Ex Parte Kallio et al

Patent Trial and Appeal Board

Mar 31, 2017

11647425 (P.T.A.B. Mar. 31, 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.
11/647,425 12/29/2006 Juha Kallio 042933/374402 2925
10949 7590
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
EXAMINER
BATAILLE, FRANTZ
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
04/04/2017 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUHA KALLIO, MARKUS MARTIN,
and JANNE MUHONEN
Appeal 2016-007057
Application 11/647,425
Technology Center 2600
Before ST. JOHN COURTENAY III, JOHN P. PINKERTON, and
SCOTT B. HOWARD, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—26, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-007057
Application 11/647,425
Invention
The disclosed and claimed invention on appeal “relates to an
apparatus, a system and a method which are suitable for enhancing the
resiliency in a communication network.” (Spec. 11).
Representative Claim
1. An apparatus comprising:
a first physical interface directly connected to an access
network controller device; and
[LI] a second physical interface operably connected to a
pool of core network elements of the same type which all
comprise the same radio network configuration, wherein
the same radio network configuration enables the core
network elements to handle traffic from a particular
access network controller, wherein the apparatus is
operably connected as a gateway between the access
network controller device and the pool of core network
elements and [L2] wherein the apparatus is
implemented as part of a core network;
the apparatus further comprising a computer-readable
medium having a computer program product stored
thereon, the computer program product including a
selection functionality for causing the apparatus to select
one or more core network elements and direct
establishment of a connection between the selected one
or more of the core network elements and the access
network controller device.
(Contested limitation LI emphasized in italics and contested limitation L2
emphasized in bold).
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Application 11/647,425
Rejections
A. Claims 1, 2, 5, 8, 9, 12, 15—17, 20 and 23—26 are rejected under
pre-AIA 35 U.S.C. § 102(b) as being anticipated by Turina et al. (US
6,771,983 Bl; Aug. 3, 2004) (hereinafter “Turina”).
B. Claims 3, 4, 7, 10, 11, 14, 18, 19, and 22 are rejected under pre-AIA
35 U.S.C. § 103(a) as being obvious over the combined teachings and
suggestions of Turina and Valme et al (US 2008/0310404 Al; Dec.
18, 2008) (hereinafter “Valme”).
C. Claims 6, 13, and 21 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of Turina
and Serna (US 2004/0203736 Al; Oct. 14, 2004).
Grouping of Claims
Based upon Appellants’ arguments, we decide the appeal of all claims
rejected under anticipation rejection A on the basis of representative claim 1.
We address the remaining claims rejected under § 103 rejections B and C,
infra. To the extent Appellants have not advanced separate, substantive
arguments for particular rejected claims or other issues, such arguments are
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
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Appeal 2016-007057
Application 11/647,425
Rejection A of Representative Claim 1 under § 102(b) over Turina
Issues
Under pre-AIA 35 U.S.C. § 102(b) (Rejection A), did the Examiner
err by finding Turina expressly or inherently discloses contested limitations
LI and L2, within the meaning of representative claim 1? 1
Contested Limitation LI of Representative Claim 1
Regarding the first contested limitation, Appellants merely recite
limitation LI and assert it is not disclosed by Turina. (App. Br. 9).
However, merely reciting the language of the claim is insufficient. See
37 C.L.R. § 41.37(c)(l)(iv) (“A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.”).
Moreover, to the extent Appellants attempt to distinguish the
limitations recited in the first “wherein” clause in apparatus claim 1 (“An
apparatus comprising:”) in terms of function (“enabl[ing] the core network
elements to handle traffic from a particular access network controller’'’),
instead of structure, we find such arguments unavailing. See Ans. 2—3.
Regarding apparatus claims generally, our reviewing court guides the
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 L.3d
1048, 1054 (Led. Cir. 1997). Cf Spec. 1 69 (“What has been described
above is what is presently considered to be preferred embodiments of is the
present invention. However, as is apparent to the skilled reader, these are
provided for illustrative purposes only and are in no way intended to that the
present invention is restricted thereto. Rather, it is the intention that all
variations and modifications be included which fall within the spirit and
scope of the appended claims.”).
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Application 11/647,425
patentability of an apparatus claim “depends on the claimed structure, not on
the use or purpose of that structure.” Catalina Marketing Int 7., Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). “It is well
settled that the recitation of a new intended use for an old product does not
make a claim to that old product patentable.” In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997) (citations omitted). See also Paragon Solutions,
LLC v. Timex Corp., 566 F.3d 1075, 1090 (Fed. Cir. 2009). “[AJpparatus
claims cover what a device is, not what a device does.'” Hewlett-Packard
Co. v. Bausch &Lomb, Inc., 909 F.2d 1464, 1468 (Fed.Cir.1990).2
Contested Limitation L2 of Representative Claim 1
Appellants particularly focus their arguments in both Briefs on
contested limitation L2 (“wherein the apparatus is implemented as part
of a core network”), and contend, inter alia:
Nothing in the cited portions of Turina nor in any other
portion of Turina discloses, teaches, or suggests that the
apparatus is implemented as part of a core network, as recited
2 MPEP §2111.04 provides further guidance regarding the patentable weight
to be given to “wherein” clauses:
Claim scope is not limited by claim language that suggests or makes
optional but does not require steps to be performed, or by claim language
that does not limit a claim to a particular structure. However, examples
of claim language, although not exhaustive, that may raise a question as to
the limiting effect of the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
(MPEP §2111.04 Ninth Edition, Rev. 7, Nov. 2015, emphasis added).
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in independent Claims 1, 8, 16, and 24-26. Further, Turina
discloses that the routing apparatus is associated with and
may be integrated into the related access node. As such,
Turina clearly discloses that the routing apparatus is part of
the access network, as it is associated with and may be
integrated in an access node. Therefore, Turina at least fails to
disclose, teach, or suggest “"implemented as part of a core
network” and thus fails to anticipate independent Claims 1,8, 16,
and 24-26.
App. Br. 10.
However, the Examiner disagrees:
The disputed claim language — “... wherein the apparatus
is implemented as a part of a core network ... “in fact does not
require that the apparatus to be a core network component, but
rather be implemented as one. In other words, it merely
requires that the apparatus to have core network node
functionalities. In this line of interpretation, Turina clearly
meets the language. Considering Turina col. 7 lines 61-66:
“... from the access node point of view the router apparatus acts
like a mobile switching apparatus ... “and there can be no
dispute that a mobile switching apparatus is a core network
node functionality, and therefore, Turina meets the claim.
Ans. 3.
In reviewing the Briefs, we find Appellants’ arguments are not
commensurate with the scope of representative claim 1.3 We find the
Examiner reads the first and second physical interfaces recited in the body
of claim 1 on Turina’s routers 58 and 60, respectively, as depicted in Figure
3 Regardless of the general contentions and imputed intended meanings
articulated by Appellants in the Briefs, “[i]t is the claims that measure the
invention.” See SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107,
1121 (Fed. Cir. 1985) (en banc) (citations omitted); In re Hiniker Co., 150
F.3d 1362, 1369 (Fed. Cir. 1998) (citations omitted) (“[T\he name of the
game is the claimC).
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8. (Final Act. 4). Thus, the “apparatus” recited in the preamble of claim 1
comprises 4 (i.e., integrally includes) the first and second physical interfaces
(corresponding to Turina’s routers 58 and 60 (Fig. 8), as found by the
Examiner, Final Act. 4).
However, the “apparatus” recited in the preamble of claim 1 also
comprises (integrally includes) “a pool of core network elements” recited in
the body of claim 1, as mapped by the Examiner to MSC pool 10, and
depicted in Turina’s Figure 8. (Final Act. 4).
As we understand the Examiner’s rejection, we find the Examiner
does not map the “apparatus” recited in the preamble of claim 1 to only the
routers in Turina’s Figure 8. (Final Act. 4). Rather, we find the Examiner’s
mapping of the preamble of claim 1 “(e.g. router apparatus 58 or 60)”
merely indicates that Turina’s routers 58 and 60 comprise part of the
apparatus depicted in the entirety of Turina’s Figure 8. (Final Act. 4).
Therefore, we find it immaterial if, according to one alternative
embodiment (e.g., col. 16,11. 45—48): “Turina discloses that the routing
apparatus is associated with and may be integrated into the related
access node. As such, Turina clearly discloses that the routing apparatus is
part of the access network, as it is associated with and may be integrated in
an access node,” as repeatedly argued by Appellants. (Appeal Br. 10; Reply
Br. 2).
We further find Appellants’ arguments unavailing because the
4 See e.g., Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir.
1997) (“Comprising” is a term of art used in claim language which means
that the named elements are essential, but other elements may be added and
still form a construct within the scope of the claim.)(emphasis added).
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“apparatus” recited in the preamble of claim 1 also comprises, inter alia, “a
pool of core network elements” recited in the body of claim 1, that the
Examiner reads on Turina’s MSC pool 10, as depicted in Figure 8. (Final
Act. 4). Because the “apparatus” recited in the preamble of claim 1
“comprises” (integrally includes) “a pool of core network elements”
(Turina’s MSC pool 10, as found by the Examiner), we find Turina’s
apparatus (depicted in all of Figure 8) is also “implemented as part of a core
network,” under a broad but reasonable interpretation of the final “wherein”
clause recited in claim 1. (See n. 1, 3).
Therefore, on this record, we are not persuaded the Examiner’s
reading of contested limitations El and L2 on the corresponding cited
features found in Turina is overly broad, or unreasonable.5 (See Final Act.
4; Ans. 3). Because we are not persuaded the Examiner erred, we sustain the
Examiner’s anticipation rejection A of representative independent claim 1.
To the extent Appellants separately argue dependent claims 2, 5, and
15 (App. Br. 11—12), we conclude claim 2 is directed to functional
limitations that do not further limit the structure of the apparatus of claim 1.
See Catalina, 289 F.3d at 809 (the patentability of an apparatus claim
“depends on the claimed structure, not on the use or purpose of that
structure”). Moreover, the language of apparatus claim 2 does not define
“non-access stratum node selection functionality,” nor do Appellants point
to a definition in the Specification. Therefore, we are not persuaded of error
5 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (internal citation omitted).
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regarding the Examiner’s findings. (Final Act. 5). Regarding dependent
claim 5, we agree with the Examiner’s findings regarding the apparatus
depicted in Turina’s Figure 8 as being “operably connected to a pool of
network elements over a multipoint interface,” where the pool of network
elements is mapped to Turina’s MSC pool 10. (Final Act. 5).
Regarding dependent claim 15, Appellants contend “while Turina
may illustrate two router apparatuses in Figure 8, Turina clearly discloses
that each base station controller/access node is only connected to a single
router apparatus. Turina does not disclose, teach, or suggest that there are
two or more gateways connected to an access network controller device
(e.g., BSC/access node).” (App. Br. 12). However, we find routers 58 and
60 (Turina, Figure 8) are each respectively “configured to be operably
connected to the access network controller device, as well as to the pool of
network elements,” within the meaning of claim 15. (Final Act. 5).
The remaining associated grouped claims also rejected under
rejection A (not separately argued) fall with claim 1. See Grouping of
Claims, supra.
Rejections B and C of Remaining Dependent Claims under §103
Appellants have not advanced separate, substantive arguments for the
claims rejected under rejections B and C; therefore, such arguments are
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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Reply Brief
To the extent Appellants advance new arguments in the Reply Brief
not in response to a shift in the Examiner’s position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner’s Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
DECISION
We affirm the Examiner’s decision rejecting claims 1—26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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