Kampmann, Dirk et al.

Patent Trials and Appeals Board

Feb 5, 2020

13319147 - (D) (P.T.A.B. Feb. 5, 2020)

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.
13/319,147 01/18/2012 Dirk Kampmann 4015-7855 / P29298-US2 1039
24112 7590 02/05/2020
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
COSME, NATASHA W
ART UNIT PAPER NUMBER
2465
MAIL DATE DELIVERY MODE
02/05/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DIRK KAMPMANN, KARL HELLWIG, PHILLIP HODGES
and PAUL SCHILWA-BERTLING
____________________

Appeal 2019-000947
Application 13/319,147
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, KALYAN K. DESHPANDE, and
DANIEL N. FISHMAN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 24–28, 32–35, 37–39, 41–45, 47 and
50–56. Appeal Br. 6–18. Claims 1–23, 29, 36, 40, 46, 48, and 49 have been
cancelled (Final Act. 2), and claims 30 and 31 have been objected to as
being dependent upon a rejected base claim (Final Act. 28). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies the real party in interest as Telefonaktiebolaget L M
Ericsson (publ). Appeal Br. 2.
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Application 13/319,147

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CLAIMED SUBJECT MATTER
Claims 37 and 42 are is illustrative of the claimed subject matter
(emphasis, formatting, and bracketed material added):
37. A Radio Access Network adapted for providing local
switching for call legs of a call, comprising:
[A.] a receiver circuit configured to receive a handover
message from a Core Network,
[i.] the handover message comprising a call identifier
for a leg of a call,
[ii.] wherein the call identifier uniquely identifies the
first leg of the call to be handed over to the Radio
Access Network;
[B.] memory configured to store the received call
identifier;
[C.] a control circuit operatively connected to the receiver
circuit and the memory, and being configured to:
[i.] compare the received call identifier with
previously stored call identifiers for call legs of
calls supported by the Radio Access Network
Node;
[ii.] determine if the received call identifier matches
one of the previously stored call identifiers; and
[iii.] provide local switching between the call legs that
correspond to the matching call identifiers.
42. A Core Network Node in a Core Network adapted for
providing local switching for call legs of a call,
comprising:
[A.] a receiver circuit configured to[:]
[i.] receive or [] generate, in the course of a handover
for a leg of a call, a first call identifier generated
by the Core Network for the leg of the call,
[ii.] wherein the first call identifier uniquely identifies
the leg of the call to be handed over;
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[B.] memory configured to store the first a first call
identifier;
[C.] a control circuit operatively connected to the receiver
circuit and the memory, and the control circuit being
configured to:
[i.] identify a respective Radio Access Network for the
leg of the call;
[ii.] compare the first call identifier with previously
stored call identifiers for call legs of calls
supported by the identified Radio Access
Network;
[iii.] determine if the first call identifier matches one
of the previously stored call identifiers; and
[iv.] initiate, in the identified Radio Access Network,
local switching of the call legs that correspond to
the matching call identifiers.

REFERENCES2
The prior art relied upon by the Examiner is:
Name Reference Date
Highland US 5,970,134 Oct. 19, 1999
Costa US 2002/0097693 A1 July 25, 2002
Segal US 2005/0119005 A1 June 02, 2005
Tamura US 2008/0108356 A1 May 08, 2008
Parolari US 2011/0110295 A1 May 12, 2011

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
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Application 13/319,147

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REJECTIONS3
A.
The Examiner rejects claims 24–27, 32–34, 37, 38, 41–44, 47, 50, 52,
and 54, under 35 U.S.C. § 103 as being unpatentable over the combination
of Costa and Segal. Final Act. 6–22.
Appellant argues separate patentability for claim 37 and 42. To the
extent that Appellant discusses claims 24, 32, 47, and 50, Appellant merely
repeats or references the arguments directed to claims 37 and 42. Such a
repeated argument (or referenced argument) is not an argument for “separate
patentability.” Thus, Appellant does not present separate arguments for
claims 24, 32, 47, and 50. We select claims 37 and 42 as the representative
claims for this rejection. Except for our ultimate decision, we do not address
claims 24–27, 32–34, 38, 41, 43, 44, 47, 50, 52, and 54 further herein.
B.
The Examiner rejects claims 28, 35, 39, and 45 under 35 U.S.C. § 103
as being unpatentable over the combination of Costa, Segal, and Highland.
Final Act. 22–24.
Appellant does not present arguments for claims 28, 35, 39, and 45.
Thus, the rejection of these claims turns on our decision as to claims 37 and
42. Except for our ultimate decision, we do not address the § 103 rejections
of claims 28, 35, 39, and 45 further herein.

3 For convenience, we refer to all 35 U.S.C. § 103(a) rejections herein as
rejections under 35 U.S.C. § 103.
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C.
The Examiner rejects claims 51 and 56 under 35 U.S.C. § 103 as
being unpatentable over the combination of Costa, Segal, and Parolari. Final
Act. 25–26.
Appellant does not present arguments for claims 51 and 56. Thus, the
rejection of these claims turns on our decision as to claim 37. Except for our
ultimate decision, we do not address the § 103 rejections of claims 51 and 56
further herein.
D.
The Examiner rejects claims 53 and 55 under 35 U.S.C. § 103 as
being unpatentable over the combination of Costa, Segal, and Tamura. Final
Act. 26–28.
We select claim 53 as the representative claim for this rejection.
Appellant does not argue separate patentability for claim 55. Except for our
ultimate decision, we do not address the § 103 rejections of claim 55
further herein.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief and Reply Brief arguments.
A.1.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 37 under 35 U.S.C. § 103.
Rather than utilizing a call identifier that uniquely identifies a
first leg of a call, Costa teaches local switching based on
identification of a call generally and not a particular leg of a
call. For instance, Costa teaches that a radio network controller
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provides information when setting up a call including its own
radio network controller identifier and the mobile identifier IMSI
of a user equipment. ¶ [0021]; Fig. 2 (reproduced below). The
Office errs in asserting that Costa’s IMSI identifies a particular
leg of a call. See Final Office Action, mailed Dec. 12, 2017, p.
4, ll. 2-3. Costa’s mobile identifier is not used to identify a leg of
a call as alleged by the Office. The IMSI would apply to all legs
of the call originating from the user equipment.
Appeal Br. 8 (additional emphasis added).
We are unpersuaded by Appellant’s argument. The Specification
describes call legs as follows:
[T]he call once established will consist of two call legs, a first
call leg from the originating, first UE 300 [user equipment 300]
to the Radio Access Network 10, and a second call leg from the
Radio Access Network 10 to the terminating, second UE 310.
Spec. 5, ll. 16–18. Costa describes a call as follows:
[B]oth of the mobiles 18, 19 have an International Mobile
Switching Identifier (IMSI) which will be referred to as UE 1
[user equipment 1] and UE 2 respectively, and that mobile 18
initiates a call to mobile 19. In the arrangement according to the
invention as shown in FIG. 2, the RNC 22 [radio network
controller] provides on the uplink to the CN 10 [core network]
when setting up the call from the mobile 18 its own identifier
RNC ID, and the mobile identifier IMSI UE 1, as indicated at
reference 30. The RNC 22 also stores this information. The CN
10 sends this information on the downlink, reference 32, and it is
received by the same RNC 22. Similarly, data related to mobile
19, i.e. the identity of RNC 10, RNC ID, and the identifier of
the mobile 19, IMSI UE 2, are also sent by the RNC 22 to the
CN 10, reference 34, and are received from the CN, reference 36.
Costa ¶ 21 (additional emphasis added). We agree with the Examiner’s
finding that Costa teaches “receiving a . . . message from a Core Network,
the ... message comprising a call identifier for a first leg of a call.” Final
Act. 7.
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To the extent that Appellant is arguing the Examiner fails to show
some “particular” limitation be placed on the claim by the use of the label
“first” in the phrase “the first leg of the call,” we disagree. Appellant
describes “a first call leg from the originating, first UE 300 to the Radio
Access Network 10” (Spec. 5 (emphasis added)) and Costa teaches the same
first call leg as described at paragraph 21 and shown at Figure 2.
A.2.
Also, Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 37 under 35 U.S.C. § 103.
Segal never teaches any sort of identifier to uniquely identify a
call leg. The Office in rejecting claim 37 cites to Segal’s
teachings in paragraph [0033] that refers to identifying to a user
of a wireless communication unit the on-hold call itself coming
into the target network as different from other calls. Final Office
Action, mailed Dec. 12, 2017, p. 14. Thus, the identifier in
Segal, like the identifier in Costa, does not uniquely identify the
first leg of the call but rather the call generally. For instance,
Segal suggests a “call information” including the “calling party
identifier,” “the number of the communication unit” or “CLI
(calling line identifier) of the network switch” (i.e. the caller’s
phone number). Exhibit A. Thus, all of this information would
be the same for each leg of the call because it is call information
and not call leg information.
Appeal Br. 8–9 (additional emphasis added).
We note that Segal states:
In overview, the present disclosure concerns wireless
communication devices or units, often referred to as
communication units, such as portable or cellular phones or
handsets or two-way radios and the like and communication
networks or systems that provide services such as voice and data
communication services to or for such communication units.
Segal ¶ 11 (emphasis added).
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We are unpersuaded by Appellant’s argument. We determine the
calling line identifier (CLI), as stated in Segal ¶ 33, identifies “the number of
the communication unit itself.” Thus, we determine the CLI identifies the
first call leg and not the call generally as argued by Appellant.
A.3.
Further, Appellant raises the following argument in contending that
the Examiner erred in rejecting claim 37 under 35 U.S.C. § 103.
According to the Office, “Segal was introduced to clarify that it's
well known to have a handover and be able to distinguish the first
leg call from other fixed calls.” Id. at p. 4. The existence of
handover does not explain how or why it would be obvious to
receive a handover message comprising a call identifier that
uniquely identifies the first leg of the call to be handed over to
the Radio Access Network. The Office’s rationale to modify
Costa in view of Segal fares no better. . . . The Office rationale
to modify Costa in view of Segal is related to issues involved in
handover of an already set up call (an “on-hold call”). . . . The
Office has not explained why this would be applicable to Costa’s
teachings related to call set-up and why or how you would
modify Costa’s exchange of an IMSI during call set-up to instead
have a handover message comprising a call identifier that
uniquely identifies the first leg of a call to be handed over to the
Radio Access Network. Certainly this modification would
change the principle of operation of Costa related to a call setup.
Appeal Br. 11 (emphasis added).
Essentially, Appellant asserts that extending the benefits of Costa’s
call setup process to call handovers such as Segal’s would result in
“chang[ing] the principle of operation of Costa related to a call setup.”
Beyond this assertion, we do not find where Appellant explains why this
result would occur, and our review does not find any resulting change in
Costa’s principle of operation. Therefore, we are unpersuaded by
Appellant’s argument.
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B.
Also, Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 42 under 35 U.S.C. § 103.
The Office errs in citing to Costa’s radio network
controller as the recited Core Network Node. Office Action, pp.
15-16. A radio network controller is not in a Core Network. This
is well-known and explicitly shown in Costa in which the RNC
is separate from the core network (CN) 10. . . .
The Office does not provide any explanation as to why it
would be obvious to implement the claimed core network node
based on teachings related to a radio network controller.
Appeal Br. 12.
Stated briefly, Appellant argues “Segal fails to teach how or why it
would be obvious to implement Costa’s comparison in a core network.”
Appeal Br. 13 (first full paragraph, last sentence). We disagree. Segal
discloses that its key point is moving system functionality, particularly local
switching control, between the core network and the radio network
controller as is “appropriate.” See Segal ¶¶ 5–8. We determine that,
contrary to Appellant’s argument, Segal does establish that it would be
obvious to implement the claimed core network node functionality based on
teachings related to functionality of a radio network controller.
C.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 53 under 35 U.S.C. § 103.
The global call reference identifier in Tamura is not
generated in a Core Network. It also is not used to identify a call
leg but is used to signal that a message is for all calls. Further, it
would not be obvious how or why you would use such an
identifier to uniquely identify a first leg to be handed over to a
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RAN when the identifier taught in Tamura is used to signal no
distinctions between calls and would apply to all calls.
Appeal Br. 17 (emphasis added).
We are unpersuaded by Appellant’s argument. Appellant does not
address the actual reasoning of the Examiner’s rejection. Instead, Appellant
attacks the Tamura reference singly for lacking a teaching that the Examiner
relied on a combination of Costa, Segal, and Tamura to show. In particular,
the rejection does not rely on Tamura for teaching the “global call reference
identifier . . . generated in a Core Network” (Appeal Br. 17) aspect disputed
by Appellant. Rather, the Examiner relied on the combination of Costa and
Segal to show “the received call identifier is based on a . . . identifier
generated within the Core Network” (Final Act. 27), and relied on Tamura to
show a global call reference identifier was known. The Examiner reasoned
that it would have been obvious to modify the call identifier of Costa/Segal
to include functionality from Tamura’s global call reference identifier (i.e.,
identify the functions of the message transmitted). Final Act. 27. One
cannot show nonobviousness by attacking references individually when the
rejection is based on a combination of references. In re Merck & Co. Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413,
425 (CCPA 1981) (explaining the relevant inquiry is whether the claimed
subject matter would have been obvious to those of ordinary skill in the art
in light of the combined teachings of those references).

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CONCLUSION
The Examiner has not erred in rejecting claims 24–28, 32–35, 37–39,
41–45, 47 and 50–56 as being unpatentable under 35 U.S.C. § 103.
The Examiner’s rejections of claims 24–28, 32–35, 37–39, 41–45, 47
and 50–56 as being unpatentable under 35 U.S.C. § 103 are affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
24–27, 32–
34, 37, 38,
41–44, 47,
50, 52, 54
103 Costa, Segal 24–27, 32–
34, 37, 38,
41–44, 47,
50, 52, 54

28, 35, 39,
45
103 Costa, Segal, Highland 28, 35, 39,
45

51, 56 103 Costa, Segal, Parolari 51, 56
53, 55 103 Costa, Segal, Tamura 53, 55
Overall
Outcome

24–28, 32–
35, 37–39,
41–45, 47,
50–56

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