Ex Parte Bienn et alDownload PDFPatent Trial and Appeal BoardMay 31, 201713278782 (P.T.A.B. May. 31, 2017) Copy Citation 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. 13/278,782 10/21/2011 Marvin Bienn P34556-US2 2551 27045 7590 06/02/2017 F.RTrSSON TNC EXAMINER 6300 LEGACY DRIVE MANSOURY, NOURALI M/SEVR 1-C-ll PLANO, TX 75024 ART UNIT PAPER NUMBER 2414 NOTIFICATION DATE DELIVERY MODE 06/02/2017 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): kathryn.lopez@ericsson.com michelle. sanderson @ eric sson .com candy.sanders@ericsson.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARVIN BIENN and GARY STEPHENS1 Appeal 2016-008449 Application 13/278,782 Technology Center 2400 Before JASON V. MORGAN, NABEEL U. KHAN, and KAMRAN JIVANI, Administrative Patent Judges. MORGAN, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellants, the real party in interest is Telefonaktiebolaget LM Ericsson. App. Br. 2. Appeal 2016-008449 Application 13/278,782 Introduction This is an appeal, under 35 U.S.C. § 134(a), from the Examiner’s rejection of claims 1—3, 9-11, 17—20, 22—25, and 27—34. Non-Final Act. (Oct. 22, 2015), Office Action Summary. The Examiner objects to, but does not reject, claims 4—8, 12—16, 21, and 26. Id. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter NEW GROUNDS OF REJECTION. Invention The invention is directed to “[a]n Anchor Mobile Switching Center emulation (MSCe) and a Target MSCe . . . that take part in an intersystem handoff of a Mobile Station (MS) which is in communication with a B-party.” Spec. 32 (abst.). Exemplary Claim (Emphasis added) 1. An Anchor Mobile Switching Center emulation (MSCe) for supporting an intersystem handoff of a Mobile Station (MS) from an Anchor Network to a Target Network, wherein the MS is in communication with a B-Party, wherein the Anchor Network comprises an Anchor Base Station (BS), the Anchor MSCe and an Anchor Media Gateway (MGW), and wherein the Target Network comprises a Target BS, a Target MSCe and a Target MGW, the Anchor MSCe comprising: a Target MSCe message interface configured to send a Handoff Request message to the Target MSCe, wherein the Handoff Request message comprises a Session Initiation Protocol (SIP) INVITE message that contains a TIA/EIA-41 FacilitiesDirective2 INVOKE message. 2 Appeal 2016-008449 Application 13/278,782 Rejections Claims 1—3, 9—11, 17—20, and 22—25 are rejected, under 35 U.S.C. § 103(a), as obvious over Zhang (US 2010/0142488 Al; June 10, 2010), Fors (US 6,931,249 B2; Aug. 16, 2005), and McConnell (US 7,406,324 Bl; July 29, 2008). Non-Final Act. 5-9. Claims 1—3, 9-11, 17—20, and 22—25 are rejected, under 35 U.S.C. § 103(a), as obvious over Zhang, Marin (US 7,697,480 B2; Apr. 13, 2010), and McConnell. Non-Final Act. 5—9.2 Claims 27, 29, 31, and 33 are rejected, under 35 U.S.C. § 103(a), as obvious over Zhang, Fors, McConnell, and Punj (US 7,773,581 B2; Aug. 10, 2010). Non-Final Act. 9—10. Claims 27, 29, 31, and 33 are rejected, under 35 U.S.C. § 103(a), as obvious over Zhang, Marin, McConnell, and Punj. Non-Final Act. 9-10. Claims 28, 30, 32, and 34 are rejected, under 35 U.S.C. § 103(a), as obvious over Zhang, Fors, McConnell, and Bienn (US 2003/0169768 Al; Sept. 11,2003). Non-Final Act. 11. Claims 28, 30, 32, and 34 are rejected, under 35 U.S.C. § 103(a), as obvious over Zhang, Marin, McConnell, and Bienn. Non-Final Act. 11. The Examiner has withdrawn rejections of: claims 1—8 under 35 U.S.C. § 112 12; and claims 1—34 under 35 U.S.C. § 101. 2 As reflected above, independent claims 1,9, 17, and 22 are rejected as obvious over: Zhang, Fors, and McConnell; and, alternatively, Zhang, Marin, and McConnell. The remaining claims are also each rejected, in alternative form, as obvious over these two combinations (some rejected over further references). 3 Appeal 2016-008449 Application 13/278,782 ISSUES Has the Examiner shown that the combination of Zhang, Fors, and McConnell teaches or suggests claim l’s “Handoff Request message comprises a Session Initiation Protocol (SIP) INVITE message that contains a TIA/EIA-41 FacilitiesDirective2 INVOKE message”? Has the Examiner shown that the combination of Zhang, Marin, and McConnell teaches or suggests claim l’s “Handoff Request message comprises a Session Initiation Protocol (SIP) INVITE message that contains a TIA/EIA-41 FacilitiesDirective2 INVOKE message”? ANALYSIS The Examiner rejects independent claims 1,9, 17, and 22 under the same findings and conclusions; only stating “see similar rejection to claim 1” for each of claims 9, 17, and 22. Non-Final Act. 7—9. We address illustrative claim 1. For the reasons below, the Examiner errs in applying each of the above two combinations against claim 1. The same errors extend to independent claims 9, 17, and 22 and remaining dependent claims 2, 3, 10, 11, 18-20, 23-25, and 27-34. Zhang, Fors, and McConnell The Examiner finds that Zhang teaches or suggests all of the recitations of claim 1, except the following composition of the Handoff Request message: “comprises a Session Initiation Protocol (SIP) INVITE message that contains a TIA/EIA-41 FacilitiesDirective2 INVOKE message” (emphasized within reproduced claim 1). Non-Final Act. 5—6. The Examiner relies on McConnell as teaching the comprised SIP INVITE 4 Appeal 2016-008449 Application 13/278,782 message and Fors as teaching the comprised TIA/EIA-41 FacilitiesDirective2 INVOKE message. Id. at 6. Appellants contend that the Examiner erred because none of the references suggest, and the Examiner provides no rationale for, the following claimed nesting of messages: (i) a Handoff Request comprising a SIP INVITE message and (ii) a SIP INVITE message containing a TIA/EIA 41 FacilitiesDirective2 INVOKE message. See, e.g., App. Br. 7. Appellants correctly summarize these Appeal Brief contentions in the Reply Brief, stating: [A]s the Applicant argued in the Third Appeal Brief’s pages 6— 16, Zhang, Fors and McConnell respectively disclose separate and distinct messages[,] namely a Handoff Request, a TIA-41 FACDIR2 Invoke message, and a SIP REFER message/SIP INVITE message[,] but they do not disclose or suggest the independent claim l’s highlighted technical feature “the Handoff Request message comprises a Session Initiation Protocol (SIP) INVITE message that contains a TIA/EIA-41 FacilitiesDirective2 INVOKE message”. Reply Br. 2—3 (emph. omitted). The Appeal Brief contends the references teach a separated Handoff Request message, SIP INVITE message, and TIA-41 FACDIR2 Invoke message insofar: “Zhang’s paragraphs [0066] and [0080] only teach a Handoff Request message” (App. Br. 7); “Fors discloses separate and distinct messages—FACDIR2 message and Handoff Request” {id. at 8); “[Fors’] Handoff Request 4 contains parameters that are mostly obtained (directly transferred) from the FACDIR2 message 3 (see col. 2, lines 11-29) [and thus] does not contain a TIA-41 FACDIR2 INVOKE message” {id. at 9—10); “McConnell. . . discloses separate and distinct messages—SIP INVITE and IS-41 signaling” {id. at 12); “McConnell 5 Appeal 2016-008449 Application 13/278,782 discloses that the ‘[t]o initiate the handoff, CSCF 34 may send a SIP INVITE message to a network element, . . . which, in turn, engages in IS-41 signaling” {id. at 13). Addressing the rejection’s lack of an obviousness rationale for the claimed nesting of messages, the Appeal Brief persuasively contends that the presented rationales merely conclude (i.e., without prior art support) such nesting of the references’ cited messages would result in improved service. Id. at 13—15. Appellants explain that the presented rationale for comprising McConnell’s SIP INVITE message within Zhang’s Handoff Request is merely “to improve the quality of service in the communication network.” Id. at 14 (quoting Non-Final Act. 6). Appellants further explain that the presented rationale for containing Fors’ TIA/EIA-41 FacilitiesDirective2 INVOKE message within McConnell’s SIP INVITE message is also merely “to improve the quality of service in the communication network.” Id. (quoting Non-Final Act. 6). And, Appellants persuasively add: [I]f the “suggestion” requirement of 35 U.S.C. § 103 can be met by merely stating there is desire “to improve the quality service in the communications network” then the suggestion requirement can always be met and is utterly meaningless. Simply put, there is always an advantage associated with “improving the quality of service in the communications network” that can be met by combining old elements which can be identified through hindsight once that combination is known. Id. at 15 (emph. omitted). We agree with all of the above arguments as to the stated deficiencies of the presented rejection (but make no holding of whether there is a suggestion, e.g., by the references, to nest their cited messages as claimed). 6 Appeal 2016-008449 Application 13/278,782 We add, however, the Examiner’s obviousness rationales do not propose to nest the references’ cited messages as claimed. Rather, the rationales propose to include Fors’ and McConnell’s messages (or the like) within “systems” as follows: “include FacilitiesDirective2 INVOKE message as taught by Fors ... in the system of Zhang, . . . implemented in eMSC, in order to provide handover to improve the quality of service” (Non-Final Act. 6 (emph. added)); and “include SIP INVITE as taught by [McConnell]... in the system of Zhang and Fors, . . . implemented in eMSC, in order to provide handover to improve the quality of service” {id. (emph. added)). The Examiner insufficiently responds to the above deficiencies. Addressing the application of Fors, the Examiner only changes the rationale for the application of Fors by newly stating the resultant FacilitiesDirective2 INVOKE message “supports] inter-system handoffs in the communications network” (Ans. 4). Addressing the application of McConnell, the Examiner only changes the rationale for the application of McConnell by newly stating the resultant SIP INVITE message “indicates a client is being invited in a call session” {id.). However, the Examiner’s findings and conclusions still fall short of showing that it would have been obvious to an artisan of ordinary skill to nest the references’ cited messages in the manner recited, thus the rejections fails to reach all “differences between the prior art and the claims at issue[.]” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (applying Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966)). Accordingly, we do not sustain the Examiner’s rejection of claims 1— 3, 9-11, 17—20, 22—25, and 27—34 as obvious over Zhang, Fors, and McConnell (and, for some claims, further references). 7 Appeal 2016-008449 Application 13/278,782 Zhang, Marin, and McConnell As noted supra, the Examiner duplicates all rejections by presenting Marin as alternative support for the applied teachings of Fors. See fn. 2. That is, Marin and Fors are presented as interchangeable support for the proposed combination. See, e.g., Non-Final Act. 5 (“over Zhang ... in view of. . . Fors or Marin . . .” and “Fors (or Marin). . . discloses . . .”). The application of Marin is likewise deficient, as the application of Fors, because the Examiner does not indicate whether and why Marin supports nesting of the references’ cited messages as claimed. Even assuming otherwise, the Examiner’s application of Marin’s TIA-41 FACDIR2 INVOKE message (id. at 5—6 (citing Marin col. 11,11. 1—13)) would not cure the Examiner’s erred application of McConnell’s SIP INVITE message. Accordingly, we do not sustain the Examiner’s rejection of claims 1— 3, 9-11, 17—20, 22—25, and 27—34 as obvious over Zhang, Marin, and McConnell (and, for some claims, further references). NEW GROUNDS OF REJECTION Pursuant to 37 C.F.R. § 41.50(b), we newly reject claim 1 under 35 U.S.C. § 103(a) as obvious over Zhang, Fors, and McConnell. Except as detailed above, we adopt the Examiner’s findings as they relate the 35 U.S.C. § 103(a) rejection of claim 1 as being obvious over Zhang, Fors, and McConnell. We further find claim 1 ’s restrictions of the Handoff Request message constitute nonfunctional descriptive subject matter and accordingly do not patentably distinguish the claimed invention over the applied prior art. We need not give patentable weight to descriptive material absent a new and unobvious functional relationship between the descriptive material and 8 Appeal 2016-008449 Application 13/278,782 the device. See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); see also In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative) (“Nonfunctional descriptive material cannot render nonobvious an invention that would have otherwise been obvious.”), affd, No. 06-1003 (Fed. Cir. 2006) (Rule 36). Claim 1 ’s Handoff Request message restrictions convey only the content of the Handoff Request message. Namely, the restrictions merely specify that the “Handoff Request message comprises a Session Initiation Protocol (SIP) INVITE message that contains a TIA/EIA-41 FacilitiesDirective2 INVOKE message[.]” There is no indication that the “comprise[d] Session Initiation Protocol (SIP) INVITE message that contains a TIA/EIA-41 FacilitiesDirective2 INVOKE message” denotes more than a sequence of data. That is, claim 1 ’s restrictions of the Handoff Request message merely specifies the information’s formatting (SIP message within a Handoff Request message; TIA/EIA-41 FacilitiesDirective2 message nested within the SIP message) and types (INVITE message; INVOKE message). Claim 1 ’s restrictions of the Handoff Request message also lack a functional or structural relationship to the claimed invention. The only claimed feature concerning the Handoff Request message is claim 1 ’s recitation that the “Target MSCe message interface [is] configured to send [the] Handoff Request message to the Target MSCe[.]” Whereas the recited capability to send a message restricts the claimed system, the message contents (as recited here) only restrict the sent information. Indeed, there is no recitation of the claimed system processing the information such that the 9 Appeal 2016-008449 Application 13/278,782 information material affects the operation or structure of the anchor mobile switching center emulation of claim 1. Accordingly, we newly reject claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Zhang, Fors, and McConnell. Except as detailed above, we further adopt the Examiner’s findings as they relate to the 35 U.S.C. § 103(a) rejection of claims 2, 3, 9—11, 17—20, and 22—25 as being unpatentable over Zhang, Fors, and McConnell. The disputed handoff request recitations of these claims are, for the reasons discussed, also directed to nonfunctional descriptive subject matter that are not merited patentable weight. Therefore, we also newly reject these claims under 35 U.S.C. § 103(a) as being unpatentable over Zhang, Fors, and McConnell. Furthermore, Appellants’ arguments with respect to claims 27—34 are similarly directed to mere message content representing nonfunctional descriptive material in the context of the claimed invention. See App. Br. 17—18; Reply Br. 3^4. Therefore, for similar reasons, we also newly reject claims 27, 29, 31, and 33 under 35 U.S.C. § 103(a) as being unpatentable over Zhang, Fors, McConnell, and Punj, and claims 28, 30, 32, and 34 under 35 U.S.C. § 103(a) as being unpatentable over Zhang, Fors, McConnell, and Bienn. DECISION We reverse the Examiner’s rejection of claims 1—3, 9—11, 17—20, 22— 25, and 27-34. We newly reject claims 1—3, 9-11, 17—20, 22—25, and 27—34 under 35 U.S.C. § 103(a). 10 Appeal 2016-008449 Application 13/278,782 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS 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 proceedings (37 C.F.R. § 1.197 (b)) as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under 37 C.F.R. § 41.52 by the Board upon the same record. . . . 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). REVERSED 37 C.F.R, $ 41.50(b) 11 Copy with citationCopy as parenthetical citation