15516765 - (D) (P.T.A.B. May. 28, 2019)

Ex Parte FITCH et al

Patent Trials and Appeals BoardMay 28, 2019

15516765 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/516,765 04/04/2017 135778 7590 05/30/2019 Patterson Thuente Pedersen, P.A. 4800 IDS CENTER 80 SOUTH 8TH STREET MINNEAPOLIS, MN 55402-2100 FIRST NAMED INVENTOR Michael FITCH 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 4359.124WOUS01 3484 EXAMINER CUMMING, WILLIAM D ART UNIT PAPER NUMBER 2645 NOTIFICATION DATE DELIVERY MODE 05/30/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): efsuspto@ptslaw.com rabe@ptslaw.com gagliardi@ptslaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL FITCH and RICHARD MACKENZIE Appeal 2019-003164 Application 15/516, 7 65 Technology Center 2600 Before ROBERT E. NAPPI, LINZY T. McCARTNEY, and JASON M. REPKO, Administrative Patent Judges. McCARTNEY, Administrative Patent Judge. DECISION ON APPEAL Appellants seek review under 35 U.S.C. Â§ 134 of the Examiner's final rejection of claims 1-7. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. Appeal2019-003164 Application 15/516,765 BACKGROUND This patent application concerns allowing base stations to offer different levels of service to different Closed Subscriber Group (CSG) users. See Specification 4:30-5: 12, filed April 4, 2017 ("Spec."). Claim 1 illustrates the claimed invention: 1. A method in a cellular communications network, the method comprising: transmitting, by a first basestation, a first message including a Closed Subscriber Group (CSG) identifier; determining for a User Equipment (UE) that the CSG identifier is present on a first allowed CSG list; determining an allowed CSG service level for the UE, the allowed CSG service level being one of at least a first CSG service level or a second CSG service level, the first CSG service level providing a different level of service than the second CSG service level; and connecting the UE to the first basestation, wherein the Quality of Service (QoS) for the UE is dependent on the allowed CSG service level. Appeal Brief 19, filed September 21, 2018 ("App. Br."). REJECTIONS 1-3 and 5-7 Â§ 103 4 Â§ 103 1 Kim et al. (US 2014/0038593 Al; Feb. 6, 2014). 2 Xu et al. (US 2013/0250917 Al; Sept. 26, 2013). 3 Guo et al. (US 2013/0260768 Al; Oct. 3, 2013). 2 Kim 1 and Xu 2 Kim, Xu, and Guo3 Appeal2019-003164 Application 15/516,765 DISCUSSION Appellants argue that the Examiner has not shown that the combination of Kim and Xu teaches or suggests claim 1 's "determining an allowed CSG service level for the UE, the allowed CSG service level being one of at least a first CSG service level or a second CSG service level, the first CSG service level providing a different level of service than the second CSG service level" limitation. See App. Br. 11-17. Appellants contend that the Examiner interpreted the CSG service levels recited in this limitation to encompass a denial of access or service, even though the limitation makes clear that the service levels are allowed CSG service levels and the next limitation requires connecting a UE to a first base station. See App. Br. 11- 14. Appellants contend that when these terms are properly interpreted, the combination of Kim and Xu does not teach or suggest this limitation. See App. Br. 14--17. Appellants have persuaded us that the Examiner erred. The Examiner determined that Xu discloses the recited CSG service levels because Xu discloses open, closed, and hybrid modes, the hybrid mode prioritizing access to a base station for members of a CSG. See Final Action 4, mailed March 22, 2018 ("Final Act."); Advisory Action 2, mailed June 20, 2018 ("Advisory Act."); Answer 7, mailed January 15, 2019 ("Ans."). The Examiner reasoned that "[d]enial of service is a level of service," so denying a UE access to a base station in favor of a preferred UE is "still a service level." Advisory Act. 2; see also Ans. 7. The Examiner found that Kim also discloses the disputed terms because Kim discloses denying access to base stations. See Ans. 8. But as argued by Appellants, the disputed limitation recites "the allowed CSG service level being one of at least a first CSG service level or a 3 Appeal2019-003164 Application 15/516,765 second CSG service level." App. Br. 19 (emphasis added). The term "allowed CSG service level" indicates the recited first and second CSG service levels encompass allowed services, not denial of access to a base station. This interpretation is bolstered by the next limitation in claim 1, which recites "connecting the UE to the first basestation, wherein the Quality of Service (QoS) for the UE is dependent on the allowed CSG service level." App. Br. 19 (emphasis added). Interpreting the recited allowed CSG service level and first and second CSG service levels to encompass denying access to a base station starkly conflicts with the requirement that the claimed method "connect[] the UE to the first basestation." This interpretation also contradicts the cited portions of the written description, which describe providing different levels of CSG service to UEs, not denying access to a base station. See, e.g., Spec. 14: 14--26. We therefore agree with Appellants that the Examiner has not shown that the recited CSG service levels encompass denying access or service to a base station. Because the Examiner found that the combination of Kim and Xu teaches or suggests the recited CSG service levels because the references disclose denying access or service to a base station, we also agree that the Examiner has not shown that these references teach or suggest the disputed limitation. On this record, we therefore do not sustain the Examiner's rejection of claim 1 and its dependent claims. 4 Appeal2019-003164 Application 15/516,765 1-3 and 5-7 Â§ 103 4 Â§ 103 Outcome DECISION Kim and Xu Kim, Xu, and Guo REVERSED 5 1-3 and 5-7 4 1-7