Ex Parte Kappler et al

Patent Trial and Appeal BoardMar 21, 2016

12738138 (P.T.A.B. Mar. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121738, 138 08/31/2010 32294 7590 03/23/2016 Squire PB (NV A/DC Office) 8000 TOWERS CRESCENT DRIVE 14THFLOOR VIENNA, VA 22182-6212 FIRST NAMED INVENTOR Cornelia Kappler 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. 089229.00357 9756 EXAMINER BEDNASH, JOSEPH A ART UNIT PAPER NUMBER 2461 NOTIFICATION DATE DELIVERY MODE 03/23/2016 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): IPGENERAL TYC@SQUIREpb.COM SONIA.WHITNEY@SQUIREpb.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CORNELIA KAPPLER, CORNEL P AMPU, and LAURENSIUS TIONARDI Appeal2014-007804 Application 12/738,138 Technology Center 2400 Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH, and JOHN F. HORVATH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-007804 Application 12/738,138 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1-19, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. Illustrative Claim 1. An apparatus, comprising: a negotiation controller for negotiating a roaming agreement between an originating network and a destination network; a rule generator generating rules according to a negotiated roaming agreement; and a configuration unit configured to implement configuration settings according to respective rules generated by the rule generator. Bos Alfano Guethaus Prior Art US 7,027,818 B2 US 7,436,766 B2 US 7,643,454 B2 Apr. 11, 2006 Oct. 14, 2008 Jan. 5,2010 Lars Ekeroth & Per-Martin Hedstrom, GPRS Support Nodes, Ericsson Review No. 3 (2000) ("Ekeroth"). Examiner's Rejections Claims 1-5 and 11-15 stand rejected under 35 U.S.C. Â§ 102(b) as unpatentable over Alfano. Claims 6-9, 16, and 18 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Alfano and Ekeroth. 2 Appeal2014-007804 Application 12/738,138 Claims 10 and 17 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Alfano, Ekeroth, and Bos. Claim 19 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Alfano and Guethaus. ANALYSIS We adopt the findings of fact made by the Examiner in the Final Action and Examiner's Answer as our own. We concur with the conclusions reached by the Examiner for the reasons given in the Examiner's Answer. We highlight the following for emphasis. Appellants contend Alfano does not disclose "negotiating a roaming agreement" as recited in claim 1. App. Br. 10-11. In particular, Appellants contend the roaming agreement disclosed by Alfonso is an existing roaming agreement. App. Br. 12. Anticipation "is not an 'ipsissimis verbis' test." In re Bond, 910 F .2d 831, 832 (Fed. Cir. 1990) (citing Akzo N. V. v. United States Int'! Trade Comm 'n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir. 1986)). "An anticipatory reference ... need not duplicate word for word what is in the claims." Standard Havens Prods. v. Gencor Indus., 953 F.2d 1360, 1369 (Fed. Cir. 1991). See also Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) ("However, a reference can anticipate a claim even if it 'd[ oes] not expressly spell out' all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would 'at once envisage' the claimed arrangement or combination.") (quoting In re Petering, 301 F.2d 676, 681 (CCPA 1962)). Because Alfano discloses an existing roaming agreement, one of ordinary skill in the art would at once envisage the existing agreement resulted from 3 Appeal2014-007804 Application 12/738,138 negotiating the agreement. We find Alfano discloses "negotiating a roaming agreement" within the meaning of claim 1. Further, Appellants' contention that "negotiating a roaming agreement" as recited in claim 1 was unknown in the prior art is inconsistent with Figure 1 (labeled "prior art") and pages 2 through 4 of the Background Section of Appellants' Specification, where Appellants admit negotiating a roaming agreement using a roaming broker was known in the prior art. We sustain the rejection of claims 1 and 11 under 35 U.S.C. Â§ 102. Appellants' contentions for the patentability of claims 2, 3 (App. Br. 13-15), 12, and 13 (App. Br. 19-21) are based on the premise that Alfano does not disclose "negotiating a roaming agreement" which we find unpersuasive. Further, Appellants' contention that "automatically" negotiating was unknown in the prior art (App. Br. 14--15, 20) is inconsistent with the roaming broker disclosed in the Background Section on page 4 and shown in Figure 1 (labeled "prior art") of Appellants' Specification. Appellants contend Alfano does not disclose "the policy decision point is comprised in the apparatus" as recited in claims 4 and 14, because the Application Function and Policy Decision Function in Figure 1 of Alfano are not in the same apparatus. App. Br. 15-16; Reply Br. 8. The Examiner finds the Application Function and the Policy Decision Function are in the same network, or "apparatus," within the meaning of claim 4. Ans. 10-11. Appellants have not provided a definition of apparatus that excludes the network of Alfano. Appellants contend Alfano does not disclose "the negotiation controller is configured to trigger the combination of a roaming agreement leg of the originating network with a roaming agreement leg of the 4 Appeal2014-007804 Application 12/738,138 destination network" as recited in claims 5 and 15, because Alfano does not mention combining roaming agreement legs. App. Br. 16. The Examiner finds the policy of Alfano, which is determined from the home network policy and the local network policy, discloses combining roaming agreement legs. Ans. 11. Appellants do not provide persuasive evidence or argument to rebut the Examiner's finding. Further, Appellants' contention that combining legs was unknown is inconsistent with page 16 of Appellants' Specification, "in the prior art, a roaming broker comprised a predetermined set of such legs which was applied with the roaming broker." We find claims 6-10 and 16-19 are unpatentable for the reasons given by the Examiner in the Examiner's Answer. We sustain the rejections of claims 1-19. DECISION The rejections of claims 1-19 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 5