Telefonaktiebolaget L M Ericsson (publ)Download PDFPatent Trials and Appeals BoardJun 29, 20212020002684 (P.T.A.B. Jun. 29, 2021) Copy Citation 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. Appeal 2020-002684 Application 14/547,945 4 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). Appeal 2020-002684 Application 14/547,945 5 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. Appeal 2020-002684 Application 14/547,945 6 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). Appeal 2020-002684 Application 14/547,945 7 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 Copy with citationCopy as parenthetical citation