Ex Parte Macias et al

Patent Trial and Appeal BoardApr 27, 2016

12906484 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/906,484 10/18/2010 25537 7590 04/29/2016 VERIZON PA TENT MANAGEMENT GROUP 1320 North Court House Road 9th Floor ARLINGTON, VA 22201-2909 FIRST NAMED INVENTOR John F. Macias 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. 20100430 1175 EXAMINER NGUYEN, DINH ART UNIT PAPER NUMBER 2645 NOTIFICATION DATE DELIVERY MODE 04/29/2016 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): patents@verizon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN F. MACIAS, DAVID CHIANG, MINGXING LI, JAMES F. MATHISON, and SAID HANBALY Appeal2014-004400 Application 12/906,484 Technology Center 2600 Before MAHSHID D. SAADAT, MATTHEW R. CLEMENTS, and SCOTT E. BAIN, Administrative Patent Judges. BAIN, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1-16 and 25-28, which constitute all the claims pending in the application. Claims 17-24 have been canceled. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. STATEMENT OF THE CASE Appellants' invention relates to a wireless access terminal (such as a mobile phone) distinguishing data services provided through a femtocell 1 Appellants identify Verizon Communications Inc. and Cellco Partnership ( dba Verizon Wireless) as the real parties in interest. Br. 3. Appeal2014-004400 Application 12/906,484 from data services provided by a macro cell base station. Spec. i11. Claims 1, 9, and 25 are independent. Claim 1, reproduced below with the disputed limitations in italics, is illustrative of the invention: 1. A method comprising: receiving, by a mobile device, first configuration settings for the mobile device to conduct data transfers via a macro cell base station and second configuration settings for the mobile device to conduct data transfers via a femtocell, the first configuration settings being different from the second configuration settings; providing, by the mobile device, a unicast access terminal identifier (U A TI) request; receiving, by the mobile device, a UATI based on the U ATI request; determining, by the mobile device, whether the UATI includes a femtocell identifier that indicates that the mobile de-vice is connected to the femtocell; applying, by the mobile device and when the UATI includes the femtocell identifier, the second configuration settings for data transfers via the femtocell; and applying, by the mobile device and when the UATI does not include the femtocell identifier, the first configuration settings for data transfers via the macro cell base station. Br. 3 8 (emphasis added). PRIOR ART The Examiner relies upon the following prior art in rejecting the claims: 2 Appeal2014-004400 Application 12/906,484 Karaoguz Ch'ng Tinnakomsrisuphap Abraham Wang Li US 2005/0233749 Al US 2009/0164547 Al US 2010/0208703 Al US 2010/0255848 Al US 2010/0285785 Al US 2011/0212729 Al THE REJECTIONS ON APPEAL Oct. 20, 2005 June 25, 2009 Aug. 19, 2010 Oct. 7, 2010 Nov. 11, 2010 Sept. 1, 2011 Claims 1-3, 5, 8-14, 16, 25, 27, and 28 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Tinnakomsrisuphap and Ch'ng. Final Act. 2- 19. Claims 4, 15, and 26 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Tinnakomsrisuphap, Ch'ng, and Li. Final Act. 19-21. Claim 6 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Tinnakomsrisuphap, Ch'ng, and Wang. Final Act. 21-22. Claim 7 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Tinnakomsrisuphap, Karaoguz, and Abraham. Final Act. 22-23 ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments presented in this appeal. Any other arguments which Appellants could have made but chose not to make in the Brief are deemed to be waived. See 37 C.F.R. Â§ 41.37(c)(l)(iv). On this record, we are not persuaded the Examiner erred, and we adopt as our own the findings and reasons set forth in the rejections from which this appeal is taken and in the Examiner's Answer. We provide the following to highlight and address specific arguments. 3 Appeal2014-004400 Application 12/906,484 Claim 1 The Examiner rejected claim 1 as obvious over the combination of Ch'ng, cited for teaching the recited "a femtocell identifier that indicates that the [mobile] device is connected to the femtocell," with Tinnakomsrisuphap, cited for teaching every other element of the claim. Final Act. 2-8. Appellants argue the references fail to teach "receiving, by a mobile device, first configuration settings for the mobile device to conduct data transfers via a macro cell base station and second configuration settings for the mobile device to conduct data transfers via a femtocell." Br. 10 (emphasis added). Appellants further argue the references fail to teach "determining, by the mobile device, whether the UATI includes a femtocell identifier that indicates that the mobile device is connected to the femtocell." Br. 14. Finally, Appellants argue there is no motivation to combine the references. Br. 17. We address each of these arguments in tum. With respect to the claim limitation "receiving ... first configuration settings" and "second configuration settings," the Examiner cites Tinnakomsrisuphap Figure 8 and accompanying discussion in the reference disclosure. Ans. 3-5; Final Act. 2-5. Figure 8 is reproduced below. 4 Appeal2014-004400 Application 12/906,484 FIG. 8 Figure 8 illustrates a wireless network configuration including access terminal (mobile device) 822, which is shown to be in communication with macro node 805 and femto node 810. According to the description of Figure 8, the access terminal (mobile device) receives from a base transceiver (BTS) "one or more identifiers;" Tinnakomsrisuphap i-f 78; which allow it to initiate data sessions with a macro node, id. at i-f 91, and femto node, id. at i-f 98. See also id. at i-f 107 (alternatively, the "identifier may comprise the color code ... previously received from the femto node."); id. at i-f 125 (describing hand-off from macro node to femto node); Ans. 5. We agree with the Examiner's finding of the disputed claim limitation in Tinnakomsrisuphap' s mobile device receiving identifiers and communicating data via the macro node and femto node, as described above. Ans. 3--4. While Appellants argue that Tinnakomsrisuphap does "not even mention 'first configuration settings' ... and 'second configuration settings,"' Br. 10, the Examiner need not find identical terminology. See, e.g., In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (comparing prior art to 5 Appeal2014-004400 Application 12/906,484 claim limitations is not an "ipsissimis verbis" test). Tinnakomsrisuphap 's identifiers, like Appellants' claimed "configuration settings," are stored and utilized by the mobile device to establish communication with macro nodes and femto nodes, respectively. Appellants' Specification does not place any further limits on the term "configuration settings." See Spec. i-f 64. Although Appellants' Specification states that configuration settings "may include default settings that may be adjusted by a user," or "may vary based on pricing plan information," id. (emphasis added), it does not define configuration settings as requiring the above-noted limitations, nor are such limitations recited in claim 1. Appellants next argue that the references fail to teach "determining, by the mobile device, whether the UATI includes a femtocell identifier that indicates that the mobile device is connected to the femtocell." The Examiner finds Tinnakomsrisuphap teaches at least the first portion of this limitation, i.e., "determining, by the mobile device, whether the UATI includes a femtocell identifier," in its description of the mobile device resolving "bits of the upper UATI that the [device] previously received from the femto node." Ans. 9; Tinnakomsrisuphap i-f 107; see also Tinnakomsrisuphap i-f 102 (UATI assignment scheme adjusted "depending on whether the access network is a femto node or a macro node," and using "femto assignment scheme ... when assigning a U ATI" to the device). The Examiner finds the remainder of this limitation, i.e., "indicates that the mobile device is connected to the femtocell," in Ch'ng's disclosures. See Final Act. 7; Ch'ng i-f 26 ("the femto zone indication signal [sent] in ... response to communications being established between it and the mobile station 206. "); id. at i-f 3 8 ("femto zone indication may be displayed in 6 Appeal2014-004400 Application 12/906,484 various forms" on the mobile device, including icons). Based on the foregoing support in the record, Appellants' contentions do not persuade us the Examiner erred in finding this claim limitation in the cited references. Finally, Appellants contend that even if all of the limitations are found in the combination of Tinnakomsrisuphap and Ch'ng, the "Examiner has failed to show any motivation for one of ordinary skill in the art" to combine the references. Br. 17. The Examiner, however, did provide a motivation. See Final Act. 7-8. Specifically, the Examiner explained that one of ordinary skill in the art would have combined the references "in order to enhance device functionality by providing to the user [of Tinnakomsrisuphap] the network connection status" as taught in Ch'ng. Id. Appellants present no evidence contradicting or even addressing the motivation asserted by the Examiner, so we are unpersuaded of error in that finding. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (conclusory statements by counsel are not evidence of Examiner error). Accordingly, we sustain the rejection of claim 1 under 35 U.S.C. Â§ 103(a) as unpatentable over Tinnakomsrisuphap and Ch'ng. Claims 9 and 2 5 Appellants repeat the same arguments for independent claims 9 and 25 as they made for claim 1. Br. 19-25, 27-33. Claims 9 and 25 include the same disputed limitations as claim 1, and were rejected based on the same references and findings. Final Act. 9, 16. For the reasons set forth above, we are not persuaded of Examiner error, and we sustain the rejections of claims 9 and 25 under 35 U.S.C. Â§ 103(a) as unpatentable over Tinnakomsrisuphap and Ch'ng. 7 Appeal2014-004400 Application 12/906,484 Claim 10 Dependent claim 10 requires that the "first set of configuration settings and the second set of configuration settings are based on input provided by a user of the device." Br. 41 (emphasis added). Like its base claim 9, claim 10 was rejected as obvious over the combination of Tinnakomsrisuphap and Ch'ng. Final Act. 14. The Examiner cites Tinnakomsrisuphap's teaching of the access terminal (operated by a user) initiating a data session with a femto node and with a macro node combined with Ch'ng's teaching of input provided by the user of the device. Ans. 10 (citing Tinnakomsrisuphap i-fi-191, 87; Ch'ng i126 (femto zone indication signal sent "in response to receiving a request for an indication signal from the mobile station [i.e., the user's device]")); see also Ch'ng i125 (describing additional user input); Final Act. 14. Appellants assert, nevertheless, that neither reference discloses "configuration settings" that "are based on input provided by a user of the device." Br. 25-27. Appellants' argument fails to address the combined teaching cited by the Examiner, instead simply alleging elements missing from each individual reference. Br. 25-27. Because "one cannot show non- obviousness by attacking references individually where ... the rejections are based on combinations of references," In re Keller, 642 F.2d 413, 426 8 Appeal2014-004400 Application 12/906,484 (CCPA 1981), Appellants' contention does not persuade us the Examiner erred. 2 Accordingly, we sustain the rejection of claim 10 under 35 U.S.C. Â§ 103(a) as unpatentable over Tinnakomsrisuphap and Ch'ng. Claim 27 Dependent claim 27 requires, after determining the femtocell identifier, "present[ing] ... information regarding pricing changes" based on changing from macro to femtocell data transfer. Br. 43. Appellants argue the Examiner erred in finding Ch'ng teaches this element because Ch'ng merely describes "charging a flat rate for use of a femto cell at a lower charge than the use of the core network." Br. 34. Like the earlier discussed claims, however, Appellants do not address the combined teachings of Tinnakomsrisuphap and Ch'ng, upon which the Examiner based the rejection. The Examiner cites a modification of Tinnakomsrisuphap, which discloses (at i-f 98) signal "hand-off' when changing from macro to femtocell data transfer, by incorporating the pricing indicators disclosed in Ch'ng (at i-f 39). Final Act. 18. Appellants' assertions regarding Ch'ng individually do not demonstrate error in the combined teaching cited by the Examiner. See supra at 8. Moreover, contrary to Appellants' argument, Ch'ng does not simply disclose a flat rate, but also displaying information about "the type of the charge rate [i.e., price] 2 Moreover, the operative terms in the disputed limitation, "configuration settings" and "input provided by a user," are not narrowed by Appellants' Specification. See supra at 6. The record, in our view, supports the Examiner's findings that these elements are taught in the cited references. See, e.g., Ans. 10 (causing mobile phone to initiate data session is "input provided by a user of the device"). 9 Appeal2014-004400 Application 12/906,484 that is currently applied" based on the "present location" within the network (i.e., femto zone or core/macro network). See Ans. 13; Ch'ng i-f 39. Accordingly, we sustain the rejection of claim 27 under 35 U.S.C. Â§ 103(a) as unpatentable over Tinnakomsrisuphap and Ch'ng. Remaining Claims Appellants argue the remaining dependent claims 2-8, 11-16, 26, and 28 are allowable because they include the limitations of their respective base claims, and additional references cited by the Examiner do not overcome the deficiencies identified with respect to the base claims. Because Appellants' contentions did not persuade us of error in the Examiner's rejection of the base claims, we sustain the 35 U.S.C. Â§ 103(a) rejections of the remaining claims. DECISION We affirm the Examiner's decision reiectirn.! claims 1-16 and 25-28. " .__, No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.136(a)(l). See 37 C.F.R. Â§ 1.136(a)(l)(iv) (2013). AFFIRMED 10