NEC Corporation

Patent Trials and Appeals Board

Sep 16, 2020

15384619 - (D) (P.T.A.B. Sep. 16, 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.
15/384,619 12/20/2016 Francesca SERRAVALLE 2209858.00142US3 8878
24395 7590 09/16/2020
WILMERHALE/DC
1875 PENNSYLVANIA AVE., NW
WASHINGTON, DC 20006
EXAMINER
AJIBADE AKONAI, OLUMIDE
ART UNIT PAPER NUMBER
3648
NOTIFICATION DATE DELIVERY MODE
09/16/2020 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):
scott.barrett@wilmerhale.com
whipusptopairs@wilmerhale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANCESCA SERRAVALLE, ROBERT PATERSON, and
ROBERT TIETZ
____________

Appeal 2020-000307
Application 15/384,619
Technology Center 3600
____________

Before JOHN C. KERINS, DANIEL S. SONG, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated July 31, 2018, hereinafter “Final
Act.”) rejecting claims 25–28.2 We have jurisdiction over this appeal under
35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. NEC Corporation is identified as the real party in interest
in Appellant’s Appeal Brief (filed June 17, 2019, hereinafter “Appeal Br.”).
Appeal Br. 2.
2 Claims 1–24 are canceled. See Appeal Br. 11 (Claims App.).
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Application 15/384,619

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SUMMARY OF DECISION
We REVERSE.

INVENTION
Appellant’s invention relates to a communication system and method
“for providing relay services to mobile or fixed communication devices.”
Spec. 1, ll. 6–7.
Claims 25–28 are independent. Claim 25 is illustrative of the claimed
invention and reads as follows:
25. A donor base station for a communication system, the
donor base station comprising:
a receiver configured to receive, from a mobility
management entity (MME), an S1 MME overload message; and
a transmitter configured to transmit, to a relay node, the
MME overload message, including in the MME overload
message an identity of an affected core network node in the
overload message.

REJECTION

The Examiner rejects claims 25–28 under 35 U.S.C. § 103(a) as being
unpatentable over Lee3 and Meirosu.4

ANALYSIS
The Examiner finds Lee discloses, inter alia, a donor base station
(DeNB, eNB),5 a receiver 21 (receiving module) for receiving from a

3 Lee et al., US 8,451,769 B2, issued May 28, 2013.
4 Meirosu et al., US 2011/0122779 A1, published May 26, 2011.
5 Parenthetical nomenclature refers to Lee.
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mobility management entity (MME), an overload message (OVERLOAD
START message), and a transmitter 23 (transmitting module) for
transmitting to relay nodes (RN1, RN2) the overload message that includes
identification information (G-RNID). Final Act. 4 (citing Lee, col. 4, ll. 50–
51, col. 10, ll. 49–67, col. 11, ll. 51–54, Figs. 1, 2, 8, 9). However, the
Examiner finds that “Lee does not specifically disclose [that] the identity in
the overload message is an identity of an affected core network node.” Id.
Nonetheless, the Examiner further finds that Meirosu discloses a method for
transmitting an overload message “including an identity of an affected core
network node in the overload.” Id. (citing Meirosu, paras. 80, 106). Thus,
the Examiner concludes that it would have been obvious for a person of
ordinary skill in the art “to combine the teaching of Meirosu with Lee by
including the MME identifier in the overload message transmitted from the
MME to DeNB and the from the DeNB to the RN, for the benefit of
identifying the MME that has a load imbalance.” Id.
Appellant argues that the Examiner’s reasoning to combine the
teachings of Lee and Meirosu, namely, to “provide the benefit of identifying
the MME that has a load imbalance,” is circular because a skilled artisan
“would not send more data from a base station to a relay node just for the
sake of sending more data.” Appeal Br. 9. Accordingly, Appellant contends
that “the reasoning applied by the Examiner . . . is based on improper
hindsight reasoning,” and, thus, “appears to be gleaned solely from the
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Application 15/384,619

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Appellant’s disclosure.” Reply Brief (filed Oct. 15, 2019, hereinafter
“Reply Br.”) 36 (citing Spec. 2, ll. 10–23, Spec. 12, ll. 11–15).7
The Examiner is correct that Lee discloses transmitting an overload
message OVERLOAD START including identification information
G-RNID from mobility management entity MME to donor base station
DeNB and then to relay nodes RN1, RN2. Examiner’s Answer (dated Aug.
15, 2019, hereinafter “Ans.”) 5. We also agree with the Examiner’s finding
that “Meirosu discloses transmitting an overload message from one MME to
another MME, wherein the overload message comprises an MME identifier
of the MME experiencing the overload.” Id. (emphasis omitted).
However, Meirosu does not provide information regarding an MME
experiencing an overload to a relay node. As such, we find the Examiner’s
rejection insufficient to explain what would have prompted a person having
ordinary skill in the art to include Meirosu’s MME identifier of the MME
experiencing the overload into Lee’s overload message OVERLOAD
START transmitted to relay nodes RN1, RN2 from donor base station
DeNB. The reason proffered by the Examiner, i.e., “for the benefit of
identifying the MME that has a load imbalance” (see Final Act. 4), appears
to be performed by Meirosu’s overload message transmitted from one MME
to another MME. See, e.g., Meirosu, paras. 80, 106.
We, thus, agree with Appellant that the Examiner’s rejection does not
sufficiently explain why the relay nodes RN1, RN2 in Lee should be sent

6 Appellant provides page numbers only on the first page of the Reply Brief.
However, for ease of referring to Appellant’s arguments, we have assigned
page numbers 2 through 4 to the Reply Brief.
7 Appellant refers to paragraphs 7, 8, and 76 of US 2017/0105159 A1,
published Apr. 13, 2017.
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information identifying the MME with a load imbalance. See Appeal Br. 9.
The Examiner has not provided any findings that Meirosu recognized a
problem with transmitting an overload message from one MME to another
MME identifying the MME that has a load imbalance. Thus, it is not clear
from the Examiner’s rejection why a skilled artisan would modify Lee’s
overload message to send information identifying the MME with a load
imbalance to a relay node rather than from one MME to another MME, as
per Meirosu. Appellant is correct that only Appellant’s own Specification
provides such a reason, namely, to “provide the benefit of identifying which
MME of multiple MMEs serving a relay node through a Donor eNB for
which to start an overload procedure.” Appeal Br. 9; Reply Br. 3.
In conclusion, the Examiner fails to articulate an adequate reason,
with rational underpinnings, why, in the absence of hindsight gleaned
improperly from Appellant’s underlying disclosure, a person having
ordinary skill in the art would have modified Lee, according to Meirosu, to
arrive at the subject matter of independent claims 25–28. See St. Jude Med.,
Inc. v. Access Closure, Inc., 729 F.3d 1369, 1381 (Fed. Cir. 2013)
(reminding us that “we must guard against ‘hindsight bias’ and ‘ex post
reasoning’” in making obviousness determinations (quoting KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007))). Therefore, for the foregoing
reasons, we do not sustain the rejection under 35 U.S.C. § 103(a) of claims
25–28 as unpatentable over Lee and Meirosu.

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Application 15/384,619

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CONCLUSION

Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
25–28 103(a) Lee, Meirosu 25–28

REVERSED