Alcatel-Lucent USA Inc. et al.

Patent Trials and Appeals Board

Oct 1, 2020

15254797 - (D) (P.T.A.B. Oct. 1, 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.
15/254,797 09/01/2016 Jonathan Ling 4100-818613-US 8405
114592 7590 10/01/2020
Nokia Technologies Oy
C/O Davidson Sheehan LLP
6836 Austin Center Blvd.
Suite 320
Austin, TX 78731
EXAMINER
DEWAN, SANJAY K
ART UNIT PAPER NUMBER
2463
NOTIFICATION DATE DELIVERY MODE
10/01/2020 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):
docketing@ds-patent.com
nokia@ds-patent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JONATHAN LING, DAVID PEREZ-LOPEZ,
BONGHO KIM, VASUDEVAN SUBRAMANIAN, and
SATISH KANUGOVI
____________________

Appeal 2019-003039
Application 15/254,797
Technology Center 2400
____________________

Before JOHN A. EVANS, JUSTIN BUSCH, and
JOHN P. PINKERTON, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–20, which are all of the claims pending in the
application. We have jurisdiction 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. Appellant identifies the real party in interest as Alcatel
Lucent. Appeal Br. 1.
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant generally describes the disclosed and claimed invention as
relating to estimating bandwidth in a wireless communication system that
includes a base station, an access point, and user equipment (UE). Spec.
¶¶ 1, 10. Figure 1 is reproduced below.

Figure 1 depicts a wireless communication system according to certain
embodiments of Appellant’s invention. Id. ¶ 4. Wireless communication
system 100 may include base station 105 that provides wireless connectivity
according to a first radio access technology (RAT)2 within cell 110 over air
interface 112. Id. ¶ 14. Wireless communication system 100 may also

2 For example, in a licensed frequency band according to the Long Term
Evolution (“LTE”) standards defined by the Third Generation Partnership
Project (3GPP). See Spec. ¶¶ 10, 14.
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include access point 115 that provides wireless connectivity according to a
second RAT3 over air interface 117 within cell 120. Id. The respective
coverage areas of cell 110 and cell 120 may fully or partially overlap with
one another. Id.
In one embodiment,
depending on the available bandwidth in the unlicensed
frequency band, . . . base station 105 can selectively operate in a
Wi-Fi or cellular boost mode or switch wireless connectivity
between the licensed frequency bands supported by . . . base
station 105 and the unlicensed frequency band supported by . . .
access point 115.
Spec. ¶ 20. To estimate this bandwidth, base station 105 may generate a
stream of probe packets and provide them to access point 115, which may
then transmit the probe packets to UE 125. Id. Access point 115 may
aggregate multiple probe packets into single packets for transmission
depending on interference or channel quality over the air interface (for
example, if there is significant traffic in the unlicensed frequency band). Id.
UE 125 may receive the transmitted packets and determine their inter-arrival
packet delay times. Id. UE 125 may then estimate a bandwidth in the
unlicensed frequency band based on the inter-arrival packet delay times, the
number of probe packets in the stream, and a time interval for transmission
of the stream. Id. Base station 105 may receive information indicating the
estimated bandwidth and determine whether to use the licensed or
unlicensed frequency band for communicating with UE 125.

3 For example, in an unlicensed frequency band according to Wi-Fi or IEEE
802 standards. See Spec. ¶¶ 10, 14.
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Illustrative Claim
Claims 1, 5, 11, and 15 are independent. Appeal Br. 18, 19, 20, 21
(Claims App.). Claim 5 is illustrative of the subject matter on appeal and
provides as follows:
5. A method comprising:
receiving, at a user equipment, a first number of packets
over an air interface;
determining, at the user equipment, inter-arrival packet
delays for the first number of packets;
estimating, at the user equipment, a bandwidth of the air
interface based on the inter-arrival packet delays, a second
number of probe packets used to generate the first number of
packets, and a time interval for transmission of the second
number of probe packets; and
transmitting, from the user equipment, information
indicating the bandwidth.
Id. at 19 (Claims App.).
References
The prior art relied upon by the Examiner is:
Name Reference Date
McCormack US 2003/0185210 A1 Oct. 2, 2003
Nammi et al. (“Nammi”) US 2016/0135210 A1 May 12, 2016
Vasseur et al. (“Vasseur”) US 9,813,259 B2 Nov. 7, 2017
Rejection on Appeal
Claims 1–20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Nammi, Vasseur, and McCormack. Final Act. 7–25.

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ANALYSIS
Appellant argues Examiner error in the rejection of claims 1–20 under
35 U.S.C. § 103 for obviousness over Nammi, Vasseur, and McCormack.
Appeal Br. 5–16; Reply Br. 2–3. Appellant argues, in relevant part, that the
cited combination of Nammi, Vasseur, and McCormack does not disclose or
suggest “a second number of probe packets used to generate the first number
of packets,” as recited in independent claim 5. Appeal Br. 10. As discussed
in greater detail below, each of independent claims 1, 11, and 15 requires a
similar element. For the reasons that follow, we are persuaded of Examiner
error.
An obviousness analysis involves two steps. “We first construe the
claim, a question of law, and second we compare the construed claim to the
prior art, a question of fact.” In re Hiok Nam Tay, 579 F. App’x 999, 1000
(Fed. Cir. 2014) (citing Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709,
714 (Fed. Cir. 1998)).4 “Claims in patent applications are given their
broadest reasonable construction in light of the claims themselves and the
specification as it would be interpreted by one of ordinary skill in the art.”
Hiok Nam Tay, 579 F. App’x at 1000 (citing Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005)).
Claim Construction
Method claim 1 recites, in relevant part, “a bandwidth over the access
network path estimated by the user equipment based on delays between
packets received by the user equipment from the access point over the access
network path, wherein the packets are generated by the access point using

4 Hiok Nam Tay involves anticipation, but, as stated in Key Pharms., the
same two-step analysis applies to obviousness as well. Key Pharms., 161
F.3d at 714.
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the probe packets.” Id. at 18 (emphasis added). Similarly, method claim 5
recites “estimating, at the user equipment, a bandwidth of the air interface
based on . . . a second number of probe packets used to generate the first
number of packets.” Appeal Br. 19 (Claims App.) (emphasis added). From
a plain reading of the claim language in view of the Specification, each of
these claims requires, among other things, the function of generating a first
number of packets using a second number of probe packets. See, e.g., Spec.
¶ 20 (explaining that “access point 115 can aggregate multiple probe packets
into single packets for transmission” to the UE).
Independent claims 11 and 15 are apparatus claims. Independent
claim 11 is directed to a base station, and independent claim 15 is directed to
a UE. The base station of claim 11, and the UE of claim 15, each have a
transceiver and a processor to perform various functions. In addition, claim
11 recites “a second number of packets generated by the access point using
the first number of probe packets” (Appeal Br. 20), and claim 15 similarly
recites “a second number of probe packets used to generate the first number
of packets” (id. at 21). In claim 11, the “the access point” generates the
second number of packets using the first number of probe packets. And,
although claim 15 does not specify what element is “to generate the first
number of packets,” the Specification describes the access point as
performing this function using probe packets. See, e.g., Spec. ¶¶ 12, 20, 24,
36.
Unlike method claims 1 and 5, “[a]pparatus claims cover what a
device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb
Inc., 909 F.2d 1464, 1468, 1468 n.2 (Fed. Cir. 1990). It is therefore
important to determine the scope of any additional functional limitations and
what patentable effect they may have on the claim. In that regard, the
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Federal Circuit’s analysis in HTC Corp. v. IPCom GmbH & Co., KG, 667
F.3d 1270, 1273 (Fed. Cir. 2012) is instructive. At issue in HTC were
claims directed to a mobile station (i.e., a cellular telephone) for use with a
cellular telephone network that achieves a handover between base stations
when, for example, a cellular telephone travels in a car between coverage
areas. Id. Independent claim 1 recited the following:
A mobile station for use with a network including a first
base station and a second base station that achieves a handover
from the first base station to the second base station by:
storing link data for a link in a first base station,
holding in reserve for the link resources of the first base
station, and
when the link is to be handed over to the second base
station:
initially maintaining a storage of the link data in the first
base station,
initially causing the resources of the first base station to
remain held in reserve, and
at a later timepoint determined by a fixed period of time
predefined at a beginning of the handover, deleting the link data
from the first base station and freeing up the resources of the
first base station, the mobile station comprising:
an arrangement for reactivating the link with the first
base station if the handover is unsuccessful.
Id. The Court explained that the claim did not “recite a mobile station and
then have the mobile station perform the six enumerated functions,” but
rather, “merely establish[ed] those functions as the underlying network
environment in which the mobile station operates.” Id. at 1277. Moreover,
the court determined that although the claim had an “unconventional
format,” it still made clear “that infringement occurs when one makes, uses,
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offers to sell, or sells the claimed apparatus: the mobile station—which must
be used in a particular network environment.” Id.
Claim 11 similarly has an “unconventional format.” While the claim
recites a base station comprising a transceiver and processor to perform
certain functions, it additionally recites, for example, “a bandwidth over the
air interface estimated by the user equipment” and “a second number of
packets generated by the access point using the first number of probe
packets.” Even though these functions are not performed by the base station
itself, like the claim in HTC, claim 11 makes clear that its base station must
be used in a particular network environment, including an access point, user
equipment, and an air interface. In particular, claim 11 requires an access
point to (1) receive a first number of probe packets for transmission and (2)
generate a second number of packets using the first number of probe
packets. The claim also recites user equipment to (1) receive transmission of
data from the access point and (2) estimate bandwidth over the air interface
and transmit it to the base station. Likewise, claim 15 requires user
equipment that must be used in a particular network environment including
other network elements and an air interface. In particular, claim 15 requires
an element from which the transceiver is to receive a first number of probe
packets (e.g., access point), an element capable of using a second number of
probe packets to generate a first number of packets (e.g., access point), and
an element to which the transceiver is to transmit information indicating the
bandwidth (e.g., base station).
Prior Art Analysis
Having construed the claim language, we now turn to the prior art. In
rejecting claim 5, the Examiner finds Nammi teaches “receiving, at a user
equipment, a first number of packets over an air interface.” Final Act. 13
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(citing Nammi ¶¶ 56–59, Fig. 4), see also id. at 8 (citing Nammi, Abstract,
¶¶ 7, 69–70, Figs. 1, 4, 6), 17, 21. Nammi describes a heterogeneous
wireless communication network including a base station that controls a
plurality of low power nodes (LPN). Nammi ¶ 7, Fig. 1. The LPNs may be
deployed to eliminate holes in the base station’s coverage area and to offload
traffic from the macro base station. Id. Nammi also describes probing
procedures to determine which nodes to select for downlink (DL)
transmissions to UEs. See, e.g., id. ¶¶ 15, 49. In one embodiment, the base
station may instruct one or more LPNs to transmit a probing signal or
channel to a UE. See id. ¶¶ 59, 69. Based on the power of the received
probing signal or channel, the UE may measure downlink channel quality
and report it to the base station. See id. ¶¶ 62, 69. Based on the reported
measurement, the base station may signal to a particular LPN to transmit or
not transmit, or transmit with low power to the UE. See id. ¶¶ 59, 69.
According to the Examiner, however, “Nammi does not explicitly
disclose,” among other elements, “a second number of probe packets used to
generate the first number of packets.” Id. at 13. The Examiner finds
Vasseur in combination with Nammi teaches this element. Id. at 14 (citing
Nammi ¶¶ 56–59, Fig. 4; Vasseur 11:14–31).
Appellant argues, in relevant part, that “[t]he cited combination . . .
does not disclose any entity (such as an access point) that receives a first
number of probe packets and then generates a second number of packets
using the received probe packets.” Appeal Br. 10. Consequently, Appellant
argues the cited combination “does not disclose that a bandwidth over an air
interface is estimated based on the second number of probe packets that is
generated by an access point.” Id., see also id. at 11–12 (making a similar
argument for claim 11).
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We are persuaded of Examiner error. As discussed above, Nammi
describes probing procedures that use probing channels or signals, but the
Examiner does not identify any persuasive evidence that Nammi teaches
using a probing channel or probing signals to generate a number of packets,
or estimating bandwidth over an air interface based on such a procedure.
Vasseur describes various probing techniques for determining
available bandwidth along a given path in a network. See, e.g., Vasseur
11:14–13–23, 14:12–15:32. In one embodiment, Vasseur describes an
incremental probing controller (IPC) that sends probe packets along a
specific network path to determine the characteristics of a given network.
Id. at 12:5–8, 12:23–26. The IPC may adjust not only the rate at which
probe packets are sent but also the type and size of a probe. Id. at 12:67–
13:4. The IPC may also calculate bandwidth estimates based on
observations regarding the probe packets, including the rate and size of the
probe packets sent. Id. at 13:5–7, 14:60–15:12. For example, the IPC may
estimate a network’s average available bandwidth by periodically sending
conservative packet bursts and performing probing computations over a
plurality of time periods. Id. at 13:7–15. Accordingly, while Vasseur may
suggest that different sizes of probing packets may be sent at different time
periods, and that the bandwidth of a network path may be determined by
observing the transmission of probe packets, the Examiner does not identify
any persuasive evidence that Vasseur’s device uses one number of probing
packets to generate another number of packets as required.
For the foregoing reasons, the Examiner has not adequately shown
that Nammi or Vasseur, alone or in combination, teach or suggest “a second
number of probe packets used to generate the first number of packets,” as
recited in claim 5. Nor has the Examiner provided an additional finding (for
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example, in McCormack) or a rationale to fill the gaps in the prior art. We
decline to resort to speculation to fill the gaps in the Examiner’s rejection.
See Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). We therefore
determine that the Examiner erred in rejecting independent claim 5 under 35
U.S.C. § 103 for obviousness over Nammi, Vasseur, and McCormack. The
above analysis applies with equal force to the Examiner’s § 103 rejection of
independent claims 1, 11, and 15, each of which recites a similar element for
which the Examiner fails to provide a finding or reasoning that cures the
defects discussed above. See Final Act. 8–10, 17–19, 21–23.
Accordingly, constrained by this record, we decline to sustain the
Examiner’s § 103 rejection of independent claims 1, 5, 11, and 15. For
similar reasons, we decline to sustain the Examiner’s § 103 rejection of
dependent claims 2–4, 6–10, 12–14, and 16–20, for which the Examiner fails
to provide a finding or reasoning that cures the defects discussed above. See
Final Act. 11–13, 15–17, 20–21, 23–25; cf. In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if the independent
claims from which they depend are nonobvious”).
CONCLUSION
We reverse the Examiner’s rejection of claims 1–20 under 35 U.S.C.
§ 103 as being unpatentable over Nammi, Vasseur, and McCormack.
DECISION SUMMARY
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 103 Nammi, Vasseur, McCormack 1–20

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REVERSED