TELEFONAKTIEBOLAGET LM ERICSSON (PUBL)

Patent Trials and Appeals Board

Nov 4, 2020

2019004262 (P.T.A.B. Nov. 4, 2020)

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.
15/035,641 05/10/2016 Mattias Tan Bergström 1009-1861 / P42081 US2 8395
102721 7590 11/04/2020
Murphy, Bilak & Homiller/Ericsson
1255 Crescent Green
Suite 200
Cary, NC 27518
EXAMINER
NGUYEN, THAI
ART UNIT PAPER NUMBER
2469
NOTIFICATION DATE DELIVERY MODE
11/04/2020 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 MATTIAS TAN BERGSTRÖM,
GUNNAR MILDH, and MAGNUS STATTIN
________________

Appeal 2019-004262
Application 15/035,641
Technology Center 2400
________________

Before JASON V. MORGAN, ERIC B. CHEN, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 67, 68, and 70–84. The Examiner finds
claim 69 would be allowable if rewritten in independent form including all
the recitations from which it depends. Final Act. 10. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Telefonaktiebolaget LM Ericsson (publ). Appeal Br. 2.
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SUMMARY OF THE DISCLOSURE
Appellant’s claimed subject matter relates to a mobile device that
receives a list of wireless area network (WLAN) identifiers from a
communication network and uses the received list for access network
selection or traffic steering. Abstract.
EXEMPLARY CLAIMS
(Key Limitations and Bracketing Emphasized)
67. A method, in a mobile device operating in a communication
network, the method comprising:
receiving, from the communication network, [1] a list of
wireless local area network (WLAN) identifiers for use in an
access network selection or traffic steering procedure
performed by the mobile device,
storing the received list of WLAN identifiers and
[2] removing the stored list of WLAN identifiers in response to
a mobility event, or a connectivity event, or expiry of a validity
timer for the stored list.
72. The method of claim 67, the method further comprising the
step of:
sending an indication of the capability of the mobile device to
receive [3] a list of WLAN identifiers to the communication
network.
75. The method of claim 74, the method further comprising the
step of:
[4] comparing the received identifier for the list of WLAN
identifiers that is valid for the area in which the mobile device
is located to an identifier for the received list of WLAN
identifiers; and
requesting a list of WLAN identifiers valid for the area in
which the mobile device is located if the received identifier
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does not match the identifier for the received list of WLAN
identifiers.
76. A mobile device for use in a communication network, the
mobile device being configured to:
receive a list of wireless local area network (WLAN) identifiers
from the communication network,
use the list of WLAN identifiers in an access network selection
or traffic steering procedure performed by the mobile device,
the mobile device being configured to store the received list of
WLAN identifiers and the mobile device being further
configured to remove the stored list of WLAN identifiers in
response to a mobility event, or a connectivity event, or expiry
of a validity timer for the stored list.
83. The mobile device of claim 76, [5] wherein the mobile
device is further configured to receive an identifier for a list of
WLAN identifiers that is valid for an area in which the mobile
device is located.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Van de Groenendaal US 2012/0079567 A1 Mar. 29, 2012
Shaheen et al. WO 2005/089249 A2 Sept. 29, 2005
REJECTIONS
The Examiner rejects claims 72, 75, 80, 83, and 84 under 35 U.S.C.
§ 112(b) as indefinite. Final Act. 3–5
The Examiner rejects claims 67, 68, 70–74, and 76–83 under
35 U.S.C. § 103 as obvious over Shaheen and Van de Groenendaal. Final
Act. 7–9.
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ANALYSIS
Indefiniteness—Claims 72 and 80
In rejecting claim 72 as indefinite, the Examiner finds that it is unclear
whether recitation [3], “a list of WLAN identifiers,” refers back to recitation
[1], “a list of wireless local area network (WLAN) identifiers,” of claim 67,
from which claim 72 depends. Final Act. 4.
Appellant contends the Examiner erred because “[w]hen read in
context, it is clear that the ‘list’ referred to in [claim 72], in the phrase ‘a list
of WLAN identifiers,’ is a generic, hypothetical list”—that claim 72 simply
specifies “that the mobile device tells the communication network whether
[the mobile device] is capable, as a general matter, of receiving a (non-
specific) list of WLAN identifiers.” Appeal Br. 6–7. Appellant contends that
claim 67, “on the other hand specif[ies] that a list is actually received.” Id. at
7; Reply Br. 3.
Based on Appellant’s characterizations, claim 72, if rewritten in
independent form to include the recitations of claim 67—with bracketing
and emphasis added for recitations [1] and [3] and other non-substantive
adjustments—would read as follows:
72. A method, in a mobile device operating in a communication
network, the method comprising:
sending an indication of the capability of the mobile device to
receive [3] a list of wireless local area network (WLAN)
identifiers to the communication network,
receiving, from the communication network, [1] a list of
WLAN identifiers for use in an access network selection or
traffic steering procedure performed by the mobile device,
storing the received list of WLAN identifiers and
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removing the stored list of WLAN identifiers in response to a
mobility event, or a connectivity event, or expiry of a validity
timer for the stored list.
Rewriting claim 72 in as an independent claim accentuates the
ambiguity the Examiner identifies. Final Act. 4. Specifically, by introducing
the recitation of a “a list of WLAN identifiers” twice without an explicit,
substantive distinction between the two recitations, claim 72 can be
interpreted to encompass either (1) sending an indication of the capability of
the mobile device to receive a particular list of WLAN identifiers and then
receiving, from the communication network, the particular list of WLAN
identifiers that the mobile device has the capability of receiving or (2)
sending an indication of the general capability of the mobile to receive a list
of WLAN identifiers and receiving, from the communication network, a
particular received list of WLAN identifiers in accordance with that general
capability.
Appellant argues that the second interpretation—where “a list of
WLAN identifiers” refers both to lists of WLAN identifiers in general and to
a list of WLAN identifiers in particular—is the broadest reasonable
interpretation in light of the Specification. Appeal Br. 6–7. But both
interpretations are reasonable. The limited disclosures in the Specification
related to recitation [3] is insufficient to resolve this ambiguity. Spec. 5
(disclosing an optional mechanism for “the UE to indicate that it is capable
of receiving the WLAN list (e.g. as part of the UE radio or network
capabilities)”).
During prosecution, a “claim is indefinite when it contains words or
phrases whose meaning is unclear” or “if a claim is amenable to two or more
plausible claim constructions.” Ex parte McAward, Appeal 2015-006416,
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2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential as to Section
I.B) (citing In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014)); Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential).
“[C]laims are required to be cast in clear—as opposed to ambiguous, vague,
indefinite—terms . . . [to] notify the public of what is within the protections
of the patent, and what is not.” Packard, 751 F.3d at 1313; see also MPEP
§ 2173.02(I). Moreover, “[c]onstruing claims broadly during prosecution is
not unfair to the applicant . . . because the applicant has the opportunity to
amend the claims to obtain more precise claim coverage.” In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “An essential purpose
of patent examination is to fashion claims that are precise, clear, correct, and
unambiguous. Only in this way can uncertainties of claim scope be removed,
as much as possible, during the administrative process.” In re Zletz, 893 F.2d
319, 322 (Fed. Cir. 1989).
As explained above, the use of the same language for recitations [1]
and [3] obfuscates the intended meaning of “a list of WLAN identifiers” in
one context as a general description of the type of data that can be received
(recitation [3]) and in another context as a particular list of received data
items (recitation [1]). Thus, the undifferentiated language makes plausible at
least one other interpretation: that both uses of “a list of WLAN identifiers”
refers to the same particular set of data. Therefore, recitation [3] renders
claim 72 indefinite.
Accordingly, we sustain the Examiner’s indefiniteness rejection under
35 U.S.C. § 112(b) of claim 72, and claim 80, which Appellant does not
argue separately with respect to this rejection. Appeal Br. 6–8.
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Indefiniteness—Claims 75 and 84
In rejecting claim 75 as indefinite, the Examiner finds that recitation
[4]—“comparing the received identifier for the list of WLAN identifiers that
is valid for the area in which the mobile device is located to an identifier for
the received list of WLAN identifiers”—is ambiguous because
[i]n the case that the mobile device has not triggered any
conditions in [claim 67] to remove [the] list of WLAN
identifiers, it’s unclear if [the] “received identifier for the list of
WLAN identifiers that is valid for the area” would overwrite
the list of WLAN identifiers recited in [claim 67] or would
supplement that list.
Final Act. 4; Ans. 16–17.
Appellant contends the Examiner erred because claim 75 refers to an
identifier for a “list[], rather than to the WLAN identifiers in any given list.”
Appeal Br. 12; Reply Br. 16. That is, Appellant characterizes the “identifier
for the list of WLAN identifiers that is valid for the area in which the mobile
device is located” as identifying a particular list of WLAN identifiers rather
than directly identifying a WLAN. We agree with this characterization,
which accords with both the plain meaning of claim 75 and with the
Specification’s disclosure. Spec. 7. In particular, both recitation [4] and the
Specification describe the use of identifiers for lists of WLAN identifiers
rather than identifiers in lists of WLAN identifiers. Therefore, we agree with
Appellant that recitation [4] does not render claim 75 indefinite.
Accordingly, we do not sustain the Examiner’s indefiniteness
rejection under 35 U.S.C. § 112(b) of claim 75, and claim 84, which
Appellant similarly rejects. Final Act. 4.
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Indefiniteness—Claim 83
In rejecting claim 83 as indefinite, the Examiner finds that recitation
[5]—“wherein the mobile device is further configured to receive an
identifier for a list of WLAN identifiers that is valid for an area in which the
mobile device is located”—makes it “unclear if the associated list of WLAN
identifiers is also sent along with the list identifier or if the UE only requires
the list identifier to operate.” Final Act. 4; Ans. 13–16.
Appellant contends the Examiner erred because claim 83 “covers a
mobile device that is configured to receive the associated list along with the
list identifier, as well as a mobile device that is configured to receive the
associated list separately, or not at all.” Appeal Br. 9. Appellant’s argument
is persuasive because breadth is not indefiniteness. SmithKline Beecham
Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005) (quoting In re
Gardner, 427 F.2d 786, 788 (CCPA 1970)). The Examiner has, at most,
identified multiple embodiments within the scope of claim 83. Final Act. 3.
The Examiner’s identified embodiments are not based on recitation
[5] being amenable to two or more plausible claim constructions or
otherwise being unclear. McAward, 2017 WL 3669566, at *5. Rather, these
embodiments all describe a mobile device configured to receive an identifier
for a list of WLAN identifiers that is valid for an area in which the mobile
device is located. Final Act. 3; Ans. 13–16. Therefore, the Examiner’s
findings fail to show that recitation [5] renders claim 83 indefinite.
Accordingly, we do not sustain the Examiner’s indefiniteness
rejection under 35 U.S.C. § 112(b) of claim 83.
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Obviousness
In rejecting claim 67 as obvious, the Examiner finds Van de
Groenendaal’s wireless manager teaches or suggests recitation [2],
“removing the stored list of WLAN identifiers in response to a mobility
event, or a connectivity event, or expiry of a validity timer for the stored
list.” Final Act. 8 (citing Van de Groenendaal Abstract, ¶¶ 17, 19, 30, 34,
Figs. 1, 2A, 7D); Ans. 18–21 (further citing Van de Groenendaal ¶¶ 27, 92).
Appellant contends the Examiner erred because recitation [2]
“positively recites that the stored WLAN is removed, and further specifies
that this removal is in response to one of three specific events.” Appeal Br.
13. Appellant argues the Examiner’s findings fail to show that Van de
Groenendaal suggests “that a mobile device removes a stored list of WLAN
identifiers in response to a mobility event or a connectivity event” (id. at 14)
or “expiry of a validity timer for the stored list” (id. at 14 n.1).
In support of this argument, Appellant details nearly all of the portions
of Van de Groenendaal cited by the Examiner to show that they fail to
suggest the use in recitation [2] of one of the specific events recited to
trigger removing the stored list of WLAN identifiers (i.e., removing the
stored list in response to one of the events). Appeal Br. 14–18; Reply Br.
19–21. The only portions of Van de Groenendaal that the Examiner cites
with respect to recitation [2] that Appellant does not address in detail are
paragraphs 27 and 92, which the Examiner newly cites. Ans. 20–21. But the
Examiner merely cites to these portions of Van de Groenendaal for its
teachings that UEs encompass “end user wireless devices (e.g., portable
cellular telephones, smartphones, wireless-enabled tablet computers, etc.)
that are useable in cellular systems” (id. at 20 (quoting Van de Groenendaal
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¶ 92) (emphasis omitted)), that an administrator may also be a user of a
client, and that a client encompasses “a personal computer, touch screen
terminal, workstation, network computer, kiosk, wireless data port, smart
phone, [and] personal data assistant” (id. at 20–21 (quoting Van de
Groenendaal ¶ 27) (emphasis omitted)). The Examiner does not cite to
paragraphs 27 or 92 of Van de Groenendaal for additional support regarding
the claimed reliance on the events of recitation [2] for removing a stored list.
Id.
Appellant correctly shows that the most pertinent cited teaching of
Van de Groenendaal is the “‘connection profile wizard,’ which includes
controls for adding and removing individual BSSIDs from lists of allowed
and disallowed BSSIDs.” Appeal Br. 16 (citing Van de Groenendaal Fig.
7D). Appellant notes, however, that this manipulation of allowed and
disallowed lists fails to suggest “that the mobile device removes a stored list
of WLAN identifiers in response to a mobility event, or a connectivity event,
or expiry of a validity timer.” Id. The Examiner finds that “Van de
Groenendaal discloses an administrator is also a user of the mobile device to
perform operations such as those in FIG. 7D.” Ans. 20. But even if these
controls suggest removing a stored list of WLAN identifiers, the Examiner’s
findings still fail to show that the list is removed in response to a mobility
event, or a connectivity event, or expiry of a validity timer for the stored list,
as required by recitation [2]. Moreover the Examiner does not show that
Shaheen cures the noted deficiency of Van de Groenendaal. Therefore, the
Examiner’s findings fail to show that the combination of Shaheen and Van
de Groenendaal teaches or suggests recitation [2].
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Accordingly, we do not sustain the Examiner’s obviousness rejection
under 35 U.S.C. § 103 of claim 67, or claims 67, 68, 70–74, and 76–83,
which contain similar recitations.
CONCLUSION
Claims
Rejected
35
U.S.C. §
References/
Basis Affirmed Reversed
72, 75, 80,
83, 84
112(b) Indefiniteness 72, 80 75, 83, 84
67, 68, 70–
74, 76–83
103 Shaheen,
Van de Groenendaal
67, 68, 70–74,
76–83
Overall
Outcome
72, 80 67, 68, 70, 71,
73–79, 81–84
TIME PERIOD FOR RESPONSE
No time period for taking subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART