Ex Parte Pirila et alDownload PDFPatent Trial and Appeal BoardMar 27, 201710563545 (P.T.A.B. Mar. 27, 2017) Copy Citation 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. 2 Appeal 2016-006523 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 3 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 4 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. 5 Appeal 2016-006523 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 6 Copy with citationCopy as parenthetical citation