Ex Parte 7,769,374 B2 et al

Patent Trial and Appeal Board

Dec 16, 2014

95002004 (P.T.A.B. Dec. 16, 2014)

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.
95/002,004 06/01/2012 7,769,374 B2 088245-2398 6055
23524 7590 12/16/2014
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
AHMED, SALMAN
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/16/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
______________

XILINX, INC.,
Requester, Appellant, and Cross-Respondent

v.

INTELLECTUAL VENTURES MANAGEMENT, OF WHICH
INTELLECTUAL VENTURES I LLC IS AN AFFILATE,
Patent Owner, Respondent, and Cross-Appellant
______________

Appeal 2014-006756
Reexamination Control No. 95/002,004
Patent US 7,769,374 B2
1

Technology Center 3900
______________

Before JOHN C. MARTIN, JOHN A. JEFFERY, and JENNIFER L.
MCKEOWN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1
This patent (hereinafter “’374 patent”) was issued on August 3, 2010,
based on Application 09/802,861, filed on March 12, 2001. The inventors
are identified therein as Son Phan-Anh, Balint Benko, Auvo Hartikainen,
Markku Verkama, Heikki Juhani Einola, and Stefano Faccin.
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Requester has appealed the Examiner’s decision not to adopt the
proposed rejections of claims 1-4, 7-9, 12-17, and 19 under 35 U.S.C.
§ 103(a).
2

Patent Owner has cross-appealed the Examiner’s rejections of
claims 5, 6, 10, and 11 under 35 U.S.C. § 103(a).
3

On May 8, 2014, following the filing of the rebuttal briefs, Requester
gave notice that “it no longer intends to participate in the present
reexamination.”
4

We have jurisdiction under 35 U.S.C. §§ 6, 134, and 315.
The Examiner’s decision to reject claims 5, 6, 10, and 11 is
AFFIRMED.
The Examiner’s decision not to adopt Requester’s proposed rejections
of claims 1-4, 7-9, 12-17, and 19 is AFFIRMED. However, pursuant to
37 C.F.R. § 41.77(b) we are entering new grounds of rejection of these
claims under 35 U.S.C. § 103(a) based on a different rationale using the same
references that are relied on by Requester.

2
Corrected Third Party Requester’s Appeal Brief on Inter Partes
Reexamination Pursuant To 37 C.F.R. § 41.67 (hereinafter “Requester’s
Appeal Brief” and “Req. Appeal Br.”), filed on January 10, 2014, at 5,
sec. VI.
3
Appellant’s Brief in Inter Partes Reexamination (hereinafter cited as “PO
Appeal Br.”), filed on December 16, 2013, at 2 (“Status of Claims”).
4
Notice of Non-Participation in Inter Partes Reexamination, filed on May 8,
(Continued on next page.)
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I. STATEMENT OF THE CASE
A. Related Appeal
Requester (Req. Appeal Br. 2, sec. II) identifies, as a related appeal,
inter partes reexamination proceeding 95/001,899 (hereinafter “’899
reexamination proceeding”), which involves Patent US 7,937,081 B2 (“’081
patent”), which identifies itself as a “Divisional” of the ’374 patent.
5
The
’899 reexamination proceeding is the subject of Board Appeal 2014-001131
(“’131 Appeal”). In a Decision on Appeal (“’131 Appeal Decision”) mailed
on April 25, 2014, the Board, inter alia, affirmed rejections under 35 U.S.C.
§ 103(a) in which Foti (also referred to as “Foti I”)
6
is the principal reference.
’131 Appeal Decision 70-71. Foti is also the principal reference in the
entered rejections and proposed rejections in the appeal proceeding now
before us.
As in the ’131 Appeal, one of the issues before us is whether Foti has
been removed as a reference pursuant to 37 C.F.R. § 1.131. PO Appeal
Br. 15-29.

2014.
5
’081 patent at 1:7 (as corrected by a Certificate of Correction dated
August 30, 2011).
6
Foti, et al., US 6,654,606 B1, issued on November 25, 2003, based on
(Continued on next page.)
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B. This Reexamination Proceeding
This reexamination proceeding was initiated by a “Request for Inter
Partes Reexamination” (hereinafter “Request”) filed on June 1, 2012, which
(at page 1) sought reexamination of all the original patent claims (viz., claims
1-13), of which claims 1, 5, 7, 10, and 12 are independent claims. The
Request was accompanied by a claim chart (Ex. AA) (hereinafter “Claim
Chart AA”) applying the reference teachings to the claims.
The Request was granted with respect to claims 1-13 in an order
mailed on August 6, 2012, at 2, para. 1.
7

In a Non-Final Office Action mailed on August 6, 2012, the Examiner
entered the following proposed rejections of claims 1-13 under 35 U.S.C.
§ 103(a):
(a) Claims 1, 4, 5, 7, 10, 12, and 13 were rejected (at page 3, sec. 7) for
obviousness over Foti in view of Bharatia
8
and Rune;
9
and
(b) claims 2, 3, 6, 8, 9, and 11 were rejected (at page 55, sec. 8) for
obviousness over Foti in view of Bharatia, Rune, and Koivunen.
10

Patent Owner responded by amending claim 1 and adding new claims
14-26 (including independent claims 16, 21, and 25).
11
This response was

Application 09/676,003, filed on September 29, 2000.
7
Order Granting/Denying Request for Inter Partes Reexamination.
8
Jayshree A. Bharatia, Application Publication US 2001/0031635 A1,
published on October 18, 2001.
9
Johan Rune, et al., US 6,788,936 B1, issued on September 7, 2004.
10
Seppo Koivunen, U.S. Patent 5,479,481, issued on December 26, 1995.
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accompanied by a “Declaration Under 37 C.F.R. 1.132” by Dr. Eric Burger,
dated October 8, 2012 (hereinafter “Burger Declaration”) (PO Appeal Br.
Ex. 8) and also by the following declarations under 37 C.F.R. § 1.131,
offered to antedate Foti:
(1) An October 5, 2012, “Declaration Under 37 C.F.R. 1.131” by Loria
B. Yeadon (hereinafter “Yeadon ’004 Declaration”). PO Appeal Br. Ex. 1.
As explained infra, the Yeadon ’004 Declaration differs in several minor
respects from the Yeadon Declaration under 37 C.F.R. § 1.131 filed in the
’899 reexamination proceeding (hereinafter “Yeadon ’899 Declaration”).
(2) A “Declaration Under 37 C.F.R. 1.131” (executed in September
and October of 2012) by each of inventors Phan-Anh, Hartikainen, Verkama,
Einola, and Faccin. PO Appeal Br. Exs. 3-7. These declarations are identical
to the inventors’ § 1.131 declarations filed in the ’899 reexamination
proceeding.
Requester responded on March 8, 2013, with “Comments by Third
Party Requester Pursuant to 37 CFR 1.947” (hereinafter “Requester
Comments After Non-Final Action”), accompanied by:
(1) a November 6, 2012, “Declaration of Steven W. Landauer”
(hereinafter “Landauer Decl.”) under 37 C.F.R. § 1.132 (Req. Appeal Br.
Ex. 3); and

11
Revised Patent Owner Amendment and Reply To Office Action in Inter
Partes Reexamination, filed on February 12, 2013, at 2-7.
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(2) a supplemental claim chart (Ex. BB) (hereinafter “Claim
Chart BB”) proposing new rejections under 35 U.S.C. § 103(a) of amended
claim 1 and new claims 14-17.
New claims 18-26 were proposed to be rejected under 35 U.S.C. § 112
(first paragraph) and/or § 314(a). Req. Comments After Non-Final Action
27-34.
In an Action Closing Prosecution (ACP), mailed on June 5, 2013, the
Examiner concluded (at page 39, section III) that the evidence under
37 C.F.R. § 1.131 is sufficient to antedate Foti and entered the following
rejections:
1. Claims 1, 4, 5, 7, 10, and 12-17 under 35 U.S.C. § 103(a) based on
Foti in view of Bharatia and Rune. ACP 63, sec. 11 (discussing claims 1, 4,
5, 7, 10, 12 and 13); id. at 122, sec. 13 (discussing claims 14-17).
2. Claims 2, 3, 6, 8, 9, and 11 under 35 U.S.C. § 103(a) based on Foti
in view of Bharatia, Rune, and Koivunen. Id. at 113, sec. 12.
3. Claims 21-24 under 35 U.S.C. § 314(a) for enlarging the scope of
the claims. Id. at 61 (no section number).
4. Claims 18-20, 22, and 24 under 35 U.S.C. § 112, first paragraph
(enablement requirement). Id. at 62, sec. 8.
Patent Owner responded on August 2, 2013, by filing a “Patent Owner
Amendment And Reply To Action Closing Prosecution in Inter Partes
Reexamination Under 37 C.F.R. § 1.951” (hereinafter “Patent Owner’s
Response to ACP”), canceling (at page 5) claims 18 and 20-26, thereby
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(i) obviating the § 112 rejection with respect to all but claim 19 and
(ii) obviating the § 314(a) rejection as to all of the rejected claims. This
response was accompanied by Dr. Burger’s August 2, 2013, “Supplemental
Declaration Under 37 C.F.R. 1.132” (hereinafter “Burger Supplemental
Declaration”). PO Resp’t Br. Ex. 2.
Requester responded on August 30, 2013, with “Comments by Third
Party Requester to the Action Closing Prosecution” (hereinafter “Requester
Comments After ACP”), which were accompanied by the August 29, 2013,
“Supplemental Declaration of Steven W. Landauer” (hereinafter “Landauer
Supplemental Declaration”) under 37 C.F.R. § 1.132. Req. Appeal Br.
Ex. 10.
The Examiner in the Right of Appeal Notice (RAN):
1. Adhered to the decision that the evidence submitted under
37 C.F.R. § 1.131 is insufficient to remove Foti as a reference. RAN 35.
2. Withdrew the rejection under 35 U.S.C. § 112 (enablement
requirement) of claim 19, the sole claim that stood rejected on this ground.
Id. at 33-34.
3. Withdrew the 35 U.S.C. § 103(a) rejections of “claims 1-4, 7-9, 12-
17, and 19” (id. at 22), even though claim 19 did not stand rejected under
35 U.S.C. § 103(a).
4. Repeated the rejection of claims 5 and 10 under 35 U.S.C. § 103(a)
based on Foti in view of Bharatia and Rune. Id. at 57, sec. 13.
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5. Repeated the rejection of claims 6 and 11 under 35 U.S.C. § 103(a)
based on Foti in view of Bharatia, Rune, and Koivunen. Id. at 74, sec. 14.
The RAN at page 1 accordingly identifies claims 7-9, 12, and 13 as
“confirmed,” claims 1-4, 14-17, and 19 as “patentable,” and claims 5, 6, 10,
and 11 as “rejected.”
As explained infra, rejected claims 5, 6, 10, and 11, which are the
subject of Patent Owner’s appeal, are directed to the first of three “options”
described in the ’374 patent, whereas the claims that are the subject of
Requester’s appeal (viz., claims 1-4, 7-9, 12-17, and 19) are directed to the
second option.
The Examiner’s Answer incorporates the RAN by reference without
adding any further analysis.

C. The Invention Options Described in the ’374 Patent
The ’374 patent describes recovery techniques for use in mobile
networks of the type described in a Technical Report entitled “3G TR 23.821
V1.0.1 (2000-07)” (hereinafter “TR”), which describes the specifications of a
3G All-IP mobile network. ’374 patent 1:7-19.
12

TR explains (at page 13) that the 3G All-IP mobile network employs a
“Serving CSCF” and an “Interrogating CSCF,” terms that are abbreviated as

12
TR (Request Exhibit K), published in July 2000 by the 3rd Generation
Partnership Project (3GPP), is available at http://www.3gpp.org. ’374 patent
1:15-17.
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“S-CSCF” and “I-CSCF” in the ’374 patent (at column 1, lines 42 and 60).
The network also includes an HSS (Home Subscriber Server), which serves
as the master database for a given user. TR 14. The I-CSCF is used for
mobile terminated communications and to determine how to route mobile
terminated calls. Id. Specifically, the I-CSCF interrogates the HSS for
information to enable the call to be directed to the (appropriate) S-CSCF. Id.
The ’374 patent explains that “[m]obile IPv6 [Internet Protocol
Version 6
13
] allows a subscriber to move from one link to another without
changing its IP address” and that a subscriber is always addressable by its
“home address,” which is “an IP address assigned to it within its home subnet
prefix on its home link.” ’374 patent 2:61-64.
A “care-of address” can be used to contact a subscriber who is away
from home, i.e., roaming. See id. at 3:13-15 (“While a subscriber is attached
to some foreign link away from home, it is also addressable by one or more
care-of addresses, in addition to its home address.”).
As explained in greater detail below, registration by a roaming
subscriber results in storing the identification (e.g., address) of the S-CSCF
in the subscriber’s HSS as well as storing the roaming subscriber’s TA (i.e.,
care-of address) in the S-CSCF. Both of these types of information are
necessary in order to complete a call to a roaming subscriber. See id. at 2:47-
50 (“The S-CSCF that the subscriber is currently registered to and the TA of

13
’374 patent 4:13-14.
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the roaming subscriber, which the subscriber provides to the network during
Application Level (AL) registration, must be known to and maintained by the
network.”).
The invention described in the ’374 patent “relates to protecting the
Transport Address (TA) which is a current Care of Address of a mobile
subscriber . . . from loss . . . after Call State Control Function (CSCF) crashes
and after reset situations of a network element realizing CSCF functionality.”
Id. at 1:8-13.
Figure 3 of the ’374 patent is reproduced below.

Figure 3 is a block diagram illustrating a failed attempt to reach a called party
due to the loss of the TA in a “3GPP [sic, 3G]” All-IP mobile network. Id. at
2:20-21. That is, this diagram presumes that the subscriber’s TA, which had
been stored in a volatile memory at the S-CSCF during normal operation (id.
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at 4:26-27), has been lost due to a crash of the S-CSCF. In response to a new
call request, the I-CSCF (in step 1) obtains the “information” (i.e., address
14
)
of the S-CSCF from the HSS and then (in step 2) uses that information to
send a setup message to the S-CSCF. Id. at 3:67-4:1. However, because the
S-CSCF no longer stores the subscriber’s TA, the called party is not
reachable in step 3. Id. at 4:1-3.
The ’374 patent describes three different options for protecting against
TA loss (e.g., due to a crash of the S-CSCF):
The applicants have proposed . . . one option in which the TA is
forwarded to the HSS and another option in which there is a
security backup of the TA within the CSCF. The TA of the
subscriber [in the first option] should be forwarded to the HSS
at registration and downloaded from the HSS to the S-CSCF
during recovery. Still another option is to have a permanent
IPv6 (Internet Protocol Version 6) address allocated to the
subscriber and to have the subscriber update its current Care-of
Address (part of the TA) to the Home Agent upon obtaining the
current TA.
Id. at 4:6-16 (emphasis added). The claims of the ’374 patent are directed to
the first and second of the three options identified above. The third option,
which is depicted in Figure 5 (reproduced and briefly described infra), is
recited in claims of the ’081 patent (involved in the ’899 reexamination
proceeding, which is the subject of the ’131 Appeal Decision).

14
’347 patent 4:23.
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The first option (i.e., storing a backup TA in the HSS), which is the
subject of the claims that are the subject of Requester’s appeal (e.g., claim 1),
is illustrated by Figures 4A and 4B. We begin our analysis with Figure 4B,
which is reproduced below.

“Figure 4A [sic, 4B] illustrates sending [a] subscriber TA to [an] S-CSCF
and then forwarding it to [the] HSS at registration.” Id. at 2:21-22.
15
As will
become apparent, in accordance with normal operation (not depicted in
Figure 4B and not using any of the above-identified three options), the
roaming subscriber sends (at step 1) an Application Level (AL) registration
request, including the subscriber’s TA, to the S-CSCF. Id. at 4:35-37. Then,

15
In the “Brief Description of the Drawings” at column 2, lines 22-26, the
description of Figure 4A instead applies to Figure 4B and vice-versa.
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(in step 2) the S-CSCF sends to the HSS for storage therein an AL Location
Update that includes the S-CSCF address (but not the subscriber’s TA).
In accordance with the above-described first option, which is depicted
in Figure 4B, the AL Location Update includes the subscriber’s TA as well
as the S-CSCF address, both of which are forwarded (in step 2) from the S-
CSCF to the HSS for storage therein. Id. at 4:37-38. Next, the HSS (in
step 3) stores the TA and the S-CSCF address “in a hard disk, for example, or
other non-volatile memory.” Id. at 4:38-40. The copy of the TA that is
stored in the HSS is referred to as a “safe copy.” Id. at 4:20. The HSS (in
step 4) forwards an AL Location Update acknowledgement to the S-CSCF,
which (in step 5) stores the TA and subscription profile and (in step 6)
forwards an AL registration acknowledgement to the registering subscriber.
Id. at 4:40-45.
Figure 4A is reproduced below.
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Figure 4A illustrates an example of relying on the “safe copy” of the TA
stored in the HSS (per Figure 4B) in order to reach the called party after the
TA that was stored in the S-CSCF has been lost due to a crash. Id. at
4:20-34. An incoming call from an REP (Remote End-Point) is received by
the S-CSCF in step 1. Id. at 4:26-28. In step 2, the S-CSCF looks for the
subscriber’s TA so as to route the call but is unable to find it. Id. at 4:28-29.
In step 3, the S-CSCF initiates restoration of the subscriber’s TA (and
possibly other data) from the HSS to the S-CSCF. Id. at 4:29-31. In step 4,
the TA that has been restored to the S-CSCF permits the call to be routed
from the S-CSCF to the called subscriber. Id. at 4:33-34.
The second of the two above-described options (i.e., “a security
backup of the TA within the CSCF”), which is the subject of the rejected
claims, is not depicted in a figure. Independent claim 5 recites storage of the
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TA in “a non-volatile memory of the S-CSCF” (emphasis added) and
independent claim 10 recites “a non-volatile memory at the S-CSCF.”
(emphasis added). Claims Appendix, PO Appeal Br. 31- 32.
16
Furthermore,
as already noted, the ’374 patent explains that “[f]or example, the
subscriber’s TA can be backed up in a hard disk, or other non-volatile
memory in the S-CSCF.” Id. at 4:46-50 (emphasis added).
The third option, which is depicted in Figure 5, is recited in the claims
of the ’081 patent (involved in the ’899 reexamination proceeding, the
subject of the ’131 Appeal Decision). We discuss this third option because it
sheds some light on the question of the type of “transport address” that stored
in Foti’s HSS/location server 29.
Figure 5 is reproduced below

16
All of the claim language quotations in this opinion are based on the
Claims Appendix at pages 31-34 of Patent Owner’s Appeal Brief.
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Figure 5 illustrates the signal flow that occurs in the situation where (as
indicated at step 1 in the dashed-line box) the S-CSCF has crashed and
restarted without retaining any memory of (i) the mobile stations (MSs) that
were previously registered with the S-CSCF or (ii) the care-of addresses of
these mobile stations. Id. at 5:7-13. The UMS is a User Mobility Server. Id.
at 1:61. As explained at pages 16-17 of the ’131 Appeal Decision, Requester
argued, without challenge by Patent Owner, that a UMS is part of an HSS.
Specifically, Requester provided the following annotated copy of TR’s
Figure 5.2 (at TR page 15) as support for the argument that “TR shows the
equivalence of the HSS and UMS concepts.”
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’131 Appeal Decision 16. The UMS of Figure 5 stores the address of the S-
CSCF (’374 patent 5:20-21) and also the subscriber’s home address. See id.
at 5:32-33 (“The UMS returns at 7 the Home Address of the MS to the S-
CSCF.”).
The third option, depicted by Figure 5, uses a subscriber’s home
address as follows. While away from home, a mobile subscriber registers
one of its care-of addresses (referred to as the “primary care-of address”)
with a router on its home link, requesting this router to function as a “home
agent.” Id. at 3:32-34 and 39-41. The home agent thereafter uses “proxy
Neighbor Discovery” to intercept any IPv6 packets addressed to the
subscriber’s home address (or home addresses) on the home link and tunnels
each intercepted packet to the subscriber’s primary care-of address. Id. at
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3:41-45.
17
If the S-CSCF has lost the care-of address due to a crash, the S-
CSCF thereafter (at 7) obtains the called subscriber’s home address from the
UMS and then (at 8) forwards the call signaling to the home agent at the
home address. Id. at 5:32-35. The home agent receives the packets (at 9)
and forwards them (at 10) to the subscriber’s mobile station, using the care-
of address obtained during the Mobile IP signaling exchanged when the care-
of address was created (the usual procedure in Mobile IP. Id. at 5:36-39.
Thus, in the Figure 5 option the UMS, which Patent Owner does not
deny is part of an HSS, stores a subscriber’s home address.

E. The Claims and Rejections That Are the Subject of Patent Owner’s Cross-
Appeal
Rejected claims 5, 6, 10, and 11, which are the subject of Patent
Owner’s cross-appeal, are directed to the first option, i.e., storing the TA in
“a non-volatile memory “of the S-CSCF” (claim 5) or “at the S-CSCF”
(claim 10).
Claim 5 reads as follows:
5. (Original Patent Claim) A method comprising:
receiving, at a Serving-Call State Control Function
(S-CSCF), a registration request from a subscriber, wherein the
registration request comprises a Transport Address (TA), and

17
Home agents are also described in Xu, which is discussed at Landauer
Declaration paragraph 18.
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further wherein the TA comprises a Care of Address of the
subscriber;
storing the TA in a non-volatile memory of the S-CSCF;
and
restoring the TA to the S-CSCF from the non-volatile
memory in response to a loss of the TA by the S-CSCF.

(Emphasis added.)
Independent claims 5 and 10 stand rejected under 35 U.S.C. § 103(a)
for obviousness over Foti in view of Bharatia and Rune. RAN 57.
Dependent claims 6 and 11 (each reciting “wherein the non-volatile
memory comprises a hard disk drive”) stand rejected under § 103(a) for
obviousness over Foti in view of Bharatia, Rune, and Koivunen. Id. at 74.

D. The Claims and Proposed Rejections That Are the Subject of Requester’s
Appeal
Claims 1-4, 7-9, 12-17, and 19, which are the subject of Requester’s
appeal, are directed to HSS backup of the TA. The independent claims
include claims 1, 7, 12, and 16. Claim 1, which is representative, reads as
follows:
1. (Amended) A method comprising:
receiving, at a Serving-Call State Control Function
(S-CSCF), a registration request from a subscriber in a mobile
network, wherein the registration request comprises a Transport
Address (TA) of the subscriber;
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providing the TA and an address of the S-CSCF from the
S-CSCF to a Home Subscription Server (HSS) for storage at the
HSS; and
receiving the TA from the HSS in response to a loss of
the TA by the S-CSCF such that the TA is restored at the
S-CSCF.
Claims 1, 4, 7, 12-17, and 19 are proposed to be rejected under
35 U.S.C. § 103(a) for obviousness over Foti in view of Bharatia and Rune.
Req. Appeal Br. 4, sec. VI, para. 1.
Claims 2, 3, 8, and 9 are proposed to be rejected under § 103(a) for
obviousness over Foti in view of Bharatia, Rune, and Koivunen. Id. at
sec. VI, para. 2.

F. The “External Evidence[]” Relied on by the Examiner
TR and the following additional documents are identified by the
Examiner (RAN 8) as “External Evidence[]”:
(1) the “3GPP presentation” (i.e., “Lucent Presentation”),
18

(2) Basu,
19

18
The Examiner’s term “3GPP Presentation” refers to the document
identified in the Request (at page 15, sec. II, Ex. F) as the “Lucent
Presentation” (Req. Appeal Br. Ex. 4), i.e., cdma2000 3GPP2 All IP Network
reference Model (End-to-end packet), presented in February 2000 at a 3GPP
conference in San Diego, California. We note that the text quoted at RAN
page 8 from the “3GPP Presentation” (including the term “Lucent
Technologies”) appears in slide 3 of the Lucent Presentation.
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(3) Xu,
20
and
(4) Foti II.
21

The Examiner’s statement that “[t]he ‘TR’, ‘3GPP presentation,’ ‘Basu’ and
‘Xu’ are discussed . . . merely to show the background understanding of one
of ordinary skill in the art” (RAN 66) presumably also applies to Foti II.
The record also includes a document identified at page 8 of the
Request as “a December, 2000 3GPP publication.” Request Ex. E; Req.
Resp’t Br. Ex. 8. This document (hereinafter “3GPP Publication”) is
described in the List of Exhibits (Request 19) as: “23.228 V 1.4.0, published
December 2000 by the 3
rd
Generation Partnership Project (3GPP).” This
document is cited by Requester along with the Lucent Presentation and Basu
to show that “the location server is a known component of the HSS.” Req.
Appeal Br. 6.

19
Kalyan Basu & Hee Lee, Challenge of Universal Mobility & Wireless
Internet, IEEE Wireless Communication and Networking Conf. (Sept. 2000).
Req. Appeal Br. Ex. 5.
20
Yingchun Xu, US 6,963,582 B1, issued November 8, 2005. Request
Ex. D.
21
George Foti & Sorin Surdila, US 6,751,204 B1, issued June 15, 2004.
Request Ex. L.
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II. FOTI HAS NOT BEEN ANTEDATED PURSUANT TO
37 C.F.R. § 1.131
We hereby incorporate by reference in this opinion our analysis in the
’131 Appeal Decision (at section II, pages 21-46) of the evidence submitted
under 35 U.S.C. § 1.131 in the unsuccessful attempt to antedate Foti in the
‘899 reexamination proceeding. As noted therein (at page 23), neither
Requester nor the Examiner denies that the evidence establishes conception
of the claimed subject matter prior to Foti’s September 29, 2000, filing date.
However, we agreed with Requester and the Examiner that the evidence fails
to support the assertion of diligence running from prior to that date up to
March 12, 2001, which is the actual filing date of the parent ’374 patent
involved in the ’004 reexamination proceeding now before us and the
effective filing date of the ’081 patent involved in the ’899 reexamination
proceeding. Id. at 23-46.
In this ’004 reexamination proceeding, as in the ’899 reexamination
proceeding, Patent owner asserts conception prior to Foti’s September 29,
2000, filing date coupled with diligence from prior to that date up to
March 12, 2001.
22

22
37 C.F.R. § 1.131 (2012) reads in relevant part:
(b) The showing of facts shall be such, in character and
weight, as to establish reduction to practice prior to the effective
date of the reference, or conception of the invention prior to the
effective date of the reference coupled with due diligence from
prior to said date to a subsequent reduction to practice or to the
(Continued on next page.)
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“The issue of conception is a question of law based on underlying
factual findings.” Spansion, Inc. v. Int’l Trade Comm’n, 629 F.3d 1331,
1356 (Fed. Cir. 2010). “The question of reasonable diligence is one of fact.”
Brown v. Barbacid, 436 F.3d 1376, 1379 (Fed. Cir. 2006).

A. Conception Is Not Disputed
Requester does not challenge the Examiner’s conclusion that the
Yeadon ’004 Declaration (including exhibits) is sufficient to establish
conception of the claimed invention prior to Foti’s September 29, 2000,
filing date. RAN 36. The Examiner (id.) bases this conclusion on the
following four exhibits:
(1) A first Nokia Invention Report entitled “Protection of the location
information of the roaming subscriber in 3G All-IP Mobile Network”
(hereinafter “First Invention Report”). Yeadon ’004 Declaration at para. 4
and Ex. A.
(2) A second Nokia Invention Report entitled “Mobile Terminated Call
handling for CSCF crashes”). Id. at para. 5 and Ex. B.
(3) The first draft of the patent application (id. at para. 8 and Ex. F).
(4) A draft patent application including revisions from inventors Phan-
Anh, Verkama, and Einola. Id. at para. 11 and Ex. I.

filing of the application.
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Of the two invention reports, Patent Owner in this reexamination
proceeding relies on only the first invention report as evidence of conception.
PO Appeal Br. 16-17, sec. 2. The first invention report describes the above-
identified first and second options of the invention as follows:
2. A summary of the invention
This invention set[s] the principle that the TA of the 3G All-IP
subscriber must be protected against los[s] on the same level as
for [the] S-CSCF address.
Two options are proposed to implement this principle.
Option 1 (forwarding the TA to HSS) has impact on the
standardization of the Cx interface between CSCF and HSS:
The TA of the subscriber is carried via this interface toward
HSS at the registration and download[ed] from the HSS to S-
CSCF at SPD recovery.
Option 2 (security backup of the TA within CSCF) can be
implemented without any standardization effort.
First Invention Report 3 (formatting altered).

B. Diligence Has Not Been Demonstrated
The evidence relied on to prove diligence is essentially the same
as the evidence of diligence relied on the ’899 proceeding. The Yeadon ’004
Declaration differs from the Yeadon ’899 Declaration only in several minor
respects (in addition to identifying the patent under reexamination as the ’374
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patent rather than the ’081 patent in paragraphs 1-2). The other differences
are as follows.
Paragraph 12 of the Yeadon ’899 Declaration describes the date of
Exhibit J as follows:
12. Attached to this Declaration is a true and exact
copy of an email from Mr. Zykorie providing a revised draft
patent application. See, Exhibit J. Although the date on this
document is redacted, it is before September 29, 2000, i.e., the
filing date of said reference.
Yeadon ’899 Decl. para. 12 (emphasis added). The corresponding paragraph
in the Yeadon ‘004 Declaration describes a new Exhibit J that differs from
Exhibit J to the Yeadon ’899 Declaration by additionally including
following handwritten text that reads: “9/21/00 @ 411PM.” Based on this
handwritten text, the Yeadon ’004 Declaration states:
12. Attached to this Declaration is a true and exact
copy of an email from Mr. Zykorie providing a revised draft
patent application. See, Exhibit J. The email is dated by hand
September 21, 2000, and the attached document is named “09-
21-00 third draft.doc.” The text of the email refers to
“tomorrow” as September 22, 2000.
Yeadon ’004 Decl. para. 12 (emphasis added). This revised testimony and
new Exhibit J presumably are relied on to establish that work was done on
the draft application just prior to September 29, 2000. This new evidence
therefore is cumulative to the emails that comprise Exhibit K (identical in
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both reexamination proceedings), which we found sufficient to make such a
showing:
We do not agree that the email evidence fails to show any
work on the parent application just prior to September 29, 2000.
Exhibit K consists of six emails between Mr. Szalai (Patent
Engineer for Nokia) and Mr. Zykorie (outside counsel), which
are dated from September 29, 2000, to October 24, 2000. . . .
These first two emails are sufficient to establish that
work on the draft application occurred just prior to Foti’s
September 29, 2000, effective date.
’131 Appeal Dec. 27.
Another difference is that paragraph 16 of the Yeadon ’899
Declaration includes a table listing thirty-six applications (some of which
issued as patents) having overlapping inventorship with the inventorship in
the ’081 patent, of which eighteen applications name Mr. Faccin as an
inventor. The table in the corresponding paragraph in the Yeadon ’004
Declaration identifies eighteen applications (some of which issued as patents)
having overlapping inventorship with the inventorship in the ’374
application, including twelve applications and patents naming Mr. Faccin as
an inventor. All of the applications identified in paragraph 16 of the Yeadon
’004 Declaration are included in the applications identified in the Yeadon
’899 Declaration. Consequently, for the reasons given at pages 34-45 of the
’131 Appeal Decision, we are not persuaded that the work on these
applications counts toward diligence. One of these reasons, for example, is
that “Patent Owner has not cited, and we are unaware of, any authority
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holding that common or overlapping inventorship is a sufficient basis for
allowing work on other applications to count toward diligence.” ’131 Appeal
Dec. 42.
For the above reasons and the other reasons given in the ’131 Appeal
Decision, we are not persuaded of error in the Examiner’s finding that the
evidence of record fails to establish the requisite diligence. RAN 35.

C. Conclusion
Patent Owner has not persuaded us of error in the Examiner’s
conclusion that the evidence submitted under 37 C.F.R. § 1.131 fails to
antedate Foti with respect to any of the ’374 patent claims.

IV. THE REJECTIONS OF CLAIMS 5, 6, 10, AND 11
(STORING A BACKUP CARE-OF ADDRESS IN A NON-VOLATILE
MEMORY “OF” OR “AT” THE S-CSCF)
A. The Scope and Meaning of Claims 5 and 10
“During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification. Therefore, we look to the specification to see if it provides a
definition for claim terms, but otherwise apply a broad interpretation.” In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation
omitted).
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The prosecution history also can aid in the interpretation of claims
under reexamination. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973,
977 (Fed. Cir. 2014) (“[T]he prosecution history, while not literally within
the patent document, serves as intrinsic evidence for purposes of claim
construction. This remains true in construing patent claims before the PTO.
See In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).”). See also In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language
carrying a narrow meaning, the PTO should only limit the claim based on the
specification or prosecution history when those sources expressly disclaim
the broader definition.”). Although some of the original prosecution history
is discussed in the Request (at pages 3-7) and in Requester’s Appeal Brief
(at pages 11-14), that discussion concerns only the claims that are the subject
of Requester’s appeal (i.e., using the HSS to store a backup TA). This
prosecution history, therefore, is addressed in the discussion of the proposed
rejections.
Claim 5 is reproduced again below for convenience:
5. (Original Patent Claim) A method comprising:
receiving, at a Serving-Call State Control Function
(S-CSCF), a registration request from a subscriber, wherein the
registration request comprises a Transport Address (TA), and
further wherein the TA comprises a Care of Address of the
subscriber;
storing the TA in a non-volatile memory of the S-CSCF;
and
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restoring the TA to the S-CSCF from the non-volatile
memory in response to a loss of the TA by the S-CSCF.
(Emphasis added.)
Claim 10 is reproduced below:
10. (Original Patent Claim) A non-transitory program
storage device readable by a machine, non-transmissible,
tangibly embodying a program of instructions executable by the
machine to cause the machine to:
receive, at a Serving-Call State Control Function
(S-CSCF), a registration request from a subscriber, wherein the
registration request comprises a Transport Address (TA) of the
subscriber;
store the TA in a non-volatile memory at the S-CSCF;
and
restore the TA to the S-CSCF from the non-volatile
memory in response to a loss of the TA by the S-CSCF.
(Emphasis added.)
We hereinafter refer to the three steps in each of claims 5 and 10 as the
“first (registration) step,” “second (storing) step,” and “third (restoring) step.”
We note that only claim 5 of claims 5 and 10 further specifies that the
recited “TA” comprises a “Care of Address” of the subscriber. Furthermore,
none of the other independent claims (namely, claims 1, 7, 12, and 16)
specifies that the TA is a “Care of Address.” However, claim 4, which is
dependent upon claim 1, specifies that the recited “TA” comprises a “Care of
Address.”
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We interpret claims 5 and 10 as implying that the recited “S-CSCF”
provides volatile storage of the TA both prior to the recited “loss of the TA
by the S-CSCF” and following the recited restoration of the lost TA to the S-
CSCF. No different interpretation is offered by Requester, Patent Owner, or
the Examiner.
As already noted, Claim 5 recites “a non-volatile memory of the S-
CSCF” (emphasis added), whereas claim 10 recites “a non-volatile memory
at the S-CSCF” (emphasis added). The “Detailed Description” section in the
’374 patent describes this non-volatile memory as “a security backup of the
TA within the CSCF” (’374 patent 4:9-10) (emphasis added) and also states:
In the second option, the same level of protection against
loss applies for the subscriber’s TA stored in the S-CSCF as that
of the S-CSCF address stored in the HSS. For example, the
subscriber’s TA can be backed up in a hard disk, or other non-
volatile memory in the S-CSCF.
Id. at 4:46-50 (emphasis added). We understand the above-quoted
descriptions of the non-volatile memory as being “within” or “in” the S-
CSCF to mean that the term “S-CSCF” as used in the “Detailed Description”
and the claims of the ’374 patent is broad enough to read on the combination
of (i) a prior-art S-CSCF that does not include a non-volatile memory and
(ii) a non-volatile TA memory.
However, we conclude that neither the “non-volatile memory of the S-
CSCF” language of claim 5 nor the “non-volatile memory of the S-CSCF”
language of claim 10 requires the non-volatile memory to be “within” or “in”
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the S-CSCF. Requester and the Examiner appear to broadly interpret this
claim language to mean that the non-volatile memory is “associated with” the
S-CSCF. Specifically, the Examiner when discussing the obviousness of
claim 10 states: “The question . . . becomes: would one of ordinary skill
recognize that . . . storage of the TA [in Foti] may . . . be performed in a non-
volatile memory associated with the S-CSCF?” RAN 68 (emphasis added)
(quoting Claim Chart AA at 9, limitation 5.2). We agree with this claim
interpretation, which is not acknowledged or addressed in Patent Owner’s
briefs.
In any event, as explained below, claims 5 and 10 are unpatentable for
obviousness over Foti in view of Bharatia and Rune even assuming these
claims must be interpreted as requiring that the non-volatile memory be part
of the recited “S-CSCF.”
Although it is not asserted by Patent Owner, Requester, or the
Examiner that the claim language implies a physical restriction on the
location of the non-volatile memory, such as that it resides in same physical
location as the rest of the claimed S-CSCF where the non-volatile memory is
part of the recited S-CSCF, we conclude that the claims do not recite or
imply a physical restriction on the location of the non-volatile memory.
23

23
Although Mr. Landauer testified, when addressing the rejection of
dependent claims 6 and 11, that it would have been obvious to modify Foti to
locate the claimed non-volatile TA memory and Foti’s Visited CSCF on the
same server (Landauer Decl. para. 35), he does not contend that this is
(Continued on next page.)
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B. Foti (Also Referred To As “Foti I”)
Foti’s invention relates to call processing by a CSCF in a third
generation Internet Protocol (3G.IP) network. Foti 1:7-10. Foti does not
mention the possibility of a failure or crash of an S-CSCF or the consequent
loss of a transport address stored therein. For such teachings, the Examiner
relies on Bharatia and Rune.
As pointed out by Requester, Foti’s invention addresses the fact that “a
CSCF may be a home CSCF, a serving CSCF, or neither[,] depending upon
the particular circumstances of a call (see, e.g., Col[.] 3, lines 41-53).” Req.
Appeal Br. 5. Foti more particularly explains:
[C]all setup messages such as the Fast Setup message and the
Location Request (LRQ) message for H.323, and the INVITE
message for the Session Initiation Protocol (SIP), do not have
properties that indicate to a CSCF receiving them what call
processing functions should be performed. Therefore, call
processing cannot continue until the CSCF determines what call
processing functions it should perform. The present invention
provides a CSCF and method by which any CSCF receiving a
call setup message can determine what call processing functions
it should perform.
Id. at 1:38-50 (emphasis added).
As explained below, the call signaling example depicted in Foti’s
Figure 2 (consisting of Figures 2A and 2B, reproduced and discussed infra)
employs three different CSCFs to complete the call.

required by any of claims 5, 6, 10, and 11.
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Foti’s Figure 1 is reproduced below.

Figure 1 is a flow chart illustrating the steps of Foti’s “preferred embodiment
of the relationship function utilized in each CSCF in a 3G.IP network.” Id. at
3:4-6 (emphasis added). Thus, as explained below, the “relationship
function” of Figure 1 is performed by each of the three CSCFs involved in
setting up the call in the Figure 2 example.
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The relationship function of Figure 1 operates as follows. At step 11,
an incoming call setup message is received by a CSCF in the 3G.IP network.
Id. at 3:6-7. The call setup message, which may be, for example, “a Fast
Setup message or LRQ message for H.323, or an INVITE message for SIP,”
includes the “destination alias” (also referred to as an “identifier”
24
) and the
H.245 address of the called subscriber. Id. at 3:7-11. At step 12 (“IS CSCF
HOME CSCF FOR CALLED SUBSCRIBER?”), the receiving CSCF
determines whether the Home CSCF of the called subscriber. Id. at 3:11-13.
If the answer is NO, processing proceeds to step 13 (“IS CSCF SERVING
CSCF FOR CALLED SUBSCRIBER?”). Id. at 3:13-16.
If the receiving CSCF currently is not the serving CSCF (i.e., S-CSCF)
for called subscriber (i.e., a NO at step 13), processing proceeds to step 14
(“SEND QUERY MESSAGE TO DNS FOR NEXT HOP ADDRESS”). Id.
at 3:16-18. Under these circumstances, as explained below in the discussion
of the signaling diagram depicted in Figure 2, the DNS responds by
providing the receiving CSCF with the IP address of the Home CSCF (in
step 39 of Figure 2A). Id. at 4:3-5.
On the other hand, if the receiving CSCF is the called subscriber’s
S-CSCF (i.e., a YES in step 13), processing proceeds to step 15 (“OBTAIN
CALLED SUBSCRIBER’S TRANSPORT ADDRESS AND SET UP
CALL”).

24
Foti 3:55.
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Returning to step 12 of Figure 1, if the receiving CSCF is the called
subscriber’s Home CSCF (a YES in step 12), processing moves to step 16
(“IS CALLED SUBSCRIBER IN HOME AREA?”). Id. at 3:22-24. In
step 16, the CSCF checks its internal database to determine whether the
called subscriber is located in the home area (i.e., not roaming). Id. at
3:24-26. If the subscriber is not roaming (a YES in step 16), “the process
moves to step [15] where the CSCF obtains the called subscriber’s transport
address and proceeds to set up the call.” Id. at 3:26-28.
If, on the other hand, the called subscriber is roaming (a NO in
step 16), processing proceeds to step 17 (“OBTAIN LOCATION
INFORMATION FROM HSS”). As shown in Figure 2 (discussed below),
the location information obtained in step 17 is the address of the Serving-
CSCF (i.e., Visited CSCF 32). Step 17 is followed by step 18 (“FORWARD
CALL SETUP MESSAGE TO VISITED CSCF”).
As explained above, a “transport address” (which Foti does not
abbreviate as “TA”) can be obtained in step 15 under either of the following
two sets of calling conditions:
1. The receiving CSCF is the called subscriber’s S-CSCF (a NO in
step 12, followed by a YES in step 13), i.e., the called mobile subscriber is
roaming (and registered with the S-CSCF); or
2. The receiving CSCF is the called subscriber’s Home CSCF (a YES
in step 12) and the called subscriber is not roaming (a YES in step 16).
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As explained below in the discussion of Figure 2, the “transport
address” that is obtained under the first set of conditions is obtained from
location server 33 in Serving Network 31 and would have been understood to
be a care-of address. In contrast, the “transport address” that is obtained
under the second set of conditions is obtained from location server 29 in
Home Network 26 and would have been understood to be the subscriber’s
home address. Therefore, we do not agree with Requester’s position, stated
in the proposed rejection of claim 1 (discussed infra), that location server 29
stores a care-of address while the called subscriber is roaming (and registered
with the S-CSCF).
The first of the above-identified two sets of calling conditions is the
subject of Foti’s Figure 2, which illustrates message flow between nodes in a
3G.IP network when call processing is performed in accordance with Foti’s
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invention. Id. at 3:36-39. Figure 2A is reproduced below.

Figure 2A shows an example of call setup between (a) Originating Mobile
Equipment (ME) 21, which can include an MS (mobile station); and
(b) Terminating ME 22 (id. at 3:39-43), which presumably also can include a
mobile station. The signaling example depicted in Figures 2A and 2B occurs
under the above-described first set of calling conditions (i.e., the called
mobile subscriber is roaming and call signaling is being handled by an S-
CSCF). In addition, the Figure 2 example adds another calling condition,
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which is that the first CSCF to receive the call request is a gatekeeper CSCF
(GK CSCF) rather than the home CSCF or the S-CSCF.
The call setup example depicted in Figure 2 involves the following
three CSCFs: (i) a Gatekeeper CSCF (“GK CSCF”) 24 in Origination
Network 23, (ii) a Home CSCF 28 in Home Network 26, and (iii) a Visited
CSCF 32 in Serving Network 31. Id. at 3:43-49. The Visited CSCF is
additionally identified in step 47 of Figure 2B (reproduced below) as a
“Serving” CSCF (i.e., an S-CSCF).
Home Network 26 additionally includes an HSS 27 and a location
server 29, whereas Serving Network 31 additionally includes a location
server 33. As explained below, these location servers store the transport
addresses obtained in step 15 of Figure 1.
Turning now to the call processing steps, Figure 2A shows that
originating ME 21 initiates a call by sending an Admission Request (ARQ)
message 34 to the GK CSCF, which responds by returning an Admission
Confirm (ACF) message 35 to the originating subscriber. Id. at 3:50-53.
The Originating ME then sends to the GK CSCF a Fast Setup message 36
that includes “an identifier (Destination Alias) and a destination media
address (H.245 Address)” for Terminating ME 22. Id. at 3:53-57. Upon
receipt of Fast Setup message 36, the GK CSCF (at step 37) performs the
relationship function of Figure 1 in order to determine its relationship to the
called mobile subscriber (i.e., terminating ME 22). Id. at 3:57-60.
Specifically, Foti explains:
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In the current situation, the GK CSCF 24 is neither the
Home CSCF nor the Serving CSCF for the called mobile
subscriber. Therefore, referring briefly to FIG. 1, it can be seen
that the process proceeds from step 11 where the Fast Setup
message is received, to steps 12, 13, and 14 where it is
determined that a query message should be sent to the DNS 25
to obtain a next hop address for the Fast Setup message.
Therefore, referring once again to FIG. 2, the GK CSCF sends a
Query message 38 for the Destination Alias to the DNS 25 in
the Originating Network. This Query results in a Response to
the GK CSCF at 39 which indicates the IP address of the Home
CSCF 28.
Id. at 3:61-4:5 (emphasis added).
In response to receiving the identification of the IP address of the
Home CSCF, the GK CSCF sends a Location Request (LRQ) message 41 to
the Home CSCF, which then performs (at step 42) the relationship function
of Figure 1. Id. at 4:6-11. The Home CSCF thereby determines that (i) it is
the Home CSCF for the called mobile subscriber and (ii) the called mobile
subscriber currently is roaming, i.e., not located in the home area. Id. at
4:11-17. These steps correspond to Figure 1 as follows. After step 11, in
which the LRQ message is received, the process obtains a YES at step 12
(id. at 4:11-14) and a NO at step 16, wherein the Home CSCF uses its
internal database to determine that the called mobile subscriber is not
currently located in the home area. Id. at 4:14-17.
Still referring to Figure 1, the process moves to steps 17 and 18, in
which the Home CSCF obtains the location information (i.e., address) for the
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Serving CSCF from the HSS and then forwards the LRQ (Location Request)
message to the Visited CSCF. Id. at 4:17-20. These steps are performed in
Figure 2A as follows. The Home CSCF sends a Query 43 to HSS 27 to
obtain the location information for the called mobile subscriber, and the HSS
responds (at step 44) with the IP address of the Visited CSCF. Id. at 4:21-26.
Next, the Home CSCF sends (at step 45) the IP address of the Visited CSCF
to the GK CSCF, which responds by sending a Fast Setup message 46 to the
Visited CSCF (id. at 4:26-29). This Fast Setup message includes the
Destination Alias and the H.245 Address for Terminating ME 22. Id. at
4:30-31.
Figure 2B is reproduced below.
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Figure 2B shows the remainder of the signal processing example. The
Visited CSCF responds to receipt of the Fast Setup message by performing
(at step 47) the relationship function of Figure 1. Id. at 4:31-35. The Visited
CSCF determines that it (i) is not the Home CSCF for the called mobile
subscriber (a NO at step 12) and (ii) is the serving (i.e., visited) CSCF for the
called mobile subscriber (a YES at step 13). The process then moves to step
15 (“OBTAIN CALLED SUBSCRIBER’S TRANSPORT ADDRESS AND
SET UP CALL”). Referring again to Figure 2A, the Visited CSCF obtains
the transport address of the called mobile subscriber from location server 33
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in Serving Network 31 as follows: “[T]he Visited CSCF sends a Routing
message 48 for the Destination Alias to the Location Server 23 [sic; 33] in
the Serving Network 31. This results in a Response to the Visited CSCF at
49 which indicates the transport address of the Terminating ME 22.” Id. at
4:42-47.
Foti does not describe the “transport address” stored in location server
33 as a “care-of address” or “care of address,” terms that do not appear in
Foti. The Examiner therefore is correct, when discussing claim 5 (which
recites a “care-of address”), to find that Foti fails to explicitly teach that the
transport address (TA) obtained from location server 33 is a “Care of
Address.” See RAN 58 (“Foti does not explicitly teach the TA comprises a
Care of Address of the subscriber.”). However, the Examiner follows this
finding with a further finding that the transport address obtained from
location server 33 would have been understood to be a care-of address:
[W]hen a mobile IP user roams to a foreign network, they are
assigned a care-of[ ]address, which is an IP address for the
roaming user at the foreign network. See, e.g., Xu at Col. 3,
line 61 through Col. 4, line 19. . . .
The TA for a mobile user thus corresponds to their care of
address when the mobile user roams to a foreign network. One
of ordinary skill would thus recognize that the TA retrieved from
the location server [33] in Foti I is a care[-]of address if the
mobile user is roaming.
RAN 58-59 (emphasis added). Patent Owner has not challenged this finding
by the Examiner, which we find to be reasonable.
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We find that the calling conditions depicted in Figure 2 (i.e., the called
subscriber is roaming and registered with an S-CSCF) are the subject of
Foti’s claim 3, reproduced below:
3. The method of processing a call of claim 1 wherein the
step of performing different call processing steps depending on
a result determined by the relationship function includes the
steps of:
upon determining that the CSCF is not the Home CSCF:
determining whether the CSCF is currently serving
the called MS; and
obtaining a transport address for the called MS
from a location server and setting up the
call, upon determining that the CSCF is
currently serving the called MS.
Foti col. 5 (emphasis added). Thus, as explained above, the recited “location
server” of claim 3 corresponds to location server 33 (in the Visited Network)
and the recited “transport address” would have been understood to be a care-
of address.
Foti does not provide a flow chart depicting the signaling that occurs
when a subscriber is not roaming and thus is being served by the subscriber’s
Home CSCF. However, this situation is addressed by Foti’s claim 2, which
reads as follows:
2. The method of processing a call of claim 1 wherein the
step of performing different call processing steps depending on
a result determined by the relationship function includes the
steps of:
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upon determining that the called MS is located in the
Home CSCF’s service area:
obtaining a transport address for the called MS from a
location server; and
setting up the call.
Foti col. 5 (emphasis added). Requester, correctly in our view, reads the
“location server” of claim 2 on location server 29, which like HSS 27 is
located in the Home Network:
Foti shows a component of the HSS denoted as a “location
server” [29] that stores the TA. . . . As recited in Foti’s claim 2,
the HSS [27]/location server [29] provides the transport address
for this called party (see also the Landauer Supplemental
Declaration, ¶15).
Req. Appeal Br. 6 (emphasis added). In his cited testimony, Mr. Landauer
explains:
[W]hen one considers the teachings of Foti I as shown in
Figure 1, which indicates that a home CSCF obtains the
transport address of a non-roaming called party in its step 15,
combined with the language of Foti’s Claim 2, which indicates
that the home CSCF obtains the transport address of the called
party from a location server, and further combined with Foti’s
disclosure of the location server in the home network
(element 29 in his Figures 2A and 2B), one of ordinary skill in
the art would recognize that Foti I does teach storing the TA in
the home HSS/location server, when the called party is currently
located and registered within his home serving area.
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Landauer Suppl. Decl. para. 15 (emphasis added). The Examiner agrees,
finding that “Foti I teaches that the home network’s HSS (in particular, the
location server [29] within the HSS) stores the TA of a non-roaming party as
discussed above.” RAN 26 (emphasis added).
Mr. Landauer does not explain whether the transport address that is
stored in and obtained from location server 29 is a home address or a care-of
address. Nor is this question addressed by Dr. Burger or the Examiner. As
explained in greater detail infra, one of Requester’s arguments in support of
the proposed rejection of claim 1 is based on the assumption that location
server 29 (in the Home Network) stores a copy of a roaming subscriber’s
care-of address. Req. Appeal Br. 14. We disagree with this assumption for
the following reasons. As noted in the ’374 patent, a subscriber who is not
roaming (i.e., is located in the subscriber’s Home area) can be reached using
the subscriber’s “home address.” See ‘374 patent at 3:4-6 (“A mobile
subscriber is always addressable by its home address, whether it is currently
attached to its home link or is away from home.”). Furthermore, as explained
in the above discussion of the UMS (which is part of an HSS
25
) depicted in
Figure 5 of the ’374 patent, the UMS stores the address of the S-CSCF (id.
at 5:20-21) and the subscriber’s home address. Id. at 5:32-33.
For the foregoing reasons, the “transport address” that Foti’s claim 2
recites is obtained from the location server (29) while the subscriber is not

25
TR 15, Fig. 5.2. As shown in Figure 2 of Foti, HSS 27 and location server
(Continued on next page.)
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roaming would have been understood to be a home address, whereas the
“transport address” that Foti’s claim 3 recites is obtained from the location
server (33) while the subscriber is roaming is a care-of address. Therefore,
the phrase “a transport address” in Foti’s following sentence would have
been understood to be a home address or a care-of address, depending upon
the calling conditions: “The network includes a Home Subscriber Server
(HSS) that stores location information for the called MS, a location server
that stores a transport address for the called MS, and a Domain Name Server
(DNS) that stores an address for a Home CSCF for the called MS.” Foti
2:11-16 (emphasis added).
It is also necessary to address Requester’s position that Foti’s location
server 33 (in the Serving Network) “is immune to the health of the S-CSCF
and is, therefore, non-volatile memory”). Req. Resp’t Br. 2 (emphasis
added). See also Claim Chart AA at 7 (“Foti I is teaching the persistent
storage of the TA at the location server [33] such that the storage is
independent of the health of the S-CSCF”) (quoted with approval in
ACP 71); Request 13-14 (“Foti I discloses the persistent storage of the TA,
which is also an identifier for the called party, in particular the called party’s
care of address.”).
Neither Requester nor the Examiner has identified--and we do not
see--any support in Foti for describing location server 33 as (1) “immune to”

29 are both located in the Home Network.
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(i.e., independent of”) the health of the Visited CSCF, or (2) providing “non-
volatile” (i.e., “persistent”) TA storage.
26
Neither of these two characteristics
is necessarily implied by the fact that Visited CSCF 32 and location server 33
are depicted separately in Foti’s Figure 2.

C. The Merits of the Rejection of Independent Claims 5 and 10
Foti does not describe Visited CSCF 32 as providing volatile storage
for Foti’s “transport address,” as implicitly required of the claimed
“S-CSCF” by claims 5 and 10. Requester and the Examiner rely on Bharatia
for a suggestion of modifying Foti to include a volatile cache memory in
order to provide “local” TA storage, which we understand to mean storage
associated with the Visited CSCF. Specifically, the Request states that
“[l]ocal storage of the TA at the S-CSCF is well-known – see, e.g., Bharatia
(Ex. H) at paragraph [0078].” Claim Chart AA at 10 (quoted with approval

26
Although Dr. Burger acknowledges the Examiner’s finding that location
server 33 provides “persistent” storage of the transport address, Dr. Burger
does not assert that, or explain why, this finding is correct, instead stating:
38. The [Non-Final] office action on page 13 states,
“Foti I is teaching the persistent storage of the TA at the location
server such that the storage is independent of the health of
the S-CSCF.” However, nowhere in the office action is there a
demonstration that one skilled in the art at the time the patent
was filed would have thought of storing the TA at the location
server for the purposes of availability of the TA to the S-CSCF.
. . .
Burger Decl. para. 38.
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in RAN 62). Paragraph 0078 states in relevant part: “The CSCF 110B may
cache access related information e.g., terminal IP address(es) where the
subscriber may be reached, etc.” (Emphasis added.)
Patent Owner does not deny that it would have been obvious in view
of Bharatia to modify Foti’s Visited CSCF to provide volatile TA storage.
Instead, Patent Owner argues that Bharatia’s cache memory is not a non-
volatile memory:
Bharatia . . . states only that a “CSCF 110B may cache
access related information.” However, Bharatia fails to indicate
how such information is “cached” at the “CSCF 110B.” Indeed,
Bharatia fails to provide any indication of a “non-volatile
memory” at an “S-CSCF.” Merely because a “CSCF 110B”
“caches” information does not mean that such information is
stored to a “non-volatile memory.” Instead, such information
was likely stored in a “volatile memory” that was susceptible to
faults at the “CSCF 110” as in Foti.
PO Appeal Br. 11. This argument is unpersuasive because, as explained
below, the Examiner relies on Rune rather than Bharatia for a suggestion of
modifying Foti’s Visited CSCF to provide non-volatile TA storage.
Turning now to the claim language, claim 5’s first (registration) step
reads as follows:
receiving, at a Serving-Call State Control Function (S-
CSCF), a registration request from a subscriber, wherein the
registration request comprises a Transport Address (TA), and
further wherein the TA comprises a Care of Address of the
subscriber[.]
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Requester’s discussion (at Claim Chart AA at 9, limitation 5.1) of this
claim 5 step relies on the arguments made regarding claim 1’s first step,
which reads as follows:
receiving, at a Serving-Call State Control Function
(S-CSCF), a registration request from a subscriber in a mobile
network, wherein the registration request comprises a Transport
Address (TA) of the subscriber[.]
The Examiner finds:
One of ordinary skill in the UMTS arts would readily
recognize that the roaming mobile station in Foti I (element 22
or I in Figures 2A and 2B) would register with the S-CSCF
because such a step is well known in the UMTS arts. See, e.g.,
section 6.2 of the TR, which describes an application level
registration providing TA (Transport Address) of the
subscriber[.]
RAN 58 (quoting Claim Chart BB at 1-2, limitation 1.1) (emphasis by
Examiner). Patent Owner does not challenge this finding by the Examiner or
direct any other argument to claim 1’s first step.
Claim 5’s second (storing) and third (restoring) steps read as follows:
storing the TA in a non-volatile memory of the S-CSCF;
and
restoring the TA to the S-CSCF from the non-volatile
memory in response to a loss of the TA by the S-CSCF.
For a teaching of further modifying Foti (as already modified in view
of Bharatia to provide “local” volatile TA storage) to perform these claim
steps, the Examiner relies on the following “control-plane node” analogy:
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[A] CSCF is a control plane node that is providing subscriber
data concerning a mobile user: in particular, the ‘374 patent
focuses on the provision by the S-CSCF of the TA for the
mobile user. Rune teaches that an analogous control-plane
node (the GLR [Gateway Location Register]) is immune to
crashes and subsequent loss of subscriber data by storing the
subscriber data in a non-volatile memory associated with the
GLR.
RAN 60 (emphasis added) (quoting Claim Chart AA at 9, limitation 5.2).
The Request explains in detail at page 11 why Foti’s S-CSCF and Rune’s
GLR are analogous “control-plane nodes.” Requester’s characterization of
an S-CSCF and Rune’s GLR as “control-plane node[s]” is not challenged by
Patent Owner or Dr. Burger.
Rune’s invention relates to mobile communications systems, and more
specifically, to recovery of a gateway location register (GLR) from a fault.
Rune 1:35-37.
The rejection of claims 5 and 10 specifically relies on Rune’s Figure 9.
RAN 60. We will first address Rune’s Figures 1-3, which are described in
Rune’s “Background of the Invention.” Id. at cols. 1-2.
Figure 1 is reproduced below.
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Figure 1 illustrates a wireless communication system in accordance with the
Global System for Mobile communication (GSM) standard. Id. at 1:39-41.
A mobile subscriber typically has a subscription with a network, which is
designated as the mobile subscriber’s home public land mobile network
(HPLMN) 110. Id. at 1:45-48. HPLMN 110 has a home location register
(HLR) 115 that contains, among other things, various information regarding
the services provided to the mobile subscriber. Id. at 1:48-51. When a
mobile subscriber roams into a different network, which is referred to as a
visited public land mobile network (VPLMN) 120, the VPLMN requires
certain data regarding the mobile subscriber’s subscription. Id. at 1:51-54.
This data, which is also referred to as the “mobile subscriber’s profile,” is
transferred from the HLR to a visitor location register (VLR) in
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VPLMN 120. Id. at 1:54-58.
In a GSM system, the mobile subscriber data is stored within the VLR
that is associated with the mobile services switching center (MSC) that is
currently serving the mobile subscriber, thereby reducing internetwork
signaling between VLRs and HLRs. Id. at 1:59-63. Thus, if the mobile
subscriber is roaming in an area of the VPLMN 120 that is controlled by the
MSC/VLR 130, HLR 115 will transfer the mobile subscriber’s profile to
MSC/VLR 130. Id. at 1:65-2:1.
Rune explains that in order to increase the compatibility of GSM with
other types of systems, it is anticipated that future versions of the GSM
standard, also called Universal Mobile Telecommunications System
(UMTS), will incorporate elements of other mobile communications systems.
Id. at 2:8-12. For example, the Japanese Personal Digital Cellular (PDC)
system includes a network node that is used to reduce internetwork signaling
and is known as a gateway location register (GLR). Id. at 2:12-15.
Figure 2 is reproduced below.
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Figure 2 illustrates an exemplary mobile communications system in
accordance with the PDC system. Id. at 2:15-17. When a mobile subscriber
roams into a visited network 220, the mobile subscriber’s profile is
transferred to GLR 225. Id. at 2:19-21.
Figure 3 is reproduced below.
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Figure 3 illustrates an exemplary UMTS system that incorporates the GLR of
the PDC system (depicted in Figure 2). Id. at 2:24-25. As noted above,
Patent Owner does not challenge the Examiner’s and Requester’s description
of the GLR as a “control-plane node” that is analogous to an S-CSCF.
When a mobile subscriber of HPLMN 310 roams into VPLMN 320,
HLR 315 will transfer the mobile subscriber’s profile to GLR 325. Id. at
2:25-28. Then, depending upon where within VPLMN 320 the mobile
subscriber is roaming, GLR 325 will transfer the mobile subscriber’s profile
to the respective “MSCNLR [sic, MSC/VLR]” 330, 335, or 340. Id. at
2:28-31.
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Rune’s Figure 9, on which the rejection is specifically based, is
reproduced below.

Figure 9 illustrates an exemplary method in a UMTS system when the GLR,
in its role as an HLR, is recovering from a fault. Id. at 9:4-6. The Examiner
specifically relies on step 905, which Rune describes as follows: “In step
905 the GLR uses its non-volatile backup memory to load the data from the
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latest backup.” Id. at 9:8-9. We understand Requester’s description of the
GLR as “stor[ing] subscriber data locally in non-volatile memory” (Req.
Resp’t Br. 2 (emphasis added)) to mean that the non-volatile memory is part
of the GLR. See Claim Chart AA at 13, limitation 5-3 (“[The Foti I S-CSCF
could instead include a non-volatile memory just like the GLR does in the
non-volatile memory embodiment in Rune.”) (quoted with approval in
RAN 66).
The Examiner finds that Rune’s Figure 9 “teach[es] that with respect
to a control-plane node’s need for subscriber data, it is known to have that
control-plane node back[ ]up the subscriber data at a non-volatile memory
associated with the control-plane node.” RAN (quoting Claim Chart AA
at 12, limitation 5.3). We agree with this description of Rune’s Figure 9
teaching, which Patent Owner does not dispute.
As noted supra, the Examiner when addressing claim 5’s second
(storing) step concludes that it would have been obvious to modify Foti’s
Visited CSCF (i) in view of Bharatia to provide “local” volatile TA storage
and (ii) further in view of Rune to include a “local” non-volatile TA storage:
A person of ordinary skill in the art would have modified
Foti I with the [local volatile TA storage] concepts taught in
Bharatia at least for the reasons referred to above. Given this
known local storage at the S-CSCF of the TA and given the
“back-up subscriber data at a control-plane node’s non-volatile
memory to protect against crashes such that the control-plane
node can use the backed-up subscriber data to assist in a call
setup to a visiting mobile subscriber” teaching of Rune, it is
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obvious to modify Foti I in light of Rune/Bharatia to instead
protect the TA by local non-volatile storage.
RAN 63 (quoting Claim Chart AA at 11, limitation 5.2).
The Examiner makes a similar argument when discussing claim 5’s
third (restoring) step:
[O]ne of ordinary skill would appreciate that Foti I could
use the alternative approach of Rune to protect the TA. In other
words, the Foti I S-CSCF could instead include a non-volatile
memory just like the GLR does in the non-volatile memory
embodiment in Rune. It is thus obvious to modify Foti I in light
of Rune/Bharatia for the same reasons discussed above such that
the S-CSCF locally stores the TA and restores this locally-
stored TA by retrieving it from a non-volatile memory in
response to a crash.
RAN 66 (emphasis added) (quoting Claim Chart AA at 13, limitation 5.3).
As already noted, the obviousness of modifying Foti’s Visited CSCF
to provide local volatile TA storage is not challenged by Patent Owner.
Furthermore, we agree with the Examiner’s conclusion that it would have
been obvious in view of Rune’s Figure 9 to also modify Foti’s Visited CSCF
to include a non-volatile TA memory for the purpose of restoring the TA to
the volatile TA storage in the Visited CSCF in the event of a crash of the
Visited CSCF. As correctly noted by the Examiner, “such a modification is
no more than a ‘[u]se of a known technique to improve similar devices . . . in
the same way.’ See MPEP 2143, citing KSR [Int’l Co. v. Teleflex, Inc., 550
U.S. 398 (2007)].” RAN 75-76 (italics added). Specifically, KSR states that
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“if a technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” KSR, 550 U.S. at 417.
We also agree with Requester’s alternative argument that this teaching
in Rune represents a “common sense” way to protect data against loss.
Specifically, when describing the proposed rejection of claim 1 (addressed
infra), Requester argues:
Even if there were no prior art teaching such a solution,
common[ ]sense would tell anyone of ordinary skill in the
networking arts that a solution to the problem of losing data
stored in volatile memory is to instead store the data in non-
volatile memory: e.g., data may be written to a hard disk or to
FLASH memory, where it is safe from system crashes.
Req. Appeal Br. 9. Requester further argues:
[O]ne does not need to delve into an expert’s testimony to reject
the claims at issue here as offensive to common sense -- a
transport address gets stored in memory so that if it is lost, the
TA may be recovered. Indeed, MPEP § 2141 (I) instructs the
Examiner, with regard to finding obviousness in light of the
KSR decision, to avoid ‘rigid preventative rules that deny
factfinders recourse to common sense.’ (quoting from KSR v[.]
Teleflex, [550 U.S. at 421]). That is all one needs in this matter:
the common-sense recognition that the solution to the problem

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of losing addresses is to store them in memory. The ‘374 patent
adds nothing new.
Req. Comments After ACP 4. We note that Requester’s reliance on KSR’s
“common sense” rationale is not addressed by Patent Owner.
When claims 5 and 10 are compared to Foti thus modified, the recited
“S-CSCF” reads on Visited CSCF 32 as modified to include the volatile TA
storage and the non-volatile TA memory.
We alternatively conclude that it would have been obvious in view of
Rune to provide Foti with a non-volatile TA memory that is not part of
Visited CSCF 32, such as by implementing location server 33 to serve as the
claimed non-volatile TA memory. Claims 5 and 10 can be read on Foti thus
modified in either of two ways. The first way is to read claimed “S-CSCF”
on the combination of Foti’s Visited CSCF 32 and location server 33 (when
implemented to provide non-volatile TA storage), in which case the non-
volatile memory (i.e., location server 33) is part of the recited “S-CSCF.”
The second way is to read the claimed “S-CSCF” on only the Visited CSCF
and to read the claimed “non-volatile memory” on location server 33 (as
modified to provide non-volatile TA backup storage), thereby treating
location server 33 as “a non-volatile memory of the S-CSCF” (claim 5)
(emphasis added) and “a non-volatile memory at the S-CSCF (claim 10)
(emphasis added) even though it is not part of the S-CSCF. Patent Owner
has not offered a definition of this claim language that precludes the claimed
“non-volatile memory” from being read on Foti’s location server 33 (as
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modified) in either or both of the two ways described above.
Patent Owner argues that the Examiner’s reliance on Rune is
misplaced for a number of reasons. One reason is:
Figure 9 of Rune is directed to the recovery of the GLR “in its
role as an HLR.” This process includes using “its non-volatile
backup memory to load the data from the latest backup.”
However, an “HLR” is not an “S-CSCF” as claimed. Storage
of “dynamic subscriber data” in a “non-volatile backup
memory” of an “HLR” is not the same as storage of a “TA in a
non-volatile memory of the S-CSCF,” as recited in Claims 5
and 10.
PO Appeal Br. 9. Although we agree that Rune’s HLR is not an “S-CSCF,”
we do not agree that Rune’s Figure 9 teaching would have been perceived as
inapplicable to an S-CSCF, such as Foti’s Visited CSCF.
We also are not persuaded by Patent Owner’s alternative argument,
quoted below, that Rune’s Figure 9 teaching would have been viewed as
applicable to Foti’s HSS rather than to Foti’s S-CSCF (i.e., Visited CSCF):
An “HLR” is not an “S-CSCF.” Indeed, in the [Non-
Final] Office Action dated August 6, 2012, the Examiner asserts
that “an ‘HSS’ is simply an evolved version of [an] HLR.”
(Page 55). In addition, on page 6 of the Office Action dated
August 6, 2012, and on pages 8-9 of the RAN, the Examiner
appears to further assert that the “HSS” of an “All IP Network”
(and not the “S-CSCF”) includes the HLR functionality. . . .
Accordingly, if for the sake of argument one were to
follow the Examiner’s line of reasoning that an HSS is simply
an “evolved” HLR, Rune would appear to disclose that an
element similar to an “HSS” (and not an “S-CSCF”) includes a
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“non-volatile memory.”
PO Appeal Br. 9-10.
Patent Owner also argues: “The combination of Foti and Rune is
improper because one of skill in the art would not have been motivated to
combine Foti and Rune in view of the different types of systems to which
they are directed.” PO Appeal Br. 13 (underlining omitted) (citing, id. at 15,
paragraphs 34-39 of the Burger Declaration). Patent Owner more
particularly states:
In its role as a VLR, Rune requires that in response to a
fault at the GLR and the loss of the “IMSI [International Mobile
Subscriber Identity
27
] record” of a “concerned subscriber,” the
GLR broadcasts a message [“]to all VLRs in the network.”
(See column 7, lines 3-22). . . . In contrast, Foti is directed to a
3G All IP network. Such broadcast/paging procedures are not
available in a 3G All IP network as in Foti.
Id. at 14. Dr. Burger’s testimony reads in relevant part as follows:
36. . . . [T]he system and method disclosed by Rune
would be impossible to implement in 3G all IP networks. For
example, the office action asserts step 720 of Figure 7 of Rune
shows how the GLR repopulates the IMSI data by broadcasting
a request to all of the VLRs that might hold the IMSI. There is
no corresponding request in the 3G all IP network for the 2G
MAP_PROVIDE_ROAMING_NUMBER broadcast message.
Not only is there no corresponding message, but there is not
even a concept of a broadcast signaling message in the 3G all IP
network.

27
Request 12.
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37. The office action repeatedly asserts that because
the 2G HLR, GLR, and VLR are all control plane network
elements and the 3G HSS and S-CSCF are control plane
network elements, if one can create a recovery mechanism for
2G networks it is equally applicable to 3G networks.
Sometimes this is true, but in this case it is not. Mechanisms
used by Rune to create data availability simply do not exist in
the 3G network. This is one of the problems the ‘374 patent
solves.
Burger Decl. paras. 36-37 (emphasis altered).
Although we agree that Rune’s GSM network (Figure 3) and Foti’s 3G
All IP network differ in the above and other respects, this does not detract
from Rune’s “teaching that with respect to a control-plane node’s need for
subscriber data, it is known to have that control-plane node backup the
subscriber data at a non-volatile memory associated with the control-plane
node.” RAN 65 (quoting with approval Claim Chart AA at 12,
limitation 5.3). For the same reason, we also are unpersuaded by Patent
Owner’s reliance on the following testimony by Dr. Burger:
39. On page 13, the office action states, ‘[m]odifying
Foti I’s S-CSCF according to the principles disclosed in Rune is
nothing more than a “[u]se of a known technique to improve
similar devices . . . in the same way.”’ However, as discussed
above, it would be impossible to apply the principles disclosed
in Rune in the same way in a 3G all IP network, such as
Foti I’s S-CSCF.
Burger Decl. para. 39 (quoted in PO Appeal Br. 15).

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D. Our Conclusion Regarding the Rejection of Claims 5 and 10
For the above reasons, we sustain the Examiner’s rejection of claims 5
and 10 for obviousness over Foti in view of Bharatia and Rune.

E. The Rejection of Dependent Claims 6 and 11 (Based on Foti in View of
Bharatia, Rune, and Koivunen)
Dependent claims 6 and 11 each recite that “the non-volatile memory
comprises a hard disk drive.” The Examiner finds that “Koivunen expressly
discloses that that the non-volatile memory for storing subscriber data may
comprise a hard disk drive at Col. 1, line 27” (RAN 74), quoting the
following passage of Koivunen:
As is well-known in cellular radio networks, the home
location register (HLR) continuously stores the location and
subscriber data of mobile radios registered in the network in a
memory means, such as a RAM, which data are lost e.g. when
the HLR is switched off; and at regular intervals in a non-
volatile memory means, such as a hard disk, where the data are
stored permanently. When the HLR occasionally has to restart,
the location and subscriber data stored in the volatile memory
are lost.
RAN 74 (quoting Koivunen 1:22-30).
Inasmuch as Patent Owner treats the rejection of claims 6 and 11 as
standing or falling with the rejection of parent claims 5 and 10, we sustain
the rejection of claims 6 and 11 for obviousness over Foti in view of
Bharatia, Rune, and Koivunen. However, we note that Koivunen’s
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above-quoted description of providing permanent (i.e., non-volatile) storage
for subscriber data that is stored in a volatile memory is similar to, and thus
reinforces, Rune’s above-described Figure 9 teaching.

V. THE MERITS OF THE PROPOSED REJECTIONS OF CLAIMS 1-
4, 7-9, 12-17, AND 19 (STORING A BACKUP TA IN THE HSS)
Requester’s Appeal Brief identifies the claims that are proposed to be
rejected under 35 U.S.C. § 103(a) based on Foti in view of Bharatia and
Rune as claims 1, 4, 7, 12-17, and 19 (of which claims 1, 7, 12, and 16 are
independent claims). Req. Appeal Br. 5, sec. VI, para. 1.
As correctly noted by Patent Owner (PO Resp’t Br. 11, sec. C),
Requester prior to the filing of its Appeal Brief had not proposed a rejection
of claim 19 under 35 U.S.C. § 103(a). Instead, as explained above,
Requester had proposed rejections of this claim under only 35 U.S.C. § 112
(enablement requirement) and 35 U.S.C. § 314(a). Patent Owner therefore
requests that the “the confirmation [sic, patentability] of Claim 19 by the
Examiner be affirmed.” Id. Requester’s Rebuttal Brief provides no response
to this argument.
Because Requester did not propose a rejection of claim 19 under
35 U.S.C. § 103(a) prior to filing its Appeal Brief, and because Requester
does not contend that such a rejection of claim 19 properly is raised for the
first time in its Appeal Brief, we sustain the Examiner’s decision not to reject

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claim 19 under 35 U.S.C. § 103(a) for obviousness over Foti in view of
Bharatia and Rune.
28

Requester treats the proposed rejection of independent claims 7, 12,
and 16 as standing or falling with the proposed rejection of claim 1. Id. at
Br. 14, sec. 1. Patent Owner expressly agrees with this treatment of claims 7
and 12 (PO Resp‘t Br. 7, sec. A; id. at 10) and does not object to this
treatment of claim 16 (which Patent Owner does not separately discuss). Nor
does Patent Owner object to treating the proposed rejection of dependent
claims 4, 13-15, 16, and 17 as standing or falling with the proposed rejection
of claim 1.
The claims that are proposed to be rejected for obviousness over Foti
in view of Bharatia, Rune, and Koivunen are claims 2, 3, 8, and 9. Req.
Appeal Br. 5, sec. VI, para. 2. Patent Owner does not object to Requester’s
treatment of the proposed rejection of these claims as standing or falling with
the proposed rejection of independent claims 1 and 7. Id. at 14, sec. 2.

28
See 37 C.F.R. § 41.67(c)(1)(vi) (2013) (“No new ground of rejection can
be proposed by a third party requester appellant [in the appeal brief], unless
such ground was withdrawn by the examiner during the prosecution of the
proceeding, and the third party requester has not yet had an opportunity to
propose it as a third party requester proposed ground of rejection.”).
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A. The Scope and Meaning of Claim 1
Claim 1 reads as follows:
1. (Amended) A method comprising:
receiving, at a Serving-Call State Control Function
(S-CSCF), a registration request from a subscriber in a mobile
network, wherein the registration request comprises a Transport
Address (TA) of the subscriber;
providing the TA and an address of the S-CSCF from the
S-CSCF to a Home Subscription Server (HSS) for storage at the
HSS; and
receiving the TA from the HSS in response to a loss of
the TA by the S-CSCF such that the TA is restored at the
S-CSCF.
We hereinafter refer to these three claim steps as the “first
(registration) step,” “second (storing) step,” and “third (restoring) step.”
We interpret claim 1 as implying that the recited “S-CSCF” provides
volatile storage of the TA prior to a loss of the TA by the S-CSCF and after
receiving the TA from the HSS in response to such a loss.

B. The Merits of the Proposed Rejection of Claim 1
As in the Examiner’s rejection of claims 5 and 10, the proposed
rejection of claim 1 relies on Bharatia for a suggestion of modifying Foti’s
Visited CSCF to provide volatile TA storage. See Claim Chart BB at 9,
limitation 1.3 (“With regard to a S-CSCF, it is abundantly well-known to
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locally store the visiting mobile subscriber’s TA at the S-CSCF. See, e.g.,
paragraph [0078] of Bharatia (Ex. H).”). Patent Owner does not contend
otherwise.
In contrast to the Examiner’s rejection of independent claims 5 and 10,
which relies on Rune’s Figure 9, the proposed rejection of claim 1 relies on
Rune’s Figure 7 (reproduced and discussed infra). Claim Chart BB at 9,
limitation 1.3. In further contrast to the rejection of claims 5 and 10, which
relies on Rune for a suggestion of modifying Foti to satisfy the second
(storing) step and third (restoring) step in each claim, the proposed rejection
of claim 1 relies on Rune for a suggestion of only the third (restoring) step.
Claim Chart BB at 8-10, limitation 1.3. As explained infra, our new ground
of rejection of claim 1 additionally relies on Rune for the second (storing)
step.
We begin our analysis of the proposed rejection by addressing
Requester’s argument that the claim term “HSS” can be read on the
combination of Foti’s HSS 27 and location server 29. Specifically, Claim
Chart BB asserts that “[Request] Exhibits E [“the 3GPP publication”
29
],
F [“Lucent presentation”
30
], and G [Basu
31
] . . . show that the Foti I location
server is a known component of an HSS.” Claim Chart BB at 10,
limitation 1.3. We agree that this evidence provides ample support for

29
Also Req. Appeal Br. Ex. 8.
30
Also Req. Appeal Br. Ex. 4.
31
Also Req. Appeal Br. Ex. 5.
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Requester’s position that the claim term “HSS,” when given its broadest
reasonable interpretation in light of the ’374 patent disclosure, can be read on
the combination of Foti’s HSS 27 and location server 29 (a combination
hereinafter referred to as the “HSS/location server 29”). As noted at page 9
of the Request, slide 3 of the Lucent presentation describes an HSS as
including “UMS/Location Server: Feature subscriber data base for CSCF.”
Also, Basu’s Figure 7, which appears at Basu page 1567, is reproduced at
Request page 9 and also below.

Figure 7 is a diagram that, as indicated in the caption, shows the HSS concept
for User Profile Integration. Basu explains:
Once a use[r] moves out of the GPRS network, his mobility is
proposed to be controlled by the Mobile-IP. Thus we have three
distinct micro mobility environments in today’s network. To
address this separation of information of [the] user and the
associated network control and management complexity, it is
considered to integrate those functions under one environment
called HSS as shown in the Figure-6 [sic, 7]. HSS includes the
3G HLR and user mobility server that consists of [an] AAA
server, DNS, and location server.
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Id. (emphasis added). Requester’s position is also supported by Mr.
Landauer’s following testimony:
When the teachings of Foti I are considered in light of Basu and
the 3G TR 23.821 (Ex K of the Request), it is apparent that a
person of ordinary skill of the art at the time of the filing of the
‘374 patent would have considered the Location Server 29
shown in Foti I in the Home Network and the HSS 27 to be
functionally included in the same network element within the
Home Network.
Landauer Decl. para. 16.
Patent Owner in this appeal proceeding has not pointed out any error
in Requester’s position that the claim term “HSS,” when given its broadest
reasonable interpretation, reads on the combination of Foti’s HSS 27 and
location server 29.
32
Instead, Patent Owner in the following passage
disagrees with Requester’s position without explaining why (instead denying
that Foti’s HSS stores a TA):
On page 5 of Appellant’s Brief, the Requester stated that
“Foti shows a component of the HSS denoted as a ‘location
server’ that stores the TA” and concluded that the "location
server is a known component of the HSS.” The Patent Owner
respectfully disagrees and submits that a person of ordinary skill

32
Requester notes that during the original prosecution history of the ’374
patent, the Applicant argued that “Foti [Patent 6,654,606] discloses storage
of a transport address in a location server which is distinct from the HSS.”
Req. Appeal Br. 12 (quoting page 12 of Office Action response filed on
August 2, 2007). However, our consideration of this question is limited to
the arguments and evidence relied on in this appeal proceeding.
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in the art would not have understood the HSS of Foti I to store a
transport address (TA).”
PO Resp’t Br. 3. The argument that Foti’s HSS does not store a TA is
addressed infra.
Dr. Burger’s testimony likewise fails to identify any error in
Requester’s position that the claim term “HSS,” when given its broadest
reasonable interpretation, reads on the combination of Foti’s HSS 27 and
location server 29. Instead, Dr. Burger testified that “there is no evidence the
HSS must include the location server.” Burger Decl. para. 17 (emphasis
added).
We turn now to the obviousness rationale. As noted above in the
discussion of the rejection of claims 5 and 10, Patent Owner does not deny
that it would have been obvious to modify Foti’s Visited CSCF to provide
volatile storage of the care-of address. Because Foti’s Visited CSCF thus
implemented and location server 33 each will store a care-of address, we
hereinafter refer to the combination of the Visited CSCF and location server
33 as the “Visited CSCF/location server 33.”
Claim 1’s first (registration) step reads as follows:
receiving, at a Serving-Call State Control Function
(S-CSCF), a registration request from a subscriber in a mobile
network, wherein the registration request comprises a Transport
Address (TA) of the subscriber[.]
As noted above in the discussion of the rejection of claims 5 and 10, Patent
Owner’s briefs do not direct any argument to claim 1’s first step.
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Claim 1’s second step (as amended) reads as follows:
providing the TA and an address of the S-CSCF from the
S-CSCF to a Home Subscription Server (HSS) for storage at the
HSS[.]
As already noted, Requester does not rely on Rune for a teaching of this
second (storing) step. Instead, Requester has presented two different (and
unpersuasive) rationales for why Foti would have been understood to
describe the second step. The first rationale (initially presented in Claim
Chart BB at 2-6, limitation 1.2, but not repeated in Requester’s Appeal Brief)
consists of the following arguments:
(a) The “user location information” described in TR as stored in an
HSS would have been understood to include a roaming subscriber’s TA (i.e.,
care-of address); and
(b) It would have been obvious in view of Bharatia and TR to have
Foti’s Visited CSCF supply this TA (i.e., care-of address) to the HSS.
We begin our analysis with argument (a), which is specifically stated
by Requester as follows:
[TR] Fig. 5.2 (Page 15) shows “Location Information” as a part
of the HSS (HLR/UMS). Further, Section 5.3.2 of . . . TR [at
page 14], in describing the functions of the HSS states that,
among other things:
HSS is responsible for holding the following user related
information:
. . .

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User Location information at inter-system level;
HSS handles the user registration, and stores inter-
system location information, etc.
User Location information at inter-system level would have
suggested to a person of ordinary skill in the art that the HSS
stores the TA of the subscriber. See Landauer Declaration at
para. 17. . . . When the teachings of Foti I are considered in
light of [TR], it is logical that a person of ordinary skill in the
art would have understood that user location information at an
inter-system level (the TA) is stored in the HSS (along with an
address of the S-CSCF. . .) when the subscriber is registered
within a visited, non-home, network. See Landauer Declaration
at para. 17.
Claim Chart BB at 3-4, limitation 1.2 (italics added; bolding omitted). Mr.
Landauer’s above-cited testimony is to the same effect: “[Because] TR says
that the HSS stores User Location information at an inter-system level, it
would have suggested to someone of ordinary skill in the art that the TA is
stored at the HSS.” Landauer Decl. para. 17 (italics added). The Examiner
initially expressed agreement with the above argument: “Examiner agrees
with the Third Party Requester that User Location information at inter-
system level would have suggested to a person of ordinary skill in the art that
the HSS stores the TA of the subscriber.” ACP 5.
However, this interpretation of TR’s “user location information” as
including a TA was challenged by Dr. Burger as follows:
12. . . . The “location information” is not a TA of the
subscriber. Neither does Foti I nor [TR] suggest as much. To
learn what ‘location information” is, let us look at the cited
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[TR]. On page 17 of Version 0.12.0 [sic, 0.12.0], § 5.4.1
(Exhibit A [to PO Resp. to ACP]), Cx Reference Point (HSS-
CSCF) states (emphasis added):
When a UE has registered with a CSCF, the CSCF can
update its location towards HSS. This will allow the HSS
to determine which CSCF to direct incoming calls to.
On this update towards the HSS, the HSS sends the
subscriber data (application related) to CSCF.
13. Note the location information here is the
location of the S-CSCF, not the mobile station (user
equipment, or UE).
Burger Suppl. Decl. paras. 12-13 (italics added). In response to Dr. Burger’s
above-quoted testimony, Mr. Landauer effectively withdrew his earlier
testimony that the “user location information” includes a TA. Specifically,
Mr. Landauer stated:
15. . . . I did not testify that the TR explicitly discloses that
the user location information stored at the HSS includes the TA
of the MS when the subscriber is roaming. Rather, the earlier
Landauer Declaration states the opinion that, based on the
teachings of the 3G TR, when combined with Foti I and/or other
provided references, the concept of storing the TA at the home
HSS for a roaming subscriber would have been obvious to
someone of ordinary skill in the art . . . .
Landauer Suppl. Decl. para. 15 (emphasis altered).
In the RAN, the Examiner states his agreement with Dr. Burger’s (i.e.,
Patent Owner’s) position as follows:
Location information of the current S-CSCF appears to be
different from the TA address of the mobile user. . . . From
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[the] above analysis, Examiner agrees that neither Foti I[] nor
[TR] explicitly teach[es] [a] TA (which is a current Care of
Address of a mobile subscriber) being stored in [an] HSS.
RAN 7.
The Examiner also addressed Requester’s above-noted
argument (b) (i.e., that it would have been obvious in view of Bharatia and
TR to have Foti’s Visited CSCF supply the TA to the HSS). Argument (b) is
stated in Claim Chart BB as follows:
It would have been obvious to use the Registration Notification
message of Bharatia to carry the information from the S-CSCF
to the HSS because doing so is nothing more than applying a
known technique to a known device ready for improvement to
yield predictable results. MPEP 2143, citing KSR. See
Landauer Declaration at para. 24. Additionally, such a
modification of Foti I with the subject matter of Bharatia is
suggested by the TR (Exhibit K), which teaches a CX interface
between the S-CSCF and the HSS, allowing the S-CSCF to send
subscriber identity information to the HSS. See TR (Exhibit K
to the Request for Reexamination at Fig. B.3). See Landauer
Declaration at para. 24.
Claim Chart BB at 5, limitation 1.2 (emphasis added). Bharatia’s Figure 3
and TR’s Figure B.3, which appear at pages 5 and 6 of Claim Chart BB, are
reproduced below.
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Bharatia’s Figure 3 is a message flow diagram illustrating the attachment of a
3G (packet switched) application serviced by a 3G mobile terminal within a
3G (packet switched) network. Bharatia para. 0030.
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TR’s Figure B.3 (at TR page 53) is a diagram that, as stated in the caption
thereto, depicts “Continuation of Registration – serving CSCF in visited
network.” This figure shows a “Cx-Pull” message being transmitted from the
“S-CSCF” to the “hHSS” (i.e., HSS in the home network – see TR 47).
The Examiner addressed Mr. Landauer’s testimony about the Cx-Pull
message as follows:
Mr. Landauer asserts in paragraph 24 of his declaration merely
that the “Cx[-]Pull message” of [TR] “contains information
regarding the subscriber’s identity.” However, neither Mr.
Landauer, the Requester, nor the ACP provide any indication
that the “subscriber's identity” in [TR] includes a “transport
address” or that it would have been obvious to include a
“transport address” in the “Cx[-]Pull message” in addition to the
“subscriber’s identity.”
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RAN 16-17. The Examiner then withdrew the rejections of “claims 1-4, 7-9,
12-17, and 19” under 35 U.S.C. § 103(a) as follows:
Examiner agrees with the Patent Owner that nowhere does
Foti I, Bharatia, or [TR] provide any indication that a “transport
address” is “provid[ed] . . . from the S-CSCF to a HSS,” as
claimed. Neither Mr. Landauer [nor] the Requester[] provide[s]
any indication that the “subscriber’s identity” in [TR] includes a
“transport address” or that it would have been obvious to
include a “transport address” in the “Cx[-]Pull message” in
addition to the “subscriber’s identity.”
Therefore, the rejections of claims 1-4, 7-9, 12-17 and 19
are withdrawn.
RAN 21-22.
33

As noted above, Requester’s above-discussed first rationale is not
repeated in Requester’s Appeal Brief or Rebuttal Brief, which do not mention
the phrase “user location information.” Nor does either brief rely on TR’s
CX interface or Cx-Pull message. To the contrary, Requester’s Appeal Brief
states (at page 14): “It is . . . irrelevant whether there is a ‘CX interface’
between the Bharatia S-CSCF and its HSS (page 20 of the RAN) or whether
the ‘CX Pull message’ of [TR] ‘contains information regarding the
subscriber’s identity’ (page 27 of the RAN).” The first rationale therefore
will be given no further consideration.
34

33
As noted above, claim 19 was not rejected under 35 U.S.C. § 103(a) in the
ACP.
34
See 37 C.F.R. § 41.67(c)(1)(vi) (2013) (“Any arguments or authorities not
included in the brief permitted under this section or §§ 41.68 and 41.71 will
(Continued on next page.)
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As a result, it is not necessary to address Patent Owner’s arguments
that are directed to the first rationale. PO Resp’t Br. 4-9, secs. I.A and I.B.
In fact, Patent Owner acknowledges that Requester is no longer relying on
that rationale: “On page 13 of the Appellant’s Brief, the [Requester] appears
to recognize the inadequacies of their prior arguments and of [TR] since the
[Requester] now asserts that the disclosure of the very portion of [TR] relied
upon by Mr. Landauer in his declaration is now ‘irrelevant.’” Id. at 9-10.
Requester’s Appeal Brief instead presents a second rationale for why
Foti describes or suggests claim 1’s second (storing) step (i.e., “providing the
TA and an address of the S-CSCF from the S-CSCF to a Home Subscription
Server (HSS) for storage at the HSS”) (underlining omitted). This second
rationale is based on the following “things that are known” (i.e., findings):
1) the HSS/location server [29] in Foti received a TA of a
roaming party from some entity;
2) the S-CSCF [i.e., Visited CSCF] receives the TA of the
roaming party directly from the roaming party during
registration; and
3) it is known that the S-CSCF communicates with the
HSS during registration of the roaming party.
Req. Appeal Br. 11. As support for finding 1), Requester relies on Foti’s
claim 2 (discussed above) as follows:

be refused consideration by the Board, unless good cause is shown.”).
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The home network’s HSS (element 27) [sic, HSS/location
server 29] in the home network of Figure 2A also stores a TA
for called parties. For example, consider claim 2 of Foti, which
addresses the situation in which the called party is located in its
home network. As recited in Foti’s claim 2, the HSS/location
server [29] provides the transport address for this called party
(see also the Landauer Supplemental Declaration, ¶15).
As support for finding 2), Requester explains that “Foti’s Figure 2B
shows a location server 33 (represented in Figure 2B by line H) forwarding
the called party’s TA in step 49 to the S-CSCF [i.e., Visited CSCF]
(represented in Figure 2B by line G).” Id. at 6.
As support for finding 3), Requester explains that “Bharatia shows in
his Figure 3 the use of a ‘registration notification’ that the S-CSCF
transmits to the HSS during the registration of a roaming mobile user.” Id.
at 11.
Based on the above alleged findings, Requester asserts that “[i]t is no
leap of faith whatsoever to then posit that it obvious that the entity who
provided the TA to the Foti HSS/location server [29] was the S-CSCF
[Visited CSCF] itself. Id. See also id. at 14 (“[T]he S-CSCF is the only
entity in the visited network that is known to have the TA so it is the clear
and obvious choice to be the entity that supplied the TA to the HSS.”).
Patent Owner responds to Requester’s second rationale as follows:
Requester merely asserts that Foti discloses that the S-CSCF
[Visited CSCF] has a “TA” and that Bharatia discloses a
“Registration message” that is sent from the S-CSCF to the
HSS. . . . Based on these two alleged findings, the Requester
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jumps to the conclusion that it would have been obvious for the
S-CSCF to send the TA to the HSS. However, nowhere has the
Requester provided an indication as to where any of the cited
references discloses the claim element “providing the TA . . .
from the S-CSCF to a Home Subscription Server (HSS).” The
Requester has failed to provide any evidence of where in the art
it is shown that an S-CSCF actually sends a “TA” to an “HSS.”
Instead, the Requester is essentially saying that it is obvious to
send any kind of information between entities in a network
regardless of whether or not prior art exists that actually shows
such a communication. Such an assumption is illogical and may
not be used as a proper basis for establishing a prima facie case
of obviousness.
PO Resp’t. Br. 10 (emphasis added).
The above-quoted argument is unpersuasive because “[n]on-
obviousness cannot be established by attacking references individually where
the rejection is based upon the teachings of a combination of references.” In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller,
642 F.2d 413, 426 (CCPA 1981)). It is not necessary that claim 1’s second
step of “providing the TA and an address of the S-CSCF from the S-CSCF to
a Home Subscription Server (HSS) for storage at the HSS” (underlining
omitted) be described in one of the cited references.
Nevertheless, we find Requester’s second rationale unpersuasive
because, as is apparent from Requester’s following description of the second
rationale, it incorrectly assumes that Foti describes a single type of transport
address (namely, a care-of address), thereby leading to the incorrect
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conclusion the same transport address (i.e., a care-of address) is stored in
Foti’s HSS/location server 29 and Visited CSCF/location server 33 during
the time that a called subscriber is roaming (and registered with the Visited
CSCF):
[T]he Foti HSS absolutely has the TA of the called party (in both
the visited network HSS [sic, Visited CSCF/location server 33]
as shown by Foti’s Figure 2B and in the home network HSS
[sic, HSS/location server 29] as shown by Foti’s claim 2). So
there must be an entity that provided this TA to the Foti HSS.
We know that the Foti S-CSCF receives the TA from the
roaming party upon registration. And we know that Bharatia
teaches that the S-CSCF communicates with the HSS during this
registration. Therefore, it is reversible error for the
reexamination examiner to then allow claim 1 because there is
no “indication” (page 27 of the RAN) from Foti, Bharatia, and
[TR] that the TA flowed from the S-CSCF to the HSS: but of
course it did, the S-CSCF is the only entity in the visited network
that is known to have the TA so it is the clear and obvious
choice to be the entity that supplied the TA to the HSS.
Req. Appeal Br. 14 (emphasis added).
However, as explained in our above analysis of Foti, a person skilled
in the art would have understood that the transport address stored in Visited
CSCF/location server 33 for a roaming subscriber is a care-of address and
that the transport address that is stored in HSS/location server 29 for a non-
roaming subscriber is the subscriber’s home address. Requester has not
identified--and we do not see--any evidence in the record that Foti’s
HSS/location server 29 would have been understood to be storing a roaming
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subscriber’s care-of address, either in addition to or in lieu of the home
address that is obtained from HSS/location server 29 while the called
subscriber is not roaming.
For the above reasons, we are unpersuaded by Requester’s second (and
now sole) rationale for the obviousness of modifying Foti to satisfy claim 1’s
second (storing) step. Consequently, we do not reach Requester’s reliance on
Rune’s Figure 7 for a teaching of claim 1’s third (restoring) step. Claim
Chart BB at 8-10, limitation 1.3. However, we rely on Rune’s Figure 7 in the
new grounds of rejection entered below.

C. Conclusion Regarding Examiner’s Decision Not To Adopt Requester’s
Proposed Rejections of Claims 1-4, 7-9, 12-17, and 19
For the above reasons, we sustain the Examiner’s decision not to adopt
the following rejections proposed by Requester:
1. Claims 1, 4, 7, 12-17, and 19 under 35 U.S.C. § 103(a) for
obviousness over Foti in view of Bharatia and Rune.
2. Claims 2, 3, 8, and 9 under 35 U.S.C. § 103(a) for obviousness over
Foti in view of Bharatia, Rune, and Koivunen.
Accordingly, the Examiner’s decision not to reject any of claims 1-4,
7-9, 12-17, and 19 under 35 U.S.C. § 103(a) is affirmed.

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VI. NEW GROUNDS OF REJECTION
OF CLAIMS 1-4, 7-9, 12-17, AND 19
Pursuant to 37 C.F.R. § 41.77(b), we enter new grounds of rejection of
claims 1-4, 7-9, 12-17, and 19 under 35 U.S.C. § 103(a) based on a different
analysis of the same references that are relied on in Requester’s proposed
rejections.
35
Thus, the new grounds of rejection are as follows:
1. Claims 1, 4, 7, 12-17, and 19 under 35 U.S.C. § 103(a) for
obviousness over Foti in view of Bharatia and Rune.
2. Claims 2, 3, 8, and 9 under § 103(a) for obviousness over Foti in
view of Bharatia, Rune, and Koivunen.
Our new rationale for the rejection of claim 1 differs from the (first)
rationale proposed in Claim Chart BB by relying on Rune’s Figure 7 for a
teaching of claim 1’s second (storing) step (i.e., “providing the TA and an
address of the S-CSCF from the S-CSCF to a Home Subscription Server
(HSS) for storage at the HSS”). The proposed rejection of claim 1 in Claim
Chart BB (at 8-10, limitation 1.3) instead relies on Rune’s Figure 7 for only
the third (restoring) step (i.e., “receiving the TA from the HSS in response to
a loss of the TA by the S-CSCF such that the TA is restored at the S-CSCF”).

35
Section 41.77(b) (2013) reads in relevant part as follows:
(b) Should . . . the Board have knowledge of any grounds
not raised in the appeal for rejecting any pending claim, it may
include in its opinion a statement to that effect with its reasons
for so holding, which statement shall constitute a new ground of
rejection of the claim.
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As explained below, based on the reference teachings described in
Claim Chart BB’s discussion of claim 1’s third (restoring) step, we conclude
that it would have been obvious to modify Foti in a way that satisfies
claim 1’s second and third steps.
Before considering Rune’s Figure 7 embodiment, we will consider
Rune’s Figure 5 embodiment, reproduced below, which is described in
Rune’s “Background of the Invention.”

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Figure 5 illustrates a conventional method in a GSM system (shown in
Figure 1) when a VLR is recovering from a fault. Id. at 3:10-11. In step
505, the VLR, which in this example does not have a non-volatile backup
memory for its dynamic subscriber data, deletes all IMSI (International
Mobile Subscriber Identity
36
) records that remain in its dynamic memory. Id.
at 3:11-14. In step 510, the VLR waits for contact from either a mobile
subscriber or from the HLR associated with a mobile subscriber. Id. at 3:14-
16. If the VLR determines in step 515 that it has received a location update
request from a mobile subscriber, the VLR in step 520 initiates the
MAP_UPDATE_LOCATION procedure with the HLR associated with the
mobile subscriber. Id. at 3:16-23.
37
The MAP_UPDATE_ LOCATION
procedure is used to send data associated with a mobile subscriber from an
HLR to a VLR. Id. at 3:23-25. Specifically, this data is sent in the framed
MAP_INSERT_SUBSCRIBER_DATA indication message.
If, on the other hand, , the VLR determines in step 515 that it has not
received a location update request from a mobile subscriber, steps 525, 530,
and 335 are applied. In response to the MAP_RESTORE_DATA message
(step 530), the HLR in step 535 initiates the framed
MAP_INSERT_SUBSCRIBER_ DATA procedure with the VLR to provide
subscriber data to the VLR. Id. at 3:42-46.

36
Request 12.
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Rune’s Figure 7, which is part of Rune’s “Detailed Description of the
Invention,” is reproduced below.

Figure 7 illustrates an exemplary method in a UMTS system when a GLR, in
its role as a VLR, is recovering from a fault. Id. at 6:51-53. In contrast to

37
“MAP” refers to “mobile applications part.” Rune 2:41-42.
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the GLR in the Figure 9 embodiment, which is the basis for the rejection of
claims 5 and 10, the GLR in the Figure 7 embodiment does not have a
backup memory for its dynamic subscriber data. Id. at 6:53-55. In step 705,
the GLR receives a roaming number request from an HLR. Id. at 6:55-56.
In step 710, the GLR determines whether the IMSI record of the
concerned subscriber has been restored due to a location update. Id. at 6:64-
66. If the IMSI record for the concerned subscriber has not been restored (a
“No” output in step 710), the GLR in step 720 sends a MAP_PROVIDE_
ROAMING_NUMBER indication to all the VLRs in the network. Id.
at 7:7-11. Following the successful completion of steps 725, 730, 735, and
740 (id. at 7:11-20), “[t]he GLR then initiates the MAP_RESTORE_DATA
procedure towards the HLR in accordance with step 742.” Id. at 7:20-22.
Alternatively, the GLR can initiate the MAP_RESTORE_DATA procedure
before reaching step 720. Id. at 7:22-25. Performance of the
MAP_RESTORE_DATA procedure presumably results in the missing
subscriber data being sent from the HLR to the VLR in a MAP_INSERT_
SUBSCRIBER_DATA indication message, as in the Figure 5 embodiment.
Id. at 3:42-46.
Claim Chart BB describes the Rune Figure 7 teaching relied on in the
proposed rejection as follows:
As discussed with respect to Figure 7 in Rune, the volatile-
memory-only GLR will thus lose all the subscriber data it has
should the GLR fail. In the Figure 7 embodiment, the
subscriber data is the roaming number for the visiting mobile
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subscriber. Rune expressly describes the GLR failure in
conjunction with Figure 7 in Col. 6, lines 51-52. But the
subscriber data is stored persistently (independent of the GLR
health) in the Visitor Location Registers (VLRs). Thus as
shown in Figure 7, Rune discloses an embodiment in which the
GLR, having lost its subscriber data, restores itself by
prompting the VLRs for the subscriber data[.]
Claim Chart BB at 8, limitation 1.3 (emphasis added). Requester
characterizes this restoration procedure as “polling another database”:
Rune [Figure 7] is thus disclosing that it is well-known to
modify a control-plane node such as its GLR to bolster its
volatile storage of subscriber data by, in response to an internal
memory failure and associated loss of subscriber data, polling
another database for the subscriber data.
Id. at 9, limitation 1.3 (emphasis added). Also, the Request compares the
Figure 7 and Figure 9 embodiments as follows:
Rune thus discloses two embodiments: in the first
embodiment discussed above with regard to Rune's Figure 9, the
GLR recovers the necessary subscriber information from its
own non-volatile memory. In a second embodiment, the GLR
recovers the necessary subscriber information from an external
database (the VLR(s)). But in both Rune schemes, the
subscriber information is persistently stored in that it is stored
independently of whether the GLR crashes or not. The
subscriber information in Rune is an IMSI, which is a number
identifying the roaming mobile user.
Request 13.
Based on Rune’s Figure 7 embodiment, Requester argues:

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It would thus be obvious to modify Foti I in light of Bharatia to
have the S-CSCF [Visited CSCF] locally store the TA [in
volatile storage] and further to modify Foti I in light of Rune to
have the S-CSCF poll the HSS/location server [29] for the TA
in response to a memory failure.
Claim Chart BB at 10, limitation 1.3.
Requester’s above-quoted descriptions of Rune and assertion of
obviousness are not addressed in Patent Owner’s Respondent Brief, which in
addressing the proposed rejection of claim 1 discusses only claim 1’s second
step, as to which Claim Chart BB places no reliance on Rune. Thus,
although Patent Owner’s Respondent Brief includes the heading “B. Foti I in
combination with Bharatia and Rune does not show ‘providing the TA and an
address of the S-CSCF from the S-CSCF to a Home Subscription Server
(HSS) for storage at the HSS,’ as claimed” (PO Resp’t Br. 7 (underlining and
bolding omitted)), the arguments presented under this heading do not address
Rune’s Figure 7.
We conclude that in view of Rune’s Figure 7 teaching of polling
another database in order to restore lost subscriber data, it would have been
obvious to use the Home Network (specifically, either one or both of HSS 27
and location server 29) to store a backup copy of the care-of address for use
in restoring the care-of address to the Visited CSCF and/or location server 33
(both in the Visited Network) in response to a loss of the care-of address
(e.g., due to a crash). HSS 27 and location server 29 are logical places to
provide backup storage of a care-of address because the HSS serves as the
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master database for a given user (i.e., subscriber). TR 14. Furthermore, it
would have been obvious to obtain this backup copy of the care-of address
from the Visited CSCF/location server 33, as required to satisfy claim 1’s
second (storing) step. More particularly, we conclude that it would have
been obvious to transmit the backup copy from the Visited CSCF and/or
location server 33 to HSS/location server 29 by using either a modified
version of the “Registration Notification” message depicted in Bharatia’s
Figure 3 or a modified version of the CX Interface signaling (e.g., “CX-Pull”
message) depicted in TR’s Figure B.3.
For the reasons given in Claim Chart BB at 6-10, limitation 1.3, we
further conclude that it would have been obvious to use the back-up care-of
address stored in HSS/location server 29 to restore the care-of address to the
Visited CSCF/location server 33 in the event of a crash, as required, to
satisfy claim 1’s third (restoring) step.
As noted above, Patent Owner does not argue claim 1’s first
(registration request reception) step.
We, therefore, find that Foti as modified above satisfies all three steps
of claim 1.
Patent Owner’s above-quoted argument that “[t]he Requester has
failed to provide any evidence of where in the art it is shown that an S-CSCF
actually sends a ‘TA’ to an ‘HSS’” (PO Resp’t Br. 10) is unpersuasive
because “[n]on-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a combination
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of references.” Merck, 800 F.2d at 1097. Furthermore, this argument fails to
address our reliance on Rune’s Figure 7 for a suggestion of storing a backup
care-of address in the HSS/location server 29 and for obtaining this back-up
care-of address from the S-CSCF, as required by claim 1’s second (storing)
step.
Our above-stated reasons for the obviousness of claim 1 based on Foti
in view of Bharatia and Rune also apply to independent claims 7, 12, and 16.
Dependent claims 4, 13-15, and 17 would have been obvious for these
reasons and the reasons given in the discussion of these dependent claims in
Claim Chart AA at pages 8 and 16 (regarding claims 4 and 13) and Claim
Chart BB at pages 11-14 (regarding claims 14, 15, and 17).
This new ground of rejection also applies to claim 19, which reads as
follows: “19. (New) The method of claim 16, wherein restoring the TA to
the S-CSCF from the HSS comprises sending a request to a single, targeted
HSS.” Claim 19 reads on the reference teachings as combined above to
satisfy claim 1. That is, the backup care-of address will be stored in only one
HSS, namely, the HSS in the Home Network of the subscriber whose care-of
address is being backed up.
We further conclude that dependent claims 2, 3, 8, and 9 would have
been obvious over Foti in view of Bharatia, Rune, and Koivunen for the
reasons given in the above discussion of claim 1 and the reasons given in the
discussion of these dependent claims in Claim Chart AA at 8 and 14.

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VII. DECISION IN PATENT OWNER’S APPEAL
The Examiner’s decision that claims 5 and 10 are unpatentable under
35 U.S.C. § 103(a) for obviousness over Foti in view of Bharatia and Rune
is sustained.
The Examiner’s decision that claims 6 and 11 are unpatentable under
35 U.S.C. § 103(a) for obviousness over Foti in view of Bharatia, Rune, and
Koivunen is sustained.
The Examiner’s decision that claims 5, 6, 10, and 11 are unpatentable
over the prior art is AFFIRMED.

VIII. DECISION IN REQUESTER’S APPEAL
The Examiner’s decision not to reject claims 1, 4, 7, 12-17, and 19
under 35 U.S.C. § 103(a) for obviousness over Foti in view of Bharatia and
Rune is sustained.
The Examiner’s decision not to reject claims 2, 3, 8, and 9 under
35 U.S.C. § 103(a) for obviousness over Foti in view of Bharatia, Rune, and
Koivunen also is sustained.
The Examiner’s decision not to reject claims 1-4, 7-9, 12-17, and 19
under 35 U.S.C. § 103(a) for unpatentability over the prior art therefore
is AFFIRMED. However, we have entered NEW GROUNDS of rejection of
all of these claims pursuant to 37 C.F.R. § 41.77(b).

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IX. CONCLUSION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that “[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.” Correspondingly, no portion of the decision is final for
purposes of judicial review. A requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate; however, the Board may elect to defer
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)-(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to the
claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record.
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Any request to reopen prosecution before the examiner under
37 C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.”
Accordingly, a request to reopen prosecution is limited to issues raised by the
new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the patent owner seek to
substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
be limited in scope to the issues raised by the Board’s opinion reflecting its
decision to reject the claims and the patent owner’s response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the patent owner, and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The examiner, after the Board’s entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d) as
to whether the Board's rejection is maintained or has been overcome. The
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proceeding will then be returned to the Board together with any comments
and reply submitted by the owner and/or requester under 37 C.F.R.
§ 41.77(e) for reconsideration and issuance of a new decision by the Board as
provided by 37 C.F.R. § 41.77(f).
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED; 37 C.F.R. § 41.77(b)

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For Patent Owner:

FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON DC 20007-5109

For Third Party Requester:

HAYNES AND BOONE, LLP
IP SECTION
2323 VICTORY AVENUE, SUITE 700
DALLAS, TX 75219

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