Ex Parte Gras et al

Patent Trial and Appeal Board

Feb 21, 2017

12676891 (P.T.A.B. Feb. 21, 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.
12/676,891 12/01/2010 Laurence Gras LUTZ 201121US01 6024
48116 7590 02/23/2017
FAY STTARPF/T TTf’F.NT
EXAMINER
1228 Euclid Avenue, 5th Floor PREVAL, LIONEL
The Halle Building
Cleveland, OH 44115-1843 ART UNIT PAPER NUMBER
2475
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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 @ faysharpe.com
ipsnarocp @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURENCE GRAS, BRUNO MONGAZON-CAZAVET, and
FRANCOIS TABURET
Appeal 2016-001525
Application 12/676,891
Technology Center 2400
Before CAROLYN D. THOMAS, JEFFREY S. SMITH, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-001525
Application 12/676,891
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1, 3, 4, 6—10, 12—24, 26, 30, 31, and 33—42, which are all the claims
remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Representative Claim
1. An apparatus for interworking between WiMAX and 3rd
Generation Partnership Project (3GPP) networks, comprising:
an interworking (IWK) node configured to communicate
with a 3 GPP network via a 3 GPP Gi interface to a gateway
general packet radio service (GPRS) support node (GGSN) in the
3 GPP network, configured to communicate with a WiMAX
network via a WiMAX R3 interface to a Home Connectivity
Service Network (CSN) in the WiMAX network, and configured
to interwork between the 3 GPP network and the WiMAX
network in conjunction with providing internet protocol (IP)
connectivity services of the WiMAX network to a mobile station
(MS) served by the 3GPP network;
wherein the IWK node is configured to provide the MS
with access to the Home CSN of the WiMAX network via the
3 GPP network using a dedicated access point name (APN) in the
WiMAX network mapped to an IWK address at the IWK node.
Prior Art
Bucker
Qian
Radhakrishnan
Kim
Feather
US 2009/0052396 A1
US 2008/0205343 A1
US 2008/0205342 A1
US 2005/0282547 A1
US 2004/0081173 A1
Feb. 26, 2009
Aug. 28, 2008
Aug. 28, 2008
Dec. 22, 2005
Apr. 29, 2004
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Appeal 2016-001525
Application 12/676,891
Examiner’s Rejections
Claims 1,6, 7, 9, 10, 12, 13, 15-19,21,23,24, 26, 30, 31, and 33^12
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bucker
and Qian.
Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bucker, Qian, and Radhakrishnan.
Claims 8 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bucker and Kim.
Claims 20 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bucker, Qian, and Feather.
ANALYSIS
We adopt the findings of fact made by the Examiner in the Final
Rejection and Examiner’s Answer as our own. We concur with the
conclusions reached by the Examiner for the reasons given in the
Examiner’s Answer. We highlight the following for emphasis.
Appellants contend Bucker does not teach an R3 interface of the IWK
node element. Reply Br. 2. However, claim 1 does not recite an R3
interface1 of the IWK node element. Claim 1 recites “an interworking
Uhe only structural limitation of apparatus claim 1 is the IWK node. The
fact that the “node is configured to” interact with other devices does not
make the other devices actual limitations of the claim. In the event of
further prosecution, the Examiner should consider whether claims 1, 3, 4, 6—
10, 12—24, 26, 30, 31, and 33—42 recite anything more than a single means,
which does not comply with 35 U.S.C. § 112, first paragraph. See In re
Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983) (“single means” claims are
properly rejected under the first paragraph of § 112).
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Appeal 2016-001525
Application 12/676,891
(IWK) node . . . configured to communicate with a WiMAX network via a
WiMAX R3 interface.” The claimed node does not include an R3 interface,
but rather is “configured to communicate with a WiMAX network via a
WiMAX R3 interface.” The R3 interface itself is not a structural limitation
of claim 1. Appellants’ contention is not commensurate with the scope of
the claim. Even so, the Examiner relies on Qian, not Bucker, to teach an R3
interface. Final Act. 5.
Appellants contend Qian teaches an R3 interface between an Access
Service Network (ASN) and a Connectivity Service Network (CSN) within a
WiMAX network, which is not the same as the claimed IWK node between
3GPP and WiMAX networks with a WiMAX R3 interface to a Home CSN
of the WiMAX network. Reply Br. 3; App. Br. 2. Again, claim 1 does not
positively recite the R3 interface as a structural limitation, nor does claim 1
recite the R3 interface is part of the IWK node. Further, claim 1 does not
recite the R3 interface is located between the 3GPP and CSN WiMAX
networks. Claim 1 recites the IWK node is “configured to communicate . . .
via a WiMAX R3 interface to a Home Connectivity Service Network
(CSN).” Appellants’ contention is not commensurate with the scope of the
claim.
The Examiner finds Figure 1 of Bucker shows IWK “node [18]
configured to communicate with a 3GPP network [2], [and also]. . .
configured to communicate with a WiMAX network [ASN 3] via [an] . . .
interface ... to a Home Connectivity Service Network (CSN) in the
WiMAX network [8].” Final Act. 4. The Examiner also finds Qian teaches
the interface between the ASN and CSN WiMAX networks can be an R3
interface. Final Act. 5. Using the R3 interface of Qian as the interface
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Appeal 2016-001525
Application 12/676,891
between the ASN 3 and CSN 8 of Bucker yields the predictable result of an
IWK node 18 configured to communicate with 3GPP network 2, and also
configured to communicate with the ASN via Qian’s R3 interface to the
CSN. See KSR Inti Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
Claim 1 also recites “wherein the IWK node is configured to provide
the MS [mobile station] with access to the Home CSN of the WiMAX
network via the 3 GPP network using a dedicated access point name (APN)
in the WiMAX network mapped to an IWK address at the IWK node.” The
Examiner finds Paragraph 35 of Bucker teaches this limitation. Ans. 5.
Appellants contend Paragraph 35 of Bucker teaches roaming between a
WiMAX network and a UTMS network, but does not teach an IWK node
that enables a mobile station served by a 3 GPP network with access to a
WiMAX network. Reply Br. 5, 6.
Although Paragraph 35 of Bucker teaches roaming between networks,
this paragraph also describes Figure 2 of Bucker. The subsequent
paragraphs describing Figure 2 teach that node 18 uses the APN to enable
the mobile station 9 served by 3GPP network 6 to have access to WiMAX
home agent 11. For example, GGSN 6 sends a request to server 18 for
access to services of the APN. Bucker 136. Server 18 replies to GGSN 6
by transmitting an IP address (which serves as the home address of mobile
station 9), an address of home agent 11, and additional data. 137. The
mobile station then sends and receives data packets via the GGSN 6. 142.
Appellants have not persuasively distinguished the claimed “wherein” clause
from server 18 using the request for access to services of the APN to
transmit an IP address for MS 9 and an address for home agent 11, to enable
the MS to send and receive data packets via GGSN 6, as taught by Bucker.
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Appeal 2016-001525
Application 12/676,891
We sustain the rejection of independent claim 1. Appellants present
arguments for the patentability of independent claims 6, 31, 33, and 41
similar to those presented for claim 1 which we find unpersuasive. App. Br.
11—14, 14—16, 16—18, and 18—21. Appellants do not present arguments for
separate patentability of claims 3, 4, 7—10, 12—24, 26, 30, 34^40, and 42,
which fall with claim 1.
DECISION
The Examiner’s rejections of claims 1, 3, 4, 6—10, 12—24, 26, 30, 31,
and 33—42 are 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). See
37 C.F.R. § 41.50(f).
AFFIRMED
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