Apple Inc.

Patent Trials and Appeals Board

Jul 30, 2021

2021003991 (P.T.A.B. Jul. 30, 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.
16/038,528 07/18/2018 Tarik Tabet 8888-42904 5467
81310 7590 07/30/2021
Kowert Hood Munyon Rankin & Goetzel (Apple)
1120 S. Capital of Texas Hwy
Building 2, Suite 300
Austin, TX 78746
EXAMINER
BHATTI, HASHIM S
ART UNIT PAPER NUMBER
2472
NOTIFICATION DATE DELIVERY MODE
07/30/2021 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):
patent_docketing@intprop.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TARIK TABET,
KONSTANTINOS SARRIGEORGIDIS, and
MOUSTAFA M. ELSAYED
Appeal 2021-003991
Application 16/038,528
Technology Center 2400
Before MICHAEL J. STRAUSS, HUNG H. BUI, and
MICHAEL J. ENGLE, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–20, all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm in part.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies Apple Inc. as the real party in interest. Appeal Br. 2.
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TECHNOLOGY
The application relates to decoding of a Physical Control Format
Indicator Channel (PCFICH) in a Long Term Evolution (LTE) wireless
network to save power and improve communication range. Spec., Title.
ILLUSTRATIVE CLAIM
Claim 1 is reproduced below with labels added and a limitation at
issue emphasized:
1. An apparatus comprising:
a processing element configured to cause a device to:
[(i)] determine that the device is a constrained
device;
[(ii)] indicate to a network through wireless
communications via a random access channel that the
device is a constrained device;
[(iii)] receive a value from the network, wherein the
value is intended for use by constrained devices
grouped by the network to receive control information
from the network within a subframe in accordance with
the value;
[(iv)] receive, from the network in the subframe,
control information transmitted in accordance with the
value; and
[(v)] decode the control information based at least
on the value.
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REFERENCES
The Examiner relies on the following references:
Name Reference Date
Song US 2013/0028199 A1 Jan. 31, 2013
Hedberg US 2014/0135018 A1 May 15, 2014
REJECTION
The Examiner makes the following rejection:
Claims Statute Basis Citation
1–20 § 103 Song, Hedberg Final Act. 2–5
ISSUES
1. Did the Examiner err in finding Hedberg discloses disputed
limitation element (ii) requiring a processing element that is configured to
cause a device to “indicate to a network through wireless communications
via a random access channel that the device is a constrained device,” as
recited in independent claim 1?
2. Did the Examiner err in finding a person of ordinary skill in the
art would have had reason to combine Song and Hedberg?
3. Did the Examiner err in finding Hedberg teaches or suggests
“wherein the processing element is configured to further cause the device to
indicate to the network that the device is a constrained device by indicating
to the network that the device belongs to a specific reserved device
category” as recited in dependent claim 6?
ANALYSIS
Independent Claims 1, 8, and 15
Relevant to our decision, claim 1 recites the following:
a processing element configured to cause a device to:
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[(i)] determine that the device is a constrained device;
[(ii)] indicate to a network through wireless
communications via a random access channel that the device is a
constrained device; . . . .
Independent claims 8 and 15 recite commensurate limitations and are argued
collectively with claim 1. See Appeal Br. 10.
Song describes a Third Generation Partnership Project (3GPP) Long-
Term Evolution-Advanced (LTE-A) cellular communication system wherein
overlapping coverage of base stations (i.e., evolved Node-Bs or “eNBs”)
“caus[es] degraded reception for various control and data channels,
including the Physical Control Format Indicator Channel (PCFICH)” in the
area of overlapping coverage, i.e., for user equipment (UE) located in a
closed subscriber group (CSG) femto cell or a pico eNB range expansion
(RE) area. Song ¶¶ 2–4, 46, 136. To address such interference situations,
Song discloses a secondary mechanism to provide UE with a Control Frame
Indicator (CFI) needed to decode a Physical Downlink Control Channel
(PDCCH). Instead of using PCFICH, Song’s secondary mechanism uses a
fixed control size which “may be signaled to the UE via non-PCFICH
signaling.” Song ¶ 115. Network enabling of this secondary mechanism is
based on UE location within an RE which may be determined by reference
signal received power (RSRP) measurements made by the UE. Song ¶¶ 132,
136.
Hedberg describes a 3GPP LTE cellular communication system in
which a UE indicates to the network when it is in a link imbalance zone, i.e.,
a zone in which “cell association principles do not always result in the same
selected cell as the base station output powers of cells of different type are
different.” Hedberg, Abstract, ¶ 26. According to Hedberg:
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The UE obtains radio quality parameters indicating quality of
radio reception between the UE and the first and second cells.
Based on the obtained radio quality parameters, it is determined
whether the UE is in a link imbalance zone where the UE has an
option to be connected to both the first cell and the second cell.
Id. at Abstract. Hedberg further teaches that quality parameters include
RSRP measurements. Id. ¶ 76.
The Examiner finds Song teaches or suggests claim elements (i) and
(iii) through (v), i.e., all claim elements except claim element (ii) of
indicating to a network through wireless communications via a random
access channel that the device is a constrained device. Final Act. 4. To
remedy the deficiency, the Examiner applies Hedberg’s disclosure of
“indicating via [a random access (RA)] that the UE is in a ‘link imbalance
zone’” for teaching claim element (ii). Id. (citing Hedberg ¶¶ 46, 97). The
Examiner reasons one skilled in the art would have:
modif[ied] the system of Song with the teachings of Hedberg to
improve the method disclosed by Song by including the feature
of indicating to the network that the UE is constrained on RACH
. . . to allow the UE to get CFI information as soon as possible,
in order to successfully decode PDCCH by indicating it during
RRC establishment/RA procedure.
Id.
Appellant initially contends:
In contrast to the claimed elements, Song teaches use of a
“targetCFI” value, which a base station uses to explicitly signal
a UE whether the UE is to obtain control format information
(CFI) via PCFICH detection and use the thus obtained CFI to
subsequently decode control information, or enable a secondary
mechanism which uses the value of the targetCFI to decode the
control information.
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Appeal Br. 6 (emphasis omitted). However, in the absence of sufficient
evidence or reasoning explaining why Song’s use of a targetCFI value fails
to teach a particular claim limitation, Appellant’s vague assertion that
Song’s targetCFI is somehow different is unpersuasive. To the extent
Appellant asserts Song’s targetCFI value fails to teach the claimed “value
[that] is intended for use by constrained devices grouped by the network to
receive control information from the network within a subframe in
accordance with the value” (claim 1), Appellant provides insufficient
evidence or reasoning to support such an assertion.2
Appellant further contends the use of RSRP fails to teach Hedberg’s
device is a constrained device as required by disputed claim element (ii).
Appeal Br. 6. Appellant argues “RSRP measurements may be used for a
variety of different purposes. The fact that a device uses RSRP, among
others, to make a specific determination that the device is constrained in no

2 We further note recited use of the subject value may be an “intended use”
limitation of claim element (iii) indicating the purpose for which the value is
to be used. Although claim 1 does otherwise refer to a constrained device
and using the value to control information received from the network in a
subframe, it does not positively recite a requirement that the apparatus be
grouped by the network to receive control information. Thus, the recited
intended use directed to grouped constrained devices may not be afforded
patentable weight. Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (“An intended use or
purpose usually will not limit the scope of the claim because such statements
usually do no more than define a context in which the invention operates”;
such statements often appear in the claim’s preamble but can appear
elsewhere in a claim); In re Otto, 312 F.2d 937 (CCPA 1963) (intended use
of hair curling was of no significance to the structure of a hair curler and
process of making); In re Sinex, 309 F.2d 488, 492 (CCPA 1962) (statement
of intended use in an apparatus claim failed to distinguish over the prior art
apparatus).
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way implies or obviously means that any and all RSRP measurements are
made for that purpose.” Id.
Appellant’s argument is unpersuasive in demonstrating Hedberg fails
to teach or suggest disputed limitation (ii). Although not providing an
explicit definition for what constitutes “a constrained device,” the
Specification describes “when a UE is somehow constrained, [it] cannot
reliably detect the PCFICH.” Spec. ¶ 63. Thus, a broad but reasonable
interpretation of a constrained device is a device that cannot reliably detect a
communication channel such as the PCFICH. Similarly, Hedberg’s link
imbalance zone is described as imposing communication reliability
challenges, i.e., requires some additional feature to reliably detect a
communication channel. Hedberg ¶ 30 (“3GPP has in release 10 specified
new [Inter-Cell Interference Coordination (ICIC)] features for enabling
reliable operations in link imbalance zones of UEs in the connected mode.”).
Hedberg further discloses:
the UE explicitly indicates in [a random access message (msg3)]
that it is in the link imbalance zone. For example, msg3 may
include an information element comprising of a bit indicating
cell access from the link imbalance zone. Detection of being in
the imbalance zone is done in the same way as described above:
comparison of RSRP and path loss to different cells or neighbour
cell(s) are within ‘offset’ from being the best candidate.
Id. ¶ 97. Thus, Hedberg teaches or suggests a user device (UE) indicating to
a network through wireless communications via a random access channel
(msg3) that the user device (UE) is a constrained device (i.e., in a link
imbalance zone.)
Appellant’s argument is further unpersuasive because the combination
of Song and Hedberg also teaches the disputed claim element (ii). In
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particular, the Examiner finds that Song teaches determining that the device
is a constrained device as required by claim (i). See Final Act. 2 (citing
Song ¶ 136, Fig. 12, step 1220). That is, Song’s determination of whether
UE 140 is within expansion area 132 (Song ¶ 141, Fig. 13, step 1320)
wherein “the UE in the range expansion area connected to pico eNB 120
may see significant interference [from] macro eNB 110” (Song ¶ 48) teaches
or suggests determining that a device (Song’s UE 140) is a constrained
device (i.e., cannot reliably detect a communication channel, such as
PCFICH, due to interference). Thus, Appellant’s argument about Hedberg is
unpersuasive because it fails to address the Examiner’s findings about Song
and improperly attacks the Hedberg reference individually when the
rejection is based on the combination of Song and Hedberg. “Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
We are also unpersuaded of reversible Examiner error by Appellant’s
argument that “[u]sing an RSRP measurement to determine whether the UE
is in a link imbalance zone is different and distinct from using an RSRP
measurement to determine whether the device is constrained as claimed.”
Appeal Br. 7. Song discloses selectively disabling a secondary cell selection
system when “the reference signal received power (RSRP) from the serving
node is lower than the RSRP from the dominant interfering node by a certain
threshold.” Song ¶ 134. Hedberg also discusses use of RSRP to determine
the quality of radio reception between a UE and cells. Hedberg ¶ 76. One
skilled in the art would have understood received signal strength is a critical
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factor in whether a user device (UE) can or cannot reliably detect a
communication channel such as the PCFICH. Thus, Hedberg’s disclosure of
using RSRP at least suggests determining whether a user device (UE) is a
constrained device.
We are also unpersuaded by Appellant’s contention that the Examiner
erred in combining the teachings of Song and Hedberg. Appeal Br. 8. In the
instant appeal, the Examiner finds, as follows:
It would have been obvious to one of ordinary skill in the art
before the effective filing date of the claimed invention to modify
the system of Song with the teachings of Hedberg to improve the
method disclosed by Song by including the feature of indicating
to the network that the UE is constrained on RACH. The
motivation to combine would have been to allow the UE to get
CFI information as soon as possible, in order to successfully
decode PDCCH by indicating it during RRC establishment/RA
procedure.
Final Act. 4.
However, Appellant fails to explain why the Examiner’s reasoning is
erroneous or insufficient. Therefore, in light of the absence of persuasive
evidence to rebut the Examiner’s findings and conclusion, we determine that
the Examiner has articulated reasoning with rational underpinnings
sufficient to justify the legal conclusion of obviousness
Addressing Appellant’s contention the Examiner’s combination is
based on hindsight (Appeal Br. 8), we note as follows:
Any judgment on obviousness is . . . necessarily a reconstruction
based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not
include knowledge gleaned only from applicant’s disclosure,
such a reconstruction is proper.
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In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); see also Radix Corp.
v. Samuels, 13 USPQ2d 1689, 1693 (D.D.C. 1989) (“[A]ny obviousness
inquiry necessarily involves some hindsight.”); In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds . . . must
[include] some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”), cited with approval in KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); Nat’l Steel Car, Ltd. v.
Canadian Pacific Ry., Ltd., 357 F.3d 1319, 1337 (Fed. Cir. 2004) (“It has
long been the law that the motivation to combine need not be found in prior
art references, but equally can be found ‘in the knowledge generally
available to one of ordinary skill in the art.’” (quoting In re Jones, 958 F.2d
347, 351 (Fed. Cir. 1992))).
Appellant further argues “Song . . . lacks the flexibility of the process
recited by the claimed elements . . . [because] Song explicitly discloses using
the secondary mechanism regardless of what a UE transmit during a random
access procedure.” Appeal Br. 9–10. Appellant’s argument is unpersuasive
because, inter alia, it is not commensurate in scope with the claims. In
particular, the claims do not require decoding the control information
responsive to or only when a determination is made and indicated to the
network that the device is a constrained device. Thus, even if correct in
asserting Song uses the secondary mechanism without regard to what a UE
transmits, claim 1 does not include a contrary requirement distinguishing
over Song.
For the reasons discussed above, we are unpersuaded by Appellant’s
arguments that the Examiner erred in rejecting the independent claims.
Accordingly, we sustain the rejection of independent claims 1, 8, 15 together
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with the rejection dependent claims 2–5, 7, 9–12, 14, and 16–19 which are
not argued separately with particularity.

Dependent Claims 6, 13, and 20
Claim 6 recites as follows:
6. The apparatus of claim 1, wherein the processing element is
configured to further cause the device to indicate to the network
that the device is a constrained device by indicating to the
network that the device belongs to a specific reserved device
category.
Appeal Br. 14, Claims Appd’x.
The Examiner finds Hedberg’s determination that a device is in a link
imbalance region teaches or suggests the device belongs to a specific
reserved device category. Final Act. 4–5. Appellant argues “[n]owhere does
Hedberg teach or suggest that the relative position of a device in any way
defines the category of the device.” Appeal Br. 10. According to Appellant,
a device category is a term of art as described by 3GPP mobile broadband
standard: “The ue-Category defines a combined uplink and downlink
capability as specified in 3GPP TS36.306 [(entitled: ‘Evolved Universal
Terrestrial Radio Access (E-UTRA); User Equipment (UE) radio access
capabilities.’)].” Id. at 11. The Examiner responds, finding that “[u]nder the
broadest reasonable interpretation ‘reserved device category for constrained
devices’ can be indicated by an information element to the network.” Ans.
9.
Appellant’s argument is persuasive of reversible Examiner error.
Although not providing a formal definition of “a reserved device category,”
the Specification discloses the following:
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Currently, 3GPP specifies only categories 0–10, and therefore
any other UE category value beyond 10 may be used to identify
the UE. Through the previously reserved category (beyond
category 10), the UE may indicate to the network that the device
is a constrained device. Once it has been ascertained that the
device is a constrained device, and this has been communicated
to the NW, the NW (or eNB) may proceed to group all devices
of the specified type (e.g. range constrained devices) when
sending control information.
Spec. ¶ 64.
Herein, the Examiner fails to provide sufficient evidence or reasoning
explaining why, in view of the Specification, the argued reserved device
category should be broadly interpreted to include location of a device within
an imbalance region. Accordingly, we do not sustain the rejection of
dependent claims 6, 13, or 20. “Although the PTO must give claims their
broadest reasonable interpretation, this interpretation must be consistent with
the one that those skilled in the art would reach.” In re Cortright, 165 F.3d
1353, 1358 (Fed. Cir. 1999).
OUTCOME
We affirm the Examiner’s rejection of claims 1–5, 7–12, and 14–19
under 35 U.S.C. § 103 as obvious over Song and Hedberg.
We reverse the Examiner’s rejection of claims 6, 13, and 20 under 35
U.S.C. § 103 as obvious over Song and Hedberg.
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The following table summarizes the outcome of the rejection:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)
/Basis Affirmed Reversed
1–20 103 Song, Hedberg 1–5, 7–12,
14–19
6, 13, 20

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART