Ex Parte Heino et al

Patent Trial and Appeal Board

Dec 11, 2013

11798755 (P.T.A.B. Dec. 11, 2013)

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.
11/798,755 05/16/2007 Tommi Heino 1104-345D/MOD03-DIV 7033
7590 12/12/2013
Robert Renke
Suite 110
4011 West Chase Blvd.
Raleigh, NC 27607
EXAMINER
IRACE, MICHAEL
ART UNIT PAPER NUMBER
2644
MAIL DATE DELIVERY MODE
12/12/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOMMI HEINO and ARTO KANGAS
____________

Appeal 2011-007244
Application 11/798,755
Technology Center 2600
____________

Before ST. JOHN COURTENAY, III, THU A. DANG, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/798,755

2

STATEMENT OF THE CASE
Appellants appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-7. (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
Appellants’ claimed invention relates to “telecommunications and
more particularly to a method of managing cell-specific address information
in a communication network, and to an apparatus implementing the invented
method.” (Spec., ¶ ([0002]). Independent claim 1, reproduced below, is
representative of the subject matter on appeal:
1. An apparatus, comprising:

first receiving means for receiving, from a first radio
access network node, a request for a packet switched
communication address of a second radio access network
node, wherein the apparatus is included in a communication
system comprising the radio access network and a core
network;

generating means for generating, in response to receiving
the request, a response comprising the packet switched
communication address of the second radio access
network node; and

transmitting means for transmitting the response to the
first radio access network node in information containers
transparently to the core network.

(Disputed limitations emphasized).
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REJECTIONS
(1) In the Final Office Action mailed June 3 2010, the Examiner rejected
claims 3-5 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter. The Answer and Appellants’ Appeal Briefs are silent
regarding the § 101 rejection. Because this rejection was not withdrawn
in the Answer, or in the Advisory Action mailed Sept. 9, 2010, it is
before us on appeal.
(2) The Examiner rejected claims 1-7 under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of Kovacs
(U.S. Patent Pub. No. 2003/0036387 A1) in view of ETSI TS 148 018
V5.4.0, Digital cellular telecommunications system (Phase 2+ ), 3GPP
TS 48.018 version 5.4.0 Release 5 (2002) (hereinafter “ETSI”).
GROUPING OF CLAIMS
Based on Appellants’ arguments, we decide the appeal of the
obviousness rejection of independent claims 1-5 and 7 on the basis of claim
1. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).
1

We address the § 103 rejection of dependent claim 6 separately, infra.

1
Appellants filed a Notice of Appeal on Sept. 20, 2010. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex parte
appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the
2004 version of the Board Rules last published in the 2011 edition of Title
37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to
the appeal. See also Manual of Patent Examining Procedure (MPEP) Rev.
8, July 2010.
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ANALYSIS
Rejection of claims 3-5 under § 101
We note the Examiner rejected claims 3-5 under 35 U.S.C. § 101 on
the ground these claims covered non-statutory transitory media
embodiments. (Final Office Action, mailed June 3 2010, p. 2). Although
the Examiner may have intended this rejection be withdrawn, the Answer is
silent regarding the § 101 rejection (see Ans. 3), as is the Advisory Action
mailed Sept. 9, 2010. Because this rejection was not withdrawn in the
Answer or in the Advisory action, it is before us on appeal.
To expedite review at the Board, we urge the Examiner to expressly
indicate all withdrawn rejections in any future Answers.
2
See MPEP
§ 1202.02, latest Revision August 2012: “The examiner should reevaluate
his or her position in the light of the arguments presented in the brief, and
should expressly withdraw any rejections not adhered to in the “ ** >
WITHDRAWN REJECTIONS < ” subsection of the examiner’s answer. **”
Cf. Manual of Patent Examining Procedure (MPEP) § 1207.02, 8th ed., Rev.
3, Aug. 2005 (“Grounds of rejection not specifically withdrawn by the
examiner and not set forth in the examiner’s answer are usually treated by
the Board as having been dropped . . . .”).
In response to the rejection in the Final Office Action, Appellants
amended claim 3 to recite “non-transitory computer readable medium.” See

2
The status of the § 101 rejection should have been clarified during the
Appeal Conference, but was not. We observe the “Notice of Panel Decision
for Pre-Appeal Brief Review” (mailed Nov. 24, 2010) does not even
indicate which claims stand rejected.
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Response after Final Office Action, filed Sept. 1, 2010 (Remarks, pp. 6-7).
Although Appellants state they presume this amendment was entered (see
Pre-Appeal Brief Request for Review, filed Sept. 20, 2010, p. 2), the
Examiner’s Advisory Action (mailed Sept. 9, 2010) does not indicate the
amendment to claim 3 was entered or would be entered on appeal.
3

Appellants Briefs are silent regarding the rejection under § 101 set forth by
the Examiner in the Final Office Action.
We are constrained by the record before us to sustain the Examiner’s
§ 101 rejection of claim 3, because there is nothing of record to indicate the
amendment to correct the deficiency was ever entered by the Examiner, or
would be entered on appeal. We additionally sua sponte reverse the
Examiner’s § 101 rejection of independent claims 4 and 5, which are not
directed to a computer readable medium (the basis for the Examiner’s final
rejection of claims 3-5 under § 101), but are instead directed to clearly
statutory apparatuses (machines).

Rejection under § 103 of independent claims 1-5 and 7
Issue: Under § 103, did the Examiner err in finding the cited
combination of references would have taught or suggested: “transmitting

3
See Pre-Appeal Brief Request for Review filed Sept. 20, 2010: “In the
Response dated September 1, 2010, claim 3 was amended to recite ‘a non-
transitory computer readable medium’ to clarify that the claim does not
encompass non-statutory subject matter. Though the Advisory Action dated
September 9, 2010 was unclear, it is presumed that this amendment is
entered. Therefore, this rejection is moot and should be withdrawn.”
(Emphasis added).
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means for transmitting the response to the first radio access network node in
information containers transparently to the core network,” within the
meaning of representative claim 1?
As an initial matter of claim construction, we observe the data content
of the generated “response comprising the packet switched communication
address of the second radio access” (apparatus claim 1, emphasis added) is
not positively recited as actually being used to change or affect any machine
or computer function. Therefore, we accord the data content of the claimed
“response” no patentable weight, because such data is non-functional
descriptive material.
4
Given the binding authority of Ex parte Nehls (see
n.4 infra), we conclude a question arises as to how much patentable weight,
if any, should be given to the “response comprising the packet switched
communication address of the second radio access.” (Claim 1) (emphasis
added).
Assuming arguendo that our reviewing court may give the contested
limitations patentable weight, we find the weight of the evidence supports
the Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness.
Appellants contend “the combination of Kovacs and ETSI does not
disclose or suggest, at least, ‘transmitting the response to the first radio

4
See 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).

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access network node in information containers that are transparent to a core
network,’ as recited in claim 1.” (App. Br. 9). In particular, Appellants
contend:
As discussed in the present specification, “transparency
in this context pertains to a facility that allows a message to
pass through the core network without the core network
interpreting the content of the message.”(Specification,
paragraph 0043). Given that it is a well established principle in
U.S. patent law that Applicants may be their own
lexicographer, it is submitted that the term "transparent" should
be given its meaning based on the explanation provided in the
specification.

(App. Br. 9).
The Examiner disagrees:
The transparency definition that the applicant uses does not
vary from that of known in the art of networking, transparency
is a form of encapsulated tunneling that allows central servers
to forward messages without processing the message. The
alternative definitions of an object that is translucent or
something that is open or frank are obviously not appropriate in
this context. ETSI teaches submitting a request and a response
from one base station to another through the core
network(SSGN) (see Figure 8c.1.b on page 49). The request
and the response both contain source and destination address
with a PDU payload. Wherein" the payload is transparent to
the core network" (page 49 section 8c.1 last paragraph). This
is the same as shown in the drawings of the present
specification which shown a source and destination address
along with a container that is transparent to the core network
see (figure 5).

(Ans. 14).
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In the Reply Brief, Appellants acknowledge “ETSI provides that a
payload included in a RAN information management (RIM) PDU is
transparent to the core network.” (Reply Br. 3). However, Appellants urge
“ETSI does not disclose or suggest that the entire PDU is transparent to the
core network; only the payload is disclosed as being transparent.” (Id. at 3-
4, emphasis added).
We note that the argued “entire PDU is transparent to the core
network” is not claimed. (Id.). Nevertheless, Appellants maintain that
“according to embodiments of the claimed invention, information
containers that include the response are transparent to the core network.”
(Reply Br. 4, emphasis added).
Turning to the contested claim language, “transmitting means for
transmitting the response to the first radio access network node in
information containers transparently to the core network” (claim 1), we
observe the claim recites “transparently” used as an adverb which modifies
the verb “transmitting.” (Id.).
Thus, we conclude the scope of claim 1 broadly encompasses
transparently transmitting the response, where the response is contained in
information containers. In particular, we observe claim 1 does not recite
“transparent” used as an adjective to modify the noun “information
containers,” as imputed by Appellants argument. See Reply Br. 4,
“according to embodiments of the claimed invention, information
containers that include the response are transparent to the core network.”
(emphasis added).
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Therefore, under a broad but reasonable construction, the contested
claim language merely requires the response be transmitted transparently ─
we conclude there is no positively recited requirement that “information
containers that include the response are transparent to the core network,” as
urged by Appellants. (Id., emphasis added). Moreover, we find the
Examiner’s broader interpretation is fully consistent with the Appellants’
proffered definition in the Specification: “Transparency in this context
pertains to a facility that allows a message to pass through the core network
without the core network interpreting the content of the message.” (Spec., ¶
[0043], emphasis added).
We additionally note the striking similarity between Appellants’
Figure 5 and Figure 8c.1.b (p. 49) of the ETSI reference, as relied on by the
Examiner. (Ans. 5, 14). Moreover, we are in accord with the Examiner’s
observation that “[Appellants’] argue[] that the payload of the message
cannot be considered the response (page 9) but [do] not present any
rationale why.” (Ans. 14). Therefore, on this record, we are not persuaded
of error regarding the Examiner’s factual findings and ultimate legal
conclusion of obviousness, given the broad scope of Appellants’
representative claim 1, as discussed above.
5

Therefore, for essentially the same reasons articulated by the
Examiner in the Answer (pp. 13-15), as discussed above, we sustain the

5
Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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§ 103 rejection of representative independent claim 1. Independent claims
2-5 and 7, which recite the contested limitation in commensurate form, fall
therewith. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). See n.1 supra.
Dependent claim 6
Regarding claim 6, Appellants contend:
Claim 6 is dependent upon claim 1 and additionally
recites "wherein the request includes a cell identification of a
neighboring cell in the radio access network." [T]he
combination of Kovacs and ETSI does not disclose or suggest,
"wherein the request includes a cell identification of a
neighboring cell in the radio access network," as recited in
claim 6. Kovacs discloses that the drift setup message includes
a transaction 10, an
identification of the target IP-BTS 22 and the identification of
the drift IP-BTS 21. However, Kovacs does not disclose that
any of the identifications are those of a neighboring cell in the
radio access network. ETSI does not cure this deficiency in
Kovacs. As such, the combination of Kovacs and ETSI does
not disclose or suggest all of the elements of claim 6.
Additionally, claim 6 is patentable for at least the reasons
claim 1 is patentable. Accordingly, it is respectfully requested
that this rejection be reversed and this claim allowed.

(App. Br. 14).
At the outset, we find no deficiencies with the base combination of
Kovacs and ETSI, for the reasons discuss above regarding claim 1.
We observe that claim 6 depends from apparatus claim 4, and recites
a “wherein” clause that does not further limit the structure of the claimed
apparatus. (Claim 6: “The apparatus according to claim 4, wherein the
request includes a cell identification of a neighboring cell in the radio access
network.”). Thus, as an initial matter of claim construction, a question
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arises as to how much patentable weight, if any, that should be given the
disputed “wherein” clause limitation which is directed to data content (cell
identification of a neighboring cell), and not apparatus structure.
6

Assuming arguendo that our reviewing court may give the contested
“wherein” clause data limitations patentable weight, we find the weight of
the evidence supports the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness regarding the proffered
combination of Kovacs and ETSI:
Kovacs discloses handing off from one cell to a target
neighbor cell (wherein it is implicit by the definition of handoff
that the target cell be a neighbor otherwise the mobile could not
communicate with the target and therefore could not handoff).
Wherein Kovacs teaches that the request includes an
"identification of target [cell] IP-BTS 22 and of the drift
[cell] IP-BTS 21" (paragraph 62) wherein each BTS or base
station
represents a cell.

(Ans. 15, emphasis added).

6
See MPEP § 2111.04 regarding “wherein” clauses:
Claim scope is not limited by claim language that
suggests or makes optional but does not require steps to be
performed, or by claim language that does not limit a claim to a
particular structure. However, examples of claim language,
although not exhaustive, that may raise a question as to the
limiting effect of the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.

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Thus, the Examiner’s statement that “it is implicit by the definition of
handoff that the target cell be a neighbor otherwise the mobile could not
communicate with the target and therefore could not handoff ” (id.,
emphasis added), is a finding of inherency regarding Kovacs with respect to
the “neighboring cell” limitation. (Claim 6).
7
We note the Examiner does
not rely on Kovacs to teach the cell identification (ID). See Advisory
Action mailed Sept. 9, 2010, page 2: “[Applicants’] argue[] Kovacs does not
teach the cell ID. Examiner does not rely on that reference to teach it. ETSI
discloses showing the [] CELL Id is included with the address in the PDU
(8C.1 last paragraph sections 10.2.2 and 10.4.12-13 page 61).” See also the
Examiner’s statement of rejection of claim 6, as copied in the Answer:
Kovacs does not explicitly disclose that the destintion
[sic.] address includes the Cell ID.

ETSI discloses that the source and destination address
PDU's include the cell id. (8c.1 last paragraph, sections 10.2.2
and 10.4.12-13 Page 61).

It would have been obvious to one of ordinary skill in the
art at the time the invention was made to combine the system of
Kovac with the standard as disclosed by ETSI. The motivation
for such a combination is use of known technique in an

7
“The inherent teaching of a prior art reference, a question of fact,
arises both in the context of anticipation and obviousness.” In re Napier, 55
F.3d 610, 613 (Fed. Cir. 1995) (affirmed 35 U.S.C. § 103 rejection based in
part on inherent disclosure in one of the references). The question of
obviousness is "based on underlying factual determinations including . . .
what th[e] prior art teaches explicitly and inherently . . . ." In re Zurko, 258
F.3d 1379, 1383 (Fed. Cir. 2001) (citations omitted).

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analogous art to improve compatibility with existing system by
using a known standard.

(Ans. 11-12).
In the Reply Brief, Appellants further respond: “Even if Kovacs
discloses handing off to a target neighbor cell as alleged in the Examiner
answer, which is not admitted, Kovacs does not disclose that the request
includes the identification of the neighboring cell.” (Reply Br. 5).
However, we find the response in the Reply Brief does not substantively
address the Examiner’s finding of inherency regarding the teachings of
Kovacs (Ans. 15), as discussed above.
Kovacs expressly teaches: “The RANAP Relocation Required
message may consist of a relocation type, a cause, a source ID, a target ID
and the Source to Target Transparent container, which is an information
field of this message.” (¶ [0062], emphasis added). We also note the
Examiner’s rejection is based on the combined teachings and suggestions of
Kovacs and ETSI. Our reviewing court guides that under
§ 103 the “analysis need not seek out precise teachings directed to the
specific 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). “If a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.” Id. at 417.
This reasoning is applicable here. Appellants’ arguments
notwithstanding (App. Br. 14; Reply Br. 5), on this record, we find the
weight of the evidence supports the Examiner’s position. (Ans. 15).
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Therefore, for essentially the same reasons articulated by the Examiner in
the Answer (p. 15), as discussed above, we sustain the § 103 rejection of
dependent claim 6.

DECISION
We affirm the Examiner’s decision rejecting claim 3 under 35 U.S.C.
§ 101.
We reverse the Examiner’s decision rejecting claims 4 and 5 under 35
U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 1-7 under 35
U.S.C. § 103.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
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). See
37 C.F.R. § 41.50(f).

AFFIRMED

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