Haitao Tang et al.

Patent Trials and Appeals Board

Sep 3, 2019

14785736 - (D) (P.T.A.B. Sep. 3, 2019)

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.
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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.

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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
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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
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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
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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).

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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