Ex Parte Redell et al

Patent Trial and Appeal BoardJan 17, 2014

11273716 (P.T.A.B. Jan. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KAREN LEE REDELL and DOUGLAS H. ROLLENDER ____________ Appeal 2011-013365 Application 11/273,716 Technology Center 2600 ____________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2011-013365 Application 11/273,716 2 ILLUSTRATIVE CLAIM Illustrative claim 1 is reproduced below. 1. A method, comprising: receiving, at a network and from a mobile device, information indicating a mobile identification number (MIN), wherein said information does not include a home network identifier (HNI) for the mobile device when the network is a home network for the mobile device, the HNI being formed by combining a Mobile Country Code (MCC) and a Mobile Network Code (MNC); receiving, at the network from the mobile device, information indicating the MIN and the home network identifier (HNI) for the mobile device when the mobile device roams outside the home network; using the MIN and HNI for routing calls from a base station to the mobile device in response to the mobile device roaming; and using the MIN for routing calls from the base station to the mobile device in response to the mobile device being in the home network. REJECTIONS The Examiner rejected claims 1-6, 10-13, and 18-22 under 35 U.S.C. § 103(a) as unpatentable over U.S. Patent No. 6,285,880 B1 to Gagnon and U.S. Pub. No. 2004/0242260 A1 to Lescuyer. Ans. 3-7. The Examiner rejected claims 7-9 and 14-17 under § 103(a) as unpatentable over Gagnon, Lescuyer, and U.S. Patent No. 6,539,223 B1 to Bijanki. Ans. 7-11. Appeal 2011-013365 Application 11/273,716 3 ANALYSIS Appellants present arguments for claim 1 and assert that claims 3-7 and 18-25 are likewise patentable. Br. 5-11.1 We select claim 1 as representative of claims 3 and 18-25. 37 C.F.R. § 41.37(c)(1)(iv). Claim 1 stands rejected as obvious over Gagnon and Lescuyer. Before addressing the at-issue subject matter and arguments for claim 1, we reproduce the Appeal Brief explanation for several terms of art recited in claim 1. According to Appellants: Many mobile devices are programmed by a service provider with a 10-digit, unique subscription identifier called a Mobile Identification Number (MIN). In particular, service providers in the United States utilize MIN, rather than the 15- digit International Mobile Subscriber Identity (IMSI). . . . . . . [T]he present application sets forth techniques for routing calls based on the MIN-based-IMSI field of the mobile device. See Patent Application, page 8, ll. 6-9. For example, when the network is a home network for the mobile device, the network may receive a [MIN . . . that] does not include a home network identifier (HNI). Alternatively, when the mobile device is roaming, the network may receive the MIN and the [HNI] from the mobile device. The HNI is formed by combining a Mobile Country Code (MCC) and a Mobile Network Code (MNC). The network may then use the MIN and HNI for routing calls from a base station to the mobile 1 Appellants present separate headings for claims 1-6 and 10-13 (Br. 5), claims 18-22 (id. at 8), and claims 7-9 and 14-17 (Br. 10). However, the arguments are merely repeated for each section. If Appellants view the repeated arguments as differing amongst the claims, e.g., in view of differing limitations, then such differences and the resulting respective distinctions over the prior art must be addressed. See In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant . . . .”). Appeal 2011-013365 Application 11/273,716 4 device in response to the mobile device roaming and the MIN for routing calls from the base station to the mobile device in response to the mobile device being in the home network. Br. 5-6.2 We have reviewed the Specification and agree with the above statements. The only issue on appeal is whether the combined teachings of Gagnon and Lescuyer suggest the claimed MIN that is provided by a mobile device to a network and does not include an HNI. Br. 7. Appellants argue that Gagnon and Lescuyer do not suggest signaling a network via a MIN lacking an HNI, but rather suggests signaling a network via an IMSI including an HNI. Id. Appellants particularly state: Lescuyer teaches that the reason for creating the IMSI by combining the HNI, MCC, and MNC is so that a radio network controller (RNC) can determine the home network of the mobile unit that transmits the IMSI. Lescuyer further explicitly teaches that the entire IMSI should always be transmitted so that the radio network controller can deduce the home network of the mobile subscriber in a unique and definitive way from the MCC and MNC field of the IMSI. See Lescuyer, paragraph [0032]. Applicants therefore respectfully submit that the combination of Gagnon and Lescuyer does not describe or suggest that the MIN received from the mobile device does not include [an HNI], as set forth in claim 1. Id. Appellants’ argument is not persuasive. Contrary to the above contentions, the combined teachings of Gagnon and Lescuyer suggest the above subject matter of claim 1 for two reasons. 2 Unless denoted otherwise, all ellipses and bracketed text are added herein, i.e., not original to the quotation. Appeal 2011-013365 Application 11/273,716 5 First, the Examiner reasonably reads the claimed MIN and IMSI respectively on Gagnon’s MIN and IMSI. Ans. 4, 12-13. The finding is reasonable because, as claimed, Gagnon selectively uses the MIN for signaling a home network and the IMSI for signaling an outside network. Gagnon col. 3, ll. 33-36. Second, the Examiner acknowledges that Gagnon does not teach the IMSI as comprised of an HNI and MIN, but reasonably finds that Lescuyer teaches this IMSI composition (as claimed) and teaches the included HNI as comprised of an MCC and MNC (as also claimed). Ans. 4-5, 12-15. The finding is reasonable because Lescuyer’s IMSI is composed of 15 bits as follows: starting with three bits forming an MCC that identifies the home network country; followed by two or three bits forming an MNC that identifies the home network; and completed by the remaining bits forming a MIN (Lescuyer’s “Mobile Subscriber Identification Number”). Lescuyer ¶¶ [0028-31]. Because Lescuyer’s MCC and MNC identify the home network, the MCC and MNC collectively constitute an HNI. See also e.g., CDG, PRL Enhancements Frequently Asked Questions, PRL Enhancement Workshop, p. 7 (San Diego, Feb. 2004) (appended; defining “Home Network Identification (HNI)”).3 3 Also available at the following website: http://www.cdg.org/news/events/cdmaseminar/04_prl/prl-faq-v2.pdf. Note that extrinsic evidence may, if clearly material, be considered sua sponte for claim term interpretation. Phillips v. AWH Corp., 415 F.3d 1303, 1316-17 (Fed. Cir. 2005) (en banc). Further note that this document explains “Current standards require that it should be possible to operate using full- IMSI in the RAN [(Radio Access Network)] without requiring full-IMSI in the core network” – “[t]his resolution does not require that full-IMSI support Appeal 2011-013365 Application 11/273,716 6 In addition to the above arguments, Appellants argue that Lescuyer teaches away from signaling a home network via an MIN. Br. 7-8. Appellants particularly state: Lescuyer explicitly teaches away from the claimed subject matter. As discussed herein, Lescuyer teaches that the entire IMSI . . . should always be transmitted. Applicants respectfully submit that teaching that the entire IMSI should always be transmitted means that the network must be configured to receive the entire IMSI for every transmission, regardless of whether the network is the home network for the mobile unit that transmitted the IMSI or a roaming network. Id. (emphasis omitted). The argument is not persuasive because the Examiner correctly finds that Gagnon selectively uses a MIN and IMSI to respectively signal home and outside networks. Appellants have not shown that Lescuyer’s preference to signal all networks via an IMSI teaches away from Gagnon’s selective signaling via a MIN and IMSI. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away [. . .] if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.”). be present in the core network.” PRL Enhancements Frequently Asked Questions, at p. 5. Appeal 2011-013365 Application 11/273,716 7 DECISION For the foregoing reasons, the Examiner’s decision rejecting claims 1- 22 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED msc Notice of References Cited Application/Control No. 11/273,716 Applicant(s)/Patent Under Reexamination KAREN LEE REDELL Examiner HEIBER, SHANTELL L Art Unit 2644 Page 1 of 1 U.S. PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Name Classification A US- B US- C US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Country Name Classification N O P Q R S T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) U CDG, PRL Enhancements Frequently Asked Questions, PRL Enhancement Workshop (San Diego, Feb. 2004), http://www.cdg.org/news/events/cdmaseminar/04_prl/prl-faq-v2.pdf V W X *A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No. PRL Enhancements Frequently Asked Questions PRL Enhancement Workshop San Diego February 2004 2 PRL Enhancements – FAQ List General..................................................................................................................................3 Where can more detail on this Resolution be found?..............................................................3 How did this resolution come about?.....................................................................................3 What are operator benefits in this Resolution?.......................................................................3 What standards are affected by this Resolution?....................................................................3 How is this different from what is currently being used?..........................................................3 Full IMSI Support ....................................................................................................................4 What is an IMSI?.................................................................................................................4 Who assigns IMSI’s?...........................................................................................................4 How does an IMSI relate to a MIN and IRM? .........................................................................4 What are IRMs and how do they play into this Resolution? .....................................................5 Does this Resolution require Full-IMSI support?.....................................................................5 If an operator’s ANSI-41 and HLRs do not support 15 digit IMSIs, is it a problem if an international mobile has the same 10 digit IMSI as a domestic mobile?....................................5 Must the MSC support full 15-digit IMSI- that is, it must be capable of correctly handling a 15- digit IMSI from a mobile?.....................................................................................................5 MCC and MNC .......................................................................................................................6 Why do we need different values for MCC and IMSI_11_12 than are currently being broadcast? ..........................................................................................................................................6 Why does the CDG have to propose an allocation strategy for IMSI_11_12 for the United States? ..............................................................................................................................6 What is an HNI?..................................................................................................................7 Paging and Access..................................................................................................................7 Does this Resolution mean that the infrastructure must always use 15-digit paging?.................7 For page terminations, would the Switch provide a 15-digit IMSI to the BTS (including the MCC & IMSI_11_12 parameter) for it to generate the over-the-air page message?............................7 What is meant by MCC and IMSI_11_12 wildcard values and how do they affect paging and access addressing?.............................................................................................................7 3 General Where can more detail on this Resolution be found? The CDG technical reference document #86 describes the PRL enhancement. How did this resolution come about? The CDG International Roaming Team (IRT) became aware of the PRL management issues that were facing CDMA carriers implementing roaming agreements. In 2002 proposals were presented on enhanced PRL to address some of these issues. The proposals were refined and approved by the IRT for presentation to the CDG Board. The CDG Board approved the resolution in late 2003. More information on the CDG International Roaming Team can be found at (http://www.cdg.org/cdg/teams/international.asp) What are operator benefits in this Resolution? This allows an operator to identify all of their base stations with their own operator code (MCC, IMSI_11_12) in addition to the existing method of SIDs and NIDs. A handset can then search and perform system selection based upon the operator code instead of, or in addition to, SIDs and NIDs. This can eliminate the need for phones to be programmed with all of the SIDs/NIDs of a particular operator. What standards are affected by this Resolution? There are no standards impacts. The enhancement makes use of existing fields over the air. The enhancement is inside the search algorithm implemented in the handset. How is this different from what is currently being used? The current PRL and system selection only identifies systems by SIDs. Each operator may have hundreds of SIDs, so the handset needs to be programmed 4 with hundreds of SIDs for each operator. With this enhancement only the operator code is needed. This simplifies the process tremendously. Full IMSI Support What is an IMSI? IMSI is an International Mobile Station Identity. It is a standardized 15 digit identity that identifies a country, a network within that country and a mobile station within that network. The structure of an IMSI is described in the ITU Recommendation E.212 – a good description can be found at http://www.numberingplans.com/index.php?goto=guide&topic=E212 Only the length of the MCC is fixed at three digits. The remaining 12 are known as the National Mobile Station Identity which comprises a Mobile Network Code (MNC) and Mobile Station Identity Number (MSIN). Who assigns IMSI’s? The ITU assigns Mobile Country Codes. Administration bodies in each country are responsible for the assignment of the Mobile Network Codes. In the USA IMSI administration is performed by Telcordia Technologies on behalf of the IMSI Oversight Council. More information on the USA IMSI administrator can be found at http://www.ss7pcadmin.com/imsi/index.cfm. The assignment o f an MSIN is left to the operator. For CDMA MSINs, in general, the rules for International Roaming MINs (IRMs) would apply. The “List of Mobile Network Code (MNC) for the international identification plan for mobile terminals and mobile users” maintained by the ITU can be found at http://www.itu.int/ITU-T/inr/forms/files/mnc-1203.pdf How does an IMSI relate to a MIN and IRM? Often, the MSIN part of the IMSI and the MIN are the same. In CDMA, the 10 digit (or less) MIN is unique in the network. 5 To guarantee that a MIN is globally unique it must have the structure of an International Roaming MIN (IRM). What are IRMs and how do they play into this Resolution? Many HLRs and deployed ANSI-41 networks do not currently support 15 digit IMSIs; they can only use 10 digit MINs. International Roaming MINs (IRMs) are MINs that conform to an international numbering convention to ensure uniqueness across all networks. IRMs are allocated by IFAST to each operator, so that no conflicts arise for international roaming with only 10-digits. See http://www.ifast.org Use of IRMs is not a factor in implementing the CDG Resolution. Does this Resolution require Full-IMSI support? Only in the RAN (Radio Access Network). Current standards require that it should be possible to operate using full-IMSI in the RAN without requiring full- IMSI in the core network. This resolution does not require that full-IMSI support be present in the core network. If an operator’s ANSI-41 and HLRs do not support 15 digit IMSIs, is it a problem if an international mobile has the same 10 digit IMSI as a domestic mobile? Yes that is a problem, but even without the CDG Resolution this should not happen. Today, international mobiles are programmed with special 10-digit MINs called "IRMs" (International Roaming MINs). These IRMs are designed to mitigate exactly this situation – operating in the 10 digit space of ANSI-41D and its predecessors. Must the MSC support full 15-digit IMSI- that is, it must be capable of correctly handling a 15-digit IMSI from a mobile? Yes. The MSC should support a full 15-digit IMSI. The VLR should be able to store a full 15-digit IMSI for each subscriber. The MSC support of 15-digit IMSI over the air interface should be independent of the ANSI-41 interface which could be either True-IMSI or MIN-based depending on the core network. 6 MCC and MNC Why do we need different values for MCC and IMSI_11_12 than are currently being broadcast? In many cases the values being broadcast are not legal values and are the manufacturer default setting. The Resolution requires the operator to broadcast its own assigned MCC and IMSI_11_12 in the Extended System Parameters Message. Why does the CDG have to propose an allocation strategy for IMSI_11_12 for the United States? The US IMSI Administrator currently allocates something called a Home Network Identifier (HNI) to mobile operators which comprises 3 digits for MCC and 3 digits for MNC. The CDMA IMSI_11_12 value is a 2 -digit Mobile Network Code. CDMA does not currently support a 3 -digit MNC. GSM carriers in the US are also constrained by a 2 digit MNC and have presented an allocation strategy to the US IMSI Administrators which ensures that GSM operators will only receive MNCs in that end in “0” in the 310 and 311 MCCs. CDMA carriers in the USA need a similar allocation strategy to ensure that all CDMA carriers use the same two significant digits in the MNC. The IMSI assignment guidelines (http://www.ss7pcadmin.com/imsi/imsi_gdlns.doc) for the USA contain the following provisions for GSM Systems: Temporary Accommodation for "GSM-Based" Wireless Networks Currently GSM-based wireless public networks can handle only 2-digit MNCs. This limitation can be accommodated, until such time as GSM-based wireless public networks will be modified to support 3-digit MNCs, through the following temporary assignment guideline: • Until July 1, 2008, MNCs in the format XX0, where X equals any of the decimal digits 0 through 9, are reserved for assignment to CMRS license holders choosing to deploy "GSM-based" technology. When a licensee meeting this requirement requests code assignment, the next such code in numerical sequence will be assigned. Such codes from the next consecutive MCC should not be assigned until all such codes from the preceding MCC have been assigned. • Until July 1, 2008, MNCs in the format XX1 through XX9 should not be assigned to CMRS license holders choosing to deploy "GSM-based" technology. It is also recommended to ensure that there are no clashes with any other carriers MCC + MNC[2] network code. This is a strategy that the CDG would formulate. 7 What is an HNI? The combination of a Mobile Country Code and Mobile Network Code (MCC & MNC) is referred to as a Home Network Identification (HNI). The HNI in the US is a 3 digit MCC (as specified by ITU) and a 3 digit Mobile Network Code. Paging and Access Does this Resolution mean that the infrastructure must always use 15-digit paging? This Resolution does not change the way infrastructure decides to use 10 or 15 digit paging. The infrastructure decides whether to page with 10 digits or 15 digits depending on the mobile's IMSI. If the mobile's programmed MCC and IMSI_11_12 match what is being broadcast, then 10-digit paging via IMSI_S is sufficient. If the mobile's MCC and IMSI_11_12 do NOT match what is being broadcast, then 15-digit paging needs to be performed. Paging for international roamers whose mobiles are programmed with different MCC+IMSI_11_12 would therefore require 15-digit paging. Home mobiles which are programmed with default MCC+IMSI_11_12 (e.g. all zeros) would also require 15-digit paging. For page terminations, would the Switch provide a 15-digit IMSI to the BTS (including the MCC & IMSI_11_12 parameter) for it to generate the over-the-air page message? Yes. Typically the full IMSI (including MCC and IMSI_11_12) would be stored in the VLR upon mobile registration. When an incoming call arrives, the full 15-digit IMSI would be provided to the BTS to send in the page message over the air. What is meant by MCC and IMSI_11_12 wildcard values and how do they affect paging and access addressing? The CDMA standards describe a mechanism to set both MCC and IMSI_11_12 to values of all “1”s. This value has special meaning. When a mobile receives the MCC and IMSI_11_12 over the air it stores these values and subsequently uses then to determine if it is being served by its 8 programmed [MCC, IMSI_11_12] network or if it is being served by a different [MCC, IMSI_11_12] network. When a wildcard value is broadcast by the network the mobile assumes that the serving network is equal to its programmed [MCC, IMSI_11_12] values. The mobile uses the values of the [MCC, IMSI_11_12] and other parameters of the serving network to determine what type of identity to use for access messages and what type of page matching to perform.