Ex Parte Aoyagi et al

Patent Trial and Appeal Board

Feb 27, 2017

13503036 (P.T.A.B. Feb. 27, 2017)

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.
13/503,036 06/19/2012 Kenichiro Aoyagi 17470/234001 9536
22511 7590 03/01/2017
O SH ATT ANfi T I P
EXAMINER
TWO HOUSTON CENTER VIANA DI PRISCO, GERMAN
909 FANNIN, SUITE 3500
HOUSTON, TX 77010 ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
03/01/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@oshaliang.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENICHIRO AOYAGI and MIKIO IWAMURA
Appeal 2016-006822
Application 13/503,036
Technology Center 2600
Before CARLA M. KRIVAK, DEBRA K. STEPHENS, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006822
Application 13/503,036
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 2, 4, 6, and 8, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
“The present invention relates to a mobile communication terminal
configured to perform cell reselection from a first communication system to
a second communication system, a mobile communication controller, a
mobile communication system, and a mobile communication method.”
(Spec. 11.) Claim 2, reproduced below, is exemplary of the appealed
claims:
2. A mobile communication terminal configured to perform cell
reselection from a first communication system in which the mo­
bile communication terminal is in a connected state to a second
communication system in which the mobile communication ter­
minal is in an idle state, comprising:
when the mobile communication terminal performs cell rese­
lection to the second communication system, a transmission unit
configured to transmit to the second communication system a
control signal indicating that the mobile communication terminal
was located in the first communication system and was located
in the first communication system before initiation of the cell re­
selection performed by the mobile communication terminal to
the second communication system,
1 Appellants identify NTT DOCOMO, Inc. as the real party in interest. (See
App. Br. 4.)
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Appeal 2016-006822
Application 13/503,036
wherein the control signal includes an identity of the first
communication system, wherein the control signal is NAS sig­
naling.
THE REFERENCES AND THE REJECTION
Claims 2, 4, 6, and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Burgess et al. (US 2009/0111468 Al; pub. Apr. 30, 2009)
and Bachmann et al (US 2010/0323700 Al; pub. Dec. 23, 2010). (See Final
Act. 2-8.)
APPELLANTS’ CONTENTIONS
Appellants argue the Examiner’s rejection is in error for the following
reasons:
1. “Bachmann is completely silent about the control signal
indicating that the mobile communication terminal was located in the first
communication system before cell reselection, as recited in the claims.”
(App. Br. 11.)
2. “[T]he Attach Request disclosed by Bachmann is part of a
handover procedure that occurs during the handover. ... By contrast, the
claims require ‘a control signal indicating that the mobile communication
terminal was located in the first communication system and was located in
the first communication system before initiation of the cell reselection
performed by the mobile communication terminal to the second
communication system.’” (App. Br. 12.)
3. “[T]he Examiner’s rationale for combining Bachmann with
Burgess is unsupported by either reference.” (App. Br. 12.)
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Appeal 2016-006822
Application 13/503,036
Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants did not make in the
Briefs have not been considered and are deemed waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
ANALYSIS
Appellants state that “[f]or the purposes of this appeal, claims 2, 4, 6,
and 8 stand or fall together” and “[independent claim 2 is representative of
the independent claims.” (App. Br. 8.)
The Examiner finds that Burgess teaches most of the limitations of
independent claim 2, but that “Burgess does not expressly disclose that the
control signal indicates that the mobile communication terminal was located
in the first communication system and was located in the first
communication system before initiation of the cell reselection performed by
the mobile communication terminal to the second communication system,
wherein the control signal includes an identity of the first communication
system, wherein the control is NAS signaling.” (Final Act. 3.) The
Examiner further finds, however, that Bachmann does teach those features
and concludes that “it would have been obvious ... to combine the teachings
of Bachmann with the teachings of Burgess to reduce the amount of time . . .
for performing a handover of a mobile node between a non-3GPP network
and a 3GPP network.” (Id. at 4.)
Appellants’ argument that Bachmann is silent about the control signal
indicating that the mobile communication terminal was located in the first
communication system before cell reselection is not persuasive in view of
the Examiner’s finding that “[t]he IMSI included in [Bachmann’s] . . .
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Appeal 2016-006822
Application 13/503,036
Attach Request message comprises a Mobile Network Code (MNC) that
identifies the mobile network where the subscriber belongs.” (Ans. 3.)
(Id.) Appellants do not persuasively rebut this finding.2
Appellants’ argument that Bachman’s Attach Request occurs during
the handover and not “before initiation of the cell reselection” is also not
persuasive in view of the Examiner’s finding that “Fig. 8 in Bachmann
shows that following the Attach Request there is an authentication step, a
location update step, a handover request step before the actual handover is
completed and the communication is established.” (Ans. 4.) We agree that
this teaches the claimed control signal before initiation of cell reselection.
Finally, Appellants’ argument that the motivation to combine is
“unsupported by either reference” does not show error because (a) the
motivation need not be found in the references3 and (b) in any event, as the
Examiner observes, combining the teachings and suggestions of Bachman
and Burgess would have been obvious because Bachman is specifically
directed to reducing the duration of a handoff. (See Final Act. 4—5.)
Appellants’ related argument that adding the steps of Bachmann would
increase the duration of Burgess’s method and, thus, would not reduce the
2 The Examiner also finds the “MNC (Mobile Network Code), as defined in
Newton’s Telecom Dictionary 22nd edition, is a part of the IMSI
(International Mobile Subscriber Identity) or FAI (Focation Area Identity)
that identifies the cell that a mobile telephone user is in.” (Ans. 3.)
3 “It is well settled that, even where references do not explicitly convey a
motivation to combine, ‘any need or problem known in the field of endeavor
at the time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.’” ABTSys., LLC v.
Emerson Elec. Co., 797 F.3d 1350, 1360 (Fed. Cir. 2015) (quoting KSR
International Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007)).
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Appeal 2016-006822
Application 13/503,036
amount of time for performing the handover is not supported by sufficient
evidence to persuade us of Examiner error. (App. Br. 13.)
We accordingly sustain the rejection of claims 2, 4, 6, and 8.
DECISION
The rejection of claims 2, 4, 6, and 8 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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