Rajarshi Gupta et al.

Patent Trials and Appeals Board

Mar 8, 2022

2021001430 (P.T.A.B. Mar. 8, 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. 12/353,188 01/13/2009 Rajarshi Gupta 080870US 2329 15055 7590 03/08/2022 Patterson + Sheridan, L.L.P. Qualcomm 24 Greenway Plaza, Suite 1600 Houston, TX 77046 EXAMINER WYLLIE, CHRISTOPHER T ART UNIT PAPER NUMBER 2465 NOTIFICATION DATE DELIVERY MODE 03/08/2022 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): PAIR_eOfficeAction@pattersonsheridan.com ocpat_uspto@qualcomm.com qualcomm@pattersonsheridan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Ex parte RAJARSHI GUPTA, FATIH ULUPINAR, GAVIN B. HORN, and PARAG A. AGASHE _______________ Appeal 2021-001430 Application 12/353,188 Technology Center 2400 _______________ Before ERIC S. FRAHM, NATHAN A. ENGELS, and JAMES W. DEJMEK, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1, 4-10, 12, 15-21, 23, 26-32, 34, 37-43, 45, 48-53, 55, 56, 59-64, 66, 67, 70-75, 77, 78, and 81-87. See Appeal Br. 19-28. Appellant has canceled claims 2, 3, 11, 13, 14, 22, 24, 25, 33, 35, 36, 44, 46, 47, 54, 57, 58, 65, 68, 69, 76, 79, 80, and 88. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm in part. 1 Throughout this Decision, we use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2019). Appellant identifies QUALCOMM Incorporated as the real party in interest. Appeal Br. 3. Appeal 2021-001430 Application 12/353,188 2 STATEMENT OF THE CASE Introduction Appellant’s disclosed and claimed invention generally relates to “controlling the transmission of a base station, and more particularly to methods and apparatus in a communication system that prevent or limit radio frequency (RF) transmission or radiation from a base station based on the quality of a backhaul connection of the base station.” Spec. ¶ 2. In a disclosed embodiment, transmission of at least one wireless (RF transmission) signal from the base station is prevented when the determined quality fails to meet a predefined condition. . . . Thus, if there is no backhaul connectivity, the base station may simply stop radiating some or all RF signals[, which] would ensure that no AT [(access terminal)] will connect to the base station. . . . [B]y ceasing RF transmission, any ATs currently connected to the base station can thereby be forced to hand off to alternate base station. Spec. ¶ 28, see also ¶¶ 23, 30, Abstract. Claim 1 is exemplary of the subject matter on appeal and is reproduced below with the disputed limitation emphasized in italics: 1. A method by a base station in a communication network for controlling transmission, comprising: determining a quality of a backhaul connection between the base station and at least one node; and preventing transmission of all wireless signals from the base station, with the base station powered on, when the determined quality fails to meet a predefined condition. The Examiner’s Rejections 1. Claims 1, 4-6, 8, 9, 12, 15-17, 19, 20, 23, 26-28, 30, 31, 34, 37-39, 41, and 42 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being Appeal 2021-001430 Application 12/353,188 3 unpatentable over Huang et al. (US 8,243,679 B1; Aug. 14, 2012) (“Huang”); Ling et al. (US 2005/0198363 A1; Sept. 8, 2005) (“Ling”); and Breuer et al. (EP 2 056 628 A1; May 6, 2009). Final Act. 3-5. 2. Claims 7, 18, 29, and 40 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Huang, Ling, Breuer, and Mooney et al. (US 2006/0250953 A1; Nov. 9, 2006) (“Mooney”). Final Act. 5. 3. Claims 10, 21, 32, 43, 45, 48-50, 52, 53, 55, 56, 59-61, 63, 64, 66, 67, 70-72, 74, 75, 77, 78, 81-83, and 85-87 stand rejected under pre- AIA 35 U.S.C. § 103(a) as being unpatentable over Huang, Ling, Breuer, and Ergen et al. (US 2009/0067333 A1; Mar. 12, 2009) (“Ergen”). Final Act. 5-8. 4. Claims 51, 62, 73, and 84 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Huang, Ling, Breuer, Ergen, and Mooney. Final Act. 9. ANALYSIS2 Claims 1, 4-7, 9, 10, 12, 15-18, 20, 21, 23, 26-29, 31, 32, 34, 37-40, 42, 43, 45, 48-51, 53, 55, 56, 59-62, 64, 66, 67, 70-73, 75, 77, 78, 81-84, 86, and 87 In rejecting independent claim 1, inter alia, the Examiner relies on the combined teachings of Huang, Ling, and Breuer. See Final Act. 3-4. In particular, the Examiner finds Huang teaches determining a quality of a 2 Throughout this Decision, we have considered the Appeal Brief, filed July 13, 2020 (“Appeal Br.”); the Reply Brief, filed December 21, 2020 (“Reply Br.”); the Examiner’s Answer, mailed October 21, 2020 (“Ans.”); and the Final Office Action, mailed November 29, 2019 (“Final Act.”), from which this Appeal is taken. Appeal 2021-001430 Application 12/353,188 4 backhaul connection between the base station and at least one node. Final Act. 3 (citing Huang, col. 2, ll. 33-38, 45-53, col. 3, ll. 38-44, 51-55, Fig. 1). The Examiner further finds that Huang teaches using handover of mobile stations communicating with the base station when the quality of the backhaul connection to the base station is at a capacity that degrades performance. See Final Act. 3 (citing Huang, col. 3, ll. 38-50). The Examiner finds Ling teaches handover may be triggered by powering off the AP (i.e., the access point or base station). Final Act. 3 (citing Ling ¶ 59). The Examiner relies on Breuer to teach that the entire base station need not be powered down, but rather only the radio frequency components (i.e., the transceiver) need be powered down, while still powering the rest of the base station (e.g., CPU). Final Act. 4 (citing Breuer ¶¶ 11, 29, 64, and 91). The Examiner determines that it would have been obvious to one of ordinary skill in the art to modify the Huang-Ling system to power down only the transceiver portion of the base station when the quality of the backhaul connection fails to meet a predefined threshold in order to force handovers of mobile stations’ communication with the base station while allowing for “faster startup when the base station is able to be utilized again” (e.g., when the backhaul quality meets a desired threshold). See Final Act. 3-4. Appellant asserts the cited art fails to teach “preventing transmission of all wireless signals from the base station, with the base station powered on, when the determined quality fails to meet a predefined condition,” as recited in claim 1 (and commensurately recited in the other independent claims). Appeal Br. 10-14 (emphasis omitted); Reply Br. 2-7. In particular, Appellant argues Huang teaches that when the backhaul link is at risk of performance degradation (such as due to capacity issues), the base station Appeal 2021-001430 Application 12/353,188 5 may reduce the load on the backhaul link by initiating a handover of one or more mobile stations to other base stations. Appeal Br. 11. Appellant asserts Huang teaches initiating a handover by using handover commands for identified mobile stations. Appeal Br. 11. Appellant asserts that preventing transmissions of all wireless signals from the base station to force the handover of all mobile stations in communication with the base station, as proposed by the Examiner, would be inconsistent with the teachings of Huang because Huang also describes maintaining communication with other mobile terminals (such as those that may be assigned a high priority). Appeal Br. 11-12; Reply Br. 2-6. Appellant also argues that the Examiner’s proposed combination of Huang and Ling is the result of impermissible hindsight. Appeal Br. 12-13; Reply Br. 6. In response, the Examiner finds Huang teaches that the handover may be performed on one, some, or all of the mobile stations communicating with the base station. Ans. 4. Huang expressly contemplates that to avoid performance degradation, “a handover of one or more of the mobile stations communicating with the base station . . . could be initiated based on the condition of [the] backhaul link.” See Huang, col. 3, ll. 41-44. Thus, we agree with the Examiner that by teaching “one or more” of the mobile stations may be handed over, Huang contemplates that all of the mobile stations may be handed over based on the condition of the backhaul link. Accordingly, we disagree with Appellant that the Examiner’s proposed combination would render Huang unsuitable for its intended purpose. Further, we disagree with Appellant that the Examiner’s proposed combination fails to teach preventing transmission of all wireless signals from the base station, with the base station powered on, when the Appeal 2021-001430 Application 12/353,188 6 determined quality fails to meet a predefined condition. Rather, as the Examiner explains (see, e.g., Ans. 4), Huang teaches performance degradations may occur (i.e., quality fails to meet a predefined condition) as the backhaul link approaches full capacity. See Huang, col. 3, ll. 38-44. Further, Huang teaches when the backhaul link approaches full capacity, handover of one or more mobile stations communicating with the base station may be initiated to reduce the load on the backhaul link. Huang, col. 3, ll. 38-44. As relied on by the Examiner (see Final Act. 3; Ans. 4), Ling teaches handover may be accomplished by powering down the base station (i.e., access point). See Ling ¶ 59 (describing triggering a handover by turning off the power to the access point). Thus, modifying Huang’s system with the handover triggering technique of Ling would result in preventing transmission of all wireless signals from the base station when a determined quality fails to meet a predefined condition. The Examiner relies on Breuer to teach turning off only power to the transceiver portion of a base station rather than removing power to the entire base station as a way to allow for faster startup of the base station when it is able to be used again. See Final Act. 4; Ans. 4. Thus, applying Breuer’s teaching of a modified power down (i.e., to only the transceiver portion of a base station) to Huang, as modified by Ling, teaches “preventing transmission of all wireless signals from the base station, with the base station powered on, when the determined quality fails to meet a predefined condition,” as recited in claim 1. Regarding Appellant’s assertion that the Examiner’s proposed combination of Huang, Ling, and Breuer relies on impermissible hindsight, we disagree. “Any judgment on obviousness is in a sense necessarily a Appeal 2021-001430 Application 12/353,188 7 reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392 1313-14 (CCPA 1971). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” KSR, 550 U.S. at 417. Here, the Examiner does not rely on knowledge gleaned only from Appellant’s Specification, but simply substitutes Ling’s known approach to initiate handovers for the handover initiation process of Huang. The use of Ling’s known technique to initiate handovers into Huang’s system would yield the predictable result of initiating handovers when the quality of the backhaul connection fails to meet a predefined condition. In addition, the Examiner provides additional reasoning that one of ordinary skill in the art would understand that by using Ling’s approach, the use of individual handover requests for all of the mobile stations communication with the base station could be avoided. See Final Act. 3-4; Ans. 5. Thus, we determine the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). Moreover, contrary to Appellant’s assertion (see Appeal Br. 13), it does not matter that the prior art and the present invention may have Appeal 2021-001430 Application 12/353,188 8 different purposes. See Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004) (“A finding that two inventions were designed to resolve different problems . . . is insufficient to demonstrate that one invention teaches away from another.”). That is, it is sufficient that references suggest doing what Appellant did, although the Appellant’s particular purpose was different from that of the references. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re Gershon, 372 F.2d 535, 538- 39 (CCPA 1967)). “Obviousness is not to be determined on the basis of purpose alone.” In re Graf, 343 F.2d 774, 777 (CCPA 1965). “Common sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420. For the reasons discussed supra, we are unpersuaded of Examiner error. Accordingly, we sustain the Examiner’s rejection of independent claim 1.3 For similar reasons, we also sustain the Examiner’s rejections of independent claims 12, 23, 34, 45, 56, 67, and 78, which recite similar 3 We note that claim 1 (as well as independent claim 45) does not recite an affirmative step of determining that the quality of the backhaul connection fails to meet a predefined condition. Rather, the claims merely recite that the quality is determined and that the transmission of all wireless signals are prevented only if the determined quality fails to meet a predefined condition. In the event of further prosecution, we leave it to the Examiner to determine if the methods recited in independent claims 1 and 45 includes conditional limitations. See Ex parte Schulhauser, Appeal No. 2013-007847, 2016 WL 6277792, at *3-6 (PTAB April 28, 2016) (concluding the broadest reasonable interpretation of a claim encompassed situations in which conditional method steps “need not be reached”) (precedential). Appeal 2021-001430 Application 12/353,188 9 limitations and were not argued separately. See Appeal Br. 14, 17; see also 37 C.F.R. § 41.37(c)(1)(iv). In addition, we sustain the Examiner’s rejections of claims 4-7, 9, 10, 15-18, 20, 21, 26-29, 31, 32, 37-40, 42, 43, 48-51, 53, 55, 59-62, 64, 66, 70-73, 75, 77, 81-84, 86, and 87, which depend directly or indirectly there from and were not argued separately with particularity. See Appeal Br. 14-18;4 see also 37 C.F.R. § 41.37(c)(1)(iv). Claims 8, 19, 30, 41, 52, 63, 74, and 85 Claim 8 depends from claim 1 and recites “wherein the determination of the quality of the backhaul connection is performed upon power up of the base station.” Claims 19, 30, 41, 52, 63, 74, and 85 recite commensurate limitations. Appellant asserts that Huang, as relied on by the Examiner fails to teach this claimed feature. Appeal Br. 14-15, 17; Reply Br. 7-8, 10. In particular, Appellant argues Huang “is silent regarding power up of the base station and . . . silent regarding when the monitoring [(of the backhaul connection)] is performed with respect to power up of the base station.” Appeal Br. 14-15. In response, the Examiner explains that “[n]ormally in the art when a device is powered up it does a system check and ‘very soon after’ or ‘immediately’ after it performs its normal programming.” Ans. 5. The 4 Appellant relies on the arguments made with respect to the independent claim from which the claims depend and asserts that the additional references fail to cure the alleged deficiencies of the base claim. See, e.g., Appeal Br. 15. Because we do not find the base combination of Huang, Ling, and Breuer to be deficient, as discussed herein, we are unpersuaded of Examiner error as it relates to the identified dependent claims. Appeal 2021-001430 Application 12/353,188 10 Examiner also finds Huang’s flowchart (as illustrated in Figure 2 of Huang) supports Huang starting with monitoring the backhaul for congestion. Ans. 5. Although the Examiner posits that Huang might perform a determination as to the quality of the backhaul link upon power up of the base station, the Examiner offers no evidence in support of this finding. Figure 2 of Huang merely shows a flowchart for initiating handovers (see Huang, col. 1, ll. 55-56), but does not indicate when the condition of the backhaul link is monitored relative to the base station being powered up. For us to sustain the Examiner’s rejection, we would need to resort to impermissible speculation or unfounded assumptions or rationales to cure the deficiencies in the factual bases of the rejection before us. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Accordingly, we do not sustain the Examiner’s rejection of claims 8, 19, 30, 41, 52, 63, 74, and 85. CONCLUSION We affirm the Examiner’s decision rejecting claims 1, 4-7, 9, 10, 12, 15-18, 20, 21, 23, 26-29, 31, 32, 34, 37-40, 42, 43, 45, 48-51, 53, 55, 56, 59-62, 64, 66, 67, 70-73, 75, 77, 78, 81-84, 86, and 87 under pre-AIA 35 U.S.C. § 103(a). We reverse the Examiner’s decision rejecting claims 8, 19, 30, 41, 52, 63, 74, and 85 under pre-AIA 35 U.S.C. § 103(a). Appeal 2021-001430 Application 12/353,188 11 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4-6, 8, 9, 12, 15-17, 19, 20, 23, 26-28, 30, 31, 34, 37- 39, 41, 42 103(a) Huang, Ling, Breuer 1, 4-6, 9, 12, 15-17, 20, 23, 26- 28, 31, 34, 37-39, 42 8, 19, 30, 41 7, 18, 29, 40 103(a) Huang, Ling, Breuer, Mooney 7, 18, 29, 40 10, 21, 32, 43, 45, 48- 50, 52, 53, 55, 56, 59- 61, 63, 64, 66, 67, 70- 72, 74, 75, 77, 78, 81- 83, 85-87 103(a) Huang, Ling, Breuer, Ergen 10, 21, 32, 43, 45, 48- 50, 53, 55, 56, 59-61, 64, 66, 67, 70-72, 75, 77, 78, 81- 83, 86, 87 52, 63, 74, 85 51, 62, 73, 84 103(a) Huang, Ling, Breuer, Ergen, Mooney 51, 62, 73, 84 Overall Outcome 1, 4-7, 9, 10, 12, 15- 18, 20, 21, 23, 26-29, 31, 32, 34, 37-40, 42, 43, 45, 48- 51, 53, 55, 56, 59-62, 64, 66, 67, 70-73, 75, 77, 78, 81- 84, 86, 87 8, 19, 30, 41, 52, 63, 74, 85 Appeal 2021-001430 Application 12/353,188 12 TIME PERIOD FOR RESPONSE 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). AFFIRMED IN PART