HUAWEI TECHNOLOGIES CO., LTD.

Patent Trials and Appeals Board

May 19, 2021

2019006509 (P.T.A.B. May. 19, 2021)

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.
14/579,793 12/22/2014 Shiyong TAN HW719300 9265
77399 7590 05/19/2021
Leydig, Voit & Mayer, Ltd
(for Huawei Technologies Co., Ltd)
Two Prudential Plaza Suite 4900
180 North Stetson Avenue
Chicago, IL 60601
EXAMINER
CHUNG, HOON J
ART UNIT PAPER NUMBER
2419
NOTIFICATION DATE DELIVERY MODE
05/19/2021 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):
Chgpatent@leydig.com
aipatent@huawei.com
hwpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHIYONG TAN, WEIHUA HU, LIPING YUAN, and
JIN ZHANG
____________

Appeal 2019-006509
Application 14/579,793
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). According to Appellant, the real party in interest
is the assignee of record, Huawei Technologies Co., Ltd. See Appeal Br. 3.

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STATEMENT OF THE CASE
Appellant’s disclosed and claimed invention generally relates to the
field of wireless communications, particularly to a gateway system, device,
and communication method. Spec. ¶ 2. The gateway system includes a
control plane entity and at least one user plane entity. Figure 2, Spec. ¶¶ 15,
61. The control plane entity allocates an IP address to a user device, such as
a cell phone. Spec. ¶¶ 15, 62, 64, 67–68. The control plane entity then
generates configuration information of the data path between the user device
and the larger network, then sends that configuration information to the user
plane entity. Spec. ¶¶ 15, 66–68. The user plane entity, which is connected
between the user device and the larger network on the data path, uses the
configuration information to complete the connection between the user
device and the larger network. Spec. ¶¶ 15, 72–75.
Claim 1, reproduced below with the disputed limitations emphasized
in italics, is representative of the subject matter on appeal:
1. A gateway system comprising:

a control plane entity comprising a memory storing instructions
and a processor coupled to the memory to execute the instructions to:

allocate an internet protocol (IP) address to a user
equipment (UE),

generate, configuration information of a data path
according to the IP address allocated by the control plane
entity, and

send the configuration information of the data path to a
user plane entity, wherein the data path is used for connecting
the user plane entity with a radio access network (RAN), a
packet data network (PDN) or another network element; and
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the user plane entity, which is located between the PDN and the
RAN, connected with the control plane entity, comprising a memory
storing instructions and a processor coupled to the memory to execute
the instructions to:

receive the configuration information of the data path,
and

[L2] forward uplink and downlink data of the UE on the
data path according to the configuration information of the
data path,

wherein the configuration information of the data path
comprises association information for the data path, and the
association information of the data path comprises the IP
address.

Appeal Br. 20, claim 1, Claims Appendix (Disputed limitations L1–
L2 emphasized).
Evidence Relied Upon by the Examiner

Name Reference Date
Watanabe et al.
(“Watanabe”)
US 2009/0252133 A1 Oct. 8, 2009
Hahn US 2015/0052234 A1 Feb. 19, 2015
Chen et al.
(“Chen”)
US 2012/0157047 A1 June 21, 2012
Fox et al.
(“Fox”)
WO 2010/004295 A2 Jan. 14, 2010
Belling et al.
(“Belling”)
US 2011/0238547 A1 Sept. 29, 2011
Kupinsky et al.
(“Kupinsky”)
US 2012/0081557 A1 Apr. 5, 2012

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Rejections
Rejection Claims Rejected 35 U.S.C. § Reference(s)/Basis
A 1–12, 15–20 103

Watanabe, Hahn, Fox, Chen
B 13 103

Watanabe, Hahn, Fox,
Chen, Belling
C 14 103 Watanabe, Hahn, Fox,
Chen, Kupinsky

Grouping of Claims
Based upon Appellant’s arguments, and our discretion under
37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of Rejection A of grouped
independent claims 1, 8, and 15 on the basis of representative claim 1. We
address Rejection B of claim 13 and Rejection C of claim 14, infra. To the
extent that Appellant has not advanced separate, substantive arguments for
particular claims, or other issues, the doctrine of forfeiture applies.2 See
37 C.F.R. § 41.37(c)(1)(iv).

2 See In re Google Technology Holdings LLC, 980 F.3d 858, 862 (Fed. Cir.
2020):
It is well established that “[w]aiver is different from forfeiture.”
United States v. Olano, 507 U.S. 725, 733 (1993).[] “Whereas
forfeiture is the failure to make the timely assertion of a right,
waiver is the ‘intentional relinquishment or abandonment of a
known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458, 464
(1938)) (additional citations omitted). The two scenarios can
have different consequences for challenges raised on appeal, id.
at 733–34, and for that reason, it is worth attending to which label
is the right one in a particular case.
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ISSUES AND ANALYSIS
In reaching this Decision, we consider all evidence presented and all
arguments actually made by Appellant. We have reviewed Appellant’s
arguments in the Appeal Brief, the Examiner’s rejections in the Final Office
Action, and the Examiner’s responses in the Answer to Appellant’s
arguments. We highlight and address specific findings and arguments for
emphasis as follows.

Rejection A of Representative Claim 1 under 35 U.S.C. § 103(a)
Under pre-AIA 35 U.S.C. § 103(a), we focus our analysis on the
following argued limitations L1 and L2, regarding the rejection of
representative independent claim 1:
Issue: Did the Examiner err by finding that Watanabe, Hahn, Fox,
and Chen collectively, teach or suggest the disputed limitations L1 and L2:
[L1] a control plane entity [that]. . . generate[s],
configuration information of a data path according to the IP
address allocated by the control plane entity;

[L2] forward uplink and downlink data of the UE on the
data path according to the configuration information of the
data path[,]

within the meaning of independent claim 1? 3 (emphasis added).

3 Throughout this Opinion, we give the contested claim limitations the
broadest reasonable interpretation (BRI) consistent with the Specification.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Claim 1, Limitation L1: a control plane entity [that]. . . generate[s],
configuration information of a data path according to the IP address
allocated by the control plane entity

Appellant contends that Fox fails to disclose or suggest the claimed
feature of “configuration information of a data path.” See Appeal Br. 12
(emphasis omitted). Appellant reasons that, based upon the teachings of Fox,
Fox discloses that “the PDN GW address received by the Serving GW 54 in
Create Session Request [of step 12 in Fig. 3B] from MME is used for
sending and receiving messages between the Serving GW 54 and PDN GW
50.” Appeal Br. 12. Accordingly, Appellant asserts, “the PDN GW address
is a PDN GW address for the control plane, rather than a PDN GW address
for the user plane. The PDN GW address for the user plane in Fox is instead
contained in a Create Session Response from PDN GW 50 to the Serving
GW 54 at step 15 [of Fig. 3B]. Further, MME TEID within the Create
Session Request is also for the control plane.” Appeal Br. 12. Therefore,
Appellant argues that Fox fails to teach “configuration information of a data
path.” Appeal Br. 12–13 (emphasis omitted).
The disagreement between Appellant and the Examiner turns upon
how we interpret the claim limitation “configuration information of a data
path,” which we address below.
We first consider the claim construction under BRI (broadest
reasonable interpretation) of the disputed claim term “configuration
information of a data path.” We turn to the Specification for context, and
find the Specification provides a non-limiting, exemplary description for the
claim terms “control plane entry” and “configuration information of a data
path.” The Specification states that “the control plane entity takes charge of
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the configuration of the data path, and the user plane entity takes charge of
data forwarding on the data path.” Spec. ¶ 19.
In particular, the Specification discloses:
The control plane entity 101 is configured to allocate an IP
address to UE and configure a data path for connecting the user
plane entity 102 with a radio access network (RAN), a packet
data network (PDN) or other network elements according to the
IP address. Exemplarily, the configuring the data path according
to the IP address may include: configuration information of the
data path is generated according to the IP address allocated to the
UE, and the data path is sent to the user plane entity 102.
. . .
The user plane entity 102 is configured to receive the
configuration information of the data path sent by the control
plane entity 101 and forward uplink and downlink data of the UE
on the data path configured by the control plane entity 101.
Spec. ¶¶ 45 and 49 (emphasis added).
The Specification further discloses that “the configuration information
of the data path includes the QoS information.” Spec. ¶ 57. The
Specification also discloses that:
[T]he configuration information may include at least one of the
following information: identification information of the user
plane entity, identification information of a peer network element
of the user plane entity on the data path, data path information,
and association information of the data path.
. . .
The configuration information of the data path includes local end
network element (GW-U) information (optional), peer network
element information (optional), data path information and data
path association information (such as the IP address of the UE).
Spec. ¶¶ 120 and 135 (emphases added).
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Thus, “control plane entity” generates “configuration information,”
which includes the type of data disclosed in ¶¶ 57, 120, and 135 of the
Specification, sends it to the “user plane entity,” which then uses that data to
forward data between the user device and the larger network along the “data
path.”
Figures 3A and 3B of Fox are reproduced below, with annotations
indicating the Examiner’s findings with respect to the user plane entity,
control plane entity, first uplink data, and first downlink data:

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Figures 3A and 3B, above, illustrate a mobility management entity
(MME))
The Examiner maps the claimed “user plane entity” to the PDN GW
50 and the Serving GW 54 in Figure 3A of Fox that establishes a session
which routes user plane data shown in steps 13–15 of Fox, Figure 3B. See
Ans. 3–4. In other words, “the Create Session Request [of step 13] message
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contains information used to configure a session, which is then used to
transfer data traffic,” and accordingly, Fox teaches “configuration
information for a data path.” Ans. 4 (emphasis added).
The Examiner further reasons that the new MME 7 of Figs. 3A–3B of
Fox “generates and sends a Create Session Request message [in step 12 of
Fig. 3B], where the Create Session Request message contains various
information such as the PDN address, charging characteristics, IMSI,
MSISDN, MME TEID, and PDN GW address.” Ans. 4. The Examiner
further explains this information in Fox indicates how the user will be billed
for their data use, the Create Session Request message [of step 12 in Fig.
3B] “contains configuration information for a data path.” Ans. 4.
We agree with the Examiner that Fox teaches “configuration
information of a data path,” construed as discussed above. In particular, the
new MME 7 of Figs. 3A and 3B of Fox generates certain configuration data,
and among this data is: (1) a PDN subscription context, which contains the
IP address for the user equipment; (2) a PDN GW address and PDN type;
and (3) Default EPS Bearer QoS. Fox p.14, lines 4–8 and lines 29–32.
Addressing these in turn: (1) the PDN subscription context containing the IP
address for the user equipment is similar to the “data path information” of
¶ 135; (2) the PDN GW address and PDN type is similar to “identification
information of the user plane entity” of ¶ 120; (3) and Default EPS Bearer
QoS is similar to “QoS information” of ¶ 57. In other words, the data
generated by the new MME 7 and sent to the serving GW in step 12 of Fig.
3B of Fox is the type of data listed by Appellant’s Specification as the type
of data constituting “configuration information of a data path.”
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With respect to limitation L1, Appellant also contends that Chen fails
to disclose that the HSS 52 and the new MME 7 of Fox can be combined, to
suggest “a control plane entity.” Appeal Br. 14–15.
In the Final Rejection, the Examiner found that Watanabe, Fox, and
Hahn do not disclose explicitly that HSS 52, which allocates the IP address,
constitutes a “control plane entity,” and relied upon Chen to cure this
deficiency. Final Act. 8–9.
Appellant contends that Chen does not teach the combination of HSS
52 and new MME 7 of Fox because Chen only gives two examples of
functions in the list of ¶ 26 that can be combined: MME 215 and SGW 210
may be combined, or PCRF 230 and HSS 220 may be combined. Appeal Br.
14. Appellant further contends that “[t]here is no other embodiment to show
the HSS may be combined with the MME, and how this two could be
combined.” Appeal Br. 14.
The Examiner responds that “Chen discloses, in ¶ 26, that ‘[a]lthough
FIG. 2A illustrates separate instances of SGW 210, PGW 225, MME 215,
HSS 220, PCRF 230, and server 235, according to other embodiments, two
or more of these devices may be combined.’” Ans. 5. The Examiner finds
“Chen specifically points out six devices and states that two or more of the
six devices can be combined. It would be within one of ordinary skill in the
art to combine two devices, the MME and HSS, among six devices.” Ans. 5.
Contrary to Appellant’s restrictive reading of ¶ 26 of Chen, Chen
explicitly contemplates that any “two or more of” the devices listed and
depicted in Fig. 2A can be combined. Further, Chen indicated in ¶ 26 that
the combinations explicitly listed were merely exemplary, and not exclusive,
by starting the sentence with “for example” and concluding it with “etc.”
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Appellant further contends that in Fox, there are two MME’s (new
MME 7 and Old MME 7A) communicating with HSS 52, and to combine
both MME’s with the single HSS would create a “bizarre situation,”
“because there would be two control plane entities allocating PDN addresses
and conflicting with each other.” Appeal Br. 14–15. That is, Appellant
contends, one control plane entity would be required to perform the
functions of new MME 7 and HSS 52, while the other control plane entity
would be required to perform the functions of old MME 7A and HSS 52. Id.
The Examiner responds that according to Fox, new MME 7 supports
LTE radio access technology, while old MME 7A supports 3G radio access
technology. Ans. 5 (citing Fox p. 5, lines 14–18). Further, Fox teaches that
the old MME 7A is an SGSN, and is labeled “old MME/SGSN” in Fig. 3A
since it performs that same functions in 3G radio access technology that new
MME 7 performs in LTE radio access technology. Id.
In other words, the Examiner finds, “old MME” and “new MME” are
terms used to designate technologies having similar functions, but operating
in different radio access technologies. Ans. 5. Accordingly, if one having
ordinary skill in the art were to combine the new MME 7 and the old MME
7A, they would know how to do so such that they not conflict with one
another. Id. The Examiner provides a rationale to combine the new and old
MME’s with the HSS: to create a single device performing all of the
functions, thereby realizing a reduced cost (in terms of space and power
consumption) of operating the network. Final Act. 9.
Appellant’s arguments are not persuasive because they do not take
into account what the collective teachings of the prior art would have
suggested to one of ordinary skill in the art and are therefore ineffective to
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rebut the Examiner’s prima facie case of obviousness. See In re Keller,
642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” (Citations omitted)). This reasoning is
applicable here.
We further note that the Examiner has found actual teachings in
Watanabe, Hahn, Fox, and Chen, and has provided a rationale for the
combination (see Final Act. 9). The above-noted teachings suggest that the
combination involves the predictable use of prior art elements according to
their established functions. The Supreme Court has held that in analyzing
the obviousness of combining elements, a court need not find specific
teachings, but rather may consider “the background knowledge possessed by
a person having ordinary skill in the art” and “the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). To be nonobvious, an
improvement must be “more than the predictable use of prior art elements
according to their established functions,” id. at 417, and the basis for an
obviousness rejection must include an “articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” Id. at
418 (citation omitted). Here, the Examiner has provided a rationale for the
combination. Accordingly, we find that the Examiner has provided
sufficient motivation for modifying Watanabe, Hahn, and Fox with the
teachings of Chen.
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We are further mindful that the skilled artisan would “be able to fit the
teachings of multiple patents together like pieces of a puzzle” since the
skilled artisan is “a person of ordinary creativity, not an automaton.” KSR,
550 U.S. at 420–21. Accordingly, based upon our review of the record, we
find one of ordinary skill in the art would have been able to combine the new
MME, old MME, and HSS of Fox, as taught by Chen and proposed by the
Examiner, without resulting in the “bizarre situation” alleged by Appellant.

Claim 1, Limitation L2: forward uplink and downlink data of the UE on the
data path according to the configuration information of the data path
Appellant disputes the Examiner’s findings (Final Act. 7–8) regarding
limitation L2. See Appeal Br. 15–17. Appellant contends that “Fox cannot
forward downlink packets according to the information in create session
request message [of step 13 in Fig. 3B].” Appeal Br. 16. Appellant contends
that:
[I]n Fox, only after Step 23 [of Fig. 3B], the Serving GW54 can
forward uplink and downlink data on the data path, because at
Step 15, the Serving GW 54 has the PDN GW address for user
plane and the PDN GW TEID of the user plane, at Step 23, the
Serving GW knows the eNodeB address and eNodeB TEID,
which configures a data path connecting a radio access network
(RAN) and a packet data network (PDN). None of this
information is received from the Create Session Request [of step
12 of Fig. 3B, as asserted by the Examiner].
Appeal Br. 16–17.
The Examiner responds that claim 1 “neither requires zero intervening
step between the receiving and forwarding steps nor only the particular
configuration information of the data path.” Ans. 6. According to the
Examiner, the claim only requires that “the user plane entity forwards uplink
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and downlink data according to some received configuration information,
regardless of whether additional intervening steps are taken between
receiving the configuration information and forwarding data and whether
additional configuration information is used to forward uplink and downlink
data.” Ans. 6.
The Examiner finds that the forwarding of uplink data (after step 22 of
Fig. 3B) and downlink data (after steps 15 and 24 of Fig. 3B) in Fox occurs
only due to the Create Session Requests of steps 12–13. Ans. 7. As a result,
the Examiner finds, uplink and downlink data in Fox is forwarded according
to the Create Session Request message of steps 12–13 of Fig. 3B. Ans. 7.
Moreover, the Examiner finds, the Modify Bearer Request of step 23 of Fig.
3B is merely an intervening step between the Create Session Request of
steps 12–13, and the forwarding of uplink and downlink data, a single
session establishment process, which is not precluded according to the
language of claim 1. Ans. 7.
We agree with the Examiner that Fox teaches limitation L2 of claim 1
because there is nothing in claim 1 requiring that when the user plane entity
forwards uplink and downlink data, it must be according to the exact same,
unaltered “configuration information of the data path” that is previously
generated by the control plane entity. We decline to construe limitation L2
more narrowly than it is presented, as Appellant urges. Consequently, we
find Fox teaches limitation L2 in that the configuration information
generated in the Create Session Request of steps 12–13 of Fig. 3B is present
and used at the time of the Modify Bearer Request of step 23 of Fig. 3B.
Therefore, based upon a preponderance of the evidence, we are not
persuaded the Examiner erred in finding that disputed limitations L1 and L2
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of representative independent claim 1 are taught or suggested by the
collective teachings of Watanabe, Hahn, Fox, and Chen.
Accordingly, we sustain the Examiner’s Rejection A of representative
independent claim 1, and grouped independent claims 8 and 15, also rejected
under Rejection A, and not argued separately. See 37 C.F.R.
§ 41.37(c)(1)(iv)(2017).
Appellant advances no separate, substantive arguments for dependent
claims 2–7, 9–12, and 16–20 that were also rejected by the Examiner under
Rejection A. Arguments not made are forfeited. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Rejection B of Dependent Claim 13
Appellant advances no separate arguments for dependent claim 13
that was rejected by the Examiner under Rejection B. Arguments not made
are forfeited. See 37 C.F.R. § 41.37(c)(1)(iv).

Rejection C of Dependent claim 14
Appellant advances no separate arguments for dependent claim 14
that was rejected by the Examiner under Rejection C. Arguments not made
are forfeited. See 37 C.F.R. § 41.37(c)(1)(iv).

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CONCLUSION
The Examiner did not err in rejecting claims 1–20 as being obvious
under pre-AIA 35 U.S.C. § 103(a), over the cited combinations of
references.

DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–12, 15–20 103

Watanabe, Hahn,
Fox, Chen
1–12, 15–20
13 103

Watanabe, Hahn,
Fox, Chen, Belling
13
14 103 Watanabe, Hahn,
Fox, Chen, Kupinsky
14
Overall
Outcome
1–20

FINALITY AND RESPONSE
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). See
37 C.F.R. § 41.50(f).
AFFIRMED