Ex Parte Shi et al

Patent Trial and Appeal Board

Jan 24, 2019

14443432 (P.T.A.B. Jan. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/443,432 05/18/2015
102721 7590 01/28/2019
Murphy, Bilak & Homiller/Ericsson
1255 Crescent Green
Suite 200
Cary, NC 27518
FIRST NAMED INVENTOR
Nianshan Shi
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1009-1411 / P43542 US2 1081
EXAMINER
BHATTI, HASHIM S
ART UNIT PAPER NUMBER
2472
NOTIFICATION DATE DELIVERY MODE
01/28/2019 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):
official@mbhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIANSHAN SHI and WAIKWOK KWONG 1
Appeal2018-005524
Application 14/443,432
Technology Center 2400
Before CARL W. WHITEHEAD JR., ADAM J. PYONIN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a Decision on appeal pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest is listed as Telefonaktiebolaget LM Ericsson
(publ). Appeal Brief 2.
Appeal2018-005524
Application 14/443,432
STATEMENT OF THE CASE
Introduction
The Application is directed "to management of communication
network measurements," especially relating "to methods and arrangements
for enabling a controller node to adjust communication settings based on UE
measurements." Specification 1:4---6. Claims 30-56 are pending, of which
claims 30, 35, 42, 47, 54, and 56 are independent. See Response to Notice
ofNon-Compliant Appeal Brief, filed February 19, 2018. Claim 30 is
reproduced below for reference ( emphases added):
30. A method performed by a first communication network
node of a communication network for obtaining measurement
results from a wireless communication device in accordance
with a Layer 1 communication protocol that terminates in a
base station and that provides for the communication of data
between the wireless communication device and the base
station, the method comprising:
formulating a request for information related to
measurements performed by the wireless communication
device;
sending the request to a second communication network
node;and
receiving, from the second communication network node,
the requested information in accordance with the Layer 1
communication protocol.
References and Rejections
Claims 30, 31, 34--36, 39-44, 47--49, and 52-56 stand rejected under
35 U.S.C. § I03(a) as being unpatentable over Kim (US 2011/0096677 Al;
Apr. 28, 2011) and Appellants' Admitted Prior Art (AAPA). Final Action
2-12.
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Appeal2018-005524
Application 14/443,432
Claims 32, 33, 37, 38, 45, and 46 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Kim, AAPA, and Hwang (US
2005/0207359 Al; Sept. 22, 2005). Final Action 12-15.
Claims 50 and 51 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Kim's Figures 3 and 5, AAP A, and Hwang. Final Action
15-17.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments, considering only those arguments Appellants actually raised in
the Briefs. We adopt the Examiner's findings and conclusions as our own,
to the extent consistent with our analysis.
Claim 30 recites four devices: a first communication network node
(encompassing a Radio Network Controller (RNC)); a wireless
communication device ( encompassing a mobile telephone/User Equipment
(UE) ); a base station; and a second communication network node
( encompassing a N odeB cellular base station). 2 See Appeal Brief 10.
Appellants contend the Examiner's "analysis ignores the fact that the
Layer 1 communication protocol referred to in the claims is explicitly
2 Although not dispositive to our Decision, presumably the "second
communication network node" is not the same device as the recited "base
station." See Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
381 F.3d 1111, 1119 (Fed. Cir. 2004) ("when an applicant uses different
terms in a claim it is permissible to infer that he intended his choice of
different terms to reflect a differentiation in the meaning of those terms").
In the event of further prosecution, the Examiner may wish to determine
whether the requirement that the protocol terminates in a separate base
station conforms with the written description and definiteness requirements
of 35 U.S.C. § 112.
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Appeal2018-005524
Application 14/443,432
defined in claim 30 as the (physical layer) protocol that terminates at the
Node B (base station) and that handles communications between the UEs
and the Node B." Appeal Brief 14. Appellants argue that, in comparison to
the single Layer 1 communication protocol of claim 30, the communications
in "Kim's system are supported by at least two Layer 1 protocols,
corresponding to the two different end-to-end links that make up the UE-to-
RNC data path." Appeal Brief 13. Particularly, Appellants argue:
What is missing is a suggestion that communications between
Kim's RNC and Kim's Node B should be "in accordance with"
a Layer 1 protocol that is for Kim's UE-to-Node B
communications. The present application's disclosure of the
existence of a Layer 1 communication protocol between a
wireless device (UE) and a Node B provides no suggestion at all
that communications between Kim's Node Band RNC should in
any way be "in accordance with" a Layer 1 protocol for UE-to-
Node B communications.
Appeal Brief 1 7.
Claim 30 recites the requested information is received "in accordance
with" the Layer 1 communication protocol. "The correct inquiry in giving a
claim term its broadest reasonable interpretation in light of the specification
is ... an interpretation that corresponds with what and how the inventor
describes his invention in the specification, i.e., an interpretation that is
'consistent with the specification."' In re Smith Int'!, Inc., 871 F.3d 1375,
1382-83 (Fed. Cir. 2017) (citations omitted); see also Reply Brief 7-8. We
note Appellants' Specification contrasts the usage of the phrase "in
accordance with the Layer 1 communication protocol" and the usage of the
phrase "on the Layer 1 communication protocol": the latter is used for the
messaging between the UE and the NodeB, the former for the messaging
between the NodeB and the RNC. Specification 6:4--16. More importantly,
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Appeal2018-005524
Application 14/443,432
Appellants' Specification explains that "even if the actual Layer 1
communication protocol is terminated in the NodeB, by extracting the parts
of the measurement results which have been delivered on the Layer 1
communication protocol, the NodeBs will thereby be enabled to forward
measurement results in accordance with the Layer 1 communication
protocol." Specification 6:12-16 (emphases added). Thus, consistent with
the Specification, the claim term "in accordance with the Layer 1
communication protocol" includes extracting and forwarding information
originally received on the Layer 1 communication protocol.
In light of the interpretation of "in accordance with" that corresponds
with what and how the invention is described in the Specification, we agree
with the Examiner that the combination of Kim and AAP A teaches or
suggests the claim limitations. See Final Action 3--4. The Examiner
correctly finds that "Kim inherently discloses obtaining measurement results
from a wireless communication device in accordance with a Layer 1
communication protocol" and "Kim discloses in para[.] 77 that the base
station generates (extracts) the UPH [UE Power Headroom] information
from the received scheduling information and sends it to the RNC by
including the UPH information in a configuration decision information
message." Final Action 3--4 ( emphasis omitted) ( citing Kim, Figs. 3, 5); see
also Appeal Brief 13. Based on the record before us, we are not persuaded
the Examiner errs in finding Kim's teachings-in view of the Layer 1
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Application 14/443,432
communication protocol teachings of AAP A-teaches or suggests the
limitations of claim 30. See Final Action 4.
CONCLUSION
We sustain the Examiner's rejection of independent claim 30.
Appellants advance no further substantive arguments on the remaining
claims. See Appeal Brief 17-19. Accordingly, we sustain the Examiner's
rejection of claims 31-56 for the same reasons. See Hyatt v. Dudas, 551
F.3d 1307, 1313-14 (Fed. Cir. 2008) (The Board may treat arguments
Appellants failed to make for a given ground of rejection as waived); see
also Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential).
DECISION
The Examiner's Decision rejecting claims 30-56 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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