APPLE INC.

Patent Trials and Appeals Board

Jul 14, 2021

2020002534 (P.T.A.B. Jul. 14, 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.
15/800,314 11/01/2017 Muthukumaran DHANAPAL 30134/25301(P36202US1) 3888
114746 7590 07/14/2021
Apple Inc. -- FKM
150 Broadway
Suite 702
New York, NY 10038
EXAMINER
TAYLOR, BARRY W
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
07/14/2021 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):
fhall@fkmiplaw.com
mmarcin@fkmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MUTHUKUMARAN DHANAPAL, SRIRANG A. LOVLEKAR,
SETHURAMAN GURUMOORTHY, and VIJAY VENKATARAMAN
Appeal 2020-002534
Application 15/800,314
Technology Center 2600
Before MARC S. HOFF, LARRY J. HUME, and JUSTIN BUSCH,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–20, which are all claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Apple Inc. Appeal Br.
2.
Appeal 2020-002534
Application 15/800,314

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STATEMENT OF THE CASE2
The claims are directed to user device assisted connected mode
measurement enhancements. See Spec. (Title). More particularly, the
disclosed and claimed embodiments are directed to “a device, system and
apparatus for adaptive frequency correlation estimation for channel
estimation. In a first aspect, a method is disclosed where a user device
(‘UE’) determines that the UE is in a connected mode. The method then
determines a connection type of the connected mode and prioritizes a
measurement report based on the connection type.” Spec. ¶ 3.
Exemplary Claims
Claim 1, reproduced below, is representative of the subject matter on
Appeal (emphases and formatting added to contested limitations):
l. A method, comprising:
at a user equipment (“UE”), determining that the UE is in
a connected mode;
determining a connection type of the connected mode;
and
prioritizing a measurement report type based on the
connection type,
wherein prioritizing the measurement report type
includes selecting one of a plurality of predetermined
measurement rates that is to be applied to a performance of a
measurement associated with the measurement report type.

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Nov. 19, 2019); Reply Brief (“Reply Br.,” filed Feb. 11, 2020); Examiner’s
Answer (“Ans.,” mailed Dec. 11, 2019); Final Office Action (“Final Act.,”
mailed June 19, 2019); and the original Specification (“Spec.,” filed
Nov. 1, 2017).
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REFERENCES
The Examiner relies upon the following prior art as evidence:
Name Reference Date
Venkata US 2014/0140247 A1 May 22, 2014
Lim et al. (“Lim”) US 2015/0045025 A1 Feb. 12, 2015
Liu et al. (“Liu”) US 2016/0183263 A1 June 23, 2016
Raghunathan et al. (“Raghunathan”) US 2017/0325144 A1 Nov. 9, 2017
Parkvall et al. (“Parkvall”) US 2017/0331670 A1 Nov. 16, 2017
Santhanam et al. (“Santhanam”) US 2018/0213454 A1 July 26, 2018
Wong et al. (“Wong”) US 2018/0249385 A1 Aug. 30, 2018
REJECTIONS
R1. Claims 1–4, 9–12, and 18–20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the combination of Wong, Venkata, and
Santhanam. Final Act. 3.
R2. Claims 5 and 13 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Wong, Venkata, Santhanam, and
Raghunathan. Final Act. 7.
R3. Claims 6 and 14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Wong, Venkata, Santhanam, and Liu.
Final Act. 8.
R4. Claims 7, 15, and 16 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Wong, Venkata, Santhanam, and
Lim. Final Act. 9.
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R5. Claims 8 and 17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Wong, Venkata, Santhanam, and
Parkvall. Final Act. 11.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 3–10) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness
Rejection R1 of claims 1–4, 9–12, 18–20 on the basis of representative
claim 1.
Remaining claims 5–7 and 13–16 in Rejections R2 through R5, not
argued separately, stand or fall with the respective independent claim from
which they depend.3
1. § 103 Rejection R1 of Claims 1–4, 9–12, 18–20
Issue 1
Appellant argues (Appeal Br. 3–10; Reply Br. 2–6) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Wong, Venkata and Santhanam is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, the steps of (a) “prioritizing a

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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measurement report type based on the connection type,” and (b) “prioritizing
the measurement report type includes selecting one of a plurality of
predetermined measurement rates that is to be applied to a performance of a
measurement associated with the measurement report type,” as recited in
claim 1?
Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
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Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
Analysis
(a) prioritizing a measurement report type
The Examiner finds Wong teaches or suggests a measurement report
type based on a connection type (Ans. 3), and further finds “prioritizing” is
taught by Venkata, i.e., “Venkata teaches determining if the connection
type is an emergency voice call and reduces/delays (e.g., prioritizing) the
time-to-trigger (abstract).” Final Act. 3; see also Ans. 4.
Appellant contends, by “analyzing ‘prioritizing a measurement
report’ without the ‘type’ recitation, an operation that applies to any
measurement report and that is not specific to a particular measurement
report type would be encompassed by the claim.” Appeal Br. 4.
We find Appellant’s specification uses “measurement report” (see
Spec. ¶ 3) interchangeably with “measurement report type when describing
prioritization of these reports/types.” See Spec. ¶ 54. For example, the
Specification discloses “measurement reports C1 and C2 pertain to CSI-RS
resources,” Spec. ¶ 35; “measurement reports A1 and A6,” Spec. ¶ 53; and
“another report configuration type may then be prioritized after the CGI
measurement report type is deprioritized,” Spec. ¶ 54. We conclude that
there is no appreciable difference in the claim scope whether “type” is
included with the “measurement report.” Nevertheless, the Examiner
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adequately addresses this issue in setting forth the findings related to Wong,
which Appellant does not address. See Ans. 3.
(b) selecting one of a plurality of predetermined measurement rates
The Examiner notes Appellants specification at 0043
discloses report types may be placed in a normal performance
group and a reduced performance group. Appellants
specification at 0047 — Further, those skilled in the art would
understand that normal performance group and the reduced
performance group may relate to a rate of measurements being
performed of the report configuration types (e.g., the periodicity
of measurement configuration). For example, measurement
report A1 placed in the normal performance group and A2
placed in the reduced performance group. Appellants
specification at 0048 discloses measurement rates associated
with DRX cycle. Appellants specification at 0051 —
measurement report types A1 and A6 placed into normal
performance group and measurement report types A2, A3, A4,
A5, B1, B2, C1, C2, W1, W3, V1, and V2 may be placed into
the reduced performance group. Appellants specification at
0053 — A1 and A6 have a first performance rate (e.g., normal
performance rate) and A2, A3, A4 . . . at a second performance
rate that is lower than the first performance rate (e.g., reduced
performance rate).
Ans. 7–8 (formatting omitted).
Relying upon the Specification for context, the Examiner relies upon
Santhanam as teaching or suggesting this contested limitation. See
Ans. 8–10 (where the Examiner provides further clarification of the
rejection, which we adopt as our own and incorporate herein by reference).
We agree with the Examiner that the disclosure cited teaches or at
least suggests selecting one of a plurality of predetermined measurement
rates, as claimed, and as discussed below.
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In response, Appellant argues “[t]he rate at which a measurement is
performed as recited in claim 1 and when a transmission is to occur as taught
in Venkata are two separate and distinct concepts.” Appeal Br. 6.
However, the Examiner relies upon Venkata for teaching “prioritizing
a measurement report type based on the connection type.” Final Act. 3
(citing Venkata ¶ 61). In contrast, the “rate at which the measurement is
performed” is taught by Santhanam. Final Act. 5 (citing Santhanam ¶ 57).
Therefore, Appellant has not persuaded us of Examiner error.
Appellant also argues that it “is unreasonable for the Examiner to
analogize the above recited portion of claim 1 to an idle mode operation
because claim 1 explicitly requires ‘determining that the UE is in a
connected mode . . . determining a connection type of the connected mode.’”
Appeal Br. 7. However, Appellant has not shown that Santhanam’s idle
mode is functionally different than Appellant’s claimed connected mode.
Moreover, Santhanam does not explicitly disclose that its idle mode is not a
“connected mode.” Under the broadest reasonable interpretation standard,
we do not interpret a connected mode as something necessarily exclusive of
an idle mode. Therefore, Appellant’s argument does not persuade us of
Examiner error.
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitations of claim 1, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 1, and grouped
claims 2–4, 9–12, 18–20, which fall therewith. See Claim Grouping above.
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2. Rejections R2–R5 of Claims 5–7 and 13–16
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R2 through R5 of claims 5–7 and 13–16 under
§ 103 (see Appeal Br. 8–10), we sustain the Examiner’s rejection of these
claims. Arguments not made are waived.4
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2–6) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSION
We AFFIRM the Examiner’s rejections.
More specifically, Appellant has not persuasively argued that the
Examiner erred with respect to obviousness Rejections R1 through R5 of
claims 1–20 under 35 U.S.C. § 103 over the cited prior art combinations of
record, and we sustain the rejections.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1).

4 Appellant merely argues these claims are allowable by virtue of their
dependence upon allegedly allowable independent claims. Appeal Br. 8–10.
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Application 15/800,314

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 9–12,
18–20
103 Wong, Venkata,
Santhanam
1–4, 9–12,
18–20

5, 13 103 Wong, Venkata,
Santhanam,
Raghunathan
5, 13
6, 14 103 Wong, Venkata,
Santhanam, Liu
6, 14
7, 15, 16 103 Wong, Venkata,
Santhanam, Lim
7, 15, 16
8, 17 103 Wong, Venkata,
Santhanam,
Parkvall
8, 17
Overall
Outcome
1–20
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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED