Ex Parte Drevon et alDownload PDFPatent Trial and Appeal BoardMar 10, 201714285130 (P.T.A.B. Mar. 10, 2017) Copy Citation 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. 14/285,130 05/22/2014 Nicolas Drevon 105729-US-CNT 4364 59978 7590 03/14/2017 Chiesa Shahinian & Giantomasi PC (ALU) Attn: Jeffrey M. Weinick One Boland Drive West Orange, NJ 07052 EXAMINER AJAYI, JOEL ART UNIT PAPER NUMBER 2646 NOTIFICATION DATE DELIVERY MODE 03/14/2017 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): patent @ csglaw. com ipsnarocp @ nokia. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NICOLAS DREVON and SERGE BAUDET Appeal 2016-008681 Application 14/285,1301 Technology Center 2600 Before JEAN R. HOMERE, ERIC B. CHEN, and TREVOR M. JEFFERSON, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify the real party in interest as Nokia Corp. App. Br. 1. In an earlier Appeal (2010-007253, S/N 11/304,811, decided Jan. 16, 2013), we affirmed the Examiner’s rejection of claims 1—16. Dec. 5. Appeal 2016-008681 Application 14/285,130 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 31—33, which constitute all of the claims pending in this appeal. Claims 1—30 have been canceled. Claims App’x. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants ’ Invention Appellants invented a method for providing improved management of a mobile communication system having groups of cells that support different radio access technologies (RATs). In particular, upon receiving from a mobile terminal in a cell a request to register in a location structure associated with the cell, a network entity transmits to the mobile terminal a reply including a RAT that is authorized for the mobile terminal, as well as another RAT that is not authorized for the terminal. Spec. 4:19—34, Figure 2. Illustrative Claim Independent claim 31 further illustrates the invention as follows: 31. A database of a mobile communications network, configured to: send to an entity of a mobile communication network, referred to as a public land mobile network (PLMN) and supporting different radio access technologies, information related to at least one of said different radio access technologies that is not authorized for a mobile terminal, based on a subscription, for said PLMN. 2 Appeal 2016-008681 Application 14/285,130 Rejection on Appeal The Examiner rejects claims 31—33 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Verma et al., (US 2005/0254469 Al, Nov. 17, 2005). Final Act. 3^4. ANALYSIS We consider Appellants’ arguments seriatim, as they are presented in the Appeal Brief, pages 3—8, and the Reply Brief, pages 2-4.2 We have reviewed the Examiner’s rejection in light of Appellants’ arguments. We are unpersuaded by Appellants’ contentions. Except as otherwise indicated herein below, we adopt as our own the findings and reasons set forth in the Examiner’s Answer in response to Appellants’ Appeal Brief. Ans. 2—5, Final Act. 2-4. However, we highlight and address specific arguments and findings for emphasis as follows. Regarding the rejection of claim 31, Appellants first argue that Verma does not describe “send[ing] to an entity of a mobile communication network, referred to as a Public Land Mobile Network (PLMN) and supporting different radio access technologies, information related to at least one of said different radio access technologies...” App. Br. 4. In particular, Appellants argue that Verma’s disclosure of “using any existing WLAN coverage area to complement UMTS 2 Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed May 24, 2016), the Reply Brief (filed Sept. 16, 2016), and the Answer (mailed July 19, 2016) for their respective details. We have considered in this Decision only those arguments Appellants actually raised in the Briefs. Any other arguments Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012). 3 Appeal 2016-008681 Application 14/285,130 networks by defining the WLAN as another PLMN and then using the inter-PLMN backbone to communicate between the WLAN and the UMTS networks” does not describe at least a PLMN supporting different RATs. Id. at 4—5 (citing Verma 120). Instead, it describes using PLMN with the WLAN technology and separately using PLMN with the UMTS technology to define separate PLMNs (i.e., WLAN-PLMN and UMTS-PLMN). Id. at 5. This argument is not persuasive. As correctly noted by the Examiner, the cited portion of Verma indicates using PLMN as the network backbone separately with two other RATs (WLAN and UMTS) to thereby create the PLMN-WLAN and PLMN-UMTS networks utilizing radio access technologies. Ans. 2—3 (citing Verma 120). Although the two resulting networks are separate, we do not agree with Appellants that PLMN does not support the two networks. That is, because PLMN is used as the backbone to create such RAT networks, PLMN does support those different RAT networks. Second, Appellants argue that Verma’s disclosure of “the MS shall contain a list of ‘forbidden PLMNs for GPRS service’ where a Forbidden PLMN is a PLMN that the MS is not allowed to attach” does not describe “information related to one of the different RATs that is not authorized for a mobile terminal,” as recited in claim 31. App. Br. 5 (citing Verma 119). According to Appellants, “the cited portions of Verma do not forbid the technology of GPRS, but instead forbid a particular PLMN.” Id. In other words, Verma forbids a particular PLMN for GPRS service, as opposed to forbidding the technology of PLMN. Id. 4 Appeal 2016-008681 Application 14/285,130 This argument is not persuasive because it is not commensurate with the scope of the claim. As correctly noted by the Examiner, the claim does not require forbidding the technology of PLMN, but instead requires sending information related to one of the RATs that is not authorized for the mobile terminal. Ans. 3. We agree with the Examiner that Verma’s disclosure of PLMN for the GPRS service not being authorized to attach to a mobile station (MS), in this instance, describes information about the unauthorized RAT supported by PLMN that the MS does not allow to attach. Id. (citing Verma 119.) Third, Appellants argue that Verma’s disclosure of a NAS (Non-Access Stratum) containing a list of equivalent PLMNs and forbidden PLMNs does not describe a database. App. Br. 6. This argument is not persuasive. At the outset, we note the recitation of a database is merely held in the preamble of the claim, and does not breathe life into the body of the claim.3 Further, we agree with the Examiner that because the NAS maintains a storage location for storing list of PLMNs, it serves the limited functions of the database recited in the claim. Ans. 3^4 (citing Verma 119.) Additionally, we also agree with the Examiner’s finding that Verma’s disclosure of a home location register 3 “In general, a preamble limits the [claimed] invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention. See, e.g., Electro Sci. Indus, v. Dynamic Details, Inc., 307 F.3d 1343, 1348 (Fed. Cir. 2002); Rapoport v. Dement, 254 F.3d 1053, 1059 (Fed. Cir. 2001); Pitney Bowes, 182 F.3d at 1306. 5 Appeal 2016-008681 Application 14/285,130 (HLR) also describes the limited functions of the database. Id. at 5 (citing Verma 1 24.) On the record before us, Appellants have not shown error in the Examiner’s rejection of claim 31 as being anticipated by Verma. Regarding the rejection of claims 32 and 33, because Appellants reiterate substantially the same arguments raised above for patentability of claim 31, claims 32 and 33 fall therewith. See 37 C.F.R. § 1.37(c)(l)(vii). DECISION We affirm the Examiner’s rejection of claims 31—33 as set forth above. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation