Telefonaktiebolaget LM Ericsson (publ)

Patent Trials and Appeals Board

Jan 7, 2021

2019005228 (P.T.A.B. Jan. 7, 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.
15/502,436 02/07/2017 Pradeepa Ramachandra P51079 US1 1061
132398 7590 01/07/2021
Clairvolex Inc.
161 S San Antonio Road, Suite 10
Los Altos, CA 94022
EXAMINER
WEIDNER, TIMOTHY J
ART UNIT PAPER NUMBER
2476
NOTIFICATION DATE DELIVERY MODE
01/07/2021 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):
elofdocket@clairvolex.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PRADEEPA RAMACHANDRA, JOEL BERGLUND,
MIRSAD CIRKIC, HENRIK RYDÉN
____________________

Appeal 2019-005228
Application 15/502,436
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, JEAN R. HOMERE, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Final
Rejection of claims 42–66. Final Act. 1. Claims 1–41 have been canceled.
Appeal Br. 12. We have jurisdiction under 35 U.S.C. § 6(b).

1 Appellant identifies the real party in interest is Telefonaktiebolaget L M
Ericsson. Appeal Br. 2.
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We REVERSE.
CLAIMED SUBJECT MATTER
Claim 42 is illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
1. A computer implemented method comprising:
[A.] identifying a need for a serving network entity to make a
UE handover;
[B.] receiving, from one or more neighboring network
entities, a prediction of connection feasibility to the at
least one UE;
[C.] making a pre-selection among one or more neighboring
network entities about which to consider further as
candidate network entities for handover, and on which
carriers, based on the prediction of connection
feasibility;
[D.] instructing reference signal measurements to be made
between the at least one UE and each candidate network
entity limited to the carrier or carriers decided on for each
candidate network entity in the pre-selection;
[E.] selecting a network entity, and at least one associated
carrier, for handover from among the pre-selected
candidate network entities based on results from the
reference signal measurements; and
[F.] instructing execution of the handover.
Appeal Br. 12 (Claims Appendix).
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REFERENCES
The Examiner relies on the following references:2
Name Reference Date
Park US 2011/0149913 A1 June 23, 2011
Wallentin US 2014/0146788 A1 May 29, 2014

REJECTIONS
A.
The Examiner rejects claims 42–66 under 35 U.S.C. § 103 as being
unpatentable over the combination of Wallentin and Park. Final Act. 3–14.
We select claim 42 as the representative claim for this rejection. The
contentions discussed herein as to claim 42 are dispositive as to this
rejection. Therefore, except for our ultimate decision, we do not address the
merit of the § 103 rejection of claims 43–66 further herein.
B.
The Examiner also rejected claims 43, 44, 46, 52, 53 and 55 under
35 U.S.C. § 112(b) as being indefinite. Final Act. 14–15.
“[T]he rejections under 35 U.S.C. 112(b) have been withdrawn by the
examiner.” Ans. 3. Therefore, the merits of the § 112(b) rejections are no
longer before us.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Appellant’s contentions we discuss

2 Citations are by reference to the first named inventor only.
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are dispositive as to the rejections on appeal. Therefore, Appellant’s other
contentions are not discussed in detail herein.
A. § 103
A.1.
As to the receiving step of claim 42, the Examiner provides the
following:
receiving, from one or more neighboring network entities, a
prediction of connection feasibility to the at least one UE
(Park, para. [0031], “According to a further another
aspect of the present invention, there is provided a
method for an inter-eNodeB handover in a wireless
mobile communication system using a CA, the
method including: determining, by a source base
station to determine a CC set to be assigned to a user
equipment when a handover preparation process for
requesting handover between base stations is not
performed; preparing a call preparation process
through a handover request between the source base
station and neighboring base stations and an
acceptance of the handover request; and performing
a handover by assigning, to the user equipment, one
of CC sets received from the neighboring base
stations when the determined CC set is different
from the received CC sets.”).
Final Act. 4 (formatting added).
Park et al. provides prior art disclosure and suggestion(s) for the
claimed invention, such as including receiving, from one or more
neighboring network entities, a prediction of connection
feasibility to the at least one UE (Park, para. [0031], Id.) The
prior art disclosure and suggestion(s) of Park et al. are for reasons
of providing a method applicable to an inter-evolved node B
(eNodeB) handover among mobility management methods of a
user equipment in a cellular mobile communication environment
using carrier aggregation (Park, para. [0007], “Another aspect of
the present invention also provides a method applicable to an
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inter-evolved nodeB (eNodeB) handover among mobility
management methods of a user equipment in a cellular mobile
communication environment using a CA.”)
Final Act. 5.
A.2.
Appellant contends that the Examiner erred in rejecting claim 42
under 35 U.S.C. § 103 because:
The limitations of claims 42 and 51, when read in context
require that the network entity receive a prediction of connection
feasibility from one or more neighboring network entities . . .
Wallentin, in contrast to the claimed invention, does not
disclose receiving a prediction of connection feasibility from a
neighboring network entity as recited in the claims . . .
Park likewise fails to disclose receiving a prediction of
connection feasibility from a neighboring network entity as
recited in the claims[.]
Appeal Br. 15 (Appellant’s emphasis omitted, Panel emphasis added).
Claim 58, 62 and 66 further require that the candidate
network entity make “a prediction of connection feasibility ... for
the specified carriers” and to send a response to inform the
requesting network entity of the connection feasibility prediction
for the specified carriers.
Neither Wallentin nor Park discloses a “prediction of
connection feasibility” for reasons pointed out in the arguments
regarding claims 42 and 51. Those arguments also apply to
claims 42 and 51 and therefore are not repeated here for the sake
of brevity. However, it is asserted that claims 58, 62 and 66 are
patentable over Wallentin and Park for the same reasons as
claims 42 and 51.
Appeal Br. 8 (Panel emphasis added).
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A.3.
The Examiner responds:
Appellants’ Specification does not provide explicit definitions
for the claim terms in the disputed limitations, such as the
“prediction of connection feasibility,” as such the claim terms are
given their broadest reasonable interpretation consistent with the
Specification. See In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007) (Claims under examination before
the PTO are given their broadest reasonable interpretation
consistent with the specification.) Furthermore, although the
Specification provides exemplary embodiments for the
“prediction of connection feasibility” (cf. Appeal Brief, pages 2–
4), such is not explicitly limited by the exemplary embodiments.
See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)
(en banc) (“[A]lthough the specification often describes very
specific embodiments of the invention, we have repeatedly
warned against confining the claims to those embodiments.”) In
view of the above, the “prediction of connection feasibility” is
given its broadest reasonable interpretation consistent with the
specification, and Park et al. provides sufficient prior art
disclosure and suggestion(s) for the claimed invention, such as
“receiving, from one or more neighboring network entities, a
prediction of connection feasibility to the at least one UE;
making a preselection among one or more neighboring network
entities about which to consider further as candidate network
entities for handover, and on which carriers, based on the
prediction of connection feasibility.”
(Park, para. [0031], “According to a further another
aspect of the present invention, there is provided a
method for an inter-eNodeB handover in a wireless
mobile communication system using a CA, the
method including: determining, by a source base
station to determine a CC set to be assigned to a user
equipment when a handover preparation process for
requesting handover between base stations is not
performed; preparing a call preparation process
through a handover request between the source base
station and neighboring base stations and an
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acceptance of the handover request; and performing
a handover by assigning, to the user equipment, one
of CC sets received from the neighboring base
stations when the determined CC set is different
from the received CC sets.” emphasis added.)
Ans. 4–5.
A.4.
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“A rejection based on section 103 clearly must rest on a factual basis[.]” In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” Id.
We conclude the Examiner’s articulated reasoning fails to meet this
standard because the Examiner’s determination that Park discloses
“prediction of connection feasibility” (Final Act. 4; Ans. 4–5 (emphasis
added)) is not properly supported. Rather, the Examiner’s analysis is a
pastiche of block quotes from the claims and Park reference. Essentially, the
Examiner merely recites the particular language of claim 42 and quotes the
cited prior art reference. Without more, this fails to constitute sufficient
articulated reasoning. Thus, the Examiner’s findings of fact as to the
“prediction of connection feasibility” is based on error.
A.5.
We conclude, consistent with Appellant’s arguments, that there is
insufficient articulated reasoning to support the Examiner’s finding that
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determination that Park discloses “prediction of connection feasibility” as
required by claim 42. Therefore, we conclude that there is insufficient
articulated reasoning to support the Examiner’s final conclusion that claim
42 would have been obvious to one of ordinary skill in the art.

CONCLUSION
The Appellant has demonstrated the Examiner erred in rejecting
claims 42–66 as being unpatentable under 35 U.S.C. § 103.
The Examiner’s rejection of claims 42–66 as being unpatentable
under 35 U.S.C. § 103 is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
42–66 103 Wallentin, Park 42–66

REVERSED