Ex Parte Perez et al

Patent Trial and Appeal Board

Aug 29, 2018

15116097 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/116,097 08/02/2016
11051 7590 08/31/2018
Squire Patton Boggs (US) LLP
Nokia Technologies Oy
8000 Towers Crescent Drive, 14th Floor
Vienna, VA 22182
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Eva Perez
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.
059864.02531 9168
EXAMINER
D AGOSTA, STEPHEN M
ART UNIT PAPER NUMBER
2414
NOTIFICATION DATE DELIVERY MODE
08/31/2018 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):
sonia.whitney@squirepb.com
ipgeneraltyc@squirepb.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 EV A PEREZ, CHRISTIAN MARKWART, and
RUEDIGER HALFMANN
Appeal2018-003329
Application 15/116,097 1
Technology Center 2400
Before JAMES R. HUGHES, JAMES W. DEJMEK, and
JASON M. REPKO, 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 51, 5 2, 5 7, and 5 8. The Examiner has objected to claims 5 3-5 6 as
being dependent upon a rejected base claim, but has indicated the claims
would be allowable if rewritten in independent form. Final Act. 12-14.
Additionally, the Examiner has indicated claims 71 and 72 are allowable.
Advisory Act. 2 (mailed September 13, 2017). Appellants have canceled
claims 1-50 and 59-70. See Response 2 (filed August 25, 2017). We have
jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b ).
1 Appellants identify Nokia Solutions and Networks Oy as the real party in
interest. App. Br. 3.
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Application 15/116,097
We reverse.
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention generally relates to
optimizing the border of shared spectrum between different licensed shared
access (LSA) controllers. Spec. 1:8-11. According to the Specification,
LSA spectrum is typically owned by a primary user/licensor (i.e.,
Incumbent) who allows other licensed operators (i.e., Mobile Network
Operators, or MNOs) to use portions of the spectrum. Spec. 2: 17-20. As
one or more MNOs are allowed to use portions of the Incumbent's shared
spectrum, rules or restrictions on operation are needed to minimize spectrum
interference issues. See Spec. 3: 15-20. In a disclosed embodiment, a
messaging sequence is described to accommodate a request for access to the
shared spectrum by one MNO and adjusting the rules for other MNOs
operating at the border of the shared spectrum. See Spec. 19:8-20:21,
Fig. 5A.
Claim 51 is illustrative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
51. An apparatus, comprising:
at least one processor; and
at least one memory,
wherein the at least one memory is configured to, with the
at least one processor, cause the apparatus at least to:
receive a request from a first licensed shared access
controller to modify one or more rules affecting a border
of a shared spectrum band of the first licensed shared
access controller;
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Application 15/116,097
identify, in response to receiving the request, a
second licensed shared access controller sharing at least
a part of the border of the shared spectrum band with the
first licensed shared access controller;
transmit a message to the second licensed shared
access controller indicating the request, the one or more
rules, and at least the part of the border; and
control the shared spectrum band according to the
one or more rules.
The Examiner's Rejections2
1. Claims 51, 52, and 58 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Buddhikot et al. (US 2008/0108365 Al; May 8,
2008) ("Buddhikot") and European Telecommunications Standards Institute
(ETSI), Report on ASA Concept, FM912)084 Annex 47, 1-11 (May 10,
2012) ("ASA"). Final Act. 4--11.
2. Claim 57 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Buddhikot, ASA, and Colban et al. (US 2005/0096055
Al; May 5, 2005) ("Colban"). Final Act. 11-12.
ANALYSIS 3
Appellants dispute the Examiner's findings that Buddhikot teaches or
suggests (i) identifying, in response to a request, a second licensed shared
2 The Examiner had rejected claims 51-58 under 35 U.S.C. § 101. Final
Act. 3. Appellants amended the claims and the Examiner has withdrawn the
rejection of claims 51-58 under 35 U.S.C. § 101. Adv. Act. 2.
3 Throughout this Decision, we have considered the Appeal Brief, filed
November 20, 2017 ("App. Br."); the Reply Brief, filed February 6, 2018
("Reply Br."); the Examiner's Answer, mailed December 27, 2017 ("Ans.");
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Application 15/116,097
access controller sharing at least part of a border of the shared spectrum with
a first licensed shared access controller; or (ii) transmitting a message to the
second licensed shared access controller indicating the request, one or more
rules, and at least part of the border. App. Br. 7-10; Reply Br. 3-6. In
particular, Appellants assert Buddhikot does not teach or suggest that the
Spectrum Broker Overlay Network (SBON), as relied on by the Examiner,
identifies a second Spectrum Broker System (SBS) that shares a border of
the shared spectrum with a first SBS. Rather, Appellants argue Buddhikot
teaches the SBS's communicate with each other without any disclosure that
either SBS identifies a licensed shared access controller. App. Br. 8.
Additionally, Appellants argue "Buddhikot is silent with respect to, at least,
transmitting a message to the second licensed shared access controller
indicating the request, the one or more rules, and at least the part of the
border, as recited in claim 51." App. Br. 8-9.
In response, the Examiner finds Buddhikot teaches "spectrum
allocation within adjacent regions requires coordination of spectrum
allocation between adjacent regions." Ans. 5 (citing Buddhikot ,r,r 100, 102,
emphasis omitted). The Examiner explains Buddhikot's disclosure of
"coordination" between the SBS's inherently reads on message(s) being
sent. Ans. 5. Further, the Examiner finds Buddhikot teaches rules being
enforced ( e.g., "a requirement may be established that only one provider
provide coverage in the areas of region adjacency"), which teaches the
claimed message transmission. Ans. 5-6 ( citing Buddhikot ,r,r 103-105).
and the Final Office Action, mailed August 2, 2017 ("Final Act."), from
which this Appeal is taken.
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We find Appellants' arguments persuasive of Examiner error. Claim
51 recites the message to the second licensed shared access controller
"indicat[ es] the request, the one or more rules, and at least part of the
border." The Examiner has not provided sufficient evidence or reasoning
that Buddhikot's coordination of spectrum allocation at areas of region
adjacency (i.e., shared spectrum border) includes messages indicating the
request (i.e., a request to modify one or more rules affecting a border), the
one or more rules, and at least part of the border. Rather, as explained by the
Examiner, the messages in Buddhikot may provide an indication of a new
rule or restriction (i.e., only one service provider). Ans. 5 (quoting
Buddhikot ,r 105); Final Act. 6. Thus, the Examiner has not shown by a
preponderance of evidence that the cited portions of Buddhikot teach or
suggest transmitting a message indicating the request to modify one or more
rules and at least the part of the border of the shared spectrum band between
the licensed shared access controllers.
For the reasons discussed supra, and constrained by the record before
us, we do not sustain the Examiner's rejection of independent claim 51.
Further, we do not sustain the Examiner's rejections of claims 52 and 58,
which depend therefrom. Additionally, claim 57 also depends from claim
51. The Examiner does not rely on the additionally cited reference (Colban)
to address the deficiencies related to the rejection of claim 51, discussed
above. Accordingly, we do not sustain the Examiner's rejection of claim 57.
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DECISION
We reverse the Examiner's decision rejecting claims 51, 52, 57, and
58.
REVERSED
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