NOKIA SOLUTIONS AND NETWORKS OY

Patent Trials and Appeals BoardJan 21, 2021

2019005050 (P.T.A.B. Jan. 21, 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. 14/776,053 09/14/2015 Mika Forssell 863.1195.U1(US) 8084 29683 7590 01/21/2021 Harrington & Smith, Attorneys At Law, LLC 4 RESEARCH DRIVE, Suite 202 SHELTON, CT 06484-6212 EXAMINER LAFONTANT, GARY ART UNIT PAPER NUMBER 2646 NOTIFICATION DATE DELIVERY MODE 01/21/2021 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): USPTO@HSPATENT.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte MIKA FORSSELL1 _____________ Appeal 2019-005050 Application 14/776,053 Technology Center 2600 ______________ Before TERRY J. OWENS, B. WILLIAM BAUMEISTER, and JOHN A. EVANS, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of Claims 1–6, 10–14, 30–32, 34, 35, 39, 40, 42, and 43. Appeal Br. 2. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appeal Brief identifies Nokia Solutions and Networks Oy, as the real party in interest. Appeal Br. 2. Appeal 2019-005050 Application 14/776,053 2 INVENTION The invention is directed to a method and apparatus for Wi-Fi support awareness. See Abstract; Claim 1. Claims 1, 10, 30, and 39 are independent. Claim 1, reproduced below, is illustrative of the invention. 1. A method comprising: while in a connection with a communication network, dynamically determining, by a user equipment (UE), an availability of an alternate radio access technology and a capability of the user equipment (UE) of using said alternate radio access technology based on information received from the communication network; and when the alternate radio access technology is available and capability of using said alternate radio access technology is determined, transmitting, by the user equipment (UE) to a base station via said connection to said communication network, a message including an information element indicating said availability and said capability. PRIOR ART Name2 Reference Date Patil US 2012/0210404 A1 Aug. 16, 2012 Ekici US 2013/0150026 A1 June 13, 20133 Wu EP 2 200 356 A2 Nov. 12, 2009 2 All citations herein to the references are by reference to the first named inventor/author only. 3 Continuation of application No. 13/170,552, filed June 28, 2011. Appeal 2019-005050 Application 14/776,053 3 REJECTIONS4 AT ISSUE5 1. Claims 1–5, 10–13, 30–32, 34, 39, 40, and 42 stand rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over Wu and Ekici. Final Act. 6–13. 2. Claims 6, 14, 35, and 43 stand rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over Wu, Ekici, and Patil. Final Act. 14–17. ANALYSIS We have reviewed the rejections of Claims 1–6, 10–14, 30–32, 34, 35, 39, 40, 42, and 43 in light of Appellant’s arguments that the Examiner erred. We have considered in this Decision only those arguments Appellant actually raised in the Briefs. Any other arguments which Appellant could have made but chose not to make in the Briefs are deemed to be waived. We provide the following explanation to highlight and address specific arguments and findings primarily for emphasis. We consider Appellant’s arguments as they are presented in the Appeal Brief and the Reply Brief. CLAIMS 4 The present application is being examined under the pre-AIA first to invent provisions. Final Act 2. 5 Throughout this Decision, we refer to the Appeal Brief (“Appeal Br.”) filed December 28, 2018, the Reply Brief (“Reply Br.”) filed June 17, 2019, the Final Office Action (“Final Act.”) mailed April 19, 2018, the Examiner’s Answer mailed April 18, 2019, and the Specification (“Spec.”) filed September 14, 2015. Appeal 2019-005050 Application 14/776,053 4 CLAIMS 1–6, 30–32, 34, AND 35: OBVIOUSNESS OVER WU AND EKICI. Appellant argues these claims as a group specifically over the recitations of Claim 1. App. Br. 9, 14 (“Independent claims 1, 10, 30, and 39 are respectfully submitted to be patentable over the combined teachings of Wu and Ekici.”). Independent Claim 1 recites, inter alia, “while in a connection with a communication network, dynamically determining, by a user equipment (UE), an availability of an alternate radio access technology and a capability of the user equipment (UE) of using said alternate radio access technology based on information received from the communication network.” Appeal Br. 7 (Claims App.). Appellant contends that neither Wu, nor Ekici, teach dynamic reporting, as claimed. Appeal Br. 9–10. The Examiner finds Wu teaches a method of supporting multi-radio access technology (RAT) and reporting LTE-RAT capability to the NON- LTE access network via a NON-LTE path, by a user’s mobile device, a capability of the user equipment (UE) of using said alternate radio access technology. Final Act. 6 (citing Wu, ¶¶ 14, 15). Appellant argues Wu transmits LTE capability information to a network via a non-LTE network, that is an alternative radio access technology, and Wu teaches various mechanisms to optimize capability delivery, for example, reduced content in the message to keep message size small. Appeal Br. 10. Appellant argues however, Wu fails to teach dynamic determination of the availability of an alternate radio access technology by a user equipment, as claimed. Id. Appeal 2019-005050 Application 14/776,053 5 The Examiner finds Wu teaches the UE dynamically reports, as claimed. Ans. 4 (citing Wu, ¶¶ 6, 12, and 18). Appellant contends the cited portions of Wu fail to teach: “dynamically determining, by a user equipment (UE), an availability of an alternate radio access technology and a capability of the user equipment (UE) of using said alternate radio access technology based on information received from the communication network,” as claimed. Appellant argues Wu discloses: When the communication device 20 supporting the LTE RAT communicates with a network (a radio access network or a core network) via a non-LTE RAT, processes described below are provided for reporting the LTE RAT capability to allow the network using the non-LTE RAT to obtain the E-UTRA (Evolved UMTS Terrestrial Radio Access) capability seen as LTE RAT capability. Please refer to Fig. 3, which illustrates a flowchart of a process 30 according to an example of the present invention. The process 30 is utilized for reporting LTE RAT capability at a RRC level for a mobile device. The process 30 can be compiled into the program code 214 and includes the following steps: Step 300: Start. Step 310: Include capability information only associated with E-UTRA RAT in a capability reporting message of the LTE RAT. Step 320: Transmit the capability reporting message to a radio access network of a non-LTE RAT via the non-LTE RAT. Step 330: End. Reply Br. 2 (quoting Wu, ¶ 14) (cited by the Examiner). Appeal 2019-005050 Application 14/776,053 6 Appellant argues this disclosure simply teaches that when LTE- capable user equipment is using a non-LTE network, it sends this capability information to the network. Reply Br. 2. Appellant argues that the user equipment dynamically determines an availability of an alternate radio technology and a capability of the user equipment of using the alternate radio access technology is still missing from Wu. Id. at 3. To teach “dynamically determining” the Examiner initially cited Wu, ¶¶ 14 and 15, but in the Answer cited Wu, ¶¶ 6, 12, and 18. Compare Final Act. 6 with Ans. 4. We agree with Appellant that Wu fails to teach “dynamically determining” in paragraph 14. Similarly, we fail to find such teaching in either paragraphs 6, 12, 15, or 18. Because we find the prior art fails to teach one limitation, discussed above, we reverse the rejection of independent Claim 1 and Claims 2–5, which dependent from Claim 1, or of independent Claim 30, which contains commensurate recitations, and of Claims 31, 32, 34, and 35, which dependent from Claim 30. With respect to the remaining obviousness rejection of dependent claim 6, the Examiner does not rely on Patil to cure the deficiency of the rejection, noted above. Final Act. 14. Accordingly, we reverse the obviousness rejection of claim 6 for the reasons set forth above in relation to claim 1. CLAIMS 10–14, 39, 40, 42, AND 43: OBVIOUSNESS OVER WU, EKICI, AND PATIL. Appellant contends each of the independent claims are patentable over the combination of Wu and Ekici in view of the reasons discussed above. Appeal Br. 14 (“Independent claims 1, 10, 30, and 39 are respectfully Appeal 2019-005050 Application 14/776,053 7 submitted to be patentable over the combined teachings of Wu and Ekici”). However, we find independent Claims 10 and 39 lack the “dynamically determining” recitations and thus, are not commensurate in scope with Claim 1. In view thereof, we sustain the rejection of Claim 10, Claims 11– 14, which depend from Claim 10, Claim 39, and Claims 40, 42, and 43, which depend from Claim 39. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 10– 13, 30–32, 34, 39, 40, 42 103 Wu, Ekici 10–13, 39, 40, 42 1–5, 30–35 6, 14, 35, 43 103 Wu, Ekici, Patil 14, 43 6 Overall 10–13, 39, 40, 42, 43 1–6, 30–35 AFFIRMED-IN-PART 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).