Haitao Tang et al.Download PDFPatent Trials and Appeals BoardSep 3, 201914785736 - (D) (P.T.A.B. Sep. 3, 2019) 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. 14/785,736 10/20/2015 Haitao Tang 089229.01109 1226 11051 7590 09/03/2019 Squire Patton Boggs (US) LLP Nokia Technologies Oy ATTN: IP Department 2550 M Street, NW Washington, DC 20037 EXAMINER TRANDAI, CINDY HUYEN ART UNIT PAPER NUMBER 2648 NOTIFICATION DATE DELIVERY MODE 09/03/2019 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): IP-Squire@SquirePB.com nokia.ipr@nokia.com sonia.whitney@squirepb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HAITAO TANG, HENNING SANNECK, SEPPO OLAVI HAMALAINEN, and LARS CHRISTOPH SCHMELZ Appeal 2018-006812 Application 14/785,736 Technology Center 2600 Before CAROLYN D. THOMAS, JOSEPH P. LENTIVECH, and SCOTT RAEVSKY, Administrative Patent Judges. LENTIVECH, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the Examiner’s decision to finally reject claims 1–5, 7–10, and 12. Claims 6 and 11 have been canceled. See App. Br. 24–26 (Claims Appendix). We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is Nokia Solutions and Networks Oy. App. Br. 3. Appeal 2018-006812 Application 14/785,736 2 STATEMENT OF THE CASE Appellants’ Invention Appellants’ invention generally relates to “operating a communication network, in particular a mobile communication network. In particular, it relates to a method of verifying an action of a network configuration.” Spec. 1:8–11. Claim 1, which is illustrative of the claimed invention, reads as follows: 1. A method of operating a communication network comprising a verification component, the method comprising: receiving at the verification component a verification plan including information to determine whether a configuration action requested by a specific network operation fulfills predetermined criteria; and executing the verification plan after the specific network operation is deployed. Rejection Claims 1–5, 7–10, and 12 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Lars Christoph Schmelz et al., A Coordination Framework for Self-Organisation in LTE Networks, 12th IFIP/IEEE International Symposium on Integrated Network Management 193–200 (2011) (“Schmelz”) and Chou (US 2013/0242720 A1; published Sept. 19, 2013). Final Act. 2–5. Appeal 2018-006812 Application 14/785,736 3 ANALYSIS Claim 1 In rejecting claim 1, the Examiner finds: Schmelz teaches inputs/receives at each SON [(self-organizing network)] function (i.e. verification component) a number of policy functions/requirements (i.e. verification plan) including setting of constraints to determine whether the function requests by a Guard function the network behavior perform within the setting, e.g. detect whether network KPIs [(key performance indicators)] below or above an extreme threshold (beyond the normal experienced range) and the detection/execution trigger after a NE [(network element)] is installed. Final Act. 5–6 (citing Schmelz, Figs. 4, 7; pp. 196–97) (internal citations and emphasis omitted). Appellants contend the combination of Schmelz and Chou fails to teach or suggest the limitations recited in claim 1. App. Br. 8–11; Reply Br. 3–5. However, Appellants’ contentions address only the teachings of Schmelz. See id. Here, the Examiner finds Chou also teaches the disputed limitations. Ans. 11–12. In particular, the Examiner finds Chou teaches that the network manager receives a SON coordination plan that is based on one or more inputs. Id. (citing Chou ¶¶ 37, 45). The Examiner finds Chou teaches that the inputs include SON targets that are the justification for a requested parameter change. Ans. 12 (citing Chou ¶ 45). The Examiner further finds Chou teaches that an eNodeB, that has recently undergone a configuration parameter change, may report key performance indicators (KPIs) to the network manager and that the KPIs may be compared against a SON target value to validate whether the previous changes have made an improvement in the KPIs. Id. Based on these findings, the Examiner Appeal 2018-006812 Application 14/785,736 4 concludes that Chou also separately teaches the limitations recited in claim 1. Ans. 11–12. Because the Examiner finds Chou also teaches or suggests the disputed limitations recited in claim 1, Appellants cannot rebut the rejection of claim 1 by addressing only the teachings of Schmelz. Appellants must, but do not, address the Examiner’s findings with respect to the teachings of Chou. As such, we are not persuaded the Examiner erred. Accordingly, we sustain the Examiner’s rejection of claim 1. Claims 10 and 12 Independent claims 10 and 12 recite limitations corresponding to the limitations recited in claim 1. See App. Br. 25–26 (Claims Appendix). Regarding the rejection of claims 10 and 12, Appellants fail to address the teachings of Chou and reiterate substantially the same arguments regarding the teachings of Schmelz as those previously discussed above regarding the patentability of claim 1. See App. Br. 16–21. Accordingly, we are unpersuaded the Examiner erred in rejecting claims 10 and 12 for the reasons discussed supra with respect to claim 1. Claims 2–5 and 7–9 For each of claims 2–5 and 7–9, Appellants argue the Examiner: (1) broadly cites to a section of the cited reference; (2) fails to provide any articulation as to the reasons why the claimed invention would be obvious; and (3) fails to specify any specific teaching of the reference that teaches or suggests the limitation recited in the argued claim. See App. Br. 11–15. Regarding Appellants’ first and third arguments, Appellants essentially argue the Examiner fails to establish a prima facie case of Appeal 2018-006812 Application 14/785,736 5 obviousness. We disagree. Our reviewing court has held “the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The Examiner satisfies this initial burden of production by “adequately explain[ing] the shortcomings it perceives so that the applicant is properly notified and able to respond.” Id. at 1370. In other words, the Examiner carries his or her procedural burden of establishing a prima facie case when a rejection satisfies 35 U.S.C. § 132, in “notify[ing] the applicant . . . [by] stating the reasons for [its] . . . rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” 35 U.S.C. § 132. That section “is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). Section 132 merely ensures that an applicant at least be informed of the broad statutory basis for the rejection of his claims, so that the applicant may determine what the issues are on which the applicant can or should produce evidence. Chester, 906 F.2d at 1578. Here, the Examiner’s discussion of the theory of invalidity (obviousness), the prior art basis for the rejection (Schmelz, Chou), and the identification of where each limitation of the rejected claims is shown in the prior art reference by specific page or paragraph number are sufficient to establish a prima facie case of obviousness. See In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Regarding Appellants’ second argument, we find this argument unpersuasive. For each of claims 2, 4, 5, and 7–9, the Examiner relies upon Appeal 2018-006812 Application 14/785,736 6 a single embodiment taught by the primary reference, Schmelz, for teaching the recited limitations. See Final Act. 2–4. As such, an articulated reason as to why it would be obvious to combine separate teachings is not required. With respect to claim 3, the Examiner finds “[t]he modified Schmelz further teaches the according to claim 1, wherein the verification plan provides meta data associated with information defines the specific network functions operation (Pars. 36-46).” Final Act. 3 (emphasis omitted). Chou is a published U.S. patent application having numbered paragraphs, while Schmelz includes only page numbers and section headings identified using Roman numerals. Therefore, we conclude the Examiner relies upon Chou for teaching or suggesting the limitations recited in claim 3. With respect to the independent claims, the Examiner finds “it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the above teaching as taught by Chou to Schmelz in order to capable of storing [sic], encoding, or carrying instructions for execution by the machine.” Final Act. 2, 5 (citing Chou ¶ 31). Appellants fail to provide any explanation persuasive to explain why this rationale is insufficient to support the conclusion of obviousness with respect to claim 3. Accordingly, we are unpersuaded the Examiner erred in rejecting claims 2–5 and 7–9. DECISION We affirm the Examiner’s rejection of claims 1–5, 7–10, and 12 under 35 U.S.C. § 103(a). Appeal 2018-006812 Application 14/785,736 7 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 Copy with citationCopy as parenthetical citation