Ex Parte Issaeva et alDownload PDFPatent Trial and Appeal BoardDec 12, 201612522278 (P.T.A.B. Dec. 12, 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. 12/522,278 11/19/2009 Tatiana Issaeva 059864.01269 8451 11051 7590 12/14/2016 Squire Patton Boggs (US) LLP Nokia Technologies Oy 8000 Towers Crescent Drive, 14th Floor Vienna, VA 22182 EXAMINER ULYSSE, JAEL M ART UNIT PAPER NUMBER 2477 NOTIFICATION DATE DELIVERY MODE 12/14/2016 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): sonia. whitney @ squirepb.com ipgeneralty c @ squirepb .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 TATIANA ISSAEVA and MIIKKA HUOMO Appeal 2015-002852 Application 12/522,278 Technology Center 2400 Before BRADLEY W. BAUMEISTER, BRUCE R. WINSOR, and SHARON FENICK, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—3 and 46—62, which constitute all the claims pending in this application. App. Br. 5.1 Claims 4-45 were previously canceled. Id. We reverse. 1 Rather than repeat the Examiner’s positions and Appellants’ arguments in their entirety, we refer to the following documents for their respective details: the Final Action mailed December 23, 2013 (“Final Act.”); the Advisory Action mailed April 16, 2014 (“Adv. Act.”); the Appeal Brief filed July 28, 2014 (“App. Br.”); the Examiner’s Answer mailed November 20, 2014 (“Ans.”); and the Reply Brief filed January 20, 2015 (“Reply Br.”). Appeal 2015-002852 Application 12/522,278 STATEMENT OF CASE Appellants describe the present invention as follows: Quick and efficient handover of a user equipment (UE) from a Wideband Code-Division Multiple Access (WCDMA) packet switched only network to a Circuit Switched enabled (CSe) network is provided. Parallelization of the Radio Access Network (RAN) processes and the User Equipment (UE) processes can help to reduce delay in such handovers. Abstract. Independent claim 1, reproduced below with added emphasis, is illustrative of the appealed claims: 1. A method, comprising: initiating, responsive to receiving a request for a circuit switched connection from a user equipment and a paging request for a mobile terminating circuit switched call from a network node, establishment of the circuit switched connection, wherein the circuit switched connection regards the user equipment and the user equipment is associated with a packet switched only radio-access network; and transferring information regarding the initiating of the establishment of the circuit switched connection from a packet switched only network node to a circuit switched enabled network. Claims 1—3, 46—54, and 57—60 stand rejected under 35 U.S.C. § 103(a) as obvious over Liu et al. (US 7,522,585 B2; issued Apr. 21, 2009) (“Liu”) in view of Virtanen et al. (US 2005/0030928 Al; published Feb. 10, 2005) (“Virtanen”). Claims 55, 56, 61, and 62 stand rejected under 35 U.S.C. § 103(a) as obvious over Liu in view of Virtanen and Ljung et al. (US 2008/0112353 Al; published May 15, 2008) (“Ljung”). 2 Appeal 2015-002852 Application 12/522,278 We have jurisdiction under 35 U.S.C. § 6(b). We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). CONTENTIONS The Examiner’s conclusion that the claims are obvious over the combination of at least Liu and Virtanen is based upon an erroneous interpretation of the independent claims’ “initiating” limitations. For example, method claim 1 sets forth the step of “initiating, responsive to receiving a request for a circuit switched connection from a user equipment and a paging request for a mobile terminating circuit switched call from a network node, establishment of the circuit switched connection, . . ,”2 (emphasis added.) But, notwithstanding the claims’ express language, the Examiner interprets all of the claims to be setting forth that the establishment of the circuit switched connection is initiated in response to receiving either one of a request from the user equipment (UE) or a paging request from a network node. Final Act. 2—3; Adv. Act. 2; Ans. 11—12. The Examiner’s rationale for interpreting the claims’ use of the conjunction “and” to actually mean “or” is that Appellants’ Specification only “teaches that a paging request in an alternative to the UE request.” Final. Act. 3. 2 Independent claim 52 is directed to an apparatus setting for an initiation unit that is configured to perform the function similar to that recited in claim 1, while independent claim 60 is directed to a computer program embodiment on a non-transitory computer readable medium encoding instructions for performing this method that is recited in claim 1. 3 Appeal 2015-002852 Application 12/522,278 Appellants assert, inter alia, that the Examiner’s interpretation of the claims is flawed—that claims require that the initiating step is undertaken in response to both requests occurring. App. Br. 12—13. Appellants also contend that paragraph 49 of their Specification, for example, provides support for this alternative embodiment; that it is clear error to interpret the claim limitation to mean “or” instead of “and;” and that “it is undisputed that the prior art fails to disclose the claim with ‘and’ construed as ‘and.’” Id. and 13. ANALYSIS “Before considering the rejections . . ., we must first [determine the scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA 1974). During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the Specification. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) Each of the independent claims unambiguously sets forth the conjunction “and”—not “or.” To be sure, situations exist in which the use of the word “and” may be ambiguous, rendering it unclear whether the word “or” was intended instead. See Black’s Law Dictionary, 86 (6th ed. 1991) (primarily defining “and” as “[a] conjunction connecting words or phrases expressing the idea that the latter is to be added to or taken along with the first,” but also explaining that “and” is “[sjometimes construed as ‘or’”). As used in the present claims, though, the broadest reasonable interpretation of the word “and,” when read in light of Appellants’ Specification, is reasonably unambiguous. And as such, the scope of the 4 Appeal 2015-002852 Application 12/522,278 claims is reasonably clear. That is, the claims require, with reasonable clarity, that the initiating step take place in response to receiving both requests—not just a single one of the requests. A perceived deficiency in the support in Appellants’ Specification for the recited claim language is not a basis for the Examiner to rewrite the claim language. That is, the Examiner erred by examining the claims based upon some alternative, non-recited claim construction that the Examiner believes to be what Appellants’ Specification actually discloses. In the absence of an ambiguity in the claims, as in this case, if the Examiner believes the claims are unsupported by Appellants’ originally filed Specification, the Examiner’s proper recourse is to issue, instead, a written- description rejection under 35 U.S.C. § 112,11 (or under § 112(a) in the parlance of the America Invents Act).3 Furthermore, based upon our reading of the Examiner’s positions in the Final Action and Examiner’s Answer, we agree with Appellants (App. Br. 13) that the Examiner’s rejection is based solely on the rationale that the combination of Liu and Virtanen renders obvious performing the initiating step in response to receiving only one of the recited requests in the alternative. The Examiner does not appear to allege that the combination renders obvious performing the initiating step in response to receiving both of the requests. See generally Final Act.; Ans. For the foregoing reasons, Appellants have persuaded us of error in the Examiner’s obviousness rejection of the independent claims 1, 52, and 60. Accordingly, we will not sustain the Examiner’s rejection of those 3 Because no such written description rejection was presented in the Examiner’s Answer, we will not address this question on appeal. 5 Appeal 2015-002852 Application 12/522,278 claims or of claims 2, 3, 46—51, and 57—59, which depend from these claims. With respect to the remaining rejection of dependent claims 55, 56, 61, and 62, the Examiner’s further reliance on Ljung does not cure the deficiency of the obviousness rejection explained above. Rather, the Examiner relies upon Ljung to teach other features. See Final Act. 10—12. DECISION The Examiner’s decision rejecting claims 1—3 and 46—62 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation