TELEFONAKTIEBOLAGET LM ERICSSON (PUBL)Download PDFPatent Trials and Appeals BoardMay 11, 202014910166 - (D) (P.T.A.B. May. 11, 2020) 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. 14/910,166 02/04/2016 Jens Bergqvist 1009-1744 / P46086 US2 1791 102721 7590 05/11/2020 Murphy, Bilak & Homiller/Ericsson 1255 Crescent Green Suite 200 Cary, NC 27518 EXAMINER CHENG, CHI TANG P ART UNIT PAPER NUMBER 2463 NOTIFICATION DATE DELIVERY MODE 05/11/2020 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 JENS BERGQVIST, OLOF LIBERG, PAUL SCHLIWA-BERTLING, and MÅRTEN SUNDBERG Appeal 2019-001560 Application 14/910,166 Technology Center 2400 BEFORE ELENI MANTIS MERCADER, ST. JOHN COURTENAY III, and KRISTEN L. DROESCH, Administrative Patent Judges. DROESCH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 51–98. 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 (2017). Appellant indicates the real party-in-interest is Telefonaktiebolaget LM Ericsson. Appeal Br. 2. Appeal 2019-001560 Application 14/910,166 2 BACKGROUND The disclosed invention relates to load balancing in a wireless communications network. Spec. Abstract, 1:5–7. CLAIMED SUBJECT MATTER Claim 51, which is representative of the subject matter of the appeal and is reproduced from the Claims Appendix of the Appeal Brief, reads as follows: 51. A method performed by a radio network node for load balancing in a wireless communications network, wherein the radio network node is configured to communicate with a wireless device supporting both normal coverage and extended coverage, wherein the radio network node and the wireless device are operating in the wireless communications network, and wherein the method comprises: determining an indication informing the wireless device of at least one of the following: that the wireless device, when in normal coverage, is to monitor one of a downlink legacy resource and an extended coverage resource for information, and that the wireless device, when in normal coverage, is to use one of an uplink legacy resource and an extended coverage resource when accessing the wireless communications network; and transmitting the indication to the wireless device. Appeal 2019-001560 Application 14/910,166 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Haapaniemi et al. (“Haapaniemi”) US 2013/0294319 A1 Nov. 7, 2013 Pandey et al. (“Pandey”) US 2014/0370895 A1 Dec. 18, 2014 Gong et al. (“Gong”) US 2017/0142718 A1 May 18, 2017 REJECTIONS ON APPEAL Claims 51, 60, 81, and 90 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter.2 Final Act. 3–6 Claims 51–54, 56, 60–63, 65, 69, 73, 75, 79, 81–86, and 90–95 stand rejected under 35 U.S.C. § 102(a)(1) as anticipated by Haapaniemi. Final Act. 7–16. Claims 57–59, 66–68, 70–72, 76–78, 88–89, 97, and 98 stand rejected under 35 U.S.C. § 103 as unpatentable over Haapaniemi and Gong. Final Act. 16–19. Claims 55, 64, 74, 80, 87, and 96 stand rejected under 35 U.S.C. § 103 as unpatentable over Haapaniemi and Pandey. Final Act. 19–20. Claim 51–98 stand rejected under 35 U.S.C. § 112(b) as being indefinite. Final Act. 2–3. ANALYSIS Rejection Under 35 U.S.C. § 101 Appellant disputes the Examiner’s determination that claims 51, 60, 81, and 90 are directed to patent-ineligible subject matter. See Appeal Br. 13–17. Appellant argues claims 51 and 60 together as a group. See id. Appellant’s arguments addressing independent claims 81 and 90 incorporate 2 The rejection of independent claims 69 and 75 under 35 U.S.C. § 101 are withdrawn. Ans. 3. Appeal 2019-001560 Application 14/910,166 4 Appellant’s arguments addressing claims 51 and 60. See Appeal Br. 17. Consequently, we choose claim 51 as representative of the group consisting of claims 51, 60, 81, and 90. 37 C.F.R. § 41.37(c)(1)(iv). The Supreme Court’s two-step framework guides our analysis of patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). In addition, the Office published revised guidance for evaluating subject matter eligibility under 35 U.S.C. § 101, specifically with respect to applying the Alice framework. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). If a claim falls within one of the statutory categories of patent eligibility (i.e., a process, machine, manufacture, or composition of matter) then the first inquiry is whether the claim is directed to one of the judicially recognized exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must “look at the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). According to the Guidance, this first inquiry has two prongs of analysis (i) does the claim recite a judicial exception (e.g., an abstract idea) and (ii) if so, is the judicial exception integrated into a practical application. See Guidance, 84 Fed. Reg. at 54. Under the Guidance, if the judicial exception is integrated into a practical application, the claim is patent eligible under § 101. See id. at 54–55. If the claims are not directed to a judicial exception, the inquiry ends. See McRO Inc. v. Bandai Namco Games Amer. Inc., 837 F.3d 1299, 1312 (Fed Cir. 2016). However, if the claim is directed to a judicial exception (i.e., recites a judicial exception and does not integrate the exception into a practical application), the next step is Appeal 2019-001560 Application 14/910,166 5 to determine whether any element, or combination of elements, amounts to significantly more than the judicial exception. See Alice, 573 U.S. at 217; Guidance, 84 Fed. Reg. at 56. Here, we determine that claim 51 recites determining an indication informing a wireless device that, when in normal coverage, the wireless device is to monitor one of a downlink legacy resource and an extended coverage resource for information, and/or the wireless device is to use one of an uplink legacy resource and an extended coverage resource when accessing the wireless communications network. This is consistent with how Appellant describes the claimed invention. See, e.g., Spec. 4:14–17, 4:25–29, 6:1–4, 6:12–15, 17:23–34, 22:8–11. Consistent with the Guidance and case law, we conclude the step of determining an indication informing a wireless device that, when in normal coverage, the wireless device is to monitor one of a downlink legacy resource and an extended coverage resource for information, and/or the wireless device is to use one of an uplink legacy resource and an extended coverage resource when accessing the wireless communications network, could be performed alternatively as a mental process and, thus, is an abstract idea. See Guidance, 84 Fed. Reg. at 52; see also Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (holding that computer-implemented method for “anonymous loan shopping” was an abstract idea because it could be “performed by humans without a computer”); Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.”). Appeal 2019-001560 Application 14/910,166 6 We are not persuaded by Appellant’s argument that the claims do not recite an abstract idea because “the claims involve specific instructions, for carrying out specific physical operations (e.g., monitoring one radio resource or another, or using one radio resource or another for accessing a wireless communications network).” Appeal Br. 13; Reply Br. 10; see also Appeal Br. 14–15 (“The present claims are directed to techniques where a network node formulates specific instructions . . . specific and concrete techniques for directing the operation of wireless devices within a communications network.”). We agree with the Examiner that Appellant mischaracterizes the claimed invention. See Ans. 5. In particular, we agree with the Examiner that there are two affirmative steps claimed: “determining an indication” and “transmitting the indication,” and the remaining recited technical features do not require the performance of any physical or non-abstract act. See id. at 5–6. Although claim 51 recites determining an indication informing the wireless device of what Appellant characterizes as “specific instructions,” we observe that claim 51 does not recite or require determining the “specific instructions” themselves, or performing “specific and concrete techniques” of said instructions. Contrary to Appellant’s argument that claim 51 recites specific signaling to the wireless device whether it should use legacy resources or extended coverage resources for certain operations (see Reply Br. 11), the broadest reasonable interpretation of “determining an indication informing the wireless device of at least one of the following: that the wireless device, when in normal coverage, is to monitor one of a downlink legacy resource and an extended coverage resource for information, and that the wireless device, when in normal coverage, is to use one of an uplink legacy resource Appeal 2019-001560 Application 14/910,166 7 and an extended coverage resource when accessing the wireless communications network” may include determining a particular binary code (e.g., 00, 01, 001, 101, 111, 000) that would inform the wireless device to implement corresponding preprogrammed instructions stored in the wireless device. Following receipt of the indication, the preprogrammed instructions would cause the wireless device, when in normal coverage, “to monitor one of a downlink legacy resource and an extended coverage resource for information,” and/or “to use one of an uplink legacy resource and an extended coverage resource when accessing the wireless communications network.” In any event, determining an indication informing the wireless device of “specific instructions” could be performed alternatively as a mental process, regardless of the content of those “specific instructions.” Because the claim recites a judicial exception, we next determine whether the claim integrates the judicial exception into a practical application. See Guidance, 84 Fed. Reg. at 54. To determine whether the judicial exception is integrated into a practical application, we identify whether there are “any additional elements recited in the claim beyond the judicial exception(s)” and evaluate those elements to determine whether they integrate the judicial exception into a recognized practical application. Guidance, 84 Fed. Reg. at 54–55 (emphasis added); see Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018). The additional element recited in claim 51 is “transmitting the indication to the wireless device.” Here, we find the additional element does not integrate the judicial exception into a practical application. Specifically, the additional element does not: (1) reflect an improvement to the functionality of a computer or other technology or technical field (see Appeal 2019-001560 Application 14/910,166 8 MPEP § 2106.05(a)); (2) implement a “particular machine” to apply or use the judicial exception (see MPEP § 2106.05(b)); (3) effect a particular transformation of an article to a different thing or state (see MPEP § 2106.05(c)); or (4) apply the judicial exception in some other meaningful limitation beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort to designed to monopolize the exception (see MPEP § 2106.05(e)). See Guidance, 84 Fed. Reg. at 55. We are not persuaded by Appellant’s argument that “the claims at issue are patent eligible because they improve a technological process, i.e., the existing processes for how a wireless communication network handles extended coverage and related resource usage for wireless devices.” Appeal Br. 16 (citing Diamond v. Diehr, 450 U.S. 175, 191 (1981)); see id. at 15–16 (“the present application [discloses] certain problems that may occur . . . and which proposes a novel scheme for allowing the load on the network resources to be dynamically spread between the two sets of resources.” (citing Spec. 8:3–9:14, 9:16–19)); id. at 16 (reproducing Spec. 7:1–14, citing McRO, 837 F.3d at 1312, to support its argument that the specification can be used to indicate a claim is directed to an improvement in computer related technology); Reply Br. 10–11 (citing Spec. 3:3–5, 7:1–14; McRO). Appellant’s arguments do not sufficiently address whether the additional element (i.e., “transmitting the indication to the wireless device”) reflects an improvement in the functioning of a computer, or to other technology or technical field. “[A] claim for a new abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Appeal 2019-001560 Application 14/910,166 9 The additional element “transmitting the indication to the wireless device,” recited in claim 51 is the type of extra-solution activity (i.e., in addition to the judicial exception), the courts have determined insufficient to transform judicially excepted subject matter into a patent-eligible application. See MPEP § 2106.05(g); OIP Techs., Inc. v. Amazon.com, 788 F.3d 1359, 1363–64 (Fed. Cir. 2015) (determining additional elements of sending a first set of electronic messages over a network to devices, presenting offers, and gathering statistics were insufficient to transform the abstract idea into a patent eligible application); Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (“merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis”); Apple v. Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir. 2016) (agreeing with Board’s finding that printing a menu at a printer is an insignificant post-solution activity); FairWarning IP, LLC v. Iatric Sys. Inc., 839 F.3d 1089, 1093–1094 (Fed. Cir. 2016) (determining claims directed to collecting and analyzing information to detect misuse and notifying a user when misuse is detected are directed to an abstract idea (citing Elec. Power Grp., 830 F.3d at 1353)). Because we determine claim 1 is directed to a judicial exception, next we analyze the claims under step two of Alice to determine if there are additional elements that individually, or as an ordered combination, ensure the claims amount to “significantly more” than the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66, 77–79 (2012)). As stated in the Guidance, many of the considerations to determine whether the claims amount to “significantly more” under step two of the Alice framework are already considered as part Appeal 2019-001560 Application 14/910,166 10 of determining whether the judicial exception has been integrated into a practical application. See Guidance, 84 Fed. Reg. at 56. Therefore, at this point of our analysis, we determine if the claims add a specific element, or combination of elements, that is not well-understood, routine, conventional activity in the field, or simply append well-understood, routine, conventional activities at a high level of generality. See id. “Whether something is well- understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.” Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). Here, Appellant’s claims do not recite specific elements or a combination of elements that are not well-understood, routine, and conventional. Again, the additional element of claim 1 is “transmitting the indication to the wireless device.” We are not persuaded by Appellant’s argument that the Final Office Action provides no evidence to support the assertion that the additional element recites no more than routine or well- known operations. See Reply Br. 11–12. Our reviewing courts have determined that transmitting information is well understood, routine, or conventional. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2017) (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., 788 F.3d at 1363 (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (computer receives and sends information over a network). We are not persuaded by Appellant’s argument that the claims provide a way to spread the load from wireless devices between legacy network resources and new “extended coverage” resources that involves non- Appeal 2019-001560 Application 14/910,166 11 conventional and non-routine signaling mechanisms. See Appeal Br. 16. Appellant’s arguments do not address sufficiently whether the additional element (i.e., “transmitting the indication to the wireless device”) is well understood, routine, or conventional. “What is needed is an inventive concept in the non-abstract application realm.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). For the foregoing reasons, we find that the additional element “transmitting the indication to the wireless device” does not provide an inventive concept such that claim 51 amounts to significantly more than the recited judicial exception. Accordingly, for the foregoing reasons we are not persuaded the Examiner erred in rejecting claims 51, 60, 81, and 90 under 35 U.S.C. § 101. Therefore, we sustain the rejection of claims 51, 60, 81, and 90 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Rejection under 35 U.S.C. § 102 The Examiner finds that Haapaniemi discloses “determining an indication informing the wireless device . . . that the wireless device, when in normal coverage, is to monitor one of a downlink legacy resource and an extended coverage resource for information,” as recited in independent claim 51, based on Haapaniemi’s disclosure of machine type communication (MTC) devices receiving an indication of the presence of a hybrid MTC channel. See Final Act. 8–10 (citing Haapaniemi ¶¶ 65–66, 76–98, 81–85, 88–89, 91, 112); see also id. at 10 (applying Haapaniemi in a similar manner to address the claim 51 limitation “determining an indication informing the wireless device . . . that the wireless device, when in normal coverage, is to use one of an uplink legacy resource and an extended coverage resource when accessing the wireless communications network”). The Examiner Appeal 2019-001560 Application 14/910,166 12 explains that the presence of a hybrid MTC channel provides an indication informing the MTC device to utilize the hybrid MTC channel, and further explains that the hybrid MTC channel discloses an “extended coverage resource,” in light of the broadest reasonable interpretation of that term. See id. at 8–10. Appellant argues that Haapaniemi does not disclose that the hybrid MTC channel is an extended coverage resource. See Appeal Br. 20. Appellant contends that “‘extended coverage’ is explicitly defined on page 2 of the specification as referring to ‘a coverage wherein operation at a path loss or radio coverage range exceeding the coverage range earlier supported by 3GPP cellular networks, such as GSM, is supported.’” Id. at 19; Reply Br. 13 (quoting Spec. 3:3–5), 15 (citing Spec. 3:3–5). According to Appellant, “Haapaniemi expresses no concern about ‘coverage’ at all and does not describe any operation or techniques that involve or provide ‘a coverage wherein operation at a path loss or radio coverage range exceeding the coverage range earlier supported by 3GPP cellular networks, such as GSM, is supported.’” Appeal Br. 20. The Examiner contends that there is no explicit redefinition of “extended coverage resource” in the Specification. See Ans. 8–9 (case citations omitted). The Examiner reproduces the following portions of the Specification: By the expression “extended coverage” when used in this disclosure is meant a coverage wherein operation at a path loss or radio coverage range exceeding the coverage range earlier supported by 3GPP cellular networks, such as GSM, is supported. By the expression “resource” when used in this disclosure is meant a channel or part(s) of a channel used for communication between a wireless device and a wireless communication Appeal 2019-001560 Application 14/910,166 13 network, e.g. between the wireless device and a radio network node. For example, in a GSM/EDGE network a resource refers to a time slot, or part(s) of a time slot, on a certain frequency channel. Thus, a legacy channel or part(s) of a legacy channel may be referred to as legacy resource and an extended coverage channel or part(s) of an extended coverage channel may be referred to as an extended coverage resource. Ans. 8 (reproducing Spec. 3:3–5, 8:15–21). The Examiner asserts that these portions of the Specification do not convey an unambiguous intent to restrict the metes and bounds of the claim terms because the excerpts use exemplary language, “e.g.,” “[f]or example,” “may be referred to as . . .”. See Ans. 8–9. According to the Examiner, “the language of this disclosure does not elevate it to the status of a lexicographic re-definition.” The Examiner instead posits that “[b]y ‘extended coverage resource’, a PHOSITA would readily comprehend a network communication resource, such as bandwidth, timeslots or time-frequency resources, that would be involved in implementing network coverage that would be more extensive than during conventional scenarios.” Id. at 9. In reply, Appellant argues that the Specification clearly and unambiguously states the meanings for “extended coverage” and “resource.” See Reply Br. 15 (quoting Spec. 3:3–5, 8:15–21). Appellant asserts that the expressions “e.g.” and “for example,” do not suggest any equivocation in these definitions, but indicate specific but not limiting examples of the defined terms. See id. Similarly, Appellant argues the expression “may be referred to as” is not an equivocation on the meaning of “extended coverage resource” or “resource.” See id. at 16. According to Appellant, the Specification “is simply saying that the term ‘extended coverage resource’ may correspond to all or part of an ‘extended coverage channel’” in these definitions, but indicate specific but not limiting examples of the defined Appeal 2019-001560 Application 14/910,166 14 terms. See id. Appellant further asserts that the ordinary and customary meaning for “extended coverage resource” offered by the Examiner discounts the Specification’s express statement that “extended coverage” refers to coverage beyond that provided by earlier 3GPP cellular networks. See id. at 16–17. We agree with Appellant that the Specification provides explicit definitions for “extended coverage” and “resource.” Spec. 3:3–5, 8:15–21. Appellant has acted as their own lexicographer because the Specification sets forth definitions for these terms in the Specification “with reasonable clarity, deliberateness, and precision” and “give[s] one of ordinary skill in the art notice of the change.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). That the Specification provides examples regarding the meaning of “extended coverage resource” does not detract from, nor add ambiguity to, the explicit definitions for “extended coverage” and “resource” provided in the Specification. Taking into account at least the explicit definition for “extended coverage” in the Specification, we agree with Appellant that Haapaniemi does not disclose resources for “a coverage wherein operation at a path loss or radio coverage range exceeding the coverage range earlier supported by 3GPP cellular networks, such as GSM, is supported.” Moreover, there is insufficient evidence offered to support the proffered ordinary and customary meaning for “extended coverage resource.” See Ans. 9. The ordinary and customary meaning offered by the Examiner discounts the meaning of “coverage.” Instead of addressing “coverage,” the ordinary and customary meaning offered by the Examiner introduces a new concept: “network coverage that would be more extensive than during conventional scenarios.” As evidenced by the applied prior art, the ordinary and customary meaning for “coverage” is “a maximum Appeal 2019-001560 Application 14/910,166 15 coverage area in which a user can obtain a service (properly receiving and transmitting data according to a specific proportion).” Gong ¶ 3; see also Pandey ¶ 22 (disclosing service in a coverage area). The proffered ordinary and customary meaning does not address an extended maximum coverage area in which a user can obtain service. For these reasons, we are constrained to reverse the rejection of claim 51 under 35 U.S.C. § 102(a)(1) as anticipated by Haapaniemi. The remaining independent claims 60, 69, 75, 81, and 90 recite limitations nearly identical to claim 51. Therefore, for the same reasons as claim 51, we are constrained to reverse the rejection of independent claims 60, 69, 75, 81, and 90, as well as claims 52–54, 56, 61–63, 65, 73, 79, 82–86, and 91–95, dependent therefrom, under 35 U.S.C. § 102(a)(1) as anticipated by Haapaniemi. Rejections under 35 U.S.C. § 103 Claims 55, 57–59, 64, 66–68, 70–72, 74, 76–78, 80, 87–89, and 96–98 depend from independent claims 51, 60, 69, 75, 81, and 90, respectively. As applied by the Examiner, the teachings of Gong and Pandey do not remedy the deficiencies identified with respect to the rejection of independent claims 51, 60, 69, 75, 81, and 90 under 35 U.S.C. § 102(a)(1) as anticipated by Haapaniemi. See Final Act. 16–20. Accordingly, for the same reasons as those explained above addressing independent claims 51, 60, 69, 75, 81, and 90, we are constrained to reverse the rejections of claims 55, 57–59, 64, 66– 68, 70–72, 74, 76–78, 80, 87–89, and 96–98 under 35 U.S.C. § 103. Rejection under 35 U.S.C. § 112(b) The Examiner rejects claims 51–98 under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject Appeal 2019-001560 Application 14/910,166 16 matter for which the inventor or a joint inventor regards as the invention. Final Act. 2–3. The Examiner points out that in each of independent claims 51, 60, 69, 75, 81, and 90, and the claims dependent therefrom, “an extended coverage resource” is recited at least twice. See id. at 3; see also Ans. 3 (clarifying the basis of the § 112(b) rejection, withdrawing recitation of “information” as basis for rejection). According to the Examiner, it is unclear whether the recitations are referring to the same or different extended coverage resource(s). Final Act. 3. Appellant argues “[i]n the context of the claim, especially as read in light of the specification, it is not unclear whether these recitations are referring to the same or different resources.” Appeal Br. 12; see Reply Br. 6 (similar argument). According to Appellant, the “language is used precisely to convey that these separate recitations might refer to the same or different [resources].” Appeal Br. 12. Appellant further argues that the first and second instructions recited in claim 51 involve completely distinct operations that are undertaken at different times and under different conditions. Thus, the person of ordinary skill in the art would appreciate that the claim implies no particular relationship at all between the “extended coverage resource” in the first instruction and the “extended coverage resource” in the second instruction. Appeal Br. 12; see Reply Br. 6 (similar argument). Appellant further contends that changing the second instance of “an extended coverage resource” to “the extended coverage resource” would change the claim to mean something different than intended. See Appeal Br. 12–13. The Examiner asserts that due to the explicit claim language, the claims encompass two separate embodiments, and asserts that the issue of different claim scopes is compounded by the recitations of “an extended Appeal 2019-001560 Application 14/910,166 17 coverage resource” in the dependent claims. See Ans. 4–5. The Examiner contends that this result is contrary to the purpose of § 112(b). See id. at 5. The Examiner further contends that the appearance of multiple instances of “an extended coverage resource” would confuse a member of the public regarding whether these recitations are referring to the same “extended coverage resource” or to different extended coverage resources. See id. Appellant argues that the Examiner’s Answer appears to be confusing the possibility of multiple alternative embodiments with claim ambiguity. See Reply Br. 7. Appellant asserts that claim breadth should not be confused with ambiguity. See id. We agree with Appellant that the Examiner’s rejection based on multiple recitations of “an extended coverage resource” does not render these claims indefinite. The Examiner’s rejection amounts to conflating the breadth of the claims with indefiniteness. Just because the claims cover two alternatives, the same extended coverage resource or different extended coverage resources, it does not render the claim indefinite. The breadth of a claim is not to be equated with indefiniteness. In re Miller, 441 F.2d 689, 693 (CCPA 1971). The Examiner also asserts that claims 51–98 are indefinite because “[i]t is unclear whether the subject matter appearing in the preamble in each of these claims should be given patentable weight. If so, such subject matter should be recited in the body of these claims.” Final Act. 2; see id. at 3 (applying rejection to dependent claims). The Examiner notes that the Appellant has not presented any remarks traversing the rejection as to the preamble of the independent claims. See Ans. 3. Appellant argues in the Reply that the Appeal Brief addressed the claims as a whole, and included arguments that a person of ordinary skill in Appeal 2019-001560 Application 14/910,166 18 the art would have no difficulty in ascertaining the metes and bounds of the claimed invention, when read in light of the Specification. See Reply Br. 3. Appellant further contends that it is not clear that the Final Office Action articulates an independent, free-standing, ground of rejection directed to the preambles of the independent claims. See id. at 3–4 (quoting Final Act. 2). Appellant asserts that the Examiner’s explanation “is not a cognizable ground of rejection.” Id. at 4. Appellant contends that it is not the law that the subject matter must appear in the body of the claims if the subject matter is to receive patentable weight. See id. at 4–5 (case citations omitted). We agree with Appellant that the Examiner’s rejection is improper under 35 U.S.C. § 112(b). A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951). Even if the Examiner did not accord patentable weight to the preamble resulting in a broader claim scope, it does not render the claim indefinite. Accordingly, for all these reasons, we are constrained to reverse the rejection of claims 51–98 under 35 U.S.C. § 112(b) as indefinite. CONCLUSION We affirm the Examiner’s rejection of claims 51, 60, 81, and 90 under 35 U.S.C. § 101. We reverse the Examiner’s rejection of claims 51–54, 56, 60–63, 65, 69, 73, 75, 79, 81–86, and 90–95 under 35 U.S.C. § 102(a)(1). We reverse the Examiner’s rejections of claims 55, 57–59, 64, 66–68, 70– Appeal 2019-001560 Application 14/910,166 19 72, 74, 76–78, 80, 87–89, and 96–98 under 35 U.S.C. § 103. We reverse the Examiner’s rejection of claim 51–98 under 35 U.S.C. § 112(b). In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 51, 60, 81, 90 101 Eligibility 51, 60, 81, 90 51–54, 56, 60– 63, 65, 69, 73, 75, 79, 81–86, 90–95 102(a)(1) Haapaniemi 51–54, 56, 60–63, 65, 69, 73, 75, 79, 81–86, 90–95 57–59, 66–68, 70–72, 76–78, 88–89, 97, 98 103 Haapaniemi, Gong 57–59, 66–68, 70–72, 76–78, 88–89, 97, 98 55, 64, 74, 80, 87, 96 103 Haapaniemi, Pandey 55, 64, 74, 80, 87, 96 51–98 112(b) Indefiniteness 51–98 Overall Outcome 51, 60, 81, 90 52–59, 61–80, 82–89, 91–98 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). AFFIRMED IN PART Copy with citationCopy as parenthetical citation