Ilkka Keskitalo et al.

Patent Trials and Appeals Board

Dec 20, 2021

2020005865 (P.T.A.B. Dec. 20, 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.
13/982,918 08/30/2013 Ilkka Keskitalo 49700-075N01US/
NC74942
1063
12358 7590 12/20/2021
Mintz Levin/Nokia Technologies Oy
One Financial Center
Boston, MA 02111
EXAMINER
GONZALEZ, AMANCIO
ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
12/20/2021 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):
IPDocketingBOS@mintz.com
IPFileroomBOS@mintz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ILKKA KESKITALO, JARKKO KOSKELA, and
JUSSI-PEKKA KOSKINEN

Appeal 2020-005865
Application 13/982,918
Technology Center 2600

Before JASON V. MORGAN, MICHAEL J. STRAUSS, and
MINN CHUNG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 29–48, which constitute all the claims

1 In this Decision, we refer to Appellant’s Appeal Brief filed December 3,
2019 (“Appeal Br.”) and Reply Brief filed April 3, 2020 (“Reply Br.”); the
Examiner’s Final Office Action mailed March 8, 2019 (“Final Act.”) and
Answer mailed February 5, 2020 (“Ans.”); and the Specification filed
July 31, 2013 (“Spec.”). Rather than repeat the Examiner’s findings and
Appellant’s contentions in their entirety, we refer to these documents.
2 “Appellant” herein refers to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Nokia Technologies
Oy. Appeal Br. 2.
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pending in this Application. See Final Act. 1–2. Claims 1–28 have been
cancelled. Appeal Br. 17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The subject matter of the present Application pertains to “providing
an improved handover operation” in a wireless communications network.
Spec. 1:1–7. Appellant’s Specification purports to describe and claim
embodiments that relate to “extension of a handover command to include a
global cell identifier[].” Id. at 4:10–11. In an embodiment, the global cell
identifier corresponding to a target cell may be provided to the mobile
terminal in the handover command issued by a source cell. Id. at 4:15–16.
“By including the global cell identifier of a target cell in a handover
command . . . the global cell identifier may be utilized to ensure that Radio
Link Failures and/or handover failures are properly reported to a network.”
Id. at 4:16–19.
Claims 29, 34, 41, 42, 45, and 48 are independent. Claim 29,
reproduced below with the disputed limitations italicized, is representative:
29. A method comprising:
receiving, at a user equipment, a handover command
message comprising a radio resource control connection
reconfiguration message, the handover command message
received from a source cell before an attempt by the user
equipment to complete a handover to a target cell, wherein the
handover command message includes a cell global identifier of
the target cell, wherein the handover command message
indicates a decision to handover the user equipment from the
source cell to the target cell;
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generating, at the user equipment, at least one radio link
failure report, the at least one radio link failure report including
the received cell global identifier of the target cell; and
providing, by the user equipment, the at least one
generated radio link failure report.
Appeal Br. 17 (Claims App.) (emphasis added).

REJECTIONS
The Examiner relies on the following references:
Designation3 Reference Date
Sammour US 2009/0185524 Al July 23, 2009
Hapsari US 2011/0026486 Al Feb. 3, 2011
Wang US 2011/0300896 Al Dec. 8, 2011
AAPA Applicant Admitted Prior Art

Claims 29, 30, 34, 35, 41, 42, 45, and 48 stand rejected under
35 U.S.C. § 103 as being unpatentable over the combination of AAPA and
Hapsari. Final Act. 3.
Claims 31, 32, 36, 37, 43, and 46 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of AAPA, Hapsari, and Wang.
Final Act. 6.
Claims 33, 38–40, 44, and 47 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combined teachings of AAPA, Hapsari, Wang,
and Sammour. Final Act. 10.

3 For clarity and ease of reference, we only list the first named inventor.
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ANALYSIS
Background and Overview of the Disclosures in the Specification
The Background section of Appellant’s Specification describes that
the wireless cellular network provides continuity of service to the traveling
mobile users “by enabling a user’s mobile terminal to be handed over
between different serving stations within corresponding different cells or
service areas.” Spec. 1:25–31. During a handover “a mobile terminal is
handed over from a source cell to a target cell.” Id. at 2:36–37. According
to the Specification,
at present, after a mobile terminal is handed over from a source
cell to a target cell, the mobile terminal typically decodes system
parameters from the target cell to obtain . . . the cell global
identity (GCI) and other relevant information about the target
cell in order to determine the location of the target cell.
Id. at 2:36–39 (emphases added).
The Background section of the Specification also describes that the
mobile terminal may generate a Radio Link Failure (RLF) reports which
may include information indicating that a connection between a mobile
terminal and a network is lost. Id. at 2:21–25. The Background section
further describes that “in an E-UTRAN, the RLF report typically includes
information specifying the location where the RLF occurred.”4 Id. at 2:31–
32. When a Radio Link Failure occurs during a handover, however, “the
mobile terminal may be unable to identify the cell global identity of the
target cell,” which is typically obtained by decoding system parameters
transmitted by the target cell, and “the mobile terminal may be unable to

4 According to the Specification, the E-UTRAN is “also known as Long
Term Evolution (LTE) or 3.9G.” Spec. 1:19–20.
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generate the RLF report to be sent to the target cell since the mobile terminal
may not know the location where the RLF occurred.” Id. at 3:1–7.
The Specification purports to provide a solution to the described
problem as follows:
By including the global cell identifier of a target cell in a
handover command, the problems caused by the delay in
decoding the cell identi[t]ies may be solved. In this regard, the
global cell identifier may be utilized to ensure that Radio Link
Failures and/or handover failures are properly reported to a
network.
Id. at 4:16–19 (emphasis added). By receiving and detecting the global cell
identifier in the handover command message, the mobile terminal may not
need to decode system information transmitted from the target cell in order
to determine the global cell identifier of the target cell. Id. at 19:24–26.
Instead, the mobile terminal may determine the identity and location of the
target cell from the global cell identifier provided to the mobile terminal by a
source cell in the handover command message. Id. at 19:26–30. The
Specification further describes that the mobile terminal may “more
efficiently and reliably generate RLF reports in instances in which an RLF
may occur after a handover attempt” since the mobile terminal may
determine the identity and location of the target cell from the global cell
identifier provided to the mobile terminal from the source cell in the
handover command message. Id. at 19:27–30.
Discussion
We have considered Appellant’s arguments (Appeal Br. 11–14; Reply
Br. 4–6) in light of the Examiner’s findings and explanations (Final Act. 3–
13; Ans. 3–9). For the reasons set forth below, we are not persuaded of
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Examiner error in the rejection of the pending claims, and we, therefore,
sustain the Examiner’s rejections.
Appellant argues the rejection of independent claims 29, 34, 41, 42,
45, and 48 collectively with regard to the Examiner’s rejection of claim 29
under 35 U.S.C. § 103(a). Appeal Br. 11–14. Appellant does not separately
argue patentability for the dependent claims. Id. at 14–15. Therefore, based
on Appellant’s arguments, we decide the appeal of claims 29–48 based on
claim 29 alone. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). We adopt as our
own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Act. 3–4) and (2) the reasons set forth
by the Examiner in the Examiner’s Answer in response to Appellant’s
Appeal Brief (Ans. 3–9). We concur with the conclusions reached by the
Examiner, and we highlight the following for emphasis.
In rejecting claim 29 over the combination of AAPA and Hapsari, the
Examiner finds AAPA teaches or suggests most limitations of the claim
including, “receiving, at a user equipment, a handover command message . .
. from a source cell” and “generating, at the user equipment, at least one
radio link failure report, the at least one radio link failure report including
the received cell global identifier of the target cell.” Final Act. 3–4 (citing
Spec. ¶¶ 8, 9, 13, 14). The Examiner finds AAPA does not disclose the
limitation reciting “wherein the handover command message includes a cell
global identifier of the target cell,” for which the Examiner further relies on
Hapsari. Id. at 4 (citing Hapsari ¶¶ 40–43, 54). The Examiner finds that by
including Hapsari’s cell global identifier of the target cell in the handover
command of AAPA, the combination of AAPA and Hapsari teaches the
requirement that “the received cell global identifier of the target cell”
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included in “the at least one radio link failure report” is received from a
source cell in a handover command. Id.
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to combine Hapsari’s cell global identifier of the
target cell received in a handover command message with the handover
command of AAPA as a way of solving “the problems of AAPA, paragraph
0013.” Id. According to the Examiner, using Hapsari’s cell global identifier
of the target cell in the handover command of AAPA would have been a
simple substitution of one known element for another. Id. (citing MPEP
§ 2143). The Examiner also explains that such a combination would have
been obvious to try because Hapsari discloses it as one of a few alternatives,
including “the approach of the AAPA.” Id. (citing Hapsari ¶¶ 43–46, 54–
56).
Appellant makes several arguments to contend the Examiner erred.5
First, Appellant asserts that the Examiner erred by relying on the
Background section of the Specification as prior art in rejecting the claims.
Appeal Br. 11, 12; Reply Br. 4. Second, Appellant argues that the Examiner
failed to articulate sufficient motivation to combine Hapsari and the
Specification’s Background section. Appeal Br. 14; Reply Br. 5–6. Third,
Appellant argues that none of the cited prior art teaches “generating . . . the
at least one radio link failure report including the received cell global
identifier of the target cell,” as recited in claim 29. Appeal Br. 13; Reply Br.
4–5. Lastly, Appellant argues that Hapsari’s “global cell ID” is not the “cell

5 Only those arguments made by Appellant have been considered in this
decision. Arguments Appellant did not make are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).
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global identifier” recited in claim 29. Appeal Br. 13–14. We address each
of Appellant’s arguments in turn below.
The Specification’s Background section As Prior Art
An applicant’s statement in the specification that something is prior
art may be used as evidence of obviousness under § 103. In re Nomiya, 509
F.2d 566, 570–71 (CCPA 1975). Appellant asserts that the Examiner erred
by relying on the Specification’s Background section as prior art because
“Applicants have never characterized the Background section as prior art.”
Appeal Br. 11, 12; Reply Br. 4. Appellant further argues that the rejection
of claim 29 should be overturned because “Applicants’ Background section
should be disqualified as prior art.” Reply Br. 4. We are not persuaded by
Appellant’s argument.
First, the Examiner did not rely on the entire Background section as
prior art. Instead, in rejecting claim 29, the Examiner relied on specific
statements in the Background section as Applicant Admitted Prior Art
disclosing specific limitations of claim 29. See Final Act. 3–4 (citing Spec.
¶¶ 8, 9, 13, 14); Ans. 6–8 (citing Spec. ¶¶ 8, 14). Second, it is not necessary
that the exact words “prior art” are used verbatim for an applicant’s
statement to constitute an admission of prior art. See In re Lopresti, 333
F.2d 932, 934 (CCPA 1964) (holding that statements made in the appellants’
appeal brief constituted an admission that the invention of another was prior
art although no words “prior art” were used by appellants); see also Ex parte
Shirley, No. 2009-2352, 2009 WL 1359080, at *11 (BPAI May 14, 2009)
(non-precedential) (declining to “subscribe to a simplistic and formalistic
bright-line rule where a statement in the Specification or elsewhere on the
record is treated as a prior-art admission by an Applicant if, and only if, the
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specific words ‘prior art’ are expressly used verbatim” because “[i]f we were
to adopt such a formalist bright-line rule, patent practitioners would be able
to avoid the legal consequences of making a prior-art admission by merely
substituting for the term ‘prior art,’ euphemisms like ‘related art,’
‘background art,’ ‘conventional art,’ ‘typical art,’ and the like”).
Here, paragraph 9 of the Specification cited by the Examiner states as
follows:
In order to perform RLF reporting, a mobile terminal
typically stores relevant measurement results in an instance in
which the mobile terminal encounters Radio Link Failure. In this
regard, a mobile terminal may store cell measurement results as
well as cell identifications (IDs) at the time that the RLF
occurred. For example, in an E-UTRAN, the RLF report typically
includes information specifying the location where the RLF
occurred. In this regard, the cell identifications may correspond
to location information identifying where the RLF occurred.
However, there may be a problem determining the location in
which a RLF occurred in instances in which a mobile terminal is
handed over from a source cell to a target cell.
Spec. 2:27–35 (emphases added).6 In addition, paragraphs 13 and 14 relied
upon by the Examiner state
Prior to the RPLMN requesting the logged MDT
measurements from the mobile terminal, the source/serving cell
may hand over the mobile terminal to a target cell. As such, the
mobile terminal may desire to make the logged MDT
measurements available to a PLMN of the target cell since the
RPLMN did not request the logged MDT measurements, for
example. However, in order to verify the PLMN of the target
cell, the mobile terminal typically needs to know the PLMN

6 Similar to paragraph 9, paragraph 8 of the Specification describes a mobile
terminal generating a RLF report, which may include information indicating
that a connection between a mobile terminal and a network is lost. Spec.
2:18–27.
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identifier (ID) of the target cell. The PLMN of the target cell is
typically determined from the global cell identity of the target
cell. As described above, the cell global identity of the target cell
is generally decoded from system parameters received from the
target cell and it may take a significant amount of time for the
mobile terminal to decode the cell global identify resulting in a
delay. Moreover, if the duration of the mobile terminal in the
target cell is short or the connection is weak, for example, the
mobile terminal may be unable to decode the cell global identity
and thus may be unable to obtain the PLMN ID of the target cell.
As a consequence, the mobile terminal may be unable to indicate
to the PLMN of the target cell that logged MDT measurements
are available, or the mobile terminal may not know whether it is
allowed to send the measurement log.
Another problem may arise as a result of handover failure.
For instance, in order for a source cell to successfully handover
a mobile terminal to a target cell there is typically a handover
time period in which the mobile terminal must indicate to the
target cell that it has completed a connection reconfiguration
related to received handover parameters. If this time period
expires, before the mobile terminal confirms that it completed
the connection reconfiguration related to the received handover
parameters, the handover may fail. In an instance in which the
handover fails, the mobile terminal may be unable to report the
handover failure to the target cell since the mobile terminal may
not know the cell global identity of the target cell. The mobile
terminal may not know the cell global identity of the target cell
since the mobile terminal may be unable to decode system
information received in the handover parameters before the
expiration of the handover time period in order to obtain the cell
global identity of the target cell.
Spec. 3:21–4:4. In view of the words “typically” and “generally” used in
these paragraphs, we agree with the Examiner that the statements in these
paragraphs constitute an admission by Appellant that the following features
or techniques were known in the field at the time of the effective filing date
of the instant Application: (1) a mobile terminal receiving a handover
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command message from a source cell indicating a handover and a
connection reconfiguration from the source cell to a target cell; (2) a mobile
terminal obtaining the cell global identity of the target cell by decoding
system parameters received from the target cell; and (3) a mobile terminal
generating and providing a Radio Link Failure report, e.g., in an E-UTRAN,
including information specifying the location where the RLF occurred, such
as the cell identifications identifying where the RLF occurred. See Final
Act. 3–4 (citing Spec. ¶¶ 9, 13, 14).
Thus, the Examiner’s rejection establishes prima facie evidence of the
claim’s unpatentability, which shifts the burden to Appellant to rebut the
rejection. See In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011)
(citing In re Kumar, 418 F.3d 1361, 1366 (Fed. Cir. 2005)). Here, Appellant
cannot rebut the rejection by merely arguing that the term “prior-art” was
never used verbatim. See Shirley, at *12. Appellant may rebut the rejection
with credible and sufficient evidence that the disclosure or the statement
upon which the Examiner relies does not constitute a prior-art admission.
For example, Appellant can affirmatively state and provide credible
evidence that the disclosure in question was Appellant’s own work,7 not
publicly disclosed more than a year prior to the Application’s filing.8

7 See, e.g., 35 U.S.C. § 102(a) (2012) (barring the grant of a patent if the
invention was known or used by others in this country or described in a
printed publication anywhere before the invention thereof by the applicant);
35 U.S.C. § 102(e) (2012) (barring the grant of a patent if the invention was
described in particular types of patent applications or patents by another
before the invention thereof by the applicant).
8 See, e.g., 35 U.S.C. § 102(b) (2012) (barring the grant of a patent if the
invention was patented or described in a printed publication in this or a
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For the reasons discussed below, Appellant does not provide sufficient
explanation or evidence to persuade us of Examiner error.
Although Appellant discusses the Background section of the
Specification and argues that it “never characterized the Background section
as prior art” (Appeal Br. 11–12; Reply Br. 4), Appellant does not state
affirmatively that the paragraphs relied upon by the Examiner disclose
Appellant’s own work. See generally Appeal Br.; Reply Br. In particular,
Appellant does not explain or provide credible evidence that E-UTRAN is
Appellant’s own work. Nor does Appellant assert or provide credible
evidence that Appellant’s own work produced a mobile terminal receiving a
handover command message, obtaining the cell global identity of the target
cell by decoding system parameters received from the target cell, and
generating and providing a Radio Link Failure report including information
specifying the location where the RLF occurred.
Having reviewed the substantive content of the Specification and the
record as a whole, we determine that, in the absence of a satisfactory
explanation and evidence that the Background paragraphs cited by the
Examiner disclose Appellant’s own work, the Examiner did not err in
finding that the statements in the Background paragraphs relied upon by the
Examiner constitute Appellant Admitted Prior Art that can be used as
evidence of obviousness under § 103. See MPEP § 2129(I)9 (instructing that
“the examiner must determine whether the subject matter identified as ‘prior
art’ is applicant’s own work, or the work of another. In the absence of

foreign country or in public use or on sale in this country, more than one
year prior to the date of the application for patent in the United States).
9 MPEP § 2129(I), 8th Edition, Revision 9 (August 2012).
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another credible explanation, examiners should treat such subject matter as
the work of another”) (emphasis added); see also Shirley, at *11 (“When a
review of the record as a whole reasonably implies that—or at least raises a
reasonable question of whether—a particular disclosure or statement
constitutes a prior-art admission, an Examiner may use such a disclosure or
statement in formulating prior-art rejections of claims under 35 U.S.C.
§§ 102 or 103. This is so even if the specific words ‘prior art’ are not
expressly used verbatim.”).
Motivation to Combine
Appellant argues that a person of ordinary skill in the art would not
have been motivated to combine the Specification’s Background section
with Hapsari because “Hapsari fails to provide a reason or suggestion to
improve the accuracy and/or reliability of radio link failure reports, as found
in Applicants’ Background section.” Appeal Br. 14. Similarly, Appellant
argues that a person of ordinary skill in the art would not have been
motivated to combine Hapsari with the Background section because Hapsari
does not mention “the noted-problem associated with reporting the location
of a radio link failure.” Reply Br. 6.
We are not persuaded by Appellant’s argument because “[i]n
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Rather, “any
need or problem known in the field of endeavor at the time of invention
and addressed by the patent can provide a reason for combining the
elements in the manner claimed.” KSR, 550 U.S. at 420. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
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there existed at the time of invention a known problem for which there was
an obvious solution encompassed by the patent’s claims.” Id. at 419–20.
Here, the Examiner concludes that it would have been obvious to a
person of ordinary skill in the art to combine Hapsari’s cell global identifier
of the target cell received in a handover command message with the
handover command of AAPA “to solve the problems of AAPA, paragraph
0013.” Final Act. 4. According to the Examiner, the Background section of
the Specification describes “problems occurring/common in the prior
art/state of the art.” Ans. 8 (citing Spec. ¶ 14). The cited paragraphs
describe that “the cell global identity of the target cell is generally decoded
from system parameters received from the target cell” (Spec. ¶ 13 (emphasis
added)) and that “[i]n an instance in which the handover fails, the mobile
terminal may be unable to report the handover failure to the target cell since
the mobile terminal may not know the cell global identity of the target cell
(id. ¶ 14). Appellant does not dispute the Examiner’s finding that these
paragraphs describe “problems occurring/common in the prior art/state of
the art.” See generally Appeal Br.; Reply Br. Thus, we find that the
Examiner appropriately relies on paragraphs 13 and 14 of the Specification’s
Background as providing a “need or problem known in the field of endeavor
at the time of invention and addressed by the patent”—i.e., the difficulty
in obtaining the cell global identity of the target cell when the handover fails
or a Radio Link Failure occurs during a handover—which “can provide a
reason for combining” the teachings of AAPA and Hapsari in the manner
recited in claim 29. See KSR, 550 U.S. at 420. The Examiner articulates
two reasons for the combination: (1) simple substitution of one known
element for another, and (2) obvious to try. Final Act. 4.
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To prove obviousness under an obvious to try theory, there must be a
showing (1) that “there is a design need or market pressure to solve a
problem” and (2) that “there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue the known
options within his or her technical grasp.” KSR, 550 U.S. at 421.
Here, the Examiner finds that Hapsari discloses “a few alternatives”
for obtaining or receiving the cell global identity of the target cell by the
mobile terminal, including (1) receiving the cell global identifier of the target
cell in a handover command message and (2) “the approach of the AAPA,”
i.e., obtaining the cell global identity of the target cell by decoding the
system parameters received from the target cell. Final Act. 4 (citing Hapsari
¶¶ 43–46, 54–56). The Examiner explains that a person of ordinary skill in
the art would have been motivated to “include the cell global identifier of
Hapsari in the handover command of AAPA to solve the problems of
AAPA” because the combination would have been obvious to try “as one of
only a few alternatives” disclosed in Hapsari, including “the approach of the
AAPA.” Id.
The cited portions of Hapsari describes a handful of alternative
methods of a mobile station obtaining the global cell ID of the target cell (or
target base station), including (1) acquiring the global cell ID of the target
cell from the handover command (Hapsari ¶¶ 43, 54), (2) acquiring it
“through notification by the handover target radio base station” after the
handover is completed successfully (id. ¶¶ 44, 55)—which appears to be
similar to the conventional method described in the Specification (i.e., “the
approach of the AAPA”), and (3) receiving “the broadcast information on
the second cell,” i.e., the target cell (id. ¶¶ 45, 46, 56).
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We understand the Examiner’s position to be that a person of ordinary
skill in the art would have been motivated to combine Hapsari’s cell global
identifier of the target cell received in a handover command message with
the handover command of AAPA to solve the “problems occurring/common
in the prior art/state of the art” described in AAPA—i.e., the difficulty in
obtaining the cell global identity of the target cell when the handover fails or
a Radio Link Failure occurs during a handover—by trying or choosing one
of the methods disclosed in Hapsari, i.e., receiving the cell global identifier
of the target cell in a handover command message, among the few
alternatives described in Hapsari, including “the approach of the AAPA.”
Final Act. 4; Ans. 8. The Examiner further explains that because “each of
the structural elements of the claimed invention was known and all of the
claimed functions to be performed were also known,” “it would only require
ordinary skill in the art to perform” the methods disclosed in Hapsari.
Ans. 8. As a corollary, we find that the finite solutions described in Hapsari
are predictable solutions because they are established solutions already
known to those ordinarily skilled in the art. Thus, we agree with the
Examiner’s obvious to try rationale to combine AAA and Hapsari in the
manner described by the Examiner.
We also agree with the Examiner that replacing AAA’s method of
obtaining the cell global identity of the target cell (by decoding system
parameters received from the target cell) with Hapsari’s method of receiving
the target cell identity in a handover command message would have been a
mere substitution of one element for another known in the field. Final Act. 4.
Where, as here “[an application] claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
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in the field, the combination must do more than yield a predictable result.”
KSR, 550 U.S. at 416. In this regard, Appellant provides no evidence that
replacing AAA’s method of obtaining the cell global identity of the target
cell with Hapsari’s method of receiving the target cell identity in a handover
command message yields an unexpected result or was beyond the skill of one
having ordinary skill in the art.
Lastly, Appellant argues that “the Examiner . . . used impermissible
hindsight to combine Applicants’ teachings with Hapsari.” Appeal Br. 14.
We are not persuaded by Appellant’s argument because “[a]ny judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning, but so long as it takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s disclosure,
such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971).
Here, the Examiner relies upon the disclosures of AAA and Hapsari to
explain that a person of ordinary skill in the art at the time of the
Application’s filing would have been motivated to combine AAA and
Hapsari in the manner described by the Examiner. See, e.g., Final Act. 4;
Ans. 8. This is not evidence of hindsight bias. Appellant does not identify,
and we do discern, any particular knowledge used by the Examiner in his
combination of AAA and Hapsari that was gleaned only from the
Specification’s disclosure and was not within the level of ordinary skill in
the art at the time of the filing.
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In sum, we determine that the Examiner articulates sufficient reason,
supported by rational underpinning, for combining the teachings of AAA
and Hapsari in the manner described by the Examiner.
“generating . . . the at least one radio link failure report including the
received cell global identifier of the target cell”
Next, Appellant argues that neither the Specification’s Background
section nor Hapsari teaches or suggests the claim 29’s recitation “generating
. . . the at least one radio link failure report including the received cell global
identifier of the target cell,” where the “received cell global identifier” is
received in “a handover command message . . . from a source cell.” Appeal
Br. 13; Reply Br. 4–5.
Appellant’s argument is not persuasive because the Examiner relies
on the combination of AAA and Hapsari as teaching or suggesting
“generating, at the user equipment, at least one radio link failure report, the
at least one radio link failure report including the received cell global
identifier of the target cell,” where “the received cell global identifier of the
target cell” included in “the at least one radio link failure report” is received
in a handover command from a source cell. Final Act. 3–4; Ans. 7.
Appellant’s argument does not overcome the Examiner’s finding of
obviousness because “[n]on-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986)).
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“cell global identifier”
Appellant argues that Hapsari’s global cell ID is not the “cell global
identifier” recited in claim 29 because the claimed “cell global identifier”
includes “a Mobile Country Code (MCC), Mobile Network Code (MNC),
Location Area Code (LAC) and a cell identifier, all of which uniquely
identify the cell.” Appeal Br. 13 (citing Spec. ¶ 71). The Examiner
responds that “a Mobile Country Code (MCC), Mobile Network Code
(MNC), Location Area Code (LAC)” are not recited in claim 29 and that
“limitations from the specification are not read into the claims.”
We agree with the Examiner. Paragraph 71 of the Specification cited
by Appellant states
The global cell identifier (e.g. CGI, E-CGI, etc.) may be a
unique identifier of a cell site in cellular network(s) (e.g.,
E-UTRAN, UTRAN, etc.). The global cell identifier may
include data (e.g., a location identity code) indicating a location
of a corresponding cell in a cellular network. Additionally or
alternatively, in an example embodiment, the global cell
identifier may identify a country (e.g., Mobile Country Code
(MMC) = 310), a corresponding network (e.g., mobile network
code (MNC) = 380), a corresponding PLMN(s), a location area
code (LAC) (e.g., LAC = 34512), a specific cell (e.g., cell
identifier = 23411) or sector, and any other suitable data
corresponding to a cell(s).
Spec. 16:3–9 (emphases added). Thus, the Specification describes that a
global cell identifier is a “unique identifier of a cell site” that “[a]dditionally
or alternatively, in an example embodiment,” may include a Mobile Country
Code (MCC), Mobile Network Code (MNC), and Location Area Code
(LAC).
“Under a broadest reasonable interpretation, words of the claim must
be given their plain meaning, unless such meaning is inconsistent with the
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specification and prosecution history.” Trivascular, Inc. v. Samuels, 812
F.3d 1056, 1062 (Fed. Cir. 2016) (citing Straight Path IP Grp., Inc. v. Sipnet
EU S.R.O., 806 F.3d 1356, 1362 (Fed. Cir. 2015)). In general “a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (citation omitted). Established exceptions to this general rule include
lexicography and disavowal. See, e.g., GE Lighting Sols., LLC v. AgiLight,
Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“the specification and
prosecution history only compel departure from the plain meaning in two
instances: lexicography and disavowal”) (citation omitted).
Here, Appellant does not argue lexicography or disavowal. Indeed,
Appellant does not address the Examiner’s explanation that “a Mobile
Country Code (MCC), Mobile Network Code (MNC), Location Area Code
(LAC)” are not recited in claim 29 and that “limitations from the
specification are not read into the claims.” See generally Reply Br.
Hapsari describes that “a global cell ID . . . can uniquely identify the
second cell,” i.e., the target cell. Hapsari ¶ 40 (emphasis added). Thus, we
agree with the Examiner that Hapsari’s global cell ID teaches the “cell
global identifier” of the target cell recited in claim 29 under a broadest
reasonable interpretation of the term.
CONCLUSION
For the foregoing reasons, we are not persuaded of Examiner error in
the rejection of claim 29. We, therefore, sustain the Examiner’s rejections
on this record. The decision of the Examiner to reject claims 29–48 under
35 U.S.C. § 103 is affirmed.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
29, 30, 34,
35, 41, 42,
45, 48
103 AAPA, Hapsari 29, 30, 34,
35, 41, 42,
45, 48

31, 32, 36,
37, 43, 46
103 AAPA, Hapsari,
Wang
31, 32, 36,
37, 43, 46

33, 38–40,
44, 47
103 AAPA, Hapsari,
Wang, Sammour
33, 38–40,
44, 47

Overall
Outcome
29–48

TIME PERIOD FOR 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED