Ex Parte Kazmi et al

Patent Trial and Appeal Board

Sep 21, 2018

14552027 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/552,027 11/24/2014
102721 7590 09/25/2018
Murphy, Bilak & Homiller/Ericsson
1255 Crescent Green
Suite 200
Cary, NC 27518
FIRST NAMED INVENTOR
Muhammad Kazmi
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.
1009-1181 / P33782 US3 4099
EXAMINER
ELHAG, MAGDI
ART UNIT PAPER NUMBER
2641
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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 MUHAMMAD KAZMI, TAO CUI, and ERIKA TEJEDOR
Appeal 2018-003 7 41
Application 14/552,027 1
Technology Center 2600
Before JOHN A. EV ANS, JUSTIN BUSCH, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 37---68. Appellants have canceled or withdrawn from consideration
claims 1-36. See Amend. 2-3, filed February 14, 2017. We have
jurisdiction over the remaining pending claims under 35 U.S.C. §6(b ).
We reverse.
1 Appellants identify Telefonaktiebolaget LM Ericsson as the real party in
interest. App. Br. 2.
Appeal2018-003741
Application 14/552,027
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention generally relates to
"enabl[ing] operation and roaming of a wireless mobile terminal supporting
a harmonized [(frequency)] band and/or a smaller band which is a sub-set of
or overlaps with the harmonized band." Spec. ,r 1. A mobile device
operates in a frequency band and a cell (i.e., base station) similarly operates
in a frequency band. Spec. ,r 3. For a mobile device to communicate with a
base station, both the mobile device and base station must operate in the
same frequency band. Spec. ,r,r 3--4. According to the Specification, there
are industry efforts to standardize bands of spectrum that may include a
number of frequency bands (i.e., legacy frequency bands). 2 Spec. ,r 4. A
"harmonized band" is a band that covers one or more individual frequency
bands. Spec. ,r 7. An issue may arise when a mobile device supporting a
legacy band roams into a cell supported by a base station operating in a
harmonized band. Spec. ,r,r 29--30. Although the mobile device and the base
station may share a common operating frequency, the mobile device may not
recognize a new harmonized band ( e.g., the use of different channel
numbers). Spec. ,r 30. To address this issue, in a disclosed embodiment, the
capabilities of the cells (i.e., base stations) are communicated to other cells
and mobile devices, wherein the capabilities include two sets of frequency
information----one set indicative of harmonized band support, and the other
indicative of legacy band support. Spec. ,r,r 55, 60-63.
2 According to the Specification, standardization allows for various
advantages, including global roaming, reduced cost of products due to the
economy of scale, and improved reuse opportunities. Spec. ,r 4.
2
Appeal2018-003741
Application 14/552,027
Claim 37 is illustrative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
3 7. A method in a network node associated with a cell in a
cellular communication system, for supporting use of different
types of mobile terminals (UEs ), said method comprising:
receiving, from a neighboring network node, information
associated with at least two frequency bands having a respective
predefined frequency band indicator, which frequency bands are
at least partially supported in a cell associated with the
neighboring network node;
determining one or more frequency bands to support based
upon the received information; and
signaling information associated with the supported one or
more frequency bands to UEs in the cell.
The Examiner's Rejections
1. Claims 37-50, 53---65, and 68 stand rejected under pre-AIA
35 U.S.C. § I02(a) as being anticipated by Roessel et al. (US 2010/0317356
Al; Dec. 16, 2010) ("Roessel"). Final Act. 3-13.
2. Claims 51, 52, 66, and 67 stand rejected under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Roessel and Applicants'
Admitted Prior Art ("AAP A"). 3 Final Act. 14--16.
3 We note that in the body of the rejection, the Examiner inadvertently refers
to claims 66 and 67 as claims 72 and 73, respectively. See Final Act. 16.
Appellants do not claim to have been prejudiced by the Examiner's
typographical error and, accordingly, we treat such error as harmless.
3
Appeal2018-003741
Application 14/552,027
ANALYSIS 4
Appellants assert the Examiner erred in finding Roessel anticipates,
inter alia, independent claims 37 and 38. App. Br. 5-9; Reply Br. 2-5. In
particular, Appellants argue that Roessel fails to disclose a network node
receiving frequency band support information from a neighboring network
node. App. Br. 5-8. Instead, Appellants contend Roessel describes a mobile
device (i.e., user equipment UE) sending its capability to a base station (i.e.,
network node). App. Br. 6-8 (citing Roessel ,r,r 19, 26, Figs. 1, 3); Reply
Br. 2--4. Further, Appellants assert the information received by the base
station from the UE in Roessel relates to the capability of the UE rather than
the frequency bands supported by a neighboring network node, as required
by the independent claims. App. Br. 6-8; Reply Br. 2-5. Appellants
contend "Roessel' s UE does not define band support for a base station."
Reply Br. 3 ( emphasis omitted). Further, Appellants assert there is no
disclosure in Roessel that the UE capability information includes
information related to frequency band support for a neighboring network
node. App. Br. 7 ( citing Roessel ,r 26).
In response, the Examiner finds Roessel discloses a base station
shares the bands it is currently supporting with a neighboring base station,
"wherein the current supported bands at the serving cell/base station are
based on the UE." Ans. 3. The Examiner further explains Roessel discloses
a UE signals its capability to support multiple frequency band modes to a
4 Throughout this Decision, we have considered the Appeal Brief, filed
August 18, 2017 ("App. Br."); the Reply Brief, filed February 26, 2018
("Reply Br."); the Examiner's Answer, mailed December 26, 2017 ("Ans.");
and the Final Office Action, mailed December 14, 2016 ("Final Act."), from
which this Appeal is taken.
4
Appeal2018-003741
Application 14/552,027
base station. Ans. 3 ( citing Roessel ,r 26, Figs. 1, 3). Additionally, the
Examiner finds the UE capabilities are conveyed from the UE to a base
station and the receiving base station may then convey the UE's capabilities
to a neighboring base station "using signaling connections between said base
stations." Ans. 5 (citing Roessel ,r 26). Additionally, the Examiner explains
"the UE capability indicates the bands that the UE can support and at the
same time the bands that are, or will need to be, supported by a first cell/base
station." Ans. 6-7.
"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., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). Further, the principle of "inherency" requires that any
information not expressly disclosed within a prior art reference would
nonetheless be known to be present in the subject matter of the reference,
when viewed by persons experienced in the field of the invention. However,
"anticipation by inherent disclosure is appropriate only when the reference
discloses prior art that must necessarily include the unstated limitation [ or
the reference] cannot inherently anticipate the claims." Transclean Corp. v.
Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (internal
citation omitted); see also W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1554 (Fed. Cir. 1983) (anticipation "cannot be predicated on
mere conjecture respecting the characteristics of products that might result
from the practice of processes disclosed in references") ( citation omitted).
Roessel generally relates to "a method for interworking between
multiple frequency band modes." Roessel ,r 1. In the embodiment relied on
by the Examiner, Roessel describes the UE signaling to the base station the
5
Appeal2018-003741
Application 14/552,027
capabilities (i.e., the frequency band modes supported) of the UE. Roessel
,r,r 19, 26, Abstract; see also Final Act. 3--4. Roessel further discloses
network elements (i.e., base stations) may communicate with each other "to
convey the UE's capability to [other] base stations." Roessel ,r 26. We
agree with Appellants that the UE' s capabilities do not necessarily define the
capabilities of the base station with which it is communicating. In other
words, as identified by the Examiner, Roessel does not disclose a base
station receiving, from a neighboring base station, information indicating the
frequency bands ( as claimed) that are at least partially supported by the
neighboring base station.
For the reasons discussed supra, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner's rejection under 35 U.S.C.
§ 102( a) of independent claim 3 7 as being anticipated by Roessel. For
similar reasons, we do not sustain the Examiner's rejection of independent
claim 38, which recites similar limitations. Further, we do not sustain the
Examiner's rejection under 35 U.S.C. § 102(a) of claims 39--50, 53-65, and
68, which depend directly or indirectly therefrom.
Regarding the Examiner's rejection under 35 U.S.C. § 103(a) of
dependent claims 51, 52, 66, and 67, the Examiner does not rely on AAP A
to cure the deficiencies related to the rejection of the independent claims.
See Final Act. 15-16. Accordingly, for similar reasons to those discussed
supra, we do not sustain the Examiner's rejection under 35 U.S.C. § 103(a)
of claims 51, 52, 66, and 67.
6
Appeal2018-003741
Application 14/552,027
DECISION
We reverse the Examiner's decision rejecting claims 37-50, 53---65,
and 68 under pre-AIA 35 U.S.C. § 102(a).
We reverse the Examiner's decision rejecting claims 51, 52, 66, and
67 under pre-AIA 35 U.S.C. § 103(a).
REVERSED
7