Ex Parte Horn et al

Patent Trial and Appeal Board

Mar 19, 2018

13797765 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131797,765 03/12/2013
15757 7590 03/21/2018
Qualcomm /Norton Rose Fulbright US LLP
2200 Ross A venue
Suite 3600
Dallas, TX 75201-7932
FIRST NAMED INVENTOR
Gavin B. Horn
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
QLXX.P0126US/l 1213603 8268
EXAMINER
CASTANEYRA, RICARDO H
ART UNIT PAPER NUMBER
2473
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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):
ocpat_uspto@qualcomm.com
doipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GA VIN B. HORN, ARNAUD MEYLAN, ROHIT KAPOOR,
GERARDO GIARETTA, DURGA PRASAD MALLADI, and
LORENZO CASACCIA
Appeal 2017-003114
Application 13/797,765 1
Technology Center 2400
Before JASON V. MORGAN, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Office Action rejecting claims 1-3, 5-29, 31-57, and 59-
80, all of which are pending on appeal. Claims 4, 30, and 58 are cancelled.
App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
WeAFFIRM.2
1 According to Appellants, the real party in interest is QUALCOMM Inc.
App. Br. 2.
2 Our Decision refers to Appellants' Appeal Brief filed June 9, 2016 ("App.
Br."); Reply Brief filed December 20, 2016 ("Reply Br."); Examiner's
Answer mailed October 20, 2016 ("Ans."); Non-Final Office Action mailed
December 31, 2015 ("Non-Final Act."); and original Specification filed
March 12, 2013 ("Spec.").
Appeal 2017-003114
Application 131797,765
STATEMENT OF THE CASE
Appellants' invention relates to a wireless communication system
including a multi-mode user equipment (UE) (i.e., mobile device), shown in
Figure 4 of the Specification, operable to support communications with
multiple radio access technologies (RATs) for both (1) cellular or wireless
wide area network (WW AN) and (2) wireless local area network (WLAN)
communications. Spec. ,-i,-i 2, 7, 50; Abstract.
Figure 4 is reproduced below:
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l. IN TE!"l.F."".C!;:
.................. ~~:~·:~~~-- .... · l ........ , j t.<><~.:tt.:;
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426
Figure 4 shows a system for performing automated interactions with
computer software application 302
As shown in Figure 4, multi-mode UE 410 may support LTE 4201 for
broadband cellular/WW AN data services, code division multiple access
(CDMA) 4202 for cellular/WW AN voice services, and a short-range WLAN
426, such as WIFI™ 4221, WIMAX™ 4241, BLUETOOTH®, and the like,
for direct access to Internet Protocol (IP) networks. Spec. ,-i 50.
2
Appeal 2017-003114
Application 13/797,765
Claims 1, 17, 27, 43, 53, 54, 55, and 71 are independent. Claims 1
and 17 are illustrative of the claimed subject matter, as reproduced below
with disputed limitations in italics:
1. A method method of wireless communication,
compnsmg:
receiving, at a mobile device, a management indication
from a wide area wireless network (WLAN) to manage
connectivity with a wireless local area network (WLAN),
wherein the management indication comprises one of:
an indication for the mobile device to discover
access points in the WLAN;
an indication for the mobile device to associate with
an access point in the WLAN; and
an indication for the mobile device to offload traffic
to the WLAN;
obtaining, by the mobile device, a status of a WLAN radio
of the mobile device; and
determining, by the mobile device, whether to disregard
or to follow the management indication based on the status,
wherein the status of the WLAN radio comprises one of:
off
'
active with the mobile device associated to the
WLAN; and
active with the mobile device not associated to the
WLAN.
17. A method of wireless communication, comprising:
receiving, at a mobile device, a dynamic indication from a
wireless wide area network (WW AN) to offload data to a wireless
local area network (WLAN) associated with the mobile device,
wherein a current network offload policy at the mobile device
does not specify offloading data to the WLAN associated with
the mobile device;
suspending application of the current network offload
policy at the mobile device based on the indication, wherein the
current network offload policy was received at the mobile device
from a core network (CN); and
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Appeal 2017-003114
Application 13/797,765
transmitting data to the WLAN in response to the dynamic
indication.
App. Br. 21, 23-24 (Claims App'x.).
Evidence Considered
Mustajarvi US 2012/0309447 Al Dec. 6, 2012
Fu US 2011/0222523 Al Sept. 15, 2011
Hwang US 2005/0153692 Al July 14, 2005
Hsu US 2004/0205158 Al Oct. 14, 2004
Barbara Orlandi and Frank Scahill, Wi-Fi Roaming- Building on ANDSF
and Hotspot2.0, Alcatel-Lucent White Paper in Collaboration with British
Telecommunications plc, available at https://www.slideshare.net/3 glteinfo/
wifi-roaming-building-on-andsf-and-hotspot20-2796 l 464 (Feb. 2012)
("Alcatel-Lucent").
Examiner's Rejections & References
(1) Claims 1-3, 5, 7-13, 27-29, 31, 33-39, 53, 55-57, 59, and 61-
67 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Hwang and Hsu. Non-Final Act. 5-39.
(2) Claims 6, 16, 32, 42, 60, and 70 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hwang, Hsu, and Fu. Non-Final Act.
39-44.
(3) Claims 14, 40, and 68 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hwang, Hsu, and Mustajarvi. Non-Final Act.
44-47.
(4) Claims 15, 41, and 69 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hwang, Hsu, Mustajarvi, and Fu. Non-Final Act.
48-54.
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Appeal 2017-003114
Application 13/797,765
(5) Claims 17-19, 21, 22, 24-26, 43--45, 47, 48, and 50-52 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Hwang,
Alcatel-Lucent, and Mustajarvi. Non-Final Act. 54-68.
(6) Claims 20, 23, 46, and 49 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hwang, Alcatel-Lucent, Mustajarvi, and
Fu. Non-Final Act. 68-71.
(7) Claim 54 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hsu, Alcatel-Lucent, and Mustajarvi. Non-Final Act. 72-
74.
(8) Claims 71-73, 75, 76, and 78-80 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Hwang, Alcatel-Lucent,
Mustajarvi, and Hsu. Non-Final Act. 74-83.
(9) Claims 74 and 77 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hwang, Alcatel-Lucent, Mustajarvi, and Fu. Non-
Final Act. 83-85.
ANALYSIS
Independent Claims 1, 27, 53, and 55 based on Hwang and Hsu
In support of the obviousness rejection of independent claim 1, and
similarly, claims 27, 53, and 55, the Examiner finds Hwang teaches all the
recited steps, as demonstrated below (emphasis added):
Claim Element Hwang (Prior Art) Element
[ 1] "receiving, at a mobile device, a Hwang's UE (user equipment)
management indication from a wide receives broadcasting information
area wireless network (WLAN) to (including SIB/CBS message and
manage connectivity with a wireless interworking WLAN information)
local area network (WLAN), from mobile communication
network to manage connectivity
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Application 13/797,765
wherein the management indication
comprises one of:
[i] an indication for the mobile
device to discover access points in
the WLAN;
[ii] an indication for the mobile
device to associate with an access
point in the WLAN; and
[iii] an indication for the mobile
device to offload traffic to the
WLAN"
[2] "obtaining, by the mobile
device, a status of a WLAN radio of
the mobile device; and"
[3] "determining, by the mobile
device, whether to disregard or to
follow the management indication
based on the status [of the WLAN
radio]"
with a WLAN; see Non-Final Act.
5-6 citing (Hwang ,-i,-i 50, 68, 71,
73, 76, 77, 81, 85,93,Figs. 6-8)
Hwang's UE determines ifWLAN
module 14a, shown in Fig. 3, can
support the standard type of
WLAN; see Non-Final Act. 6 citing
(Hwang ,-i 71, Fig. 6; ,-i 82, Fig. 7)
Hwang's UE determines ifit can
interwork with WLAN based on its
ability to support the standard type
of WLAN received in the
interworking WLAN information;
see Non-Final Act. 6 citing (Hwang
,-i,-i 71, 73, Fig. 6, ,-i,-i 82, 84, Fig. 8)
Hwang' s Figure 3 shows UE operable in both (1) cellular, wireless
wide area network (WW AN) and (2) wireless local area network (WLAN),
as reproduced below:
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Appeal 2017-003114
Application 131797,765
CELLULAfl
MODf:.t-..4
I --- 1 Ob
··---·- ·t 6
Hwang's Figure 3 shows dual-mode UE lOb including (1) WLAN module
l 4a to support WLAN communication and (2) cellular modem l 4b to
support WW AN communication.
To the extent necessary, the Examiner relies on Hsu for teaching the
specific "status of the WLAN radio" as comprising "one of: [i] off; [ii]
active with the mobile device associated with the WLAN; and [iii] active
with the mobile device not associated with the WLAN" to support the
conclusion of obviousness, i.e., "in order to minimize unnecessary WLAN
scanning based on WLAN advertisement from the cellular network via
signaling messages, thereby conserving power at a mobile device." Non-
Final Act. 6-7 (citing Hsu ,-i,-i 37, 78, 82-83, Fig. 6; ,-i 95, Fig. 9; ,-i,-i 75-76,
Figs. lOB-lOC).
Appellants acknowledge the claimed "status of the WLAN radio" can
be interpreted to encompass Hwang's disclosure of whether a UE supports a
standard type of a target WLAN. App. Br. 10 (citing Hwang ,-i 71 ).
However, Appellants argue: (1) the Examiner has offered "no explanation or
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Application 13/797,765
reasoning as to how Hwang can be modified with such [Hsu's] status [of the
WLAN radio comprises one of: (i) off; (ii) active with the mobile device
associated to the WLAN; and (iii) active with the mobile device not
associated to the WLAN] to teach the features of claim l "; and (2) Hwang' s
disclosure "cannot simply be modified to perform the claimed WLAN scan
based on whether WLAN radio of the UE is off, active and associated, or
active and not associated [as disclosed by Hsu]" because such a modification
[i] would be "inconsistent with the disclosure of Hwang" and [ii] "would
impermissibly change the principle of operation by which Hwang 's device
.. based on its support for a particular type ofWLAN." App. Br. 10-11.
According to Appellants, this is because "whether the WLAN radio is off or
active has no effect on whether the WLAN scan takes place because the
WLAN scan is based on whether the type of the target WLAN is supported
by the UE or not." App. Br. 11.
Appellants also argue Hwang' s SIB/CBS message cannot be equated
as Appellants' claimed "management indication" recited in claim 1 because
Hwang' s SIB/CBS message includes "information about a WLAN (e.g.,
standard type, SSID, etc.) that the UE can communicate with" and, as such,
"is always processed and used," whereas Appellants' claimed "management
indication" is used to determine by the UE as to whether "to disregard or to
follow." App. Br. 11-12.
We do not find Appellants' arguments persuasive. Instead, we find
the Examiner has provided a comprehensive response to Appellants'
arguments supported by a preponderance of evidence. Ans. 82-85. As
such, we adopt the Examiner's findings and explanations provided therein.
Id. For additional emphasis, we note Appellants' claim 1 is broadly worded
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Application 13/797,765
to include several alternative claim limitations. For example, Appellants'
claim 1 recites "a management indication as comprising:
"one of [A J an indication ... to discover access points in the
WLAN; [BJ an indication ... to associate with an access point in
the WLAN; and [CJ an indication ... to offload traffic to the
WLAN."
Likewise, Appellants' claim 1 also recites "a status of a WLAN" as
comprising: "one of [AJ off; [BJ active ... associated to the WLAN; and [CJ
active ... not associated to the WLAN."3 In addition, Appellants' claim 1
also recites, inter alia: "determining, by the mobile device, whether to
disregard or to follow the management indication based on the status." (Id.,
emphasis added).
3 We are mindful of the Federal Circuit's interpretation of the "at least one
of' language in SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
870 (Fed. Cir. 2004). However, we note that numerous courts have declined
to follow the Federal Circuit's SuperGuide construction of "at least one of'
where the facts before them called for a different understanding of the term.
See, e.g., VendoNet, Inc. v. Redbox Automated Retail, LLC, No. 13-cv-
03475, 2014 WL 4555287, at *4 (N. D.Ill. Sept. 15, 2014) ("[SuperGuideJ
did not announce that its rule of grammar was a mandatory rule of claim
construction, to be used even when unnecessary to serve the purpose of the
invention."); Inventio AG v. ThyssenKrupp Elevator Americas Corp., No.
08-cv-00874, 2014 WL 129799, at *3--4 (D. Del. Jan. 14, 2014)
(distinguishing SuperGuide and construing "at least one of [A J or [BJ" as
"[AJ, [BJ, or [AJ and [BJ"); Dealertrack, Inc. v. Huber, No. 06-cv-02335,
2008 WL 5792509, at *7-8 (C.D.Cal. Sept. 27, 2008) (finding SuperGuide
"inapplicable" in part because the limitation at issue in SuperGuide included
categories with values "that users ... could choose 'at least one of ");
Power-One, Inc. v. Artesyn Technologies, Inc., No. 05-cv-00463, 2007 WL
896093, at *14 (E.D.Tex. Mar. 22, 2007) (distinguishing SuperGuide and
construing "at least one ofX, Y, and Z" as "a group [ofX, Y and Z from
which J at least one is selected").
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Application 13/797,765
In light of Appellants' Specification, we interpret these alternative
claim limitations of "one of A, B, and C" as including A, B, or C. As such,
when properly interpreted, Appellants' claim 1 only requires a mobile device
to (1) receive "a management indication" from WW AN to manage WLAN
to discover an access point (AP) in the WLAN, and simply (2) disregard
such "management indication" when the status of the WLAN is off.
Based on such an interpretation, Appellants' claim 1 is extremely
broad and does not distinguish over Hwang alone. Nevertheless, a
disclosure such as Hwang that anticipates under 35 U.S.C. § 102 typically
renders the claim unpatentable under 35 U.S.C. § 103 in all but rare cases.
See In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974); cf Cohesive Tech v.
Water Corp., 543 F.3d 1351, 1363 (Fed. Cir. 2008) ("novelty under 35
U.S.C. § 102 and nonobviousness under 35 U.S.C. § 103 are separate
conditions of patentability").
To the extent Hsu is applicable, we are not persuaded by Appellants'
arguments that modifying Hwang to incorporate Hsu's teachings would
impermissibly change the principle of operation of Hwang' s device. App.
Br. 9-19; Reply Br. 3-10. Instead, we find Hsu's detection and selection of
a WLAN complements Hwang's UE operable in both (1) cellular, wireless
wide area network (WW AN) and (2) wireless local area network (WLAN).
In addition, we also find the Examiner has presented sufficiently "articulated
reasoning with some rational underpinning" to support the combination of
Hwang and Hsu, i.e., "to minimize unnecessary WLAN scanning based on
WLAN advertisement from the cellular network via signaling message."
Non-Final Act. 7.
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For these reasons, we are not persuaded of Examiner's error.
Accordingly, we sustain the Examiner's obviousness rejection of
independent claim 1 and similarly, claims 27, 53, and 55, as well as their
respective dependent claims 2, 3, 6, 7, 9-16, 18-26, 28, 29, 32, 33, 35--42,
44-52, 56, 57, 60, 61, and 63-70, which Appellants do not argue separately.
With respect to Appellants' separate arguments against the
Examiner's rejection of (1) dependent claims 5, 31, and 59; and (2)
dependent claims 8, 34, and 62, these arguments are unpersuasive for the
same reasons discussed with respect to the rejections of independent claims
1, 27, 53, and 55. App. Br. 13-15; Reply Br. 5-8. For the same reasons
discussed, we also sustain the Examiner's obviousness rejection of claims 5,
8, 31, 34, 59, and 62.
Independent Claims 17, 43, 54, and 71
In contrast to claim 1 (and similarly, claims 27, 53, and 55),
independent claim 17 simply recites the ability of a mobile device to ( 1)
"offload data" to a wireless local area network (WLAN), (2) "suspend[]
application of the current network offload policy at the mobile device based
on the indication" and (3) "transmit[] data to the WLAN in response to the
dynamic indication." Independent claims 43, 54, and 71 recite similar
limitations.
In support of the rejection of independent claim 17 and, similarly
claims 43, 54, and 71, the Examiner finds Hwang teaches most aspects of
Appellants' claimed "method of wireless communication" and Hwang's UE
operable in both (1) cellular, wireless wide area network (WW AN) and (2)
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Application 13/797,765
wireless local area network (WLAN). Non-Final Act. 54-55 (citing Hwang
,-i,-i 50, 68, 71, 73, 76, 77, 81, 85, 93, Figs. 6-8).
The Examiner acknowledges Hwang does not teach, but relies on (1)
Alcatel-Lucent for teaching, "suspending application of a current network
offload policy at the mobile device based on the indication" and (2)
Mustajarvi for teaching "a current network offload policy at the mobile
device [that] does not specify offloading data to the WLAN" to support the
conclusion of obviousness. Non-Final Act. 55-56 (citing Alcatel-Lucent pp.
9, 31-32; Mustajarvi ,-i,-i 2, 5, 8-11, Fig. 2).
Appellants argue Hwang does not teach "a dynamic indication ... to
offload data to a wireless local area network WLAN" because upon
reception of information about a WLAN, Hwang's "UE is not yet
connected" and, as such, cannot offload data. App. Br. 15-16. In addition,
Appellants argue Alcatel-Lucent does not teach that the overridden policy is
a "current network offload policy," as recited in claim 17. App. Br. 16.
Again, we are not persuaded by Appellants' arguments and, as such,
adopt the Examiner's findings and explanations provided on pages 86-88 of
the Examiner's Answer. Suspending the current network offload policy and
offloading data to the WLAN are necessary steps for Hwang's UE to
establish WLAN communications.
For these reasons, we sustain the Examiner's obviousness rejection of
independent claim 17, and similarly, claims 43, 54, and 71, which include
commensurate limitations, and their respective dependent claims 72-80,
which Appellants do not argue separately.
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CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1-3, 5-29, 31-57, and
59-80 under 35 U.S.C. § 103(a).
DECISION
As such, we AFFIRM the Examiner's final rejection of claims 1-3,
5-29, 31-57, and 59-80.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv) (2011).
AFFIRMED
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