Ex Parte Haumont

Board of Patent Appeals and Interferences

Jan 20, 2010

09806939 (B.P.A.I. Jan. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SERGE HAUMONT
____________

Appeal 2009-000664
Application 09/806,939
Technology Center 2600
____________

Decided: January 20, 2010
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Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
JOSEPH F. RUGGIERO and MAHSHID D. SAADAT, Administrative
Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 3, 7, 20-22, and 25-31, which are all of the pending claims.
Claims 1, 2, 4-6, 8-19, 23, and 24 have been canceled. We have jurisdiction
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under 35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Brief (filed July 24, 2007), the Answer (mailed
January 3, 2008), and the Reply Brief (filed February 29, 2008) for the
respective details. Only those arguments actually made by Appellant have
been considered in this decision. Arguments which Appellant could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived (see 37 C.F.R. § 41.37(c)(1)(vii) (2008)).

Appellant’s Invention
Appellant’s invention relates to the allocation of a temporary identity
to at least one mobile station by a network element. The network element
allocating the temporary identity encodes at least part of its own identifier
into the temporary identity. The temporary identity is used by
communication system elements, such as a base station controller, to
determine the network element to which the communication system
elements should send packets addressed to a particular mobile station. (See
generally Spec. 9:30-10:10).

Claim 20 is illustrative of the invention and reads as follows:
20. A cellular network comprising:
at least one network element configured to allocate a temporary
identity to at least one mobile station, wherein the temporary identity
includes at least a part of an identifier indicating the network element that
allocates the temporary identity; and
a database element configured to:
receive an inquiry including the at least part of the identifier of
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the network element that allocates the temporary identity and a paging area
identifier; and
determine, based on the inquiry, an address of the network
element which allocated the temporary identity.

The Examiner relies on the following prior art references to show
unpatentability:
Onoe US 5,361,396 Nov. 1, 1994
Sawyer US 5,920,814 Jul. 6, 1999
(filed Apr. 30, 1997)
Mademann US 6,081,723 Jun. 27, 2000
(filed Mar. 26, 1997)
Monrad US 6,208,628 B1 Mar. 27, 2001
(filed Jan. 14, 1998)
Huttunen US 6,356,761 B1 Mar. 12, 2002
(filed Aug. 24, 1998)
Tiedemann, Jr. US 6,381,454 B1 Apr. 30, 2002
(Tiedemann) (filed Oct. 10, 1996)
Wallentin US 2002/0086685A1 Jul. 4, 2002
(eff. filed May 5, 1998)

The Examiner’s Rejections
Claims 20, 22, 25, 26, and 28 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Tiedemann.
Claims 3 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tiedemann in view of Sawyer, Onoe, and Monrad.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tiedemann in view of Huttunen.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tiedemann in view of Mademann.
Claims 29-31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wallentin in view of Tiedemann.
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ISSUES
The pivotal issues before us are whether Appellant has demonstrated
that the Examiner erred in finding that:
a) Tiedemann discloses a cellular network in which a temporary
identity allocated by a network element to a mobile station includes at least
part of the identifier of the allocating network element; and
b) an ordinarily skilled artisan would have recognized and
appreciated that the various formats suggested by Tiedemann for the
Temporary Reference Number (TRN) identifier would necessarily include
“3 to 5 bits” of the allocating network element identifier.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. Appellant discloses that the temporary identifier or TLLI
assigned to a mobile station by a network element “can be linked to a
specific network element by means of a suitable database. (Spec. 12:18-19).
2. Appellant further discloses that a network element that receives
a temporary identity or TLLI “can derive the corresponding network element
B by using the routing area identifier….” (Spec. 12:20-21).
3. Tiedemann discloses (Fig. 1 and col. 2, ll. 28-35) a mobile
station communication system with an over-the-air service programming
feature in which a Temporary Reference Number (TRN) is allocated to the
mobile station by a mobile switching center (MSC).
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4. Tiedemann also discloses (col. 6, ll. 29-50) that the TRN is
associated with the mobile station and identifies the MSC.
5. Tiedemann further discloses (col. 8, ll. 11-21) that attributes of
the TRN include mobile station identifiability and MSC addressability
enabling other network resources to uniquely identify the MSC servicing the
mobile station.

PRINCIPLES OF LAW

1. ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986) and Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir.
1984).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005), citing
Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976
F.2d 1559, 1565 (Fed. Cir. 1992). “Anticipation of a patent claim requires a
finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder
Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if
granting patent protection on the disputed claim would allow the patentee to
exclude the public from practicing the prior art, then that claim is
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anticipated, regardless of whether it also covers subject matter not in the
prior art.”) (internal citations omitted).

2. OBVIOUSNESS
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore,
[“]there must be some articulated reasoning with
some rational underpinning to support the legal
conclusion of obviousness” . . . . [H]owever, the
analysis need not seek out precise teachings
directed to the specific subject matter of the
challenged claim, for a court can take account of
the inferences and creative steps that a person of
ordinary skill in the art would employ.

KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

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ANALYSIS
35 U.S.C. § 102(e) REJECTION
Claims 20, 22, 25, 26, and 28
Appellant’s arguments in response to the Examiner’s anticipation
rejection, based on Tiedemann, of independent claims 20, 25, 26, and 28
assert that the Examiner has not shown how each of the claimed features is
present in the disclosure of Tiedemann so as to establish a prima facie case
of anticipation. Appellant’s arguments recognize that Tiedemann indeed
discloses that a mobile station temporary identity (temporary reference
number (TRN) in Tiedemann’s terminology) is allocated which identifies the
mobile switching center (MSC) which allocated it and the mobile station to
which it is allocated. Appellant’s arguments (App. Br. 12-15; Reply Br. 3-
7), however, focus on the contention that, in contrast to the claimed
invention, Tiedemann does not disclose that the mobile station temporary
identity includes at least part of an identifier indicating the network element
that allocated the temporary identity.
We do not find Appellant’s arguments to be persuasive of any error
in the Examiner’s stated position (Ans. 4, 5, and 14). Appellant, while not
disputing that Tiedemann does disclose the allocation of a mobile station
temporary identity number as previously discussed, nonetheless, argues
(App.Br. 13; Reply Br. 6) that any identification of the allocating MSC in
Tiedemann could be made only by cross-referencing or linking the
temporary identity number to a look-up table or database. To whatever
extent, however, Appellant is arguing that the claim term “includes” must be
interpreted as requiring a self-contained group of digits or symbols directly
identifying the allocating mobile station, we find no clear support in
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Appellant’s disclosure for the interpretation urged by Appellant in the
Briefs.
To the contrary, Appellant’s Specification indicates at page 12, lines
18-19 that the “temporary identity or TLLI … can be linked to a specific
network element by means of a suitable database.” (Emphasis added.).
Further, Appellant’s Specification discloses at page 12, lines 20-21 that a
network element that receives a temporary identity or TLLI “can derive the
corresponding network element by using a routing area identifier….”
(Emphasis added.).
Appellant’s arguments (App. Br. 14-15; Reply Br. 7) also do not
convince us of any error in the Examiner’s finding (Ans. 5 and 14) that the
ordinarily skilled artisan would have recognized and appreciated that
Tiedemann’s suggested formats (col. 2, ll. 27-37 and col. 6, ll. 29-50) for the
Temporary Reference Number (TRN) identifier would necessarily include
“3 to 5 bits” of the allocating network element identifier as set forth in
independent claims 26 and 28.
In view of the above discussion, since Appellant has not demonstrated
that the Examiner erred in finding that all of the claimed limitations are
present in the disclosure of Tiedemann, the Examiner’s 35 U.S.C. § 102(e)
rejection of independent claims 20, 25, 26, and 28, as well as dependent
claim 22 not separately argued by Appellant, is sustained.

35 U.S.C. § 103(a) REJECTIONS
Claims 3 and 7
The Examiner’s obviousness rejection of claims 3 and 7, based on the
combination of Tiedemann, Sawyer, Onoe, and Monrad is sustained as well.
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Appellant’s arguments (App. Br. 15; Reply Br. 7-9) rely on the previously
asserted arguments alleging deficiencies in the anticipatory disclosure of
Tiedemann with respect to rejected claims 20, 22, 25, 26, and 28, which
arguments we have found to be unpersuasive for all of the previously
discussed reasons.

Claims 21 and 27
We also sustain the Examiner’s obviousness rejection of dependent
claims 21 and 27 based on the separate combination of Tiedemann with
Huttunen and Mademann. We find no error in the Examiner’s application
(Ans. 9-11) of the domain name server and GPRS support node teachings,
respectively, of Huttunen and Mademann to the communication system
disclosure of Tiedemann.

Claims 29-31
The Examiner’s obviousness rejection of independent claim 31, and
its dependent claims 29 and 30, based on the combination of Wallentin and
Tiedemann is also sustained. Appellant’s arguments (App. Br. 17; Reply Br.
10) again rely on the alleged deficiency of Tiedemann in disclosing a mobile
station temporary identity which includes an identifier of the allocating
network element, which arguments we have found to be unpersuasive.

CONCLUSION
Based on the findings of facts and analysis above, we conclude that
Appellant has not shown that the Examiner erred in rejecting claims 20, 22,
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25, 26, and 28 for anticipation under 35 U.S.C. § 102(e), nor in rejecting
claims 3, 7, 21, 27, and 29-31 for obviousness under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 20, 22, 25, 26, and 28 under
35 U.S.C. § 102(e) and claims 3, 7, 21, 27, and 29-31 under 35 U.S.C.
§ 103(a) 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)(1)(iv) (2007).

AFFIRMED

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