Ex Parte Pirila et al

Patent Trial and Appeal Board

Mar 27, 2017

10563545 (P.T.A.B. Mar. 27, 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.
10/563,545 02/15/2007 Hannu Pirila 43040-US-NPE 8661
100809 7590 03/29/2017
Core Wireless Licensing Ltd
5601 Granite Parkway
Suite 1300
Plano, TX 75024
EXAMINER
KELLEY, STEVEN SHAUN
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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):
ipadmin-core@core-wireless.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANNU PIRILA, HARRI JOKINEN,
and KARI PIHL
Appeal 2016-006523
Application 10/563,5451
Technology Center 2600
Before THU A. DANG, TERRENCE W. MCMILLIN, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3—6, 8—12, 14, 15, and 17—24, which constitute
of all of the claims pending in this application.2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is Core Wireless
Licensing S.a.r.l. App. Br. 3.
2 Claims 2, 7, 13, and 16 have been canceled. Supp. App. Br. 3—7.
Appeal 2016-006523
Application 10/563,545
INVENTION
Appellants’ application relates to a generic service request procedure
in a multimode telecommunications system. Abstract; Spec. 1. Claim 1 is
illustrative of the appealed subject matter and reads as follows:
1. A method of operating a multimode terminal configured
to support a plurality of modes in a multimode communication
system, wherein each mode of the plurality of modes uses a
different radio access technology, the method comprising:
sending service request signalling to a first network node
of a first radio access network connected to a core network and
operating according to a first radio access technology, the first
network node being configured to serve the multimode terminal
and support operation of the multimode terminal in a first mode
of the plurality of modes;
wherein the service request signalling is configured to
request a service supported in at least one of the plurality of
modes of the multimode terminal by including an identifier
enabling the first network node to direct the service request to
the second network node, the requested service being
unsupported by the multimode terminal when operating in the
first mode; and
receiving the requested service from a second network
node of a second radio access network connected to the core
network and operating according to a second radio access
technology, the second network node supporting a second mode
as a result of a handover of the multimode terminal from the
first network node to the second network node, the requested
service being supported by the multimode terminal when
operating in the second mode.
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Application 10/563,545
REJECTION
Claims 1, 3, 4, 6, 8—10, 12, 14, 15, and 17—24 stand rejected under
35 U.S.C. § 102(b) as anticipated by Rasanen (US 2002/0045447 Al;
published Apr. 18, 2002).
Claims 5 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Rasanen and Vanttinen et al. (US
2001/0009544 Al; published July 26, 2001) (“Vanttinen”).
ANALYSIS
Claims 1, 3—5, 12, 14, and 18—24
We have reviewed the Examiner’s rejections of claims 1, 3—5, 12, 14,
and 18—24 in light of Appellants’ arguments that the Examiner has erred.
We concur with Appellants’ argument that the Examiner erred.
With respect to anticipation of claim 1, we agree with Appellants
(App. Br. 7—9) that the Examiner erred in finding Rasanen’s process of
handing over a mobile station from one radio access network to another
meets the recited limitation “wherein the service request signaling is
configured to request a service supported in at least one of the plurality of
modes of the multimode terminal, the requested service being unsupported
by the multimode terminal when operating in the first mode” and the
“receiving” step recited in claim 1. App. Br. 7—8. As Appellants explained
(App. Br. 9), Rasanen merely discloses that a mobile station compares a
service request to the capabilities of a currently used radio access network to
determine whether the radio access network can support the requested
service. See Rasanen | 65. If the currently used network cannot, but a
second radio access network can, the mobile station initiates or requests a
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Appeal 2016-006523
Application 10/563,545
handover to the second network. Id. 1 66. Thus, we agree with Appellants
that the cited portions of Rasanen does not disclose the recited limitations
“the requested service being unsupported by the multimode terminal when
operating in the first model’ and “the requested service being supported by
the multimode terminal when operating in the second model'' App. Br. 9.
We disagree with the Examiner’s finding in the Answer that, applying
the broadest, reasonable construction of the limitation “when operating in
the first mode,” if the first network node that provides the first mode of
communication in Rasanen cannot support the requested service, then the
terminal itself cannot support the requested service when operating in the
first mode. Ans. 4. This line of reasoning does not make up for the above-
noted deficiency in Rasanen’s teachings with respect to anticipating the
subject matter of claim 1.
On the record before us, because the Examiner has not identified in
Rasanen the disputed claim limitations, we are persuaded by Appellants’
contentions that the Examiner erred in finding Rasanen anticipates the
subject matter of claim 1.
Accordingly, we reverse the 35 U.S.C. § 102(b) rejection of
independent claim 1, as well as the 35 U.S.C. § 102(b) rejection of
independent claims 12, 18, and 20—22, which recite similar limitations and
which Appellants argue are patentable for similar reasons. App. Br. 9. We
also reverse the Examiner’s 35 U.S.C. § 102(b) rejection of dependent
claims 3,4, 14, 19, 23, and 24, which fall with the independent claims from
which they depend. We also reverse the 35 U.S.C. § 103(a) rejection of
dependent claim 5, for which the Examiner relies in part on Rasanen as
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Appeal 2016-006523
Application 10/563,545
applied to claim 1 (Final Act. 6), and for which the cited teachings of
Vanttinen do not cure the above-noted deficiency in Rasanen’s teachings.
Claims 6, 8—11, 15, and 17
We have reviewed the Examiner’s rejections of claims 6, 8—11, 15,
and 17 in light of Appellants’ contentions that the Examiner has erred. We
disagree with Appellants’ contentions. Except as noted below, we adopt as
our own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons set forth by the Examiner
in the Examiner’s Answer in response to Appellants’ Appeal Brief. We
concur with the conclusions reached by the Examiner. We highlight the
following additional points.
Although independent claim 63 recites limitations similar to the
disputed limitations in claim 1, discussed above, the scope of claim 6 is
broader than that of claim 1. Claim 6 recites “the requested service being
unsupported by the first network node or by the multimode terminal when
operating in the first mode” and, in the recited “receiving” step, "the second
network node supporting the requested service in a second mode.” Supp.
App. Br. 4 (emphasis added). Thus, because claim 6 recites first and second
network nodes and, unlike claim 1, is not limited to “the multimode
terminal,” we agree with the Examiner that Rasanen in paragraphs 65 and 66
discloses the disputed limitations of claim 6. See Ans. 4.
Accordingly, we affirm the 35 U.S.C. § 102(b) rejection of
independent claim 6, as well as the 35 U.S.C. § 102(b) rejection of
3 Appellants erroneously characterize claim 6 as a dependent claim in the
Appeal Brief. See App. Br. 9.
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Application 10/563,545
independent claim 15, which recites similar limitations. Supp. App. Br. 6.
We also affirm the Examiner’s 35 U.S.C. § 102(b) rejection of dependent
claims 8—10 and 17, not argued separately. We also affirm the 35 U.S.C.
§ 103(a) rejection of dependent claim 11, for which the Examiner relies in
part on Rasanen as applied to claim 6. See Final Act. 6.
DECISION
We reverse the decision of the Examiner rejecting claims 1, 3—5, 12,
14, and 18-24.
We affirm the decision of the Examiner rejecting claims 6, 8—11, 15,
and 17.
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
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