Ex Parte Dalsgaard et al

Patent Trial and Appeal Board

Oct 25, 2016

13782970 (P.T.A.B. Oct. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131782,970 03/01/2013
12358 7590 10/27/2016
Mintz Levin/Nokia Technologies Oy
One Financial Center
Boston, MA 02111
FIRST NAMED INVENTOR
Lars Dalsgaard
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
39700-898001US 7558
EXAMINER
TOWFIGHI, AFSHA WN M
ART UNIT PAPER NUMBER
2469
NOTIFICATION DATE DELIVERY MODE
10/27/2016 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):
IPDocketingBOS@mintz.com
IPFileroomBOS@mintz.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LARS DALSGAARD and JORMA KAIKKONEN
Appeal2016-000339
Application 13/782,9701
Technology Center 2400
Before JEFFREYS. SMITH, HUNG H. BUI, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Office Action rejecting claims 1-17, which are all of the
claims pending on appeal. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.2
1 According to Appellants, the real party in interest is Nokia Corporation.
App. Br. 2.
2 Our Decision refers to Appellants' Appeal Brief filed May 11, 2015 ("App.
Br."); Reply Brief filed September 29, 2015 ("Reply Br."); Examiner's
Answer mailed July 29, 2015 ("Ans."); Final Office Action mailed October
29, 2014 ("Final Act."); and original Specification filed March 1, 2013
("Spec.").
Appeal2016-000339
Application 13/782,970
STATEMENT OF THE CASE
Appellants' invention relates to "[ m ]ethods and apparatus ... for wide
bandwidth measurements." Abstract.
Claims 1, 8, 15, and 16 are independent. Claim 1 is illustrative of
Appellants' invention, as reproduced with disputed limitations emphasized
below:
1. A method comprising:
receiving, at a user equipment, [1] an indicator and [2] a
measurement bandwidth, wherein [ 1] the indicator represents
whether the user equipment is enabled to perform a wide
bandwidth measurement, and wherein [2] the received
measurement bandwidth represents a maximum allowed
measurement bandwidth; and
performing, by the user equipment, the wide bandwidth
measurement, when the received measurement bandwidth
equals or exceeds a threshold and the indicator represents a
request to the user equipment to perform the wide bandwidth
measurement.
App. Br. 15 (Claims App.) (brackets added).
Examiner's Rejection and Reference
Claims 1-17 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Han et al., US 2013/0094381 Al; pub. Apr. 18, 2013 ("Han").
Final Act. 4--9.
ANALYSIS
Independent claim 1 recites a user equipment (UE) to receive two
components: ( 1) an "indicator" that "represents whether the user equipment
is enabled to perform a wide bandwidth measurement," and (2) a
"measurement bandwidth" that "represents a maximum allowed
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Application 13/782,970
measurement bandwidth." Claim 1 also requires the U E to perform "the
wide bandwidth measurement" based on two conditions: (1) when the
received measurement bandwidth equals or exceeds a threshold, and (2) the
indicator represents a request to the user equipment to perform the wide
bandwidth measurement.
Appellants acknowledge Han teaches a system and method for
measurement bandwidth configuration including sending an allowed
measurement bandwidth ("allowedMeasBandwidth") parameter to a user
equipment (UE) to specify the maximum bandwidth that the UE can use.
App. Br. 10; Reply Br. 2. Appellants even acknowledge Han's
"AllowedMeasBandwidth" parameter corresponds to Appellants' claimed
"measurement bandwidth" used to represent "a maximum allowed
measurement bandwidth" as recited in independent claim 1. However,
Appellants argue Han's single "AllowedMeasBandwidth" parameter is not
and cannot be considered as both Appellants' claimed ( 1) "measurement
bandwidth" used to represent "a maximum allowed measurement
bandwidth" and Appellants' claimed (2) "indicator" used to represent
"whether the user equipment is enabled to perform a wide bandwidth
measurement," as recited in claim 1. App. Br. 11-13; Reply Br. 6-7.
Likewise, Appellants argue Han's system performs measurements as
long as those measurements are below a received "AllowedMeasBandwidth"
but does not require those measurements based on two conditions: (1) when
"the received measurement bandwidth equals or exceeds a threshold," and
(2) when "the indicator represents a request to the user equipment to perform
the wide bandwidth measurement," as recited in claim 1. App. Br. 12-13;
Reply Br. 7-8. According to Appellants, "because Han merely performs
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measurements so long as they are below an allowed bandwidth, there would
be no reason to modify Han to check whether 'the received measurement
bandwidth equals or exceeds a threshold,' as required by claim 1." App. Br.
12-13.
The Examiner responds that: (1) the claim recites a single step of
receiving an "indicator" and "a measurement bandwidth" and, as such, "any
use of the indicator throughout the claim language is explicitly tied to the
measurement bandwidth"; (2) under the broadest reasonable interpretation,
the claim does not require an "indicator" and a "measurement bandwidth" to
be separate and distinct from each other; and (3) Han's
"AllowedMeasBandwidth" indicator can be both Appellants' claimed
"indicator" and "measurement bandwidth." Ans. 2--4.
We disagree with the Examiner. During examination, claim terms are
given their broadest reasonable interpretation consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed.
Cir. 2004). However, "the proper BRI construction is not just the broadest
construction, but rather the broadest reasonable construction in light of the
specification." In re Man Mach. Interface Techs. LLC, 822 F.3d 1282, 1287
(Fed. Cir. 2016), citing Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292,
1298 (Fed. Cir. 2015) ("A construction that is unreasonably broad and which
does not reasonably reflect the plain language and disclosure will not pass
muster.")
As discussed supra, Appellants' claim 1 expressly requires a user
equipment (UE) to receive two components: (1) an "indicator" that
"represents whether the user equipment is enabled to perform a wide
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Application 13/782,970
bandwidth measurement," and (2) a "measurement bandwidth" that
"represents a maximum allowed measurement bandwidth."
Appellants' Specification further describes:
a wideband measurement is only performed when at least two
conditions are satisfied. First, the wideband measurement may
be performed by the user equipment, when a bandwidth
parameter, such as the "allowedMeasBandwidth" parameter, is
greater than or equal to a certain threshold. Second, an indication
bit or bits indicates whether the wideband measurement should
be performed (for example, whether the user equipment is
enabled to perform the wider bandwidth measurement). For
example, the wideband measurement may be performed, when
the "allowedMeasBandwidth" parameter is greater than or equal
to a threshold (also referred to herein as a decision threshold) and
an indication bit represents that the wideband measurement
should be performed as well. However, the wideband
measurement would not be performed (or needed at the user
equipment), when the "allowedMeasBandwidth" parameter is
greater than or equal to the threshold but the indication bit
represents that the wideband measurement should not be
performed. Nor would the wideband measurement be
performed, when the "allowedMeasBandwidth" parameter is less
than the threshold but the indication bit represents that the
wideband measurement should be performed.
Spec. i-f 15 (emphasis added).
According to Appellants' Specification:
[i]n some example embodiment, the network may send to
the user equipment the "allowedMeasBandwidth" parameter and
the indication bit representative of whether the wideband
measurement should be performed. In some example
embodiments, the indication bit may comprise one or more bits.
For example, when the indication bit has a value of" 1" (or True),
the wideband measurement would be performed, when the
"allowedMeasBandwidth" parameter is greater than or equal to
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Application 13/782,970
the threshold. However, if the indication bit has a value "O" (or
False), the wideband measurement would not need to be
performed, regardless of the value of the
"allowedMeasBandwidth" parameter. Nor would the wideband
measurement need to be made, when the indication bit has a
value of "1" (or True) but the "allowedMeasBandwidth"
parameter is less than the threshold. The threshold used in
connection with the "allowedMeasBandwidth" may be
predefined or signaled by the network. For example, the
threshold may be predefined as 10 MHz, although other
thresholds may be used as well.
Spec. i-f 16 (emphasis added).
In light of Appellants' Specification, Appellants' claimed "indicator"
and "measurement bandwidth" are distinct and separate components and, as
such, cannot be construed to encompass only Han's
"AllowedMeasBandwidth" indicator, as the Examiner reasons. Ans. 2--4
( citing Han i-f 25).
Separately, \'l.;e note Han describes sending an
"AllowedMeasBandwidth" parameter "to migrating UEs that specifies the
maximum allowed measurement bandwidth," so that "each UE is free to
select any measurement bandwidth that is equal to or smaller than the
maximum measurement bandwidth specified by the Allowedmeasbandwidth
parameter." Han i-f 18. However, Han also recognizes a problem with the
conventional approach of sending such an "AllowedMeasBandwidth"
parameter. Han i-f 19. As such, Han proposes "a mechanism for mandating
the measurement bandwidth used for RSSP/RSRQ estimation, which
includes communicating a measurement bandwidth indicator
(measbandwidth) indicator to the UE." Han i-f 20. According to Han:
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Application 13/782,970
the measbandwidth is distinguished from the
Allowedmeasbandwidth parameter in that the measbandwidth
mandates a specific measurement bandwidth that the UE must
use during RSRP /RSRQ estimation, while the
Allowedmeasbandwidth parameter merely establishes a
maximum measurement bandwidth to use during RSRP/RSRQ
estimation.
Han. i120.
In other words, Han proposes using a different type of measurement
bandwidth indicator, i.e., a "measbandwidth" indicator to mandate a specific
measurement bandwidth, for example, at 6, 15, 25, or 50 RBs (see Han i1
20), as opposed to the conventional approach of using an
"Allowedmeasbandwidth" indicator to merely establish a maximum
measurement bandwidth, for example, at 50 RBs (see Han i-f 18). Both types
of Han's indicators, i.e., the "measbandwidth" indicator and the
"Allowedmeasbandwidth" indicator, are used by the user equipment (UE) to
perform the measurement band\'l1idth. Ho\'l1ever, neither
the "measbandwidth" indicator nor the "Allowedmeasbandwidth" indicator
as disclosed by Han is used to represent whether the user equipment (UE) is
allowed to perform a wide bandwidth measurement in the manner recited by
Appellants' claim 1.
Anticipation under 35 U.S.C. § 102 is a question of fact. Brown v.
3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). A claim is anticipated only if
each and every element as set forth in the claim is found, either expressly or
inherently described in a single prior art reference. Verdegaal Bros. v.
Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). Because
Han does not disclose sending an "indicator" that "represents whether the
user equipment is enabled to perform a wide bandwidth measurement," in
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addition to a "measurement bandwidth" that "represents a maximum allowed
measurement bandwidth," Han does not require the user equipment (UE) to
perform "the wide bandwidth measurement" based on two conditions: (1)
when the received measurement bandwidth equals or exceeds a threshold,
and (2) the indicator represents a request to the user equipment to perform
the wide bandwidth measurement, as recited in claim 1.
For these reasons, we do not sustain the Examiner's anticipation
rejection of independent claim 1 and similarly, independent claims 8, 15,
and 16 and their respective dependent claims 2-7, 9-14, and 17, which
Appellants do not argue separately. App. Br. 13.
CONCLUSION
On the record before us, we conclude Appellants have demonstrated
the Examiner erred in rejecting claims 1-1 7 under 3 5 U.S. C. § 102 ( e).
DECISION
As such, we REVERSE the Examiner's final rejection of claims 1-17.
REVERSED
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