Koskinen, Jussi Pekka et al.

Patent Trials and Appeals Board

Jun 22, 2020

2019005095 (P.T.A.B. Jun. 22, 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.
14/237,868 02/07/2014 Jussi Pekka Koskinen NC76570-US-PCT 2718
12358 7590 06/22/2020
Mintz Levin/Nokia Technologies Oy
One Financial Center
Boston, MA 02111
EXAMINER
HANNAN, B M M
ART UNIT PAPER NUMBER
3664
NOTIFICATION DATE DELIVERY MODE
06/22/2020 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
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte JUSSI PEKKA KOSKINEN and
JARKKO T. KOSKELA
___________________

Appeal 2019-005095
Application 14/237,868
Technology Center 3600
____________________

Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

KAUFFMAN, 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 41–43, 45–48, 50–53, 55–58, 60, 61,
and 63–68. Non-Final Act. 5–30. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

1 We use the word “Appellant” to refer 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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Claim 41 is reproduced below (italics added to emphasize the
limitation at issue).
41. A method comprising:
determining that a user equipment is in an any cell
selection state, the user equipment in the any cell selection state
is not camped on any cell and is attempting to identify an
acceptable cell associated with any public land mobile network
to camp on;
in response to determining that the user equipment is in
the any cell selection state, determining that a current physical
cell identification split is invalid, the current physical cell
identification split comprising information identifying a range
of closed subscriber group cells; and
in response to the determination that the current physical
cell identification split is invalid, voiding the current physical
cell identification split to at least prevent the current physical
cell identification split from being utilized by the user
equipment to identify the acceptable cell.

REJECTIONS
I. Claims 41, 45–48, 51, 55–58, 61, 64, and 66 are rejected under
35 U.S.C. § 103 as unpatentable over Jung and Kwun.2 Non-Final Act. 5–
22.
II. Claims 42, 43, 50, 52, 53, 60, 63, and 68 are rejected under 35
U.S.C. § 103 as unpatentable over Jung, Kwun, and Maeda ʼ286.3 Non-
Final Act. 22–28.

2 Jung (US 2010/0130215 A1, published May 27, 2010); Kwun
(US 2011/0190000 A1, published Aug. 4, 2011).
3 Maeda ʼ286 (EP 2 346 286 A1, published July 20, 2011). Although the
Examiner’s rejection is based on Maeda ʼ286, the Examiner’s citations refer
to Maeda ʼ732 (US 2001/0216732 A1, published Sept. 8, 2011), which is the
U.S. equivalent of Maeda ’286. Non-Final Act. 22.
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III. Claims 65 and 67 are rejected under 35 U.S.C. § 103 as
unpatentable over Jung, Kwun, and Singh.4 Non-Final Act. 28–30.

ANALYSIS
Claims 41, 45–48, 51, 55–58, 61, 64, and 66
The Examiner concludes that the subject matter of claims 41, 45–48,
51, 55–58, 61, 64, and 66 would have been obvious from the combined
teachings of Jung and Kwun. Non-Final Act. 5–22. Independent claim 41
recites the step, “in response to determining that the user equipment is in the
any cell selection state, determining that a current physical cell identification
split is invalid, the current physical cell identification split comprising
information identifying a range of closed subscriber group cells.” Put
differently, claim 41 defines a physical cell identification (PCI) split as a
range of closed subscriber group cells, and requires determining that a
current PCI split is invalid. Independent claims 51 and 61 recite similar
limitations.
For context, the Background of Appellant’s Specification explains
that a PCI split can become invalidbased on a number of factors, such as
when user equipment (UE)5 move to another location. Spec. 1–2. In this
scenario, the UE continues to use the current PCI split to find an available
cell to camp on, even though the split is invalid. Id. at 2. In so doing, the
UE may be unable to find an available cell, resulting in the UE being unable
to connect to the network. Id. at 2; see also id. (summarizing the invention
as deleting or not using a PCI split when it is no longer valid in a current

4 Singh (US 2010/0120426 A1, published May 13, 2010).
5 E.g., a mobile device.
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location, and further describing that an inability to connect to an access point
is a cause for determining that the mobile terminal is at a location in which
the split is not valid).
In rejecting independent claims 41, 51, and 61, the Examiner finds
that paragraph 84 and Figures 9–10 of Jung teach the argued limitation.
Non-Final Act. 6, 12, 19. Jung teaches that each closed subscriber group
(CSG) has its own identification number called a CSG identify (CSG ID).
Jung ¶ 83. The UE has a CSG list to which the UE belongs as a member.
Id. A base station delivers the CSG ID of the CSG to a UE, and the UE uses
the CSG list to determine whether the UE is a member of the corresponding
CSG cell and the cell is, thus, accessible. Id. ¶¶ 79, 84.
Figures 9 and 10 of Jung each shows a base station sending a CSG
indicator and a CSG ID to the UE. The UE determines from the CSG
indicator that the corresponding cell is a CSG cell, and ultimately concludes
that the UE is not a CSG member of the CSG cell, i.e., the corresponding
cell is access-restricted. Id. ¶¶ 110, 112, Figs. 9–10. However, the manner
in which a CSG cell is determined to be access-restricted differs in the two
embodiments. In Figure 9 the UE has an accessible CSG list. Id. ¶ 109.
Therefore, after determining that the corresponding cell is a CSG cell, the
UE checks the CSG identity received from the base station against the
accessible CSG list to determine whether the UE is a CSG member of the
cell. Id. ¶ 110. In contrast, in Figure 10, the UE does not have an accessible
CSG list. Id. ¶111. In that case, after determining that a corresponding cell
is a CSG cell, the UE regards the cell as access-restricted without any check
of the CSG identity received from the base station. Id. ¶ 112. Because both
scenarios involve determining that the corresponding cell is access-
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restricted, the UE does not perform an initial connection process between the
UE and the base station. Id. ¶¶ 110, 112, Figs. 9–10.
The Examiner construes Jung’s CSG ID as the PCI split. Non-Final
Act. 6, 12, 19. However, Jung’s CSG ID identifies one closed subscriber
group cell (see Jung ¶ 83) and, as such, does not teach the claimed PCI split
“comprising information identifying a range of closed subscriber group
cells,” as recited in claim 41, and similarly recited in claims 51 and 61.
The Examiner further finds that Jung’s disclosure of determining
whether a corresponding cell is access-restricted based on the CSG ID
received from the base station teaches determining that a PCI split is invalid.
See Non-Final Act. 6 (citing Jung ¶ 84, Figs. 9–10). However, these
portions of Jung, at best, teach using a current PCI split, i.e., an available
CSG list, to determine whether the UE is a member of the corresponding
CSG cell. Jung ¶¶ 83–84, 109–110, Fig. 9. The portions of Jung relied on
by the Examiner do not teach or suggest determining that a current PCI split
itself is invalid, much less making such determination in response to
determining that the user equipment is in the any cell selection state, as
required by claims 41, 51, and 61.
The Examiner acknowledges that Jung does not teach that a PCI split
comprises information identifying a range of closed subscriber group cells,
as required by claims 41, 51, and 61, and finds that Kwun teaches this aspect
of the limitation. Non-Final Act. 7–8 (citing Kwun ¶¶ 24, 35, 38, 42), 13–
14, 20–21. Even if one of ordinary skill in the art were to combine Jung and
Kwun in the manner suggested by the Examiner, the Examiner still fails to
establish that the combination would have resulted in determining that a
current physical cell identification split is invalid, much less that the
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determination is performed in response to determining that the user
equipment is in the any cell selection state, as required by claims 41, 51, and
61. Appeal Br. 17; Reply Br. 2–3.
Therefore, we do not sustain the rejection of independent claims 41,
51, and 61, and dependent claims 45–48, 55–58, 64, and 66 under 35 U.S.C.
§ 103 as unpatentable over Jung and Kwun.

Claims 42, 43, 50, 52, 53, 60, 63, and 686
The Examiner concludes that the subject matter of dependent claims
42, 43, 50, 52, 53, 60, 63, and 68 would have been obvious from the
combined teachings of Jung, Kwun, and Maeda ʼ286. Non-Final Act. 22–
28. The Examiner finds that “Maeda teaches, in response to an out of
network search, voiding the current physical cell identification split.” Non-
Final Act. 22 (citing Maeda ʼ732 ¶ 103). Consequently, the Examiner does
not rely on Maeda in a manner that remedies the deficiencies in the
combined teachings of Jung and Kwun as applied to independent claims 41,
51, and 61. We do not sustain the rejection of claims 42, 43, 50, 52, 53, 60,
63, and 68 under 35 U.S.C. § 103 as unpatentable over Jung, Kwun, and
Maeda ʼ286.

Claims 65 and 67
The Examiner concludes that the subject matter of dependent claims
65 and 67 would have been obvious from the combined teachings of Jung,
Kwun, and Singh. Non-Final Act. 28–30. The Examiner finds that “Singh

6 We note that claim 68 purports to depend from cancelled claim 1.
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teaches, wherein the information identifying the range of closed subscriber
group cells comprises a closed group subscriber primary synchronization
code split information.” Non-Final Act. 28–29 (citing Singh ¶¶ 8, 49, 53–
54). The Examiner has not shown that Singh remedies the deficiencies in
the combined teachings of Jung and Kwun as applied to independent claims
41, 51, and 61. We do not sustain the rejection of claims 65 and 67 under 35
U.S.C. § 103 as unpatentable over Jung, Kwun, and Singh.

CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
41, 45–48,
51, 55–58,
61, 64, 66
103 Jung, Kwun
41, 45–48,
51, 55–58,
61, 64, 66
42, 43, 50,
52, 53, 60,
63, 68
103 Jung, Kwun, Maeda ʼ723
42, 43, 50,
52, 53, 60,
63, 68
65, 67 103 Jung, Kwun, Singh 65, 67
Overall
Outcome
41–43, 45–
48, 50–53,
55–58, 60,
61, 63–68

REVERSED