. § 103 as
unpatentable over Pandit (US 8,611,900 B2; publ. Dec. 17, 2013) and Misra
(US 2004/0229621 A1; publ. Nov. 18, 2004). Final Act. 4–13.
Claims 20–25, 29–34, 39, and 40 stand rejected under 35 U.S.C. § 103
as unpatentable over Pandit, Misra, and various tertiary prior art references.
Final Act. 13–24.
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ANALYSIS
Appellants argue the patentability of all pending claims based on the
independent claims, from which we select claim 19 as representative; thus,
based on Appellants’ arguments, all claims stand or fall with claim 19. App.
Br. 3–5; C.F.R. § 41.37(c)(1)(iv).
We have reviewed the Examiner’s rejections in light of Appellants’
contentions of reversible error. We disagree with Appellants’ conclusions.
Instead, as consistent with our discussion below, we adopt the Examiner’s
findings and reasons as set forth in the Final Office Action from which this
appeal is taken and as set forth in the Answer. We highlight the following
for emphasis, addressing Appellants’ arguments seriatim.
The Preamble Recitation “implemented by an access point”
Appellants contend the Examiner erred in finding Pandit teaches or
suggests “determining, based on at least a user experience of the one or more
UEs, a need to steer traffic for the one or more UEs to the cellular network,”
as recited in claim 19 (the “disputed determining step”). App. Br. 3–4; see
also Reply Br. 1–3. Appellants argue that, based on the claim’s preamble,
and contrary to the cited prior art, it is necessary to implement the disputed
determining step using an access point in a WLAN. Id. This argument is
unpersuasive.
“Generally, the preamble does not limit the claims.” Allen Eng’g
Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (citation
omitted). If, however, the preamble recites structure essential to understand
the limitations in the claim body, then the preamble is properly considered a
limitation of the claim. See Georgetown Rail Equipment Company v.
Holland L.P., 867 F.3d 1229 (Fed. Cir. 2017); see also Catalina Marketing
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Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)
(citing Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305
(Fed. Cir. 1999)).
Here, claim 19’s preamble’s recitation of “implemented by an access
point in a Wireless Local Area Network (WLAN)” is unnecessary for
understanding (or implementing) the disputed determining step. Consistent
with this, Appellants’ Specification summarizes its disclosed methods
without identifying a requirement for implementing the functionality of the
disputed determining step by a WLAN access point. See Spec. 2:21–29.
Although Appellants state that “[e]xemplary embodiments of the disclosure
comprise methods implemented by an access point (AP) in a WLAN” (Spec.
2:30–31), Appellants clarify that “[t]he present invention may, of course, be
carried out in other ways than those specifically set forth herein without
departing from essential characteristics of the invention” and “[t]he present
embodiments are to be considered in all respects as illustrative and not
restrictive, and all changes coming within the meaning and equivalency
range of the appended claims are intended to be embraced therein” (Spec.
9:28–32). Moreover, unlike the disputed determining step, claim 19’s other
step explicitly recites that lowering of transmit power is for “frames sent by
the access point in the WLAN.” Including a “by the access point” limitation
in the second step while omitting it from the disputed determining step
evidences that the disputed determining step does not require the step be
performed “by the access point” as argued.2

2 Furthermore, we note in passing and without reliance in arriving at our
decision, that Misra discloses techniques for a “load-balancing solution for
AP’s in cellular and wireless communications networks.” Misra ¶ 13. The
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Thus, in view of the Specification and the language of the claim 19,
its preamble recitation of “implemented by an access point” is not a
limitation on the disputed step of “determining, based on at least a user
experience of the one or more UEs, a need to steer traffic for the one or more
UEs to the cellular network.”
The Examiner’s Determination that Pandit teaches
“based on at least a user experience of the one or more UEs”
Appellants further contend the Examiner errs in finding Pandit teaches
claim 19’s first step’s limitation that determining to steer traffic is “based on
at least a user experience of the one or more UEs.” App. Br. 4. This
argument is also unpersuasive.
As the Examiner responds, and we agree, there is no limiting
definition of “user experience” in Appellants’ Specification. Ans. 8. We
agree with the Examiner’s finding that Pandit teaches this disputed
limitation by its disclosure of a “mobile broker 201” that can determine to
switch a “UE 102” from one network to another based on a variety of
information, such as “experienced throughput 346.” See Spec. 7:30–49
(discussing Figs. 3, 4); see also Final Act. 4–5.
We disagree with Appellants that this finding by the Examiner is
“tenuous” and constitutes impermissible hindsight. App. Br. 4. Here,
ordinarily skilled artisans would have understood that determining a need to

APs of Misra “operate[] autonomously” to perform power control, which
includes “determin[ing] if and when it can and should change its power
level” or “if it is currently in an overloaded state (and hence, needs to reduce
its power level)” to effect transfer of UEs from one AP to another AP.
Misra ¶ 47. Thus, artisans of ordinary skill would have understood Misra
teaches determining (e.g., by a WLAN AP) a need to steer UE traffic to
another AP (e.g., a cellular AP).
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steer traffic “based on at least a user experience of the one or more UEs,” as
recited in claim 19, encompasses Pandit’s determining based on the
“experienced throughput” of UEs. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 421 (“A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”).
Appellants’ Argument Regarding Misra
Appellants contend Misra “does not remedy the deficiencies of
Pandit.” App. Br. 4. As discussed above, however, we discern no reversible
error in the Examiner’s findings and conclusions related to Pandit.
Appellants also contend “Misra does not contemplate the required aspect of
steering traffic for one or more UEs connected to an access point of a
WLAN, from the access point to a cellular network to which the one or more
UEs are not connected when connected to the WLAN.” Id. This argument
is also unpersuasive.
Each reference cited by the Examiner must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole.
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
relevant inquiry is whether the claimed subject matter would have been
obvious to those of ordinary skill in the art in light of the combined
teachings of those references. In re Keller, 642 F.2d 413, 425 (CCPA
1981).
Here, the Examiner primarily relies on Pandit for its disclosure of
switching (or steering) a UE between a WLAN and a cellular network. See
Final Act. 3–4 (citing Pandit 5:25–36, 8:44–9:4, 9:25–50; Figs 2, 5, and 7);
see also Pandit 4:4–17 (specifically teaching that the access points (APs)
that UEs switch between may be cellular or WLAN APs). For teaching
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claim 19’s requirement of “in response to determining the need to steer
traffic, lowering a transmit power of frames sent by the access point in the
WLAN to steer the one or more UEs to connect to the cellular network,” the
Examiner then relies on Misra’s disclosure of “power-based load balancing,”
in which a WLAN or cellular AP can “change its power level” to effect “the
transfer of wireless client devices from an overloaded AP to one of its
underloaded neighboring APs.” Final Act. 5–6 (citing Misra ¶¶ 13–14, 47
(quoting ¶ 47)).
In view of Pandit’s teaching that a dual-mode UE may be steered
between a WLAN and cellular access point, Appellants do not persuade us
of error in the Examiner’s finding that Misra’s disclosure of changing power
levels to effect steering of a UE between APs teaches “in response to
determining the need to steer traffic, lowering a transmit power of frames
sent by the access point in the WLAN to steer the one or more UEs to
connect to the cellular network,” as recited by claim 19. See Final Act. 5–6;
Ans. 11.
Conclusion
Accordingly, we sustain the 35 U.S.C. § 103 rejections of claim 19
and of claims 20–40.
DECISION
We affirm the rejections of claims 19–40 under 35 U.S.C. § 103.
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