Ex Parte Hwang et al

Patent Trial and Appeal Board

Dec 22, 2016

13615435 (P.T.A.B. Dec. 22, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/615,435 09/13/2012 Woonhee HWANG 6086-7CON - 326956.000 6217
27799 7590
Cozen O'Connor
277 Park Avenue, 20th floor
NEW YORK, NY 10172
12/27/2016 EXAMINER
GAO, JING
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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WOONHEE HWANG, OLIVIER GUYOT, and
ANTTI O. KANGAS
Appeal 2016-000824
Application 13/615,435
Technology Center 2600
Before MICHAEL J. STRAUSS, ADAM J. PYONIN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-000824
Application 13/615,435
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
2-4, 6, 7, 9, 10, 12—14, 16, and 17. Claims 1, 5, 8, 11, and 15 are canceled.
We have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to providing system information to enable
packet switched handovers. Spec., Title. Claim 2, reproduced below, is
representative of the claimed subject matter:
2. A method for packet switched handover from a source to a
target, comprising:
providing an indication in a source to target transparent
container from a first network element indicating whether the
first network element requests a system information required by
a mobile station for a packet switched handover from a handover
target;
receiving the system information in a target to source
transparent container from the handover target when the
indication indicates that the first network element requests the
system information and not receiving the system information in
a target to source transparent container absent the indication; and
sending to a user equipment at least a part of the system
information that is received in the target to source transparent
container,
wherein the packet switched handover is a handover to a
different radio access technology.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Semper US 2003/0119507 A1 June 26, 2003
Kim US 2006/0035645 A1 Feb. 16,2006
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Application 13/615,435
Willars US 7,072,656 B2 July 4,2006
3GPP TSG-RAN WG3 Meeting #46, Scottsdale, Arizona, USA,
February 14—18, 2005, Universal Mobile
Telecommunications System (UMTS); UTRAN Iu interface
Radio Access Network Application Part (RANAP) signaling
(3GPP TS 25.413 version 6.4.1 Release 6) (hereinafter
“3 GPP”)
REJECTIONS
The Examiner made the following rejections:
Claims 2—17 are provisionally rejected on the ground of nonstatutory
provisional obviousness-type double patenting as being unpatentable over
claims 1, 2, 6, 8—11, 13, 15, 16, and 20 of co-pending U.S. Application No.
11/540,940. Final Act. 3.
Claims 2—4, 6, 7, 9, 10, 12—14, 16, and 17 stand rejected under 35
U.S.C. §103(a) as being unpatentable over Willars, Kim, 3GPP, and Semper.
Final Act. 4—9.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Final Act. 2—10)
and (2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief (Ans. 3—6), and we concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.
Appellants do not contest the provisional double patenting rejection.
Appeal Br. 11—12. Accordingly, we summarily affirm the rejection of claims
2-17 on the ground of nonstatutory provisional obviousness-type double
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Application 13/615,435
patenting as being unpatentable over claims 1, 2, 6, 8—11, 13, 15, 16, and 20
of U.S. Application No. 11/540,940. We also note that the ’940 application
has since issued on March 29, 2016, as U.S. Patent No. 9,301,228.
In connection with the rejection of claims 2—4, 6, 7, 9, 10, 12—14, 16,
and 17 under 35 U.S.C. § 103(a), Appellants’ arguments are unpersuasive
because, inter alia, they fail to address the Examiner’s findings. In
particular, Appellants argue particular references are deficient for failing to
teach or suggest limitations for which the Examiner instead relies on a
different portion of that reference or a different reference entirely.
For example, Appellants quote Willars’ disclosure at col 12,11. 33—44,
arguing it “fails to disclose the system information request expressly recited
in claim 2.” Appeal Br. 7. However, the Examiner instead relies on col. 9,
11. 30-41 and 55—63 of Willars which discloses “[a]n example method for
implementing certain embodiments of the invention includes . . . sending]
the filtered neighbor cell list to the user equipment unit using standard
signaling.” Final Act. 5. Moreover, Appellants’ arguments are unpersuasive
because they merely quote from Willars and assert those quotations fail to
teach the claimed limitation without sufficiently explaining why that
limitation is missing. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011); see
also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Appellants’ argument that Kim fails to cure the alleged deficiency of
Willars (Appeal Br. 8) is, thus, irrelevant, both because we are not
sufficiently persuaded that Willars is deficient and because Kim was neither
relied upon by the Examiner nor found by the Examiner to teach or suggest
the disputed limitation.
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Application 13/615,435
Similarly, Appellants argue that in 3GPP (referenced as “D2” in
Appellants’ briefs), “the RELOCATION REQUIRED message . . . does not
include an indication as to whether a source radio network controller request
to receive system information [is received] from a handover target, as recited
in claim 2.” Appeal Br. 9. However, the Examiner instead relies on the
combination of Willars, Kim, and Semper, not 3GPP, for providing an
indication in a source to target transparent container from a first network
element indicating whether the first network element requests a system
information. Final Act. 4—6. Furthermore, Appellants’ naked assertion “the
inter-system information transparent container IE of [3 GPP] is not the
equivalent to the system information recited in claim 2” (Appeal Br. 9—10) is
unpersuasive for lack of supporting evidence. See Lovin, 652 F.3d at 1357.
Finally, with regard to the 3GPP reference, Appellants’ contention the
reference is deficient in connection with the sending step of claim 2 (Appeal
Br. 10) ignores the Examiner’s finding the combination of Willars, Kim, and
Semper, not 3GPP, teaches or suggests the step.
Appellants’ arguments in connection with Semper are equally
unpersuasive. For example, Appellants argue Semper fails to disclose
“receiving the system information in a target to source transparent container
from the handover target when the indication indicates that the first network
element requests the system information and not receiving the system
information in a target to source transparent container absent the indication”
and “not receiving the system information in a target to source transparent
container absent the indication.” Appeal Br. 10—11. However, the Examiner
finds it is not Semper alone that teaches or suggests the disputed receiving
steps, but the combination of Willars, Kim, and Semper. Final Act. 4—6.
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One cannot show non-obviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Although Appellants additionally assert the combination of references
is improperly based on hindsight reconstruction (Appeal Br. 7, 10),
Appellants fail to provide persuasive evidence or reasoning in support of the
naked contention. Contrary to Appellants’ contention, we find the Examiner
has provided articulated reasoning with rational underpinnings sufficient to
justify the legal conclusion of obviousness. Final Act. 5—6; see also In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Therefore, Appellants’ assertion
the references were improperly combined is not persuasive of error and
accordingly, the Examiner has properly relied upon the combination of
Willars, Kim, 3GPP, and Semper in formulating the disputed rejections
under 35 U.S.C. § 103(a).
Finally, we are not persuaded by Appellants’ contention the Examiner
“accedes” to the positon “the cited references fail to disclose sending part of
the inter-system information transparent container IE to a user equipment.”
Reply. Br. 3. Appellants cite to language appearing in the Examiner’s
Answer at page 4 which appears to be an error possibly caused by copying
and pasting text from the Advisory Action of October 31, 2014, in which the
Examiner characterizes Appellants’ argument as follows:
Applicant argues that Willar, Kim, D2 and Semper, alone or in
combination fail to disclose the system information request and
PSI/SI indicator IE in the source BSS to target BSS transparent
container IE expressly recited in claim 2; accordingly do not
mention sending part of the inter-system information transparent
container IE to a user equipment.
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Advisory Action, p. 2,11. 8—10 (emphasis added). The Examiner then
explains why Appellants’ contention is unpersuasive and concludes by
refuting Appellants’ argument, as follows:
Therefore, the combination of Willar/Kim/D2/Semper teaches
the system information request and PSI/SI indicator IE in the
source BSS to target BSS transparent container IE expressly
recited in claim 2: accordingly do not mention sending part of
the inter-system information transparent container IE to a user
equipment.
Advisory Action, p. 2,11. 21—23 (emphasis added.) Thus, it appears the
italicized language characterizing Appellants ’ conclusion was inadvertently
included as part of the Examiner’s finding that the combination of prior art
references teaches the claim limitation. We find such error to be harmless.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the rejection of independent claim 2 and, for
the same reasons, the rejection of independent claims 10, 14, and 16 under
35 U.S.C. § 103(a) over Willars, Kim, 3GPP, and Semper together with the
rejection of dependent claims 3, 4, 6, 7, 9, 12, 13, and 17 which were not
argued separately.
DECISION
We affirm the Examiner’s decision to reject claims 2-17 on the ground
of nonstatutory provisional obviousness-type double patenting as being
unpatentable over claims 1, 2, 6, 8—11, 13, 15, 16, and 20 ofU.S.
Application No. 11/540,940.
We affirm the Examiner’s decision to reject claims 2—4, 6, 7, 9, 10,
12—14, 16, and 17 under 35 U.S.C. §103(a) as being unpatentable over
Willars, Kim, 3GPP, and Semper.
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Appeal 2016-000824
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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
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