Ex Parte Hurtta et alDownload PDFPatent Trial and Appeal BoardDec 22, 201613039264 (P.T.A.B. Dec. 22, 2016) Copy Citation 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. 13/039,264 03/02/2011 TuijaHurtta 39700-605C02US/NC15553US- 1531 12358 7590 12/27/2016 Mintz Levin/Nokia Technologies Oy One Financial Center Boston, MA 02111 EXAMINER CUMMING, WILLIAM D ART UNIT PAPER NUMBER 2645 NOTIFICATION DATE DELIVERY MODE 12/27/2016 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): IPDocketingBOS @ mintz.com IPFileroomBOS@mintz.com Nokia. IPR @ nokia. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TUIJA HURTTA and JANNE KOISTINEN Appeal 2016-001128 Application 13/039,264 Technology Center 2600 Before KEVIN C. TROCK, JESSICA C. KAISER, and STACY B. MARGOLIES, Administrative Patent Judges. TROCK, Administrative Patent Judge. DECISION ON APPEAL Introduction Appellants1 seek review under 35 U.S.C. § 134(a) from a Non-Final Rejection of claims 24—30 and 55—59. We have jurisdiction under 35 U.S.C. § 6(b). Claims 1—23 and 31—54 have been cancelled.2 We AFFIRM. 1 According to Appellants, the real party in interest is Nokia Corporation. App. Br. 2. 2 App. Br. 4. Appeal 2016-001128 Application 13/039,264 Invention The claims are directed to establishing or modifying a connection between network elements by requesting permission to modify a connection parameter. Abstract. Exemplary Claim Claim 24, reproduced below, is illustrative of the claimed subject matter with disputed limitations emphasized: 24. An apparatus comprising: a network element configured to at least receive information on at least one of an establishment or a modification of a connection for a call between a user equipment of a cellular network and a called party, wherein the at least one of the establishment or the modification is performed by the network element, send a permission request to another network element, the permission request requesting permission for the at least one of the establishment or the modification of the connection, the permission request specifying at least one of the user equipment, the called party, and the connection, receive from the other network element, a response specifying a permission for the at least one of the establishment or the modification of the connection, or specifying a connection parameter, and control the at least one of the establishment or the modification of the connection dependent on the response. Applied Prior Art The prior art relied upon by the Examiner in rejecting the claims on appeal is: 2 Appeal 2016-001128 Application 13/039,264 Digital Cellular Telecommunications System (Phase 2+); General Packet Radio Service (GPRS); Service Description; Stage 2 EN 301 344 v6.3.2. European Telecomms. Standards Inst. (1999) (hereinafter “ETSI”). REJECTIONS The Examiner made the following rejections: Claims 24 and 58 stand rejected under 35U.S.C. § 112, first paragraph as being non-enabled. Non-Final Act. 5. Claims 27—29 stand rejected under 35 U.S.C. § 112, second paragraph as being indefinite. Non-Final Act. 6. Claims 24, 30, 58, and 59 stand rejected under 35 U.S.C. § 102(b) as being anticipated by ETSI. Non-Final Act. 7—9. Claims 25, 26, and 55—57 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over ETSI. Non-Final Act. 11—12. ANALYSIS Section 112 Enablement— Claims 24 and 58 Claim 24 recites “a network element configured to . . . receive information[,] send a permission request[,] receive from the other network element[] a response[,] and control the at least one of the establishment or the modification of the connection.” Claim 58 recites similar limitations. The Examiner finds that these claims are non-enabled because the scope of “a network element” includes “[ejvery part in a network,” but the Specification does not disclose how “[ejvery part in a network” can perform the receiving, sending, and controlling functions recited in the claim. Ans. 2-3. 3 Appeal 2016-001128 Application 13/039,264 Appellants contend the Examiner erred in finding the “network element” recited in claim 24, and similarly in claim 58, is non-enabled. App Br. 10-15; Reply Br. 17. Specifically, Appellants argue the Specification “discloses ... a Gateway GPRS Support Node (GGSN) 3 that performs the functions recited” by the network element. Reply Br. 17 (citing Spec. 7:4— 8:29); App. Br. 12—14 (citing Spec. 6:27—28, Fig. 1). Appellants further argue the “Examiner failed to make the specific findings of fact required by MPEP §2164.01 to support a prima facie case of non-enablement” and did not discuss“any of the Wands factors nor is there any explanation as to why undue experimentation is allegedly required.” App. Br. 12. We are persuaded by Appellants’ arguments. The Specification does not necessarily need to “describe how to make and use every possible variant of the claimed invention, for the artisan’s knowledge of the prior art and routine experimentation can often fill gaps, interpolate between embodiments, and perhaps even extrapolate beyond the disclosed embodiments, depending upon the predictability of the art.” AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003) (citations omitted). Here, the Specification provides an enabling disclosure of a GGSN, i.e., a network element, which performs the claimed functions. Spec. 7—8. The Examiner has not shown that experimentation, much less undue experimentation, is required to apply the claimed functions to other network elements. See Ans. 2—3; see also Non-Final Act. 5. Accordingly, we do not sustain the Examiner’s 35U.S.C. § 112, first paragraph enablement rejection of claims 24 and 58. 4 Appeal 2016-001128 Application 13/039,264 Section 112 Indefiniteness - Claims 27—29 Claim 27 recites “the other network element is a call state control function,” claim 28 recites “the other network element is a policy control function,” and claim 29 recites “the other network element is a call processing service.” The Examiner finds that claims 27—29 are indefinite because “a network element[,] by defmition[,] is a physical device” (Non- Final Act. 6), but a function is an “action or activity” and a service is an “act” (Ans. 4 (emphasis omitted)). That is, the Examiner finds the claims are indefinite because the claims define a structural element, i.e., the other network device, as a performed action. Appellants contend the Examiner erred in finding claims 27—29 indefinite. App. Br. 16—17; Reply Br. 17—18. Specifically, Appellants argue that the Specification “discloses that the control state control function is a network element.” Reply Br. 17 (citing Spec 6:34—7:2); App. Br. 16. Appellants also argue that the Specification “discloses that the policy control function is also a network element.” Reply Br. 17 (citing Spec. 7:20-23); App. Br. 16. Appellants further argue that the Specification “discloses that the call processing service is part of a core network.” Reply Br. 17 (citing Spec. 15:30-16:3); App. Br. 16. We are not persuaded. The Examiner reasonably interprets the “other network element” as a structural element, e.g., an apparatus or a device. The claims as currently drafted are unclear as to their scope. See In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (stating that “claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms.”). For example, claims 27 and 28 use the term “function” in a general sense, whereas the Specification uses special terms that are referred to by their 5 Appeal 2016-001128 Application 13/039,264 acronyms to refer to particular network elements: Call State Control Function (CSCF) and policy control function (PCF). See, e.g., Spec. 2:17— 20, 2:35—3:4. Similarly, claim 29 uses the term “service” in a general sense, whereas the Specification describes a particular network element CPS, which stands for a Call Processing Server (not service). See, e.g., Spec. 2:17—20, 2:35—3:4, 15:36—16. By choosing to use generic claim language that is functional in nature and that is not tied to a particular structure renders the bounds of the claims uncertain. Accordingly, we are not persuaded the Examiner erred in finding claims 27—29 indefinite.3 Section 102 — Claims 24, 58, and 59 Appellants contend the Examiner erred in finding ETSI discloses, a network element configured to . . . receive information on at least one of an establishment or a modification of a connection^] send a permission request to another network element the permission request requesting permission for the at least one of the establishment or the modification of the connection^] [and] receive from the other network element, a response specifying a permission for the at least one of the establishment or the modification of the connection, as recited in independent claim 24 and similarly recited in independent claims 58 and 59. App. Br. 16—17; Reply Br. 18—20. Specifically, Appellants argue ETSI’s SGSN, i.e., a network element, sends an ‘“update [packet data protocol (PDP)] context request,’” i.e., a permission request — but SGSN’s permission request is not “sent in response to the network 3 We note that in the event of further prosecution of these claims, Appellants might address these deficiencies by amending the claims to recite the other network element “performs” the recited function or service, rather than reciting the other network element “is” the recited function or service. 6 Appeal 2016-001128 Application 13/039,264 element receiving information ‘on at least one of an establishment or a modification of a connection.’” Reply Br. 19 (citing ETSI Fig. 39, § 9.2.3.1). Appellants also argue, where ETSI’s GGSN is the claimed network element, the “GGSN receiv[es] an update [PDP] context request and send[s] an update PDP context response,” i.e., the GGSN network element receives a request and sends a response, rather than sending a request and receiving a response as required by the claims. App. Br. 17 (emphasis omitted). Additionally, Appellants argue the claims require “a single ‘network element’” but the Examiner “us[es] a plurality of devices, such as an SGSN and a GGSN” to disclose the claimed features. Reply Br. 19. We are not persuaded. The Examiner finds, and we agree, ETSI’s “Modification procedures” disclose the modification of connection parameters. Non-Final Act. 8 (citing ETSI § 9.2.3, 9.2.3.1). The Examiner further finds, and we agree, the modification procedure detailed in Figure 39 of ETSI discloses sending an “Update PDP Context Request,” i.e., a permission request, and correspondingly receiving an “Update PDP Context Response,” i.e., a response specifying a permission. Ans. 7—8 (emphasis omitted) (citing ETSI Fig. 39); see also Non-Final Act. 8 (citing ETSI §§ 9.2.3, 9.2.3.1). In particular, Figure 39 of ETSI shows the SGSN sending the Update PDP context Response and further receiving the Update PDP context Response—that is, the SGSN is a network element which sends permission requests and receives the response specifying the permission. See Ans. 7—8; see also Non-Final Act. 8—9 (finding the SGSN discloses a “network element”). 7 Appeal 2016-001128 Application 13/039,264 We are also not persuaded by Appellants’ argument that the SGSN’s permission request is not “sent in response to the network element receiving information ‘on at least one of an establishment or a modification of a connection.’” Reply Br. 19 (citations omitted). ETSI discloses that the SGSN sends an “Update PDP Context Request,” i.e., a permission request, as part of a modification procedure and the “SGSN can decide ... to modify parameters that were negotiated during an activation procedure” when “triggered by the HLR.” ETSI § 9.2.3, Fig. 39; see ETSI § 6.10.1.1, Fig. 30. That is, the permission request sent by the SGSN is triggered by the HLR’s request to modify connection activation parameters. Additionally, Appellants’ argument that the GGSN does not send permissions and receive responses (App. Br. 17) is not persuasive because we agree with the Examiner’s finding that the SGSN sends permissions and receives responses (see Ans. 7—8; see also Non-Final Act. 8). Furthermore, Appellants’ argument that the Examiner relies on a plurality of devices, i.e., both the SGSN and the GGSN, to disclose a single network element (Reply Br. 19) is not persuasive because the SGSN itself sends permissions and receives responses (Ans. 7—8; see Non-Final Act. 8) and, moreover, the claim does not limit the network element to a single device. Accordingly, we are not persuaded the Examiner erred in finding ETSI discloses, a network element configured to . . . receive information on at least one of an establishment or a modification of a connection^] . . . send a permission request to another network element the permission request requesting permission for the at least one of the establishment or the modification of the connection, . . . [and] receive from the other network element, a 8 Appeal 2016-001128 Application 13/039,264 response specifying a permission for the at least one of the establishment or the modification of the connection, as recited in claim 24 and similarly recited in claims 58 and 59. Therefore, we sustain the Examiner’s rejection of independent claims 24, 58, and 59. Remaining Claims 25, 26, 30, and 55—57 Appellants do not argue separate patentability for independent claim 25 and dependent claims 26, 30, and 55—57, which depend directly or indirectly from claim 24.4 App. Br. 18. For the reasons set forth above, we are not persuaded the Examiner erred in rejecting these claims. See In re Lovin, 652 F.3d 1349, 1356 (Fed. Cir. 2011) (“We conclude that the Board has reasonably interpreted Rule 41.37 to require applicants to articulate more substantive arguments if they wish for individual claims to be treated separately.”). Accordingly, we sustain the Examiner’s rejections of claims 25, 26, 30, and 55-57. See 37 C.F.R. § 41.37(c)(l)(iv). Objections Appellants challenge the Examiner’s objections to the Drawings and Specification. App. Br. 9—10; Reply Br. 16. A review of objections is properly sought by petition to the Director under 37 C.F.R. § 1.181, not by appeal to the Board. 37 C.F.R. § 1.113; see Ex parte Frye, 94 USPQ 2d 1072, 1078 (BPAI 2010) (precedential). Accordingly, we do not consider Appellants’ arguments regarding the Examiner’s objection to the Drawings and Specification. 4 Appellants describe claim 25 as dependent from claim 24. App. Br. 18; Reply Br. 20. However, claim 25 is an independent claim, the merits of which are not argued separately by Appellants. 9 Appeal 2016-001128 Application 13/039,264 DECISION We REVERSE the Examiner’s 35 U.S.C. § 112, first paragraph rejection of claims 24 and 58. We AFFIRM the Examiner’s 35 U.S.C. § 112, second paragraph rejection of claims 27—29. We AFFIRM the Examiner’s 35 U.S.C. § 102(b) rejection of claims 24, 30, 58, and 59. We AFFIRM the Examiner’s 35 U.S.C. § 103(a) rejection of claims 25, 26, and 55-57. 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). AFFIRMED 10 Copy with citationCopy as parenthetical citation