Ex Parte Kanerva

Patent Trial and Appeal Board

Jun 24, 2016

13601868 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/601,868 08/31/2012
11764 7590
Ditthavong & Steiner, P,C,
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
06/28/2016
FIRST NAMED INVENTOR
Mikko Kanerva
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.
Pl382US01 9812
EXAMINER
DANIEL JR, WILLIE J
ART UNIT PAPER NUMBER
2462
NOTIFICATION DATE DELIVERY MODE
06/28/2016 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):
docket@dcpatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKKO KANERV A
Appeal2014-009824
Application 13/601,868
Technology Center 2400
Before ALLEN R. MacDONALD, AMBER L. HAGY, and
AARON W. MOORE, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1 and 24--39, which are all of the pending claims.
We have jurisdiction over these claims under 35 U.S.C. § 6(b).
We affirm-in-part and enter a new ground of rejection under 37 C.F.R.
§ 41.50(b).
1 Appellant identifies the real party in interest as Nokia Corporation. (App.
Br. 1.)
Appeal2014-009824
Application 13/601,868
Exemplary Claim
Claim 1, reproduced below with the disputed limitations italicized, is
exemplary of the claimed subject matter:
1. A system comprising:
a telecommunication network;
a first station; and
a plurality of second stations,
wherein the first station is configured to request a connection
with at least one of said plurality of second stations, said
connection request comprising a location criteria defined by
the first station and to be satisfied by at least one second
station, and to initiate a connection with at least one of said
plurality of second stations that satisfies the location criteria
and falls in a predetermined group, and said predetermined
group is associated with a predetermined identifier and a
predefined location criteria, and
wherein the location criteria specifies at least one cell or cell
sector and the telecommunication network comprises at least
one register configured to store location information for at
least some of said second stations and a selector configured
to select at least one of the second stations for connection.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nojima
Neubauer
De Brito
Tognazzini
us 5,933,080
us 5,953,673
US 6,529,735 Bl
EP 0810803 A2
2
Aug. 3, 1999
Sept. 14, 1999
Mar. 4, 2003
Dec. 3, 1997
Appeal2014-009824
Application 13/601,868
REJECTIONS
Claims 1and24--38 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Neubauer. (Final Act. 3-12.)
Claim 39 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Neubauer and De Brito. (Final Act. 20-21.)
Claims 1, 24, 26-29, 31-34, 36, and 38-39 stand alternatively
rejected under 35 U.S.C. § 102(b) as being anticipated by Tognazzini.
(Final Act. 12-19.)
Claims 25, 30, 35, and 37 stand alternatively rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Tognazzini and De Brito. (Final Act.
22-24.)
Claims 25, 30, 35, and 37 stand alternatively rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Tognazzini and Nojima. (Final Act. 24--
26.)
ISSUES
( 1) Whether the Examiner erred in finding Neubauer discloses all
limitations of independent claim 1, including "said connection request
comprising a location criteria defined by the first station and to be satisfied
by at least one second station" and "wherein the location criteria specifies at
least one cell or cell sector."
(2) Whether the Examiner erred in finding Neubauer discloses "the
mobile switching center is further configured to determine an order in which
to cause, at least in part, connections to one or more of the plurality of
second stations satisfying the location criteria," as recited in dependent claim
25.
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(3) Whether the Examiner erred in finding Neubauer discloses "the
mobile switching center is further configured to determine to randomly
cause, at least in part, connections to one or more of the plurality of second
stations satisfying the location criteria," as recited in dependent claim 26.
( 4) Whether the Examiner erred in finding Neubauer discloses
"wherein the connection with the at least one of said plurality of second
stations is made without the first station knowing the identity of the at least
one of said plurality of second stations," as recited in dependent claim 38.
ANALYSIS
A. Claims 1, 24, 25, and 27-38: § 102(b) over Neubauer
We have reviewed the Examiner's 35 U.S.C. § 102(b) rejection of
claims 1, 24, 25, and 27-38 over Neubauer in light of Appellant's arguments
the Examiner has erred. We disagree with Appellant's conclusions and we
adopt as our own: (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken (Final Act. 3-12) and (2) the
reasons set forth by the Examiner in the Examiner's Answer in response to
Appellant's Appeal Brief. (Ans. 29-37.) We concur with the conclusions
reached by the Examiner as to that rejection, and we highlight the following
for emphasis.2
1. Claim 1
Appellant argues the Examiner's findings are in error because
Neubauer fails to disclose "said connection request comprising a location
2 Only those arguments made by Appellant have been considered in this
Decision. Arguments Appellant did not make in the Briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 13/601,868
criteria defined by the first station and to be satisfied by at least one
second station," as recited in independent claim 1. (App. Br. 8.) Appellant
acknowledges Neubauer's disclosure of "selection criterion according to
locational aspects," but argues:
[a]t best, the selection criterion of Neubauer et al. are defined by
a central entity, not by a first station. Furthermore, there is no
express teaching that the "selection criterion according to
locational aspects" of Neubauer et al. is included in the alleged
connection request from a first station, no[r] is it inherent[].
(App. Br. 9 (citing Neubauer 9:63).)
We disagree. As the Examiner finds, and we agree, Neubauer
discloses that the calling subscriber's own location, which the system will
detect as part of the calling subscriber's connection request, defines a
"location criteria" because, in Neubauer:
the mobile subscriber of the target group best suited with respect
to the calling subscriber is selected as the mobile target
subscriber (see col. 4, lines 22-24), and locational and/or
temporal selection criteria are used for selection (see col. 4, lines
25-27), and the mobile subscriber of the target group who is
locationally closest to the calling subscriber is selected (see col.
4, lines 28-30), and based on the dial request for service a
message is sent with the location of the calling subscriber (see
col. 7, lines 33-36, 40-44, 63-65).
(Ans. 32 (italicized emphases added).) In other words, as the Examiner
correctly finds, Neubauer discloses the "connection request comprising a
location criteria defined by the first station" because, in Neubauer, the
request is premised on, e.g., the calling subscriber's location, and is satisfied
by, e.g., a target subscriber that is closest to the calling subscriber. (Id.;
Neubauer 7:7-11, 8:6-23.) We further conclude the Examiner's findings are
within the broadest reasonable interpretation of "a location criteria defined
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by the first station," in view of the teachings of Appellant's Specification
that "[t]he location criteria can be the closest second station to the first
station or can be defined in terms of a direction, call cost and/or distance
from the first station." (Spec. 3.)
We are, therefore, not persuaded of error in the Examiner's finding
that the first disputed limitation of claim 1 is disclosed by Neubauer.
With regard to the second disputed limitation, Appellant argues "the
various citations relied upon by the Examiner, generally describe a cellular
system" (App. Br. 10), and "neither the cited portions of Neubauer et al., nor
the reference in its entirety, disclose or suggest a cell or cell sector
associated with any location criteria, much less, location criteria that
specifies at least one cell or cell sector . ... " (App. Br. 10; Reply Br. 4.)
We disagree. As noted above, Neubauer discloses determining the
location of the calling subscriber so as to determine which target subscriber
is closest to the calling subscriber. (Neubauer 8:6-37.) Neubauer further
discloses several ways for determining "the momentary location of the
calling mobile subscriber," which include determining "the radio cell
currently covering the mobile subscriber SA' and having an associated
identification number (cell identity)." (Neubauer 7:40-41, 7:48-50.) Thus,
as the Examiner correctly finds, Neubauer teaches "the location criteria
specifies at least one cell or cell sector" by teaching determining the location
of the calling subscriber, including the radio cell covering the calling
subscriber. (Final Act. 4.)
For the foregoing reasons, we are not persuaded of error in the
Examiner's 35 U.S.C. § 102(b) rejection of independent claim 1 as
anticipated by Neubauer, and we, therefore, sustain that rejection, along with
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the rejection of independent claims 27 and 32 and dependent claims 24, 28-
31, and 33-37, not argued separately. (App. Br. 10.)
2. Claim 25
Claim 25 depends, through claim 24, from claim 1, and recites, inter
alia, " ... the mobile switching center is further configured to determine an
order in which to cause, at least in part, connections to one or more of the
plurality of second stations satisfying the location criteria." (App. Br. 22
(Claims App'x) (emphasis added).)
As the Examiner finds, and we agree, Neubauer teaches that the
system selects a target station "according to requirements/aspects such as
locational, temporal, hierarchical, and/or cyclical." (Final Act. 5 (citing
Neubauer 9:56-62, 10:54---63).) Further supporting the Examiner's finding
is Neubauer' s related teaching of how "the selection may also be carried out
... according to fixed selection algorithms, which select the mobile target
subscriber according to an equal distribution of the call loading, cyclically or
according to assigned priorities for the mobile subscribers of the target
group." (Neubauer 10:2-8 (emphasis added).)
Other than the naked assertion that "Neubauer et al. is void of such a
teaching" (App. Br. 10), Appellant does not address the Examiner's
findings, e.g., explain why Neubauer's disclosure, as cited by the Examiner,
fails to teach or suggest the claimed limitation. Appellant has, therefore, not
rebutted the Examiner's findings. See In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
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recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.").
For the foregoing reasons, we are not persuaded of error in the
Examiner's 35 U.S.C. § 102(b) rejection of claim 25 as anticipated by
Neubauer, and we, therefore, sustain that rejection.
3. Claim 38
Claim 38 depends, through claim 24, from claim 1, and recites, inter
alia, " ... wherein the connection with the at least one of said plurality of
second stations is made without the first station knowing the identity of the
at least one of said plurality of second stations." (App. Br. 25 (Claims
App'x).)
As the Examiner finds, and we agree, Neubauer discloses a calling
subscriber that does not know the identity of a target subscriber other than
association of the target subscriber with a group call number or type of
service:
where a calling subscriber requests connection with a specific
target group that is identified by a group call number and/or type
of service such as taxi service and private delivery service (see
col. 5, line 58 - col. 6, line 2; col. 9, lines 59-62; col. 5, lines 5-
11; col. 8, lines 61-64; Fig. 1 ), and the calling subscriber (SA,
SA') communication for service identifies the location criteria in
which the mobile target subscriber is selected based on the
location criteria of closest to the calling subscriber (SA, SA') (see
col. 9, lines 59-62; col. 5, lines 5-11 ).
(Final Act. 12.)
Other than the naked assertion that "[c]ontrary to the Examiner's
[findings] (per page 12 of the Final Office Action), nowhere in the Neubauer
et al. reference is there any teaching of the above claimed features" (App.
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Br. 11), Appellant does not address the Examiner's findings. In particular,
Appellant provides no explanation or argument why Neubauer's teachings,
as cited by the Examiner, fail to teach or suggest the claimed limitation.
Appellant has, therefore, not rebutted the Examiner's findings. See In re
Lovin, 652 F.3d at 1357.
For the foregoing reasons, we are not persuaded of error in the
Examiner's 35 U.S.C. § 102(b) rejection of claim 38 as anticipated by
Neubauer, and we, therefore, sustain that rejection.
B. Claim 26: § 102(b) over Neubauer
Claim 26 depends, through claim 24, from claim 1, and recites, inter
alia, " ... the mobile switching center is further configured to determine to
randomly cause, at least in part, connections to one or more of the plurality
of second stations satisfying the location criteria." (App. Br. 22 (Claims
App'x) (emphasis added).)
Appellant argues "Neubauer et al. clearly teaches that the closest
mobile subscriber from a called target group as being the optimal target
subscriber." (App. Br. 11.) Although we disagree with Appellant's overly
narrow reading of Neubauer as limited to teaching that only the "closest
mobile subscriber" is the optimal target, we agree that Neubauer does not
expressly or inherently disclose that the selection of a target subscriber is
performed "randomly," as recited in claim 26. We, therefore, do not sustain
the Examiner's 35 U.S.C. § 102(b) rejection of claim 26 as anticipated by
Neubauer.
Nevertheless, as noted above in connection with claim 25, Neubauer
discloses that the selection of a target subscriber "may also be carried out ...
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according to fixed selection algorithms, which select the mobile target
subscriber according to an equal distribution of the call loading .... "
(Neubauer 10:5-9.) We find that employing an algorithm to randomly select
target subscribers would be within the skill of an ordinary artisan, and a
motivation to employ such an algorithm would be to distribute the call
loading within, for example, a geographical area, as taught or suggested by
Neubauer. (See, e.g., Neubauer 10:1-9, 10:57---63.) We, therefore, conclude
the subject matter of claim 26 would have been obvious to an ordinary
artisan at the time of Appellant's invention. We designate this as a new
ground of rejection of claim 26.
C. Claim 39: § 103(a) over Neubauer and De Brito
Appellant does not argue separately the patentability of dependent
claim 39, which stands rejected under 35 U.S.C. § 103(a) over Neubauer and
De Brito. Appellant argues only "De Brito fails to at least remedy the above
discussed deficiencies of Neubauer et al.," as argued by Appellant with
regard to claim 1. (App. Br. 18.) Because, as stated above, we are not
persuaded Neubauer is deficient with regard to claim 1, we are not
persuaded of error in the Examiner's§ 103(a) rejection of claim 39.
D. Alternative Rejections
As stated above, we affirm the rejection of claims 1 and 24--38 as
anticipated by Neubauer. Consequently, we find it unnecessary to reach a
decision regarding the cumulative rejections of claims 1, 24, 26-29, 31-34,
36, 38, and 39 under 35 U.S.C. § 102(b) over Tognazzini and claims 25, 30,
35, and 37 under 35 U.S.C. § 103(a) over either the combination of
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Tognazzini and De Brito or Tognazzini and Nojima. See 37 C.F.R.
§ 41. 50( a )(1) ("The affirmance of the rejection of a claim on any of the
grounds specified constitutes a general affirmance of the decision of the
examiner on that claim .... ").
DECISION
The Examiner's 35 U.S.C. § 102(b) rejection of claims 1, 24, 25, and
27-38 as anticipated by Neubauer is affirmed.
The Examiner's 35 U.S.C. § 103(a) rejection of claim 39 as
unpatentable over Neubauer and De Brito is affirmed.
The Examiner's 35 U.S.C. § 102(b) rejection of claim 26 as
anticipated by Neubauer is reversed.
We enter a new ground of rejection of claim 26 under 35 U.S.C.
§ 103(a) as unpatentable over Neubauer.
NEW GROUND OF REJECTION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
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remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure§ 1214.01.
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-IN-PART
37 C.F.R. § 41.50(b)
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