Chao, Hua et al.

Patent Trials and Appeals Board

Sep 30, 2019

14009859 - (D) (P.T.A.B. Sep. 30, 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.
14/009,859 10/04/2013 Hua Chao LUTZ 201712US01 7846
48116 7590 09/30/2019
FAY SHARPE/NOKIA
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
EXAMINER
HUNT, KENNETH P
ART UNIT PAPER NUMBER
2463
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
Nokia.IPR@nokia.com
docketing@faysharpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HUA CHAO, ZHONGJI HU, HE WANG, and PHILIPPE GODIN
____________

Appeal 2019-000414
Application 14/009,859
Technology Center 2400
____________

Before JOHN A. JEFFERY, JAMES W. DEJMEK,
and STEPHEN E. BELISLE, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 2, 5–10, 13–19, 22–24, and 27–29. We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

STATEMENT OF THE CASE
Appellant’s invention performs Multimedia Broadcast Multicast
Service (MBMS) communications by (1) acquiring location area information
of an MBMS service distribution, and (2) notifying user equipment (UE) of
that information. See generally Abstract. Claim 1 is illustrative:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). Appellant identifies the real party in interest as
Alcatel Lucent of Paris, France. Appeal Br. 3.
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1. A method for performing Multimedia Broadcast Multicast Service
(MBMS) communications, comprising:

acquiring location area information for an MBMS service at a network
entity in a network side of a cellular system, wherein the location area
information includes a service area identifier for the MBMS service; and

notifying a User Equipment (UE) of the location area information for
the MBMS service, wherein the notifying includes providing the location
area information from the network entity to the UE via a base station,
wherein the service area identifier for the MBMS service corresponds to a
coverage area for the MBMS service within the cellular system.

THE REJECTIONS2
The Examiner rejected claims 1, 2, 9, and 10 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Hsu (US 2011/0305183 A1; published
Dec. 15, 2011; filed June 14, 2011; provisional application No. 61/354,791
filed June 15, 2010 and provisional application No. 61/357,706 filed

2 Although the Examiner omits claims 28 and 30 from the claims indicated
as pending in paragraph 5 of the PTOL-326 form on page 1 of the Final
Office Action, these claims are nonetheless pending. Although claims 28
and 30 were also omitted from the claims indicated as rejected in
paragraph 7 of that PTOL-326 form, the Examiner nonetheless rejected
claim 28, but did not reject claim 30. And despite the Examiner indicating
that claim 29 is rejected, the Examiner did not specify the particular ground
of that rejection. See Final Act. 7–12. Moreover, despite indicating that
claim 23 is rejected as obvious over Hsu, Kuo, and TS 125.346 (Final
Act. 7), the Examiner does not include this claim in the associated
discussion. See Final Act. 7–12. Accord Appeal Br. 3 (presuming that
claims 23, 29, and 30 are directed to allowable subject matter because the
Examiner’s Final Office Action does not present any grounds of rejection for
these claims). Despite these omissions and inconsistencies, we nonetheless
present the Examiner’s rejections as they appear in the Examiner’s Final
Office Action—the grounds of which were confirmed by the Examiner on
page 3 of the Examiner’s Answer.
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June 23, 2010) and ETSI TS 125 346 v. 10.0.0, Universal Mobile
Telecommunications System (UTMS); Introduction of the Multimedia
Broadcast/Multicast Service (MBMS) in the Radio Access Network (RAN);
Stage 2 (3GPP TS 25.346 version 10.0.0 Release 10) (“TS 125.346”). Final
Act. 4–7.3
The Examiner rejected claims 5–8, 13–16, 18, 22, 23, 24,4 27, and 28
under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Hsu, Kuo
(US 2010/0315987 A1; published Dec. 16, 2010), and TS 125.346. Final
Act. 7–12.
The Examiner rejected claims 17 and 19 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Hsu, TS 125.346, and Frost
(US 2009/0180417 Al; published July 16, 2009). Final Act. 12.

THE OBVIOUSNESS REJECTION OVER HSU AND TS 125.346
Regarding independent claim 1, the Examiner finds that Hsu discloses
a method for performing MBMS communications including (1) acquiring
location area information for an MBMS service at a network entity in a
network side of a cellular system, and (2) notifying a UE of the location area
information for the MBMS service by providing that information from the

3 Throughout this opinion, we refer to (1) the Final Rejection mailed
January 26, 2018 (“Final Act.”); (2) the Appeal Brief filed July 12, 2018
(“Appeal Br.”); (3) the Examiner’s Answer mailed August 23, 2018
(supplemented August 31, 2018) (“Ans.”); and (4) the Reply Brief filed
October 19, 2018 (“Reply Br.”).
4 Although the Examiner omits claim 24 from the statement of the rejection,
the Examiner nonetheless includes this claim in the corresponding
discussion. Compare Final Act. 7 with Final Act. 11. We, therefore, include
claim 24 here for clarity.
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network entity to the UE via a base station. Final Act. 4–5. Although the
Examiner acknowledges that Hsu’s location area information lacks a service
area identifier for the MBMS service that corresponds to the service’s
coverage area within the cellular system, the Examiner cites TS 125.346 for
teaching this feature in concluding that the claim would have been obvious.
Final Act. 5–6.
Appellant argues that not only are Hsu’s cited portions disqualified as
prior art, the cited prior art does not teach or suggest the recited acquiring
and notifying steps in any event. Appeal Br. 6–14; Reply Br. 2–16.

ISSUE
Under pre-AIA 35 U.S.C. § 103(a), has the Examiner erred in
rejecting claim 1 by finding that Hsu and TS 125.346 collectively would
have taught or suggested the claimed invention? This issue turns on whether
Hsu qualifies as prior art to the present application.

ANALYSIS
We begin by noting that the present application was filed October 4,
2013 and is a national stage application filed under 35 U.S.C. § 371 of
Patent Cooperation Treaty (PCT) International Application
PCT/IB2012/000881 filed March 28, 2012.5 The present application also

5 Given this PCT application filing date, this application is not subject to the
provisions of the America Invents Act (AIA). See Manual of Patent
Examining Procedure (MPEP) § 2159.01 (9th ed. Rev. 08.2017, Jan. 2018).
Accord Final Act. 2 (examining the present application under pre-AIA
statutory provisions).
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claims foreign priority to Chinese Application 201110085858.9 filed
April 4, 2011. See Bibliographic Data Sheet.
The Hsu reference is a U.S. application that published on
December 15, 2011 and was filed on June 14, 2011, both of which are after
the present application’s earliest priority date (April 4, 2011).6 Hsu,
however, is based on (1) U.S. Provisional Application 61/354,791, filed
June 15, 2010 (“’791 provisional”), and (2) U.S. Provisional Application
61/357,706, filed June 23, 2010 (“’706 provisional”), both of which were
filed before the present application’s earliest priority date.
The critical question, then, is whether the relied-upon subject matter
in Hsu is entitled to the date of either of its provisional applications, for if it
is not, then Hsu does not qualify as prior art because its utility application
filing date (June 14, 2011) is after that of the present application’s earliest
priority date (April 4, 2011).
Thus, it is crucial for the Examiner to show that at least one of Hsu’s
provisional applications adequately provides (1) support for the subject
matter of Hsu’s claimed invention in Hsu’s published utility application
under 35 U.S.C. § 112, first paragraph, and (2) similar § 112, first paragraph
support for the particular subject matter from Hsu relied on in the rejection.
Only then would Hsu be entitled to the filing date of at least one of its
provisional applications. See Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015) (“A reference patent is only

6 There is no dispute that the application’s earliest priority date of April 4,
2011 is the application’s effective filing date under 35 U.S.C. §§ 100 and
365. See C.F.R. § 1.109(a)(2); see also MPEP § 2152.01. Nor is this
priority claim’s perfection under 37 C.F.R. § 1.55(g) disputed. See MPEP
§§ 213.04, 706.02(b)(2).
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entitled to claim the benefit of the filing date of its provisional application if
the disclosure of the provisional application provides support for the claims
in the reference patent in compliance with § 112, ¶ 1.”) (emphasis added)
(citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)); see also Dynamic
Drinkware at 1382 (“A provisional application’s effectiveness as prior art
depends on its written description support for the claims of the issued patent
of which it was a provisional.”) (emphasis added). Accord Amgen v. Sanofi,
872 F.3d 1367, 1380 (Fed. Cir. 2017); MPEP § 2136.03(III); Robert W.
Bahr, Memorandum to Patent Examining Corps, Critical reference date
under pre-AIA 35 U.S.C. § 102(e) of a U.S. patent or U.S. published
application claiming the benefit of a prior U.S. provisional application
during examination of an application, USPTO, Apr. 5, 2018 (“Bahr
Memo.”) (citing Amgen).7
In short, showing that at least one of Hsu’s provisional applications
provides adequate § 112, first paragraph support for both (1) Hsu’s claimed
invention, and (2) the specific subject matter from Hsu’s published
application relied on in the rejection is crucial for that relied-upon subject
matter to qualify as prior art to the present application particularly where, as
here, Appellant contends that at least some of that relied-upon subject matter
does not qualify as prior art. See Appeal Br. 6–8; Reply Br. 2–6 (arguing
that Hsu’s paragraph 47 and Figure 8 do not qualify as prior art).

7 This memorandum is available from the USPTO’s web site at
https://www.uspto.gov/sites/default/files/documents/dynamic_memo_05apr2
018.pdf.

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That did not happen here. First, even if we were to accept the
Examiner’s findings that the bulleted lists on what resembles presentation
slides on pages 5 and 10 of Hsu’s ’706 provisional application somehow
support the relied-upon subject matter in Hsu’s paragraph 47 and Figure 8
under § 112, first paragraph (see Ans. 3–4), the Examiner still does not show
that this provisional application also provides adequate § 112, first
paragraph support for Hsu’s claimed invention—a crucial deficiency on this
record. See Amgen, 872 F.3d at 1380; see also Dynamic Drinkware, 800
F.3d at 1382; Bahr Memo. Given this deficiency, the Examiner has not
shown that the relied-upon subject matter in Hsu qualifies as prior art to the
present application. Therefore, the Examiner’s rejection based on this
subject matter is erroneous for that reason alone.
But even if the Examiner had shown that the ‘706 provisional
application adequately supports Hsu’s claimed invention—a crucial finding
that was not made on this record—we still find the bulleted lists on pages 5
and 10 of Hsu’s ’706 provisional application on which the Examiner relies
(Ans. 3–4) fall short of providing the requisite § 112, first paragraph support
for the relied-upon subject matter in Hsu’s paragraph 47 and Figure 8 as
Appellant indicates on pages 2 to 6 of the Reply Brief.8 The Examiner’s
rejection is therefore problematic for this additional reason.

8 Although Appellant’s characterization of the third solution to Problem 1
pertaining to the S1 enhancement on page 5 of the ’706 provisional
application as involving both source and target eNBs (Reply Br. 4) is
overstated given this solution’s reference to only a source eNB, we
nonetheless find this solution (and other solutions on page 5) falls short of
showing the requisite § 112, first paragraph support for the particular subject
matter in Hsu’s paragraph 47 and Figure 8 relied upon by the Examiner. We
reach this conclusion despite Appellant’s additional erroneous references to
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Accordingly, we are persuaded that the Examiner erred in rejecting
(1) independent claim 1; (2) independent claim 9 that is similarly rejected
based partly on Hsu’s paragraph 47 and Figure 8 that does not qualify as
prior art (see Final Act. 6–7); and (3) dependent claims 2 and 10 for similar
reasons. Because this issue is dispositive regarding our reversing the
Examiner’s rejection of these claims, we need not address Appellant’s other
associated arguments.

THE OTHER OBVIOUSNESS REJECTIONS
Because the Examiner’s obviousness rejections of claims 5–8, 13–19,
22, 23, 24, 27, and 28 rely on subject matter from Hsu that does not qualify
as prior art to the present application (see Final Act. 7–12), the Examiner’s
obviousness rejections of these claims are likewise erroneous.

Hsu’s Figure 4 in connection with the second and third solutions on page 5
of the ’706 provisional (see Reply Br. 4), for Hsu’s Figure 3—not Figure
4—shows source and target eNBs. Nevertheless, we deem these errors and
inconsistencies harmless on this record given the ’706 provisional
application’s shortcomings in providing the requisite § 112, first paragraph
support for the above-noted relied-upon subject matter in Hsu.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 2, 9, 10 § 103 Hsu, TS
125.346
1, 2, 9, 10
5–8, 13–16, 18,
22, 23, 24, 27,
28
§ 103 Hsu, Kuo, TS
125.346
5–8, 13–16,
18, 22, 23,
24, 27, 28
17, 19 § 103 Hsu, TS
125.346, Frost
17, 19
Overall
Outcome
1, 2, 5–10,
13–19, 22–
24, 27–299

REVERSED

9 As noted previously, despite indicating that claim 29 is rejected on page 1
of the Final Office Action, the Examiner did not specify the particular
ground of that rejection. See Final Act. 7–12. We nevertheless include that
claim here for clarity and completeness.