Song Yean. Cho et al.

Patent Trials and Appeals Board

Nov 19, 2019

12770322 - (D) (P.T.A.B. Nov. 19, 2019)

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.
12/770,322 04/29/2010 Song Yean Cho 1398-322
(YPF201003-0046)
9495
66547 7590 11/19/2019
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
RIVAS, SALVADOR E
ART UNIT PAPER NUMBER
2413
NOTIFICATION DATE DELIVERY MODE
11/19/2019 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SONG YEAN CHO, CHAE GWON LIM, SUNG HO CHOI, and
BEOM SIK BAE
Appeal 2018-008401
Application 12/770,322
Technology Center 2400
Before JOSEPH P. LENTIVECH, PHILLIP A. BENNETT, and
SCOTT RAEVSKY, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 19–34. 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). Appellant identifies the real party in interest as Samsung
Electronics Co, Ltd. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims recite providing a local IP access service to a User
Equipment attached to a femtocell including a Packet Data Network (PDN)
gateway. See Spec., Abstract. Claims 19 and 31, reproduced below, are
illustrative of the claimed subject matter:
19. A method for supporting local internet protocol access
(LIPA) at a home enhanced node base station (HeNB)
collocated with a local gateway (LGW) in a wireless
communication system, the method comprising:
receiving, from a terminal, a first request message;
transmitting, to a mobility management entity (MME), a
first control message including an address of the LGW via an
S1-MME interface for the terminal; and
receiving, from the MME, a second control message in
response to the first control message, the second control
message including an identification (ID) for enabling a direct
path between the HeNB and the LGW,
wherein the address of the LGW is used to select a packet
data network gateway (PDN GW) by the MME, and
wherein a second request message comprising the
address of the LGW is transmitted from the MME to a serving
gateway (SGW).
31. A method for supporting local internet protocol access
(LIPA) at a local gateway (LGW) collocated with a home
enhanced node base station (HeNB) in a wireless
communication system, the method comprising:
receiving, by the LGW, a downlink packet data for a
terminal;
buffering, by the LGW, the received downlink data
packet;
identifying whether the terminal is in an idle state;
transmitting, by the LGW, if the terminal is in the idle
state, the received downlink data packet to a serving gateway
(SGW) to page the terminal; and
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forwarding, by the LGW, to the HeNB, if the terminal
enters a connected mode, the buffered downlink data packet on
a direct path enabled between the HeNB and the LGW.
REJECTIONS
Claims 19, 20, 22, 23, 25, 26, 28, and 29 stand rejected under
35 U.S.C. § 103(a) as obvious over 3GPP (TS 123 401 v.8.5.0, March
2009), TD S2-092308 (“Local IP access baseline solution for EHNB, March
30–April 3, 2009) (hereafter “TD S2-1”), and TD S2-091989 (“Architecture
alternative for Local IP access,” March 30–April 3, 2009) (hereafter “TD
S2-2”). Non-Final Act. 4.
Claims 21, 24, 27, and 30 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over 3GPP, TD S2-1, Rune (US 2010/0054222 A1, Mar.
4, 2010), TD S2-2, and Gupta (US 2009/0232019 A1, Sept. 17, 2009). Id. at
15.
Claims 31–34 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gupta, TD S2-2 and 3GPP. Id. at 17.
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
ANALYSIS
Claims 19–30
Appellant contends four separate limitations of claim 19 are not taught
or suggested by the combination of 3GPP, TD S2-1, and TD S2-2. Appeal
Br. 4–7; Reply Br. 2–4.
First, Appellant contends the cited references fail to teach or suggest
claim 19’s “transmitting, to a mobility management entity (MME), a first
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control message including an address of the LGW.” Appeal Br. 5.
Appellant argues that “TD S2-2 . . . does not disclose that a base station
transmits, to an MME, a message including an LGW address.” Id.
However, Appellant overlooks that the Examiner relies on 3GPP, not TD
S2-2, for the transmitting limitation except the “message including an
address of the LGW,” for which the Examiner relies on TD S2-2. See Non-
Final Act. 4, 6. Appellant’s arguments attacking 3GPP, TD S2-1, and TD
S2-2 in isolation do not persuasively rebut the underlying factual findings
made by the Examiner, which are based upon the combined teachings and
suggestions of the cited references. One cannot show non-obviousness by
attacking references individually, where the rejections are based on
combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
Appellant next contends that TD S2-2 fails to teach or suggest
claim 19’s “wherein the address of the LGW is used to select a packet data
network gateway (PDN GW) by the MME.” Appeal Br. 5. Specifically,
Appellant contends, “TD S2-2 concerns selecting an S-GW/P-GW by using a
DNS query, while Claim 19 recites that the address of the LGW is used to
select a PDN GW by the MME.” Id. The Examiner finds that TD S2-2
“teaches a method wherein the addresses of the LGW (read as IP address) is
used to select a . . . PDN GW[] by the MME.” Non-Final Act. 6. In
particular, the Examiner relies on TD S2-2’s teaching that an “MME
establishes the EPS connection toward the S-GW and P-GW colocated with
the HeNB ([t]he same IP address with the HeNB) if the S1 is connected with
HeNB.” Id. (quoting TD S2-2 § 6.3.9.2.2).
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We agree with the Examiner. As alluded to by Appellant, TD S2-2
discloses that “[i]n EPS bearer establishment procedure, [t]he DSN2 query
from MME shall be able to find the S-GW and P-GW colocated with
HeNB.” TD S2-2 § 6.3.9.2.2. But Appellant does not persuasively argue
how this passage distinguishes the disputed limitation over the passage of
TD S2-2 relied on by the Examiner. That passage, which Appellant does not
directly address, mentions an “IP address,” which the Examiner finds is the
address of the LGW. Non-Final Act. 6 (citing TD S2-2 § 6.3.9.2.2.). TD
S2-2 teaches that the MME establishes the connection toward the P-GW
colocated with the HeNB, at the same IP address with the HeNB. TD S2-2
§ 6.3.9.2.2. In other words, under the broadest reasonable interpretation, the
LGW address (i.e., IP address) “is used” in TD S2-2 to select (i.e., establish
the connection toward) the P-GW. Thus, Appellant does not persuade us the
Examiner erred with respect to this claim limitation.
Appellant next contends 3GPP fails to teach or suggest claim 19’s
“identification (ID) for enabling a direct path between the HeNB and the
LGW.” Appeal Br. 5–6. Appellant contends, “S1-TEID of 3GPP is an ID
value for connecting with an S-GW and does not correspond to the ID of
Claim 19, which forms a direct path between an HeNB and an LGW.” Id. at
6. In addition, Appellant contends, 3GPP “fails to disclose enabling a direct
path between an eNodeB and an S-GW.” Id.
We begin by construing this limitation. The phrase, “for enabling a
direct path between the HeNB and the LGW,” under the broadest reasonable
interpretation, merely recites intended use, and as such, is not limiting. See

2 A possible typo for DNS. See TD S2-2 § 6.3.9.2.1 (“DNS finds the
GGSN.”).
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In re Anderson, 662 Fed. App’x. 958, 963 (Fed. Cir. 2016) (nonprecedential)
(finding claim term “for use” was a non-limiting statement of intended use).
The Examiner finds, and Appellant concedes, that 3GPP’s “S1-TEID”
discloses the recited “identification (ID).” Non-Final Act. 4; Appeal Br. 6
(“S1-TEID of 3GPP is an ID.”). Moreover, while Appellant addresses only
3GPP’s teachings, the Examiner relies on the combination. See Ans. 3–4.
Accordingly, Appellant does not persuade us of Examiner error with respect
to this limitation.
Finally, Appellant contends TD S2-1 fails to teach or suggest claim
19’s “wherein a second request message comprising the address of the LGW
is transmitted from the MME to a serving gateway (SGW).” Appeal Br. 6–
7. Appellant contends, “TD S2-1 describes maintaining an interface for
transmission/reception of a control message between an MME and SGW.
TD S2-1 fails to disclose that an MME transmits an LGW address to an
SGW.” Id. at 7.
The Examiner finds TD S2-1 discloses “wherein a second request
message (other PDN connections) is transmitted from the MME to a serving
gateway (SGW).” Non-Final Act. 5. The Examiner further finds TD S2-2
discloses “a message comprising the address of the LGW.” Id. at 6.
Appellant only addresses TD S2-1, contending that TD S2-1 fails to disclose
an MME transmitting an LGW address to an SGW. See Appeal Br. 6–7.
But Appellant’s arguments attacking 3GPP, TD S2-1, and TD S2-2 in
isolation do not persuasively rebut the underlying factual findings made by
the Examiner, which are based upon the combined teachings and suggestions
of the cited references.
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Accordingly, we sustain the Examiner’s rejection of claim 19.
Appellant’s arguments regarding the rejection of independent claims 22, 25,
and 28 rely on the same arguments as for claim 19, and Appellant does not
argue separate patentability for the dependent claims. See id. at 7–8. We,
therefore, also sustain the Examiner’s rejection of claims 20–30. See 37
C.F.R. § 41.37(c)(1)(iv).

Claims 31–34
Appellant contends that Gupta, TD S2-2, and 3GPP fail to teach or
suggest three limitations in claim 31. Appeal Br. 7–10; Reply Br. 4–6.
Appellant contends Gupta fails to teach or suggest claim 31’s
“buffering, by the LGW, the received downlink data packet” because Gupta
“simply describes a memory of an HeNB and fails to disclose anything
regarding the feature of buffering, at an LGW, a received packet.” Appeal
Br. 8–9. The Examiner finds, however, that Gupta discloses “buffering the
received downlink data packet” and TD S2-2 discloses “a local gateway
(LGW).” Non-Final Act. 17, 19; Ans. 5 (Gupta’s “SGW may buffer
packets.” (quoting Gupta ¶ 156)). Appellant’s Reply contends that Gupta
“merely describes buffering a packet by an SGW.” Reply Br. 4. But
Appellant overlooks that the Examiner relies on TD S2-2, not Gupta, for the
local gateway portion of this limitation. See Non-Final Act. 19. Thus,
Appellant again argues the references individually.
Appellant next contends Gupta fails to teach or suggest claim 31’s
“transmitting, by the LGW, . . . the received downlink data packet to a
serving gateway (SGW) to page the terminal.” Appeal Br. 9; Reply Br. 4–5.
Appellant concedes “Gupta describes that . . . an SGW buffers [a received]
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packet and urges an MME to make a paging transmission” but contends
“Gupta fails to provide any disclosure relating to transmitting, to an SGW, a
packet received by an LGW.” Appeal Br. 9. But, as before, the Examiner
relies on TD S2-2, not Gupta, for the local gateway portion of this limitation.
See Non-Final Act. 19. Appellant again argues the references individually.
Appellant next contends that Gupta, TD S2-2, and 3GPP fail to teach
or suggest claim 31’s “forwarding, by the LGW, the buffered downlink data
packet on a direct path enabled between the HeNB and the LGW.” Appeal
Br. 9–10; Reply Br. 5–6. Appellant contends that rather than teaching the
above limitation “for a terminal in a connected mode,” “Gupta describes
transmitting, by an MME, paging information to a terminal in an idle mode.”
Appeal Br. 10 (citing Gupta ¶ 91) (emphasis added).
The Examiner initially finds Gupta discloses the disputed limitation in
the following teachings:
the MME may simply communicate when to page a UE to the
relevant eNodeB or eNodeBs (e.g., HENBs). The page is then
broadcast by each eNodeB based on an identifier (e.g., GUTI,
T-IMSI, IMSI, etc.) of the UE. [Gupta ¶ 91]
The S11 messages to be sent between the HSGW and the
network MME may include, for example, create bearer (default
or dedicated), delete bearer, update bearer, dedicated bearer
deactivation, bearer resource allocation, bearer resource release,
create forwarding tunnel, and other GTP-C messages (e.g.,
echo). [Gupta ¶ 118]
Non-Final Act. 18 (quoting Gupta ¶¶ 91, 118).
As noted by Appellant, the immediately preceding sentence before the
Examiner’s first quoted passage states, “the MME may support UE
reachability in ECM-IDLE state.” Appeal Br. 10 (quoting Gupta ¶ 91
(emphasis added)). But in the Answer, the Examiner newly finds that 3GPP
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“teaches systems capable of determining when a UE is in an ECM-IDLE or
ECM-CONNECTED state(s) in order to provide information.” Ans. 6
(emphasis added). The Examiner concludes it would have been obvious “to
employ the mobility management functions as taught by the 3GPP document
and the P-GW and S-GW functions used for Local IP access as taught by
[TD S2-2] within the HeNB system as taught by Gupta et al. for the purpose
of providing nodes in a communication system the capability to recognize an
active UE that is to receive a page.” Id. (emphasis added).
In Reply, Appellant contends this rationale to combine is conclusory.
Reply Br. 6. We do not agree; the Examiner provided a reason for
combining, namely, “for the purpose of providing nodes in a communication
system the capability to recognize an active UE that is to receive a page.”
Ans. 6. Appellant does not articulate why one of ordinary skill in the art
would not have pursued this rationale. Thus, Appellant has not persuasively
demonstrated that one of ordinary skill in the art would not have combined
the references.
With respect to the same “forwarding” limitation, Appellant further
contends, without supporting reasoning, that “Gupta fails to provide any
disclosure relating to forwarding a packet through a direct path between an
HeNB and an LGW.” Appeal Br. 10. The Examiner finds that Gupta’s
“forwarding tunnel” is the claimed direct path. Non-Final Act. 18 (citing
Gupta ¶ 118 (“create forwarding tunnel”)). As Appellant does not
specifically address the Examiner’s finding, Appellant does not persuasively
distinguish over the cited references.
Accordingly, we sustain the Examiner’s rejection of claim 31.
Appellant’s arguments regarding the rejection of independent claim 33 relies
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on the same arguments as for claim 31, and Appellant does not argue
separate patentability for the dependent claims. See Appeal Br. 10–11. We,
therefore, also sustain the Examiner’s rejection of claims 32–34. See
37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
19, 20, 22,
23, 25, 26,
28, 29
103 3GPP Document, TD
S2-1, TD S2-2
19, 20, 22,
23, 25, 26,
28, 29

21, 24, 27,
30
103 3GPP Document, TD
S2-1, Rune, Gupta
21, 24, 27,
30

31–34 103 Gupta, TD S2-2,
3GPP Document
31–34
Overall
Outcome
19–34
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