Ex Parte Drevon et al

Patent Trial and Appeal Board

Mar 10, 2017

14285130 (P.T.A.B. Mar. 10, 2017)

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.
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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).
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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.
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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.
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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
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