Konstantinos Dimou et al.

Patent Trials and Appeals Board

Jun 26, 2020

14236920 - (D) (P.T.A.B. Jun. 26, 2020)

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.
14/236,920 02/04/2014 Konstantinos Dimou 1009-0821 / P35042 US2 9114
102721 7590 06/26/2020
Murphy, Bilak & Homiller/Ericsson
1255 Crescent Green
Suite 200
Cary, NC 27518
EXAMINER
AUNG, SAI
ART UNIT PAPER NUMBER
2416
NOTIFICATION DATE DELIVERY MODE
06/26/2020 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 KONSTANTINOS DIMOU and WALTER MÜLLER

Appeal 2018-009229
Application 14/236,920
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 20–27 and 29–38. Claim 28 has been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Telefonaktiebolaget LM Ericsson. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims relate to information exchanges in cellular radio
communications and, in particular, to obtaining information regarding
mobility of the user equipment. Spec. 1. Claim 20, reproduced below with
the disputed limitation in italics, is illustrative of the claimed subject matter:
20. A method, implemented in a serving node of a radio
communications system, for receiving mobility information from
a remote terminal, wherein the serving node is configured to
establish connection with a plurality of remote terminals through
radio links and the method comprises:
receiving a connection request from the remote terminal;
requesting mobility information from the remote terminal
in response to receiving the connection request;
receiving the requested mobility information from the
remote terminal; and
establishing the requested connection with the remote
terminal.
Appeal Br. 20 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Fodor et al. US 2002/0155831 A1 Oct 24, 2002
Jeong et al. US 2007/0287476 A1 Dec. 13, 2007
Koslov et al. US 2010/0067601 A1 Mar. 18, 2010
Ernstrom WO 2006/137779 A1 Dec. 28, 2006

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REJECTIONS
Claims 20–25, 27, 30, 31, 33, 34, and 36–38 stand rejected under
35 U.S.C. § 103 as being unpatentable over Jeong and Fodor. Final Act. 3–
5.
Claims 26 and 35 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Jeong, Fodor, and Ernstrom. Final Act. 15–16.
Claims 29 and 32 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Jeong, Fodor, and Koslov. Final Act. 16–17.
ISSUES
First Issue: Has the Examiner erred in finding the cited references
teach, suggest or otherwise render obvious a “method implemented in a
serving node of a radio communications system” with the step of “requesting
mobility information from the remote terminal in response to receiving the
connection request,” as recited in claim 20?
Second Issue: Has the Examiner provided sufficient reasoning for
why a person of ordinary skill in the art would have been motivated to
combine the cited references to achieve the invention as claimed?
ANALYSIS
First Issue
Claim 20 recites the limitation “requesting mobility information from
the remote terminal in response to receiving the connection request.”
Appeal Br. 20 (Claims Appendix). In rejecting claim 20 under § 103, the
Examiner relies on the teachings of Jeong and Fodor for this limitation.
Final Act. 3–4. Specifically, the Examiner finds Jeong’s E-RAN node
requesting resource allocation for a CQI report teaches all of the limitation
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except for “mobility information.” Final Act. 3 (citing Jeong ¶¶ 20–22). To
address this deficiency, the Examiner cites Fodor, finding that it
demonstrates that it was known to request mobility information from a
mobile device. Final Act. 4 (citing Fodor Figs. 3–4, ¶¶ 41, 51).
Appellant argues “The rejection should be reversed because the
combination of Jeong and Fodor does not disclose a serving node requesting
mobility information from a remote terminal in response to receiving a
connection request.” Appeal Br. 7. More specifically, Appellant asserts:
Even if Fodor’s quality measurement information could
reasonably be considered “mobility information,” however, what
is missing from Jeong’s teachings is not simply “mobility
information.” Missing from Jeong is any disclosure or
suggestion that a serving node of a radio communication system
(e.g., a base station) requests mobility information (rather than
CQI information) from a remote terminal, in response to
receiving a connection request, and that the requested mobility
information is subsequently received.
Appeal Br. 7.
We agree with the Examiner the combined teachings of Jeong and
Fodor render this limitation obvious. Specifically, we agree that Jeong’s
transmission of an RRC connection request message by the UE teaches a
connection request made by a remote terminal. We further agree with the
Examiner that the E-RAN transmitting a setup message back to the UE,
including the control channel information for the UE, in response to the
connection request, teaches or at least suggests the disputed imitation with
the exception of the type of information is not specifically “mobility
information.” Jeong ¶¶ 20–23. We further agree with the Examiner’s
finding that Fodor’s information related to location and tracking information
and also information on the velocity and direction of the mobile device
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teaches the claimed “mobility information.” Final Act. 4 (citing Fodor Figs
3, 4; ¶¶ 41, 51). As such, when considered together in combination, we do
not discern error in the Examiner’s determination that the collective
teachings of Jeong and Fodor teach the disputed limitation.
Second Issue
In combining the teachings of Jeong and Fodor, the Examiner
provides the following rationale:
Fodor's teaching of requesting the mobility information from the
device could apparently be incorporated into Jeong's
conventional method of transmitting and receiving CQI report
message for connection setup between UE and Base Station for
handover type connection.
Therefore, it would have been obvious to one having
ordinary skill in the art at the time of the claimed invention was
made to provide requesting mobility information from the UE as
taught by Jeong to have incorporated in the system of Fodor, so
that it would provide to evaluate satisfaction of mobile
subscribers, to evaluate the location of existing cells and
transceivers, and to verify improvements in wireless data
network. Fodor Para. [0071].
Final Act. 4–5.
Appellant challenges the Examiner’s rationale. Appellant first argues
the rational is not supported because:
The purported rationale for the combination as provided by the
FOA is ‘to evaluate satisfaction of mobile subscribers and the
location of existing cells, but also support to verify
improvements in wireless data network.’ FOA, p. 19. However,
this does not explain why any of Fodor’s information should be
included with the CQI requested from a wireless device.”
Appeal Br. 13. Appellant further argues a person of ordinary skill in the art
would not have modified Jeong to request mobility information because
Figure 3 of Jeong illustrate an embodiment in which the “serving node
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already receives a UE stationary indicator or mobility indicator in the first
connection request from the terminal to the serving node.” Appeal Br. 15–
16. Thus, according to Appellant, there would be no need to modify Jeong
to request mobility information as taught by Fodor because Jeong includes
an embodiment in which the serving node receives mobility information
earlier in the process via the connection request.
We are not persuaded of error. Although not styled as such,
Appellant’s argument is effectively an assertion that Jeong teaches away
from the modification proposed by the Examiner. That is, Appellant argues
that because Jeong includes an embodiment describing one way of providing
mobility information to a network, a person of ordinary skill would have
been discouraged from considering any other way of doing so. But teaching
another way is not the same as teaching away. DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A
reference does not teach away, however, if it merely expresses a general
preference for an alternative invention but does not ‘criticize, discredit, or
otherwise discourage' investigation into the invention claimed.”) (quoting In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
Jeong recognizes the benefit of providing mobility information form
the mobile device to the base station. Jeong Abstract (“In the method, a UE
reports mobility information to a network, and the network performs
according to the mobility information of the UE.”) Recognizing that benefit,
Jeong teaches one way of providing a stationary indicator (mobility
information) to a base station—in the initial setup request. Jeong Fig. 3, step
321; ¶ 51. However, nothing in Jeong indicates that providing information
about the mobile device’s movement must only be provided in the initial
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setup request. In fact, Jeong also teaches that a non-stationary indicator
(also mobility information) may be transmitted to the network subsequent to
the completed RRC setup. Jeong ¶ 56, Fig. 3, step 331. Separately, Jeong
teaches an embodiment where no stationary indicator is included in the
initial setup request made by the mobile device—the embodiment described
in Figure 2. Jeong Fig. 2; ¶¶ 20–23. In this embodiment, an E-RAN 202
issues an RRC connection setup message requesting information (CQI
reports) from the mobile device to be provided in response to that request.
Jeong ¶ 20, Fig. 2, step 222. As we noted above, the Examiner cites to
Fodor as demonstrating that it was known in the art to transmit mobility
information from a mobile device to a network. Fodor ¶¶ 43–44.
We agree with the Examiner that a person of ordinary skill in the art
possessing the teachings of Jeong and Fodor would have found it obvious to
include mobility information in the RRC connection setup message request
and response. Specifically, in the embodiment depicted in Jeong’s Figure 2,
a person of ordinary skill in the art would have appreciated that in addition
to CQI reports, it would have been useful to provide mobility information
such as detailed location information as taught by Fodor. That Jeong teaches
another way of delivering mobility information does not negate the
obviousness of incorporating the approach taught by Fodor.
The standard for determining whether a claim is obvious is “an
expansive and flexible approach.” KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 415 (2007). Applying the approach set forth in KSR, we conclude an
artisan would have sought to improve the Figure 2 embodiment described in
Jeong by either substituting mobility information for CQI reports and
including mobility information additional to CQI reports, as doing so would
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not “involve more than the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
ready for the improvement.” KSR, 550 U.S. at 417. To the extent known
alternatives would have been considered and accommodated by an artisan,
the Supreme Court guides that courts can “take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id. at
418.
Thus, we find the Examiner's rationale is consistent with the
expansive and flexible approach countenanced by KSR, as it reflects a mere
substitution of known, familiar elements and/or steps that would have
yielded a predictable result of connection between the base station and
remote terminals. Because we do not find Appellant’s arguments persuasive
of Examiner error, we sustain the rejection of independent claims 20, 30, 33
and 38 under § 103. We also sustain the rejection of dependent claims 21–
24, 27, 31, 34, 36, and 37, not argued separately. Appeal Br. 17.
Claim 25
Appellant separately argues dependent claim 25, contending the
Examiner’s findings say “nothing about requesting an estimated mobility
state and says absolutely nothing about radio access capabilities of the
remote terminal for different radio frequency band classes.” Appeal Br. 17.
Appellant further contends “Nothing here, however, suggests that Jeong’s
network requests information regarding the radio access capabilities of the
remote terminal, for different radio frequency band classes.” Appeal Br. 18.
We are not persuaded by Appellant’s arguments because Jeong’s
resource allocation information includes radio resource information in the
time and frequency domain, and its measurement control information
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includes measurements between frequencies of the systems, thus teaching or
at least suggesting “different radio frequency band classes.” Jeong ¶ 21.
Because we do not find Appellant’s arguments persuasive of Examiner error,
we sustain the rejection of dependent claim 25 under § 103.
Claim 26
Regarding dependent claim 26, Appellant argues that “moving speed
measure” is not requested by the network. However, Appellant is arguing
the references separately. The Examiner finds Fodor’s requesting
information including tracking information and speed/velocity information
of the mobile device teaches or at least suggests the disputed limitation.
Final Act. 15 (citing Fodor ¶ 41, 51). Because we do not find Appellant’s
arguments persuasive of Examiner error, we sustain the rejection of
dependent claim 26 under § 103.
Appellant further argues claims 29 and 32 are erroneously rejected
because a “person of ordinary skill in the art would have no reason to
modify Jeong’s procedures” and “there is no reason to believe that Jeong’s
procedures would even work with combined mobility information.” Appeal
Br. 19. For reasons described above regarding claim 20, we are not
persuaded by Appellant’s combinability argument regarding the Jeong
reference. We, therefore, also sustain the rejection of dependent claims 29
and 32 under § 103.
Appellant does not present a separate argument for patentability of
dependent claim 35. We, therefore, also sustain the rejection of claim 35
under § 103.

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CONCLUSION
We affirm the Examiner’s rejections.
More specifically,
We affirm the rejection of claims 20–25, 27, 30, 31, 33, 34, and 36–38
under 35 U.S.C. § 103 as being unpatentable over Jeong and Fodor.
We affirm the rejection of claims 26 and 35 under 35 U.S.C. § 103 as
being unpatentable over Jeong, Fodor, and Ernstrom.
We affirm the rejection of claims 29 and 32 under 35 U.S.C. § 103 as
being unpatentable over Jeong, Fodor, and Koslov.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
20–25, 27,
30, 31, 33,
34, and 36–
38
103 Jeong and Fodor 20–25, 27,
30, 31, 33,
34, and 36–
38

26 and 35 103 Jeong, Fodor, and
Ernstrom
26 and 35
29 and 32 103 Jeong, Fodor, and
Koslov
29 and 32
Overall
Outcome
20–27 and
29–38

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