Ex Parte Buckley et al

Patent Trial and Appeal Board

Dec 3, 2012

11287638 (P.T.A.B. Dec. 3, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte ADRIAN BUCKLEY, GEORGE BALDWIN BUMILLER, and
PAUL CARPENTER
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Appeal 2011-006106
Application 11/287,638
Technology Center 2600
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Before JAMES R. HUGHES, ERIC S. FRAHM, and GREGORY J.
GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge

DECISION ON APPEAL

Appeal 2011-006106
Application 11/287,638

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 62-88 (App. Br. 3). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Exemplary claim 62 follows:
62. A network selection method for a user equipment (UE) device,
the method comprising:

gathering network information by the UE device;

sending a message to a default generic access network controller
(GANC) associated with a first public land mobile network (PLMN) and
connected to the first PLMN via at least one of a first A interface and a first
Gb interface, the message including at least one of the network information
and a request for one or more PLMN services provided through a GANC,
wherein the message is sent towards the default GANC via a Up interface;
and

receiving a response message from the default GANC via the Up
interface, the response message including a list of one or more GANCs, each
coupled to a corresponding PLMN via at least one of a corresponding A
interface and a corresponding Gb interface.

Claims 62-88 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gallagher (U.S. 2006/0079274 A1) in view of Hind (WO
2004/040931 A2) and McClure (WO 01/47316 A2) or Haumont (WO
03/058996 A1) (Ans. 4-17).

Appeal 2011-006106
Application 11/287,638

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ISSUES
Based upon our review of the record, the dispositive issues before us
are:
(1) Can the claimed invention be distinguished from
the prior art on the basis of the claim limitation of sending a
message including “a request for one or more PLMN services
provided through a GANC” or the claim limitation of receiving
a “response message including a list of one or more GANCs” as
recited in independent claim 62 and as similarly recited in
independent claims 75 and 84?
(2) Are Appellants’ arguments urging patentability
predicated on non-functional descriptive material?

ANALYSIS
Appellants argue that independent claim 62 is not obvious because the
combination of Gallagher, Hind, and McClure or Haumont does not teach or
suggest sending a message that “includes a request for PLMN [Public Land
Mobile Network] services” (App. Br. 14). Appellants also argue that the
combination of prior art references does not teach or suggest “receiving a
response message that includes a list of one or more network nodes” (id. at
22).
But we conclude that Appellants’ arguments urging patentability are
predicated on non-functional descriptive material, i.e., the content of
messages that are sent and received. The message content is not executable
code that changes the function of a machine. The informational content of
non-functional descriptive material is not entitled to weight in the
Appeal 2011-006106
Application 11/287,638

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patentability analysis. See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994)
(“Lowry does not claim merely the information content of a memory. . . Nor
does he seek to patent the content of information resident in a database.”).
See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008)
(precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative)
(Federal Circuit Appeal No. 2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex
parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed.
Appx. 959 (Fed. Cir. 2006).
This reasoning is applicable here. Accordingly, we will sustain the
Examiner’s rejection of representative claim 62, and independent claims 75
and 84 which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii). We will also
sustain the Examiner’s rejection of the dependent claims (i.e., claims 63-74,
76-83, and 85-88) because Appellants did not set forth any separate
patentability arguments for the dependent claims (see App. Br. 31). See 37
C.F.R. § 41.37(c)(1)(vii).

DECISION
We affirm the Examiner’s decision rejecting claims 62-88 as
unpatentable under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
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