TELEFONAKTIEBOLAGET L M ERICSSON

Patent Trials and Appeals Board

Nov 13, 2020

2019004331 (P.T.A.B. Nov. 13, 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.
14/780,530 09/26/2015 Joakim Axmon 1200-139 8461
120491 7590 11/13/2020
Leffler Intellectual Property Law, PLLC
8300 Boone Boulevard
5th Floor
Vienna, VA 22182
EXAMINER
ASEFA, DEBEBE A
ART UNIT PAPER NUMBER
2476
NOTIFICATION DATE DELIVERY MODE
11/13/2020 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):
info@leffleriplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOAKIM AXMON, MUHAMMAD KAZMI, and
WALTER MULLER

Appeal 2019-004331
Application 14/780,530
Technology Center 2400

Before JAMES R. HUGHES, CARL L. SILVERMAN, and
JOYCE CRAIG, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1–17 are pending, stand rejected, are appealed by Appellant,
and are the subject of our decision under 35 U.S.C. § 134(a).1 See Final Act.
1; Appeal Br. 2.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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. See Appeal Br. 2.
2 We refer to Appellant’s Specification (“Spec.”), filed Sept. 26, 2015
(claiming benefit of PCT/EP2014/071423, filed Oct. 7, 2014); Appeal Brief
(“Appeal Br.”), filed Aug. 11, 2018; and Reply Brief (“Reply Br.”), filed
May 12, 2019. We also refer to the Examiner’s Final Office Action (“Final
Act.”), mailed July 25, 2017; and Answer (“Ans.”) mailed Mar. 13, 2019.
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Application 14/780,530
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CLAIMED SUBJECT MATTER
The invention, according to Appellant, generally relates “to a wireless
communication system, and more specifically to controlling connections
between a user equipment and secondary cells in a wireless communication
system that provides carrier aggregation.” Spec. 1:3–5. Appellant’s claims
recite computer readable storage media, network nodes, user equipment and
methods performed by network nodes or user equipment for transmitting, to
user equipment (“UE”) configuration data comprising information
concerning one or more secondary cells (“SCells”) when switching a
connection between a current SCell and a different SCell. The method
receives (obtains) monitoring data associated with the UE, which comprises
spatial (movement) information of the UE in relation to one or more SCells,
calculates (predicts) an SCell into which the UE is expected to move based
on the monitoring data, transmits to the UE information that specifies the
predicted SCell, and provides to the predicted SCell preparation information
concerning the UE. See Spec. 2:19–5:22; Abstract. Claim 1 (directed to a
method), 8 (directed to a method), 14 (directed to a network node), 15
(directed to user equipment), 16 (directed to a computer readable medium),
and 17 (directed to a computer readable medium) are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method performed by a network node in a wireless
communication system, said wireless communication system
providing carrier aggregation (CA) for a user equipment (UE),
said UE being located in and connected to a primary cell (PCell),
the method comprising:
transmitting, to the UE, initial configuration data that
comprises information regarding at least one secondary cell
(SCell), one of which is a current SCell to which the UE is to be
connected, and at least one event triggering condition that defines
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radio signal measurement conditions for use by the UE when
switching connection between a current SCell and a subsequent
SCell, and repeating the steps of:
obtaining monitoring data associated with the UE, said
monitoring data comprising spatial information regarding
movement of the UE in relation to the at least one SCell,
calculating, based on the monitoring data, at least one
prediction of at least one subsequent predicted SCell into which
the UE is expected to enter at a future time,
transmitting, to the UE, information that specifies said at
least one predicted subsequent SCell,
providing, to the at least one subsequent predicted SCell,
preparation information that comprises information for the at
least one subsequent predicted SCell that it is to operate as a
SCell in relation to the UE.
Appeal Br. 20 (Claims App.) (emphasis added).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kim et al. (“Kim”) US 2014/0146697 A1 May 29, 2014
Li US 2016/0029265 A1 Jan. 28, 2016 (filed Mar.
21, 2013)

REJECTION3
The Examiner rejects claims 1–17 under 35 U.S.C. § 103 as being
unpatentable over Li and Kim. See Final Act. 4–28.

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application
has an effective filing date (Oct. 7, 2014) after the AIA’s effective (March
16, 2013), this decision refers to 35 U.S.C. § 103.
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Application 14/780,530
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ANALYSIS
The Examiner rejects independent claim 1 (as well as independent
claims 8 and 14–17, and dependent claims 2–7 and 9–13) as obvious over Li
and Kim. See Final Act. 4–6; Ans. 3–7. Appellant contends that Li and Kim
do not teach the disputed limitations of claim 1. See Appeal Br. 11–14;
Reply Br. 1–8. Specifically, Appellant contends, inter alia, that Li and Kim
“do not disclose predicting one or more SCells that a UE is expected to enter
at a future time, nor do they disclose that the claimed actions are performed
by a ‘network node.’” Reply Br. 6; see Reply Br. 1–8; Appeal Br. 11–14. In
particular, Appellant contends that Li does not predict an SCell that the UE
is likely to enter, but instead performs only measurement of channel quality
on neighboring SCells to determine the SCell to which the UE will switch.
See Appeal Br. 12–14; Reply Br. 1–8. Appellant also contends the
Examiner improperly interpreted the claim language such that the
interpretation “eliminates any predictive aspect of the claimed
embodiments” such that “the claimed embodiments read on prior technology
involving measuring and reacting to a cell signal after the UE is already
within range of the cell, without any prediction at all being made” in
contrast to Appellant’s prediction technique. Reply Br. 2.
We agree with Appellant that the Examiner-cited portions of Li (in
combination with Kim) do not teach or suggest “calculating . . . at least one
prediction of at least one subsequent predicted SCell into which the UE is
expected to enter at a future time” based on “monitoring data comprising
spatial information regarding movement of the UE.” Appeal Br. 20 (Claims
App.) (claim 1). See Appeal Br. 11–14; Reply Br. 1–8.
The Examiner relies on Li to teach the prediction of the SCell into
which the UE will move. See Final Act. 4–5; Ans. 4–6 (citing Li ¶¶ 18, 28,
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37, 38, 42, 54). Li describes measuring channel quality of neighbor SCells.
See Li ¶¶ 18, 28, 37, 38, 42, 54; Reply Br. 5–7. Li does not explicitly
describe any prediction relating to the UE and SCells. The Examiner further
concludes that “there is no prediction involved in the instant specification,
and therefore, appellant is using current measurement of SCell to determine
the quality of SCell to choose a candidate SCell as the primary reference Li
disclosed.” Ans. 5 (citing Li ¶ 38).
Appellant’s claim 1 and Appellant’s Specification, however, expressly
describe monitoring the movement of the UE and using the movement data
to make the prediction. Claim 1 recites “obtaining monitoring data
associated with the UE . . . comprising spatial information regarding
movement of the UE” and “calculating, based on the monitoring data, at
least one prediction of at least one subsequent predicted SCell into which the
UE is expected to enter.” Appeal Br. 20 (Claims App.) (claim 1).
Appellant’s Specification describes obtaining spatial monitoring data for the
UE—“[f]or example, the network node may keep track of the UE trail, i.e.,
where the UE came from, and attributes (state) such as UE velocity” (Spec.
7:24–25)—and predicting the SCell that the UE will enter—“the network
node may predict the most likely SCell(s) that the UE will enter next. The
prediction may be based on collected history of UE trails and attributes”
(Spec. 7:30–31). See also Spec. 12:5–13:11 (describing the SCell prediction
based on UE trails (previous path of travel), UE speed or velocity, UE
trajectory, etc.).
Additionally, even if we agreed with the Examiner that measurement
was equivalent to prediction (which we do not), Li describes the UE making
the measurements of the neighbor SCells. See Li ¶¶ 18, 38, 54. The
Examiner does not sufficiently explain how the network node (eNB) of Kim
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could perform the requisite measurements (performed by Li), much less
make a determination (prediction) based on the measurements. The
Examiner’s rationale for the substitution or modification simply reiterates
the teachings of Kim—that “it would have been obvious . . . to modify the
method of [Li] as taught by Kim, since Kim clearly states . . . the
modification results in activation and deactivation of SCell using commands
by eNB.” Final Act. 6.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding that the combination of Li and Kim renders
obvious Appellant’s claim 1. Independent claims 14 and 16 include
limitations of commensurate scope. Claims 2–7 depend from and stand with
claim 1.
Independent claims 8, 15, and 17 do not include the monitoring
limitation of claim 1 and do not expressly recite predicting an SCell based
on movement. Each claim does, however, require specifying “at least one
predicted subsequent SCell” that the user equipment or UE “is expected to
enter at a future time.” Because these claims require a prediction and the
rejection does not delineate any such prediction, we find that the Examiner
erred for the same reasons as claim 1 (supra). Claims 9–13 depend from and
stand with claim 8.
Accordingly, we do not sustain the Examiner’s obviousness rejection
of claims 1–17 over Li and Kim.
CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 1–17
under 35 U.S.C. § 103. We, therefore, do not sustain the Examiner’s
rejection of claims 1–17.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–17 103 Li, Kim 1–17

REVERSED