Ex Parte Touray et al

Patent Trial and Appeal Board

Dec 19, 2016

13296746 (P.T.A.B. Dec. 19, 2016)

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.
13/296,746 11/15/2011 Yusupha TOURAY 6888-54501 7648
81310 7590 12/21/2016
Meyertons, Hood, Kivlin, Kowert & G (Apple)
P.O. BOX 398
Austin, TX 78767-0398
EXAMINER
NEALON, WILLIAM
ART UNIT PAPER NUMBER
2643
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
patent_docketing@intprop.com
ptomhkkg @ gmail .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUSUPHA TOURAY and FAYAZ KADRI
Appeal 2015-001649
Application 13/296,7461
Technology Center 2600
Before ST. JOHN COURTENAY, III, KAMRAN JIVANI, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4-10, 12, 13, 15-21, and 23-25, which are all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
1 According to Appellants, the real party in interest is Apple Inc. App. Br. 2.
Appeal 2015-001649
Application 13/296,746
STATEMENT OF THE CASE
Introduction
Appellants’ application relates to limiting mobility of a mobile device
within a mobile network. Abstract. Claim 1 is illustrative of the subject
matter on appeal and reads as follows:
1. A method of limiting mobility provided to a mobile
station by a wireless network, the method comprising:
when the mobile station moves from a first service region
served by a first base station to a second service region served
by a second base station in the wireless network,
preventing, by a processor coupled to the wireless
network, hand-off of the mobile station from the first base
station to the second base station based on at least one mobility
preference of the wireless network, wherein at least one
mobility preference comprises rejection of all handoff requests
from the mobile station;
enabling network re-entry of the mobile station in the
second service region served by the second base station.
The Examiner’s Rejections
Claims 1, 2, 4, 6-10, 12, 13, 15, and 17-21 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Dufour (US 6,073,010; June 6,
2000), Xiang et al., Problem fix for rejection response for MS initiated HO,
IEEE C802.16e-324, July 14, 2005 (“Xiang”), and IEEE 802.16e-2005 Part
16, Amendment 2, IEEE Computer Society, February 28, 2006 (“IEEE16”).
Final Act. 3-6.
Claims 5,16, and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dufour, Xiang, IEEE16e2005, and Koo et al., Inter-BS
Communication for IEEE 802.16e Handoff, IEEE 802.16 Broadband
Wireless Access Working Group, May 14, 2003 (“Koo”). Final Act. 6-7.
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Application 13/296,746
Claims 23 and 24 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Dufour, Xiang, IEEE16, and Noguchi (US 2005/0221823
Al; Oct. 6, 2005). Final Act. 7.
ANALYSIS
We have reviewed the Examiner’s rejections in consideration of
Appellants’ contentions and the evidence of record. Appellants persuade us
the Examiner fails to establish the claims are unpatentable.
The Examiner finds an ordinarily skilled artisan would have been
motivated to combine Dufour, Xiang, and IEEE 16, and that the resulting
combination teaches or suggests all of the limitations of claim 1. Final Act.
3—4. In particular, the Examiner finds an ordinarily skilled artisan would
have found it obvious to try Dufour’s method of preventing handover with
network re-entry as taught by Xiang and IEEE 16. Final Act. 3-4.
Appellants argue the Examiner erred in finding an ordinarily skilled
artisan would have been motivated to combine Dufour, Xiang, and IEEE 16.
App. Br. 7-8. In particular, Appellants argue combining the references
would render Dufour unsatisfactory for its intended purpose of restricting
fixed service area (FSA) users from having service outside their FSA. App.
Br. 7. Appellants argue Dufour teaches users have normal access to services
within the FSA, but users are not permitted access to any services outside
the FSA. Id. Appellants argue an ordinarily skilled artisan would not have
been motivated to combine Xiang and IEEE16’s teachings related to
network re-entry using a second base station that is outside the FSA defined
by the first base station of Dufour. App. Br. 7-8. Appellants argue allowing
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Application 13/296,746
such network re-entry at the second base station is “precisely the opposite of
the desired effect of Dufour.” App. Br. 8.
Appellants have persuaded us the Examiner erred. Dufour teaches a
cellular subscriber with a fixed subscription area. Dufour 2:18-33. In the
embodiment relied upon by the Examiner in the Final Action, the FSA is a
single cell, or base station, that the subscriber may access. See Final Act. 3.
The Examiner finds Dufour teaches the claimed “mobility preference” in
this embodiment because all handover requests outside the single cell (i.e.,
all handover requests) are rejected. As a result, the subscriber may not
access any base stations other than the single cell in the FSA because the
subscriber has not paid for access to the other base stations. Dufour 2:18-
33.
In the Answer, the Examiner cites an embodiment wherein the FSA
comprises multiple cells, but the Examiner finds all requests to handover to
base stations inside or outside the FSA could be rejected. See Ans. 3 (citing
Dufour, Fig. 2A, 6:7-23). However, the Examiner has not explained why an
ordinarily skilled artisan would have been motivated to use the teachings of
Xiang and IEEE16 to allow Dufour’s FSA subscriber to connect to the
second base station if the subscriber’s mobility preference rejects all such
handover requests. See Ans. 3.
Thus, Dufour teaches that in either relied-upon embodiment, the
subscriber should not be given access to base stations other than a single
base station in a FSA. We agree with Appellants that combining the
teachings of Xiang and IEEE 16 to permit the mobile device to connect to a
second base station would render Dufour, and in particular the relied-upon
embodiments, unsatisfactory for its intended purpose. Accordingly,
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Application 13/296,746
Appellants have persuaded us that an ordinarily skilled artisan would not
have been motivated to combine the cited references in the manner proposed
by the Examiner. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
For these reasons, we do not sustain the rejection of claim 1. We also
do not sustain the rejections of independent claim 12, which recites similar
limitations, or dependent claims 2, 4-10, 13, 15-21, and 23-25.
DECISION
We reverse the decision of the Examiner to reject claims 1, 2, 4-10,
12, 13, 15-21, and 23-25.
REVERSED
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