Anshuman Nigam et al.

Patent Trials and Appeals Board

Dec 19, 2019

14608936 - (D) (P.T.A.B. Dec. 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.
14/608,936 01/29/2015 Anshuman NIGAM 1398-798 (YPF201412-29) 8764
66547 7590 12/19/2019
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
GUADALUPE CRUZ, AIXA AMYR
ART UNIT PAPER NUMBER
2466
NOTIFICATION DATE DELIVERY MODE
12/19/2019 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
following e-mail address(es):
pto@farrelliplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANSHUMAN NIGAM, JUNGSOO JUNG, JUNGMIN MOON,
SUNHEUI RYOO, and SUNGJIN LEE

____________

Appeal 2018-002676
Application 14/608,936
Technology Center 2400
____________

Before JOHN A. JEFFERY, JAMES R. HUGHES,
and NORMAN H. BEAMER, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 23–42. Claims 1–22 are cancelled. We have
jurisdiction over the pending rejected claims 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. Appellant identifies the real party in interest as Samsung
Electronics Co, Ltd. (Appeal Br. 1.)
Appeal 2018-002676
Application 14/608,936

2

CLAIMED SUBJECT MATTER
Appellant’s disclosed and claimed invention is directed to supporting
a Handover (HO) by a master evolved Node B (eNB) in a wireless
communication system supporting dual connectivity of a User Equipment
(UE) for the master eNB and a slave eNB. (Abstract.) Claim 23,
reproduced below, is illustrative of the claimed subject matter:
23. A method by a master base station, comprising:
transmitting, to a target secondary base station, a
request for allocating resources to handover a user
equipment (UE) from a source secondary base station to
the target secondary base station;
receiving, from the target secondary base station, an
acknowledgment corresponding to the resource allocation
request; and
transmitting, to the source secondary base station, a
request for releasing resources associated with the UE, the
resource release request including a data forwarding
address.
Appeal Br. 12 (Claims Appendix).

REJECTION
The Examiner rejected claims 23–42 under 35 U.S.C. § 102 as
anticipated by Lee et al. (US 2016/0135103 A1, pub. May 12, 2016). (Final
Act. 3–7.)
ISSUE ON APPEAL
Appellant’s arguments present the following issue:2

2 Rather than reiterate the arguments of Appellant and the findings of the
Examiner, we refer to the Appeal Brief (filed Aug. 4, 2017) (“Appeal Br.”);
the Reply Brief (filed Jan. 9, 2018) (“Reply Br.”); the Final Office Action
Appeal 2018-002676
Application 14/608,936

3

Whether the Examiner erred in finding Lee discloses the independent
claim 23 limitation, “the resource release request including a data
forwarding address.” (Appeal Br. 5–8.)
ANALYSIS
Appellant argues the Examiner errs in finding Lee discloses the
independent claim 23 requirement, “transmitting, to the source secondary
base station, a request for releasing resources associated with the UE, the
resource release request including a data forwarding address” — and in
particular finding Lee discloses that such a request includes a data
forwarding address. (Appeal Br. 5–8.)
The Examiner relies, inter alia, on the disclosure in Lee of a “context
release” command which is illustrated as command 10 in Figure 12 of Lee,
and described as follows:
10. Upon receiving the handover notification message,
the MeNB transmits a UE context release message to the source
SeNB. The UE context release message may include an UEX2
ID of an old eNB (source SeNB) and an UE X2 ID of a new
eNB (MeNB).
(Final Act. 4; Lee Fig. 12, ¶ 150.) The Examiner finds that this command is
transmitted to the source secondary base station, is associated with releasing
UE resources to the target SeNB, and includes an ID of the target secondary
base station. (Ans. 8.) The Examiner notes that the phrase “data forwarding
address” is not defined in the Specification. (Ans. 9.) Indeed, that term is
found nowhere in the Specification, including the original claims. The

(mailed Jan. 12, 2017) (“Final Act.”); and the Examiner’s Answer (mailed
Nov. 28, 2017) (“Ans.”) for the respective details.
Appeal 2018-002676
Application 14/608,936

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Examiner finds that the broadest reasonable construction of that term
encompasses the “UE X2 ID of a new eNB” referred to in the above-quoted
paragraph of Lee. Id.
Appellant argues the Examiner errs because Lee discloses several
steps between the acknowledgement step (Step 3 of Figure 110), which the
Examiner finds satisfies the second limitation of claim 23, and the “UE
CONTEXT RELEASE” step 10, which the Examiner finds satisfies the third
limitation of claim 23. (Reply Br. 2–3.) However, claim 23, which claims a
method comprising the recited steps, does not preclude such intervening
steps. Indeed, the illustrative embodiment of the claimed subject matter
described in the Specification includes intervening steps. (Spec. Fig. 2.)
Appellant also argues “[n]othing in relation to the ID's in the cited
paragraph [Lee paragraph 150] has anything to do with a data forwarding
address, contrary to the rejection.” (Reply Br. 4.) This is unpersuasive
attorney argument. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977)
(“Argument of counsel cannot take the place of evidence lacking in the
record.”). We credit the Examiner’s unequivocal finding that the “UE X2
ID of a new eNB” in the UE CONTEXT RELEASE of step 10 of Lee Figure
12 satisfies the claim 23 requirement of a data forwarding address. (Ans. 8–
9.)
Accordingly, we sustain the Examiner’s rejection of independent
claim 23 as anticipated by Lee. We also sustain the anticipation rejections
of claims 24–42. Appellant’s arguments directed to these rejections
incorporate the above-discussed arguments regarding claim 23, and those
rejections are not otherwise argued separately with particularity. (Appeal
Br. 9–10.)
Appeal 2018-002676
Application 14/608,936

5

CONCLUSION
In summary:

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

Claims
Rejected
35 U.S.C. § Reference(s)
/Basis
Affirmed Reversed
23–42 102 Lee 23–42