Telefonaktiebolaget L M Ericsson (publ)

Patent Trials and Appeals Board

Jun 29, 2021

2020002684 (P.T.A.B. Jun. 29, 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.
14/547,945 11/19/2014 Elena Myhre 4015-9029 / P29711-US3 3178
24112 7590 06/29/2021
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
WYLLIE, CHRISTOPHER T
ART UNIT PAPER NUMBER
2465
MAIL DATE DELIVERY MODE
06/29/2021 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 ELENA MYHRE and TARMO KUNINGAS
_____________

Appeal 2020-002684
Application 14/547,945
Technology Center 2400
____________

Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–43, which constitute all the claims pending. Appeal Br. 2. We
have jurisdiction over the pending claims 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(a) (2019). According to Appellant, the real party in interest is
Telefonaktiebolaget L M Ericsson. Appeal Br. 2.
Appeal 2020-002684
Application 14/547,945

2
STATEMENT OF THE CASE2
Introduction
Appellant’s disclosed and claimed subject matter relates generally to
“cellular radio communication networks, and more particularly to energy-
saving mechanisms in a heterogeneous network having at least two different
types of cells.” Spec. ¶ 2.
Representative Independent Claim 1
1. A method of operating a first base station serving a basic
cell providing basic radio coverage, said basic cell having a
neighbour cell relation to an associated capacity enhancing
cell served by a second base station different from the first
base station, wherein the basic cell and the capacity
enhancing cell are different cells, said method performed by
the first base station and comprising:
receiving an indication on the Radio Network Layer (RNL)
in the X2 Application Protocol (X2AP) that the associated
capacity enhancing cell is shut off over the air for energy
saving purposes, and keeping corresponding cell
configuration information of the capacity enhancing cell, the
cell configuration information indicating an operational
configuration of the capacity enhancing cell before the
capacity enhancing cell is shut off, wherein when shut off
the capacity enhancing cell does not provide radio coverage
and does not provide radio signal transmissions, and wherein
the second base station serving the capacity enhancing cell
remains on when the capacity enhancing cell is shut off; and
sending a wake-up call message on the Radio Network
Layer (RNL) in the X2 Application Protocol (X2AP) to the
second base station serving the associated capacity

2 We herein refer to the Final Office Action, mailed Mar. 4, 2019 (“Final
Act.”); Appeal Brief, filed Nov. 15, 2019 (“Appeal Br.”); the Examiner’s
Answer, mailed Jan. 13, 2020 (“Ans.”); and the Reply Brief, filed Feb. 21,
2020 (“Reply Br.”).
Appeal 2020-002684
Application 14/547,945

3
enhancing cell when it is decided that the first base station
serving the basic cell needs the capacity enhancing cell to
return operational, the wake-up call message indicating the
operational configuration of the capacity enhancing cell kept
by the first base station, the operational configuration to be
utilized by the capacity enhancing cell for its cell
configuration when it returns to operational responsive to
receiving the wake-up call message.
Appeal Br. 14, Claims App. (disputed limitations emphasized).
Evidence
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Bowser et al.
(“Bowser”)
US 2010/0002610 A1 Jan. 7, 2010
Breuer et al.
(“Breuer”) 3
EP 2056628 A1 Oct. 30, 2007
Evolved Universal Terrestrial Radio Access Network (E-UTRAN); X2
Application Protocol (X2AP) (3GPP TS 36.423 version 8.6.0 Release 8);
publ. June, 2009 (“3GPP”)

Rejection
Claims Rejected 35 U.S.C. § Reference(s)/Basis
1–43 103(a) Bowser, Breuer, 3GPP

3 The Examiner initially cites to Breuer et al., as “Volker” in the Final
Action, where Volker is the first name of the inventor Breuer. Final Act.
3–4. The Examiner then correctly cites to this reference in the Answer. See
Ans. 3.
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Application 14/547,945

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ANALYSIS
Rejection under 35 U.S.C. § 103(a)
Independent Claim 1
Under 35 U.S.C. § 103(a), we focus our analysis on the following
argued limitations regarding the rejection of independent claim 1.
Issues: Did the Examiner err by finding that Bowser, Breuer, and
3GPP collectively, teach or suggest the disputed limitations:
receiving an indication . . . that the associated capacity
enhancing cell is shut off over the air for energy saving
purposes, and keeping corresponding cell configuration
information of the capacity enhancing cell, the cell
configuration information indicating an operational
configuration of the capacity enhancing cell before the capacity
enhancing cell is shut off, . . . and
sending a wake-up call message . . . , the wake-up call
message indicating the operational configuration of the
capacity enhancing cell kept by the first base station, the
operational configuration to be utilized by the capacity
enhancing cell for its cell configuration when it returns to
operational responsive to receiving the wake-up call message,
within the meaning of independent claim 1? (Emphasis added regarding
disputed limitations).4
Regarding the rejection of claim 1’s disputed limitations, the
Examiner further explains the basis for the rejection in the Answer.
The Examiner finds Breuer teaches:
[T]he second base station can be controlled to activate radio
resource parameters, frequency bands, and signaling power
(paragraphs 0036, 0068, and 0077). Paragraphs 0030 and 0100
disclose that each base station knows the current activity state

4 Throughout this opinion we give the contested claim limitations the
broadest reasonable interpretation (BRI) consistent with the Specification.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Application 14/547,945

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of each other base station by an activity state signal or directly
from the base station changing states.
Paragraph 0064 and 0093 disclose switching to “normal
operation” and “resuming activity” when the switching signal is
received.
Ans. 5.
The Examiner further finds Bowser teaches “activating addition base
stations/cells, shows that each base station is capable of different power
levels (see Figures 19-23) wherein a selected base station can be activated
from a power save mode at a commanded power level (paragraphs 0051-
0052, 0090-0091, and 0108-0109).” Ans. 5.
Regarding the disputed limitations of claim 1, and based upon our
review of the record, we find Appellant’s contentions are persuasive as
summarized in the Reply Brief:
While Breuer discusses returning a first base station to a
“normal activity state,” Breuer does not teach or suggest that
such a “normal activity state” is the same as whatever activity
state the base station was in before it was shut off. Contrary to
the Examiner’s assertions, neither “resuming activity” nor
switching to “normal operation” represents the operational
configuration of the base station (equated to the claimed
capacity enhancing cell) before shut off. Even if a “normal”
operational or activity state could be viewed as some kind of
previous state, nothing in the cited art teaches or suggests that
this normal operational/activity state is the state the base station
or corresponding cell was in before being shut off, or that such
a previous state of the base station serving a particular cell (the
claimed capacity enhancing cell) before shut off is kept by a
different base station serving a neighboring cell (the claimed
basic cell).
Reply Br. 3.
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Application 14/547,945

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Based upon our review of the evidence and the record, we find a
preponderance of the evidence supports Appellant’s arguments. Id.
In particular, the Examiner is required to find that the cited
combination of prior art teaches both claim limitations: “the cell
configuration information indicating an operational configuration of the
capacity enhancing cell before the capacity enhancing cell is shut off” and
that “the wake-up call message indicating the operational configuration of
the capacity enhancing cell kept by the first base station, [references] the
operational configuration to be utilized by the capacity enhancing cell for its
cell configuration when it returns to operational[,] responsive to receiving
the wake-up call message.” Claim 1 (emphasis added). Thus, the Examiner
is required to provide a teaching or suggestion in the cited combination of
references that shows the cell configuration when the cell receives a wake-
up call message corresponds to the cell configuration information before the
cell was shut off.
We agree with Appellant that “one of ordinary skill in the art would
not understand Breuer’s switching from stand-by to normal operation (par.
93 of Breuer) as meeting the claim limitations as alleged.” See Applied Med.
Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir.
2006) (“[T]he use of two terms in a claim requires that they connote
different meanings . . . .”).
Moreover, “when a reference is complex or shows or describes
inventions other than that claimed by the applicant, the particular part relied
on must be designated as nearly as practicable. The pertinence of each
reference, if not apparent, must be clearly explained and each rejected
claim specified.” 37 C.F.R. § 1.104(c)(2) (emphasis added).
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Application 14/547,945

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Here, the Examiner has not fully developed the record by providing
sufficient evidence to show that the claimed “cell configuration information
indicating an operational configuration of the capacity enhancing cell
before the capacity enhancing cell is shut off” is also “the operational
configuration to be utilized by the capacity enhancing cell for its cell
configuration” when it wakes up, responsive to the wake-up call message.
Based upon our review of the cited teachings of Bowser, Breuer, and
3GPP, on this record, we find some degree of speculation would be required
to affirm the Examiner. We decline to engage in such speculation.
For essentially the same reasons argued by Appellant in the Briefs, we
are constrained on this record to reverse the Examiner’s rejection of
independent claim 1. Because we have reversed the rejection of independent
claim 1, for the same reasons, we also reverse the rejection of independent
claims 11, 25, 33, and 43, which recite the disputed limitations using similar
language of commensurate scope. Because we have reversed the
obviousness rejection for all independent claims on appeal, for the same
reasons, we also reverse the rejection of each dependent claim.
CONCLUSION
The Examiner erred in rejecting claims 1–43 as being obvious under
35 U.S.C. § 103(a), over the cited combinations of references.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–43 103(a) Bowser, Breuer, 3GPP 1–43
REVERSED