TELEFONAKTIEBOLAGET LM ERICSSON (PUBL)

Patent Trials and Appeals Board

Sep 1, 2021

2020004401 (P.T.A.B. Sep. 1, 2021)

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.
15/316,947 12/07/2016 Elena FERSMAN 0111-270/P043112US01 6927
113648 7590 09/01/2021
Patent Portfolio Builders, PLLC
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Suite 113-314
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EXAMINER
ELNOUBI, SAID M
ART UNIT PAPER NUMBER
2644
NOTIFICATION DATE DELIVERY MODE
09/01/2021 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):
Mailroom@ppblaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELENA FERSMAN, JING FU, HONGXIN LIANG, and
VLASIOS TSIATSIS
Appeal 2020-004401
Application 15/316,947
Technology Center 2600
Before TERRY J. OWENS, MAHSHID D. SAADAT, and
BRIAN D. RANGE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 25, 28–34, 37–45, and 48–52. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). The
Appellant identifies the real party in interest as
TELEFONAKTIEBOLAGEN LM ERICSSON (PUBL) (Appeal Br. 2).
Appeal 2020-004401
Application 15/316,947

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CLAIMED SUBJECT MATTER
The claims are directed to a method and system of devices for
maintaining a device-operated function. Claim 25, reproduced below, is
illustrative of the claimed subject matter:
25. A method in a system of devices comprising a first
device and a second device, for maintaining a device-operated
function, the method comprising:
the first device operating as an active master for
monitoring premises with responsibility to execute the device-
operated function by automatically performing one
or more operation tasks to carry out the monitoring according to
one or more operational parameters configured in the first
device and gaining knowledge when performing the one or
more operation tasks to carry out the monitoring,
the second device acting as a passive standby device,
wherein when the second device acts as the passive standby
device, the second device stays in a sleep mode and waits
without actively operating,
transferring the responsibility from the first device to the
second device by transferring the one or more operational
parameters and the knowledge from the first device to the
second device, and
the second device operating as the active master for
monitoring premises with responsibility to execute the device-
operated function by automatically performing the
one or more operation tasks to carry out the monitoring
according to the one or more operational parameters and using
the knowledge if required,
wherein the second device wakes up from the sleep mode
at regular intervals,
wherein the second device takes over the responsibility
when the first device cannot operate properly any longer due to
malfunctioning of the first device and/or a battery is low in the
first device.
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Application 15/316,947

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Aoyagi US 6,901,275 B1 May 31, 2005
Kang US 6,934,566 B2 Aug. 23, 2005
Yamaguchi US 7,447,746 B2 Nov. 4, 2008
Shurmantine US 7,554,932 B1 June 30, 2009
Devarapalli US 7,647,427 B1 Jan. 12, 2010
Brandsma US 9,762,295 B2 Sept. 12, 2017
REJECTIONS
The claims stand rejected as follows: claims 25, 38, 49, and 50 under
the 35 U.S.C. § 112(a) as failing to comply with the written description
requirement; claims 25, 28, 29, 32, 34, 38–40, 43, 45, and 49–52 under
35 U.S.C. § 103 over Aoyagi in view of Kang and Shurmantine; claims 30,
41, 37, and 48 under 35 U.S.C. § 103 over Aoyagi in view of Kang,
Shurmantine,2 and Brandsma; claims 31 and 42 under 35 U.S.C. § 103 over
Aoyagi in view of Kang, Shurmantine,2 and Yamaguchi; and claims 33
and 44 under 35 U.S.C. § 103 over Aoyagi in view of Kang, Shurmantine,2
and Devarapalli.
OPINION
Rejection under 35 U.S.C. § 112(a)
A specification complies with the 35 U.S.C. § 112(a) written
description requirement if it conveys with reasonable clarity to those skilled
in the art that, as of the filing date sought, the inventor was in possession of
the invention. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed.

2 The Examiner omitted Shurmantine from the statements of these rejections
(See Final 27, 29, 31).
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Application 15/316,947

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Cir. 1991); In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983); In re
Edwards, 568 F.2d 1349, 1351–52 (CCPA 1978); In re Wertheim, 541 F.2d
257, 262 (CCPA 1976).
The Examiner finds that the Appellant’s Specification provides
support for monitoring a premises by devices, but does not provide support
for the devices doing the monitoring being master devices (Final 4; Ans. 4).
The Appellant’s Specification discloses that the first and second
devices can perform one or more operation tasks according to one or more
operational parameters (Spec. 3:6–16), and that the operation tasks can be
monitoring premises (Spec. 1:7–14; 3:2–3). The Appellant’s Specification,
therefore, shows possession of master devices monitoring premises.
Accordingly, we reverse the rejection under the 35 U.S.C. § 112(a) written
description requirement.
Rejections under 35 U.S.C. § 103
We need address only the independent claims (25, 38, and 49).3 Those
claims require a second device that can act as a passive standby device
staying in sleep mode and waiting without actively operating.
Aoyagi discloses a wireless communication system comprising a
master computer (Pa) that communicates with each of a plurality of slave
computers (Pb, Pc, Pd), each of which communicates only with the master
computer (Pa) using time division multiplexing, such that the master
computer (Pa) does more communicating than the slaves and, consequently,
its battery discharges faster than the slave computers’ batteries (col. 1,

3 The Examiner does not rely upon Brandsma, Yamaguchi, or Devarapalli
for any disclosure that remedies any deficiency in the references applied to
the independent claims (Final 27–35).
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Application 15/316,947

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ll. 49–61; col. 3, ll. 49–55; col. 4, l. 64 – col. 5, l. 13; col. 9, ll. 30–39).
When the master computer’s remaining battery charge has been reduced to
an established level, Aoyagi reverses the roles of the master computer and
any of the slave computers having sufficient battery charge for it to function
as the master computer (col. 2, ll. 5–29; col. 4, ll. 1–16; col. 5, ll. 34–41;
col. 6, ll. 31–41; col. 7, l. 42 – col. 8, l. 4).
Kang discloses wireless communication between a master device (30)
and slave devices (20), each slave device (20) having a controller (23) which
detects when polling data containing recipient slave device (20) address
information is transmitted via a transceiver (21) from the master device (30)
to that slave device (20) during time division duplex and, if so, transmits
data from that slave device (20) to the master device (30), then stops
operation of the transceiver (21) to prevent power consumption during an
internally determined sleep period until that slave device (20) wakes up to
receive polling data from the master device (30) for the next cycle (col. 3,
l. 59 – col. 4, l. 7; col. 4, ll. 28 – 36; col. 4, l. 63 – col. 5, l. 4; col. 6, ll. 12–
18).
Shurmantine discloses a local on-site wireless monitoring network
(col. 1, ll. 24–33).
The Examiner finds that each of Aoyagi’s slave computers (Pb, Pc,
Pd) is a passive standby device that is inactive except during its time
division multiplexing time slot when it communicates with the master
computer (Pa) (Final 6; Ans. 5), and that in view of Kang, one of ordinary
skill in the art would have reduced the power consumption of Aoyagi’s slave
computers (Pb, Pc, Pd) by putting each of them into sleep mode except
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Application 15/316,947

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during its time division multiplexing time slot when it communicates with
the master computer (Pa) (Final 8).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)).
The Appellant’s independent claims (25, 38, and 49) require that the
second device acts as a passive standby device which, when acting as a
standby device, stays in a sleep mode and waits without actively operating.
As indicated by the Appellant’s claims 34 and 45 which depend,
respectively, from claims 25 and 38, the independent claim term “without
actively operating” permits the second device to wake up at regular intervals
to enable reception of instruction from the first device to take over
responsibility (see also Spec. 13:16–18). Thus, the broadest reasonable
interpretation of the Appellant’s claim term “actively operating” in view of
the Appellant’s Specification excludes instruction receipt enablement but
includes active communication.
Consequently, because Aoyagi’s slave computers (Pb, Pc, Pd)
participate in communication with the master computer (Pa) during their
respective time division multiplexing time slots (col. 2, ll. 5–29; col. 4, l. 64
– col. 5, l. 10), and Kang’s slave devices (20) transmit data after waking up
to receive polling data from the master device (30) (col. 3, l. 59 – col. 4, l. 7;
col. 4, ll. 28 – 36), they are not passive standby devices which, when acting
as a standby device, stay in a sleep mode and wait without actively
operating, according to the broadest reasonable interpretation of the
Appellant’s claim term “actively operating” in view of the Appellant’s
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Application 15/316,947

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Specification. Combining Aoyagi’s and Kang’s disclosures, therefore, does
not arrive at the Appellant’s claimed invention. Accordingly, we reverse the
Examiner’s rejections.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
25, 38, 49,
50
112(a) Written
Description
25, 38, 49,
50
25, 28, 29,
32, 34, 38–
40, 43, 45,
49–52
103 Aoyagi, Kang,
Shurmantine
25, 28, 29,
32, 34, 38–
40, 43, 45,
49–52
30, 41, 37,
48
103 Aoyagi, Kang,
Brandsma
30, 41, 37,
48
31, 42 103 Aoyagi, Kang,
Yamaguchi
31, 42
33, 44 103 Aoyagi, Kang,
Devarapalli
33, 44
Overall
Outcome
25, 28–34,
37–45, 48–
52
REVERSED