Ex Parte Howlett et al

Patent Trial and Appeal Board

Mar 16, 2017

13510355 (P.T.A.B. Mar. 16, 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.
13/510,355 07/23/2012 James G. Howlett LUTZ 201467US01 5570
48116 7590 03/20/2017
FAY STTARPF/T TTf’F.NT
EXAMINER
1228 Euclid Avenue, 5th Floor NAVAR, ERICA
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2641
NOTIFICATION DATE DELIVERY MODE
03/20/2017 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 JAMES G. HOWLETT and RICHARD B. PARKINSON
Appeal 2016-008018
Application 13/510,355
Technology Center 2600
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1—7 and 9-12. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 8 and 13 are canceled. See App. Br. 13, 15 (Claims App’x).
We affirm.
STATEMENT OF THE CASE
The Invention
Appellants’ invention “relates to telecommunications, in particular to
wireless telecommunications” (Spec. 1:2—3). Claims 1 and 10 are
independent. Claim 1 is illustrative of the subject matter on appeal:
1 Appellants identify Alcatel Lucent as the real party in interest. App. Br. 1.
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Application 13/510,355
1. A local network comprising a plurality of devices
and connected to the Internet, the network being configured as a
local Internet Protocol (IP) subnet in which the devices each
have a corresponding local IP subnet address, one of the
devices being a femtocell base station within a femtocell,
wherein a user terminal which is connected to the femtocell
base station is allocated a local IP subnet address so as to be
able to initiate communications with another of the devices in
the local network,
wherein the femtocell base station snoops uplink Non-
Access Stratum signaling messages to detect an Activate Packet
Data Protocol Context Request, and
wherein the femtocell base station detects an Active
Packet Data Protocol Context Accept message in messages to
the user terminal from the Internet, and amends that message by
replacing a Packet Data Protocol IP address, assigned to the
user terminal, with the local IP subnet address for the user
terminal, and forwards the amended message to the user
terminal.
See App. Br. 12 (Claims App’x).
Rejections on Appeal
Claims 1—5 and 9-11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Vesterinen et al. (WO 2008/125729 Al; published Oct.
23, 2008) (“Vesterinen”) and Rune et al. (WO 2010/039085 Al; published
Apr. 8, 2010) (“Rune”). See Final Act. 2—5.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Vesterinen, Rune, and Iyer et al. (US 2008/0225760 Al; published Sept. 18,
2008) (“Iyer”). See id. at 6.
Claims 7 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Vesterinen, Rune, and Khetawat et al. (US 2008/0076425
Al; published Mar. 27, 2008) (“Khetawat”). See id. at 6—7.
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The Record
Rather than repeat the arguments here, we refer to the Appeal Brief
(“App. Br.” filed Nov. 19, 2015), Reply Brief (“Reply Br.” filed Aug. 16,
2016), and the Specification (“Spec.” filed May 17, 2012) for the positions
of Appellants and the Final Office Action (“Final Act.” mailed June 10,
2015) and Examiner’s Answer (“Ans.” mailed June 16, 2016) for the
reasoning, findings, and conclusions of the Examiner. Only those arguments
actually made by Appellants have been considered in this decision.
Arguments that Appellants did not make in the Appeal Brief have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ISSUES
The issues presented by Appellants’ contentions are as follows:
Issue 1\ Does the Examiner err in finding that Vesterinen, when
combined with Rune, teaches or suggests “wherein a user terminal which is
connected to the femtocell base station is allocated a local IP subnet address
so as to be able to initiate communications with another of the devices in the
local network,” as recited in claim 1.
Issue 2\ Does the Examiner err in finding that Rune, when combined
with Vesterinen, teaches or suggests “wherein the femtocell base station
snoops uplink Non-Access Stratum signaling messages to detect an Activate
Packet Data Protocol Context Request,” as recited in claim 1 ?
Issue 3: Does the Examiner err because the problem solved by the
invention of claim 1 differs from the problem addressed by the Rune
reference?
Issue 4\ Does the Examiner err in finding that the combination of
Vesterinen, Rune, and Iyer teaches or suggests “for directing data packets,
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the femtocell base station responds to requests for the local IP address of the
user terminal by providing the Medium Access Control, MAC, address of
the user terminal,” as recited in claim 6?
ANALYSIS
We have reviewed the Examiner’s findings and explanations in light
of Appellants’ arguments and contentions. We agree with the Examiner’s
findings and explanations, and we adopt them as our own. The following
discussion, findings, and conclusions are for emphasis.
Claims 1-5,7, and 9-12
Issue 1
Appellants contend the Examiner errs because Vesterinen does not
teach or suggest “wherein a user terminal which is connected to the
femtocell base station is allocated a local IP subnet address so as to be able
to initiate communications with another of the devices in the local network,”
as recited in claim 1. See App. Br. 6—7; Reply Br. 2, 4. More specifically,
Appellants argue that “Vesterinen . . . shows, instead, a user equipment
accessing local services at a core network through an IP gateway, not
through a direct connection to devices in the IP subnet (e.g., a corporate
network 144)” (App. Br. 6). Appellants assert that “Vesterinen does
contemplate direct contact between user equipments (e.g., between mobile
terminals), but, in such instances, one user equipment lies within an IP
subnet (e.g., [user equipment (“UE”)] 151) while another does not (e.g.,
[UE] 150)” {Id. at 6—7). Appellants further argue that other cited disclosures
of Vesterinen show that UE 150 and UE 151 are located outside local IP
subnet 144 and “communicate through various base stations instead of
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communicating as devices both occupying an IP subnet (i.e., two devices
both occupying and having IP subnet addresses for a femtocell)” (Reply Br.
4 (citing Vesterinen Fig. 3; 12:5—10, 12—18)).
We find Appellants’ arguments unpersuasive because the arguments
are not commensurate with the scope of claim 1. Contrary to Appellants’
arguments, the disputed limitation does not require “direct” communication
between devices in the local network. Nor does the claim language preclude
the use of an intermediary device, such as a gateway or a base station, for
communications between the user terminal and one of the other devices in
the local network. Moreover, the disputed limitation does not even require
the function of communicating between the user terminal and another of the
devices in the local network. Rather, the disputed limitation recites merely
that the user terminal “is allocated a local IP subnet address so as to be able
to initiate communications with another of the devices in the local network”
(App. Br. 12 (Claims App’x) (emphasis added)). In other words, claim 1
does not require that a “user terminal” perform the function of
communicating with another device in the local network; rather, the recited
“user terminal” merely needs “to be able to” initiate communications with
another device in the local network.
Accordingly, we find no error in the Examiner’s broad but reasonable
interpretation of the disputed limitation as encompassing Vesterinen’s
disclosure of UE 150 and UE 151, which are within a local breakout service
area of a local area network, have local IP addresses, and can communicate
with each other. See Final Act. 3 (citing Vesterinen 7:16—18 (“direct
terminal-to-terminal communications (e.g.[,] between 150 and 151).. .
become possible within the local breakout service area”)); Ans. 4—5 (citing
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Vesterinen Figs. 2, 3; 7:10-15, 11:22—30 (“The local breakout service can be
provided ... to a local network 240 that enables direct UE-to-UE (between
150 and 151) communications .... The mobile terminal 150 is able to use a
local IP address ... for direct UE to UE services.”), 12:5—10, 12—18 (“In the
example of Figure 3 . . . . direct UE to UE connection between the mobile
terminal 150 and mobile terminal 151 is illustrated . . . .”)); see also
Vesterinen 6:24—26 (“Traffic between mobile terminals 150, 151 ... is
carried via ... a local area aggregation network 140.”), 7:19 (“A mobile
terminal 150, 151 in a local area network 140 . . . .”), 10:6—7 (“The mobile
terminal 150, 151 may receive an IP address for the local IP breakout service
. . . .”). Furthermore, we disagree with Appellants that Vesterinen does not
teach or suggest the disputed limitation merely because Figure 2’s UE 151 is
positioned outside local breakout service network 240, and Figure 3’s UE
150 and UE 151 are positioned outside corporate network 144. Even if we
assume arguendo, without deciding, that Appellants’ understanding of
Figures 2 and 3 of Vesterinen is correct, these Figures merely depict
example embodiments of Vesterinen’s invention and do not negate
Vesterinen’s disclosures that UE 150 and UE 151 can be within a local
breakout service area of a local area network, receive IP addresses for the
local IP breakout service, and use those IP addresses to communicate with
one another. See Final Act. 3 (citing Vesterinen 7:16—18); Ans. 4—5 (citing
Vesterinen Figs. 2, 3; 7:10-15, 11:22—30); see also Vesterinen 6:24—26,
7:19, 10:6-7.
Issue 2
Appellants contend the Examiner errs because Rune does not teach or
suggest “wherein the femtocell base station snoops uplink Non-Access
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Stratum [(“NAS”)] signaling messages to detect an Activate Packet Data
Protocol [(“PDP”)] Context Request,” as further recited in claim 1. More
specifically, Appellants argue there is no indication that Rune’s snooping
base station is a “femtocell base station” as claimed. See App. Br. 7; Reply
Br. 3. Appellants further argue that Rune discloses snooping of headers of
uplink NAS messages to identify local breakout bearer related NAS
messages but does not disclose base station snooping “to detect an Active
[PDP] Context Request.” See App. Br. 7; Reply Br. 3. Appellants also
assert that “[intercepting ... an Activate PDP Context Accent message, as
the Examiner alleges to be shown by Rune, does not constitute snooping an
Activate Packet Data Protocol Context Request as recited in claim 1” (Reply
Br. 4). We find Appellants’ arguments unpersuasive.
As an initial matter, contrary to Appellants’ arguments, we agree with
the Examiner that a broad but reasonable interpretation of a “femtocell” base
station includes Rune’s home base station. See Ans. 5 (citing Rune 1:22—23;
Spec. 1:10—20). Appellants’ Specification describes a “femtocell” as smaller
than a macrocell, intended primarily for users belonging to a particular home
or office, and connected to laptops and printers within a local network. See
Spec. 1:12-13, 19-20; 5:19-23; 7:6-8; Fig. 3, items 22, 24, 26, 28.
Consistent with Appellants’ disclosure of a “femtocell,” Rune’s home base
station satisfies the claimed “femtocell” base station because it is intended
for the home and is connected to other local devices such as printer or a
computer. See Rune 1:22—23, 2:21—28 (disclosing an embodiment in which
the home base station is part of a home local area network (“LAN”) and
enables the UE to communicate with devices in the home LAN, such as a
printer or a computer). Moreover, the Examiner additionally finds, and
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Appellants do not persuasively rebut, that Vesterinen teaches or suggests a
“femtocell” base station by disclosing that its local network can be “an
indoor ‘Femto eNB’[2] at home” (Vesterinen 11:27—28). Final Act. 3 (citing
Vesterinen 11:27—28). Accordingly, regardless of whether or not Rune
individually teaches or suggests a “femtocell” base station, the Examiner’s
combination of Vesterinen and Rune satisfies this limitation. See In re
Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-obviousness
by attacking references individually where, as here, the rejections are based
on combinations of references”).
Having found that Rune’s home base station satisfies a “femtocell”
base station, we disagree with Appellants’ assertion that Rune does not teach
or suggest that “the femtocell base station snoops ... to detect an Activate
[PDP] Context Request.” The Examiner finds, and we agree, that Rune
teaches or suggests this limitation by disclosing an embodiment in which a
NAS PDP Connectivity Request message may be replaced by a 3G
ACTIVATE PDP CONTEXT REQUEST message, which is snooped by the
home base station. See Final Act. 4 (citing Rune 21:26—30, 22:24—23:5,
35:11—18); Ans. 6 (citing Rune Figs. 9-10; 22:4—7, 24—30, 35:11—18); see
also Rune Fig. 9, items 91, 92 (“Snoop and intercept NAS message”);
23:23-25 (“UE 2 uses an existing NAS PDN [sic] CONNECTIVITY
REQUEST message 91 to 25 request establishment of the local breakout
bearer 22”), 31—32 (“The NAS request message 91 is snooped by the home
base station 1 in a step 92 as illustrated in Fig. 9.”), 35:11—13 (“For the
second variant of the second type of embodiments the NAS PDP
2 Enhanced node B. Vesterinen 6:26—27.
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CONNECTIVITY REQUEST message could be replaced by a 3G
ACTIVATE PDP CONTEXT REQUEST message . . . .”)■ Accordingly, as
the Examiner finds, “Rune . . . discloses that not only can the home base
station intercept NAS messages [for the 3GPP standard], the home base
station can also intercept the NAS message for activation of context used in
the 3G GPRS standards (i.e.[,] . . . Activate PDP Context message)” (Ans.
6). Lastly, Appellants’ assertion that Rune merely teaches intercepting an
Activate PDP Context Accept message is inaccurate, as Rune explicitly
discloses an embodiment in which a “3G ACTIVATE PDP CONTEXT
REQUEST message” (emphasis added) can be snooped by Rune’s home
base station. See Rune Fig. 9, items 91, 92; 23:23—25, 31—32, 35:11—13.
Issue 3
Appellants contend the Examiner errs because “while claim 1 is aimed
at granting . . . user equipment access to a femtocell... to allow the user
equipment to utilize services provided by other devices in the local network
. . ., Rune is . . . aimed, instead,... at allowing the user equipment... to
access the internet by connecting to a local network” (App. Br. 7). We find
Appellants’ contention unpersuasive.
To the extent Appellants argue the Examiner errs because the problem
solved by Appellants’ claimed invention differs from the problem solved in
Rune, we disagree. Contrary to Appellants’ argument, “[i]n determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103,” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007). As is the case here, “[a]s long as some motivation or suggestion to
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combine the references is provided by the prior art taken as a whole, the law
does not require that the references be combined for the reasons
contemplated by the inventor,” In re Beattie, 91A F.2d 1309, 1312 (Fed. Cir.
1992). See Final Act. 2-4.
[T]he problem motivating the patentee may be only one of
many addressed by the patent’s subject matter. The question is
not whether the combination was obvious to the patentee but
whether the combination was obvious to a person with ordinary
skill in the art. Under the correct analysis, any need or problem
known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the
elements in the manner claimed.
KSR, 550 U.S. at 420.
Additionally, to the extent Appellants argue the Examiner errs
because there are differences between Rune and the claimed invention, this
alone is insufficient to rebut the Examiner’s prima facie case of obviousness.
See Beattie, 91A F.2d at 1312—13; Keller, 642 F.2d at 425 (“The test for
obviousness is not. . . that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”). Contrary to Appellants’ argument, the Examiner
relies on a combination of Vesterinen and Rune, not Rune alone, to teach or
suggest claim 1. See Final Act. 2-4.
Summary
For the reasons stated above, Appellants have not persuaded us the
Examiner errs in the rejection of claim 1. Accordingly, we sustain the
Examiner’s rejection of claim 1, as well as the rejection of independent
claim 10 and dependent claims 2—5,1,9, 11, and 12, which were not argued
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separately with particularity beyond the arguments advanced for claim 1.
See App. Br. 7—10; Reply Br. 5—6.
Claim 6
Issue 4
Appellants contend the Examiner errs because Iyer does not teach or
suggest “for directing data packets, the femtocell base station responds to
requests for the local IP address of the user terminal by providing the
Medium Access Control, MAC, address of the user terminal” (App. Br. 13
(Claims App’x)) as recited in claim 6. See App. Br. 9; Reply Br. 5. More
specifically, Appellants argue “the cited portions of Iyer fail to specifically
disclose providing a MAC address of a user terminal in response to a
request for an IP address” (App. Br. 9). Appellants submit the cited portion
of Iyer “indicates offering a MAC address but does not indicate that this
MAC address is offered in lieu of an IP address when an IP address is
requested” (Reply Br. 5). Accordingly, Appellants assert “[t]he Examiner
attempts to read into the cited references features that are not present in an
effort to reverse engineer the subject matter of claim 6” (Id.), which
“constitutes improper hindsight and fails to establish a prima facie case of
obviousness” (Id.). We find Appellants’ arguments unpersuasive.
As an initial matter, Appellants’ arguments improperly attack Iyer
individually and fail to substantively address what a person of ordinary skill
would have understood from the combined teachings of Vesterinen, Rune,
and Iyer. See Keller, 642 F.2d at 426; Ans. 7. Moreover, Appellants argue a
limitation not found in the claim — claim 6 does not recite that the MAC
address is provided in lieu of the IP address.
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The Examiner finds Rune discloses that the home base station can
receive requests for a UE’s IP address, but does not disclose providing the
MAC address of the UE in response to the request for the IP address. See
Ans. 7 (citing Rune 20:12—17 (“an [address resolution protocol (“ARP”)]
request for the UE’s local breakout IP address arrives at the home base
station”)). The Examiner further finds Iyer discloses a mobile device
identifier that includes a MAC address in addition to an IP address. See id.
(citing Iyer Fig. 2, item 210; 135 (“The identifier column 210 contains the
identification of mobile device 170 .. . [and] [i]n addition to [an] IP address,
. . . may also contain a Media Access Control (MAC) address, such as
‘01:23:45:67:89:ab.’”)). The Examiner explains that “[providing a MAC
address instead of an IP address is notoriously well known in the art[] and
. . . would have been an obvious substitution to one of ordinary skill in the
art” (Id.) in order to uniquely identify mobile devices. See Final Act. 6;
KSR, 550 U.S. at 417 (finding obvious “the simple substitution of one
known element for another”). Contrary to Appellants’ arguments, the above
findings, reasoning, and conclusion of the Examiner are drawn not from
Appellants’ disclosure, but rather from the prior art and the knowledge of
one skilled in the art. See Final Act. 2-4, 6; Ans. 4—7.
In view of the foregoing, Appellants have not persuaded us the
Examiner employs improper hindsight and fails to establish a prima facie
case of obviousness in combining Vesterinen, Rune, and Iyer to reject claim
6. See Final Act. 2-4, 6; Ans. 4—7; In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971)). Accordingly, we sustain the Examiner’s rejection of claim
6.
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DECISION
The decision of the Examiner to reject claims 1—7 and 9—12 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). See 37 C.F.R.
§§1.136(a)(l)(iv), 41.50(f), 41.52(b).
AFFIRMED
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