Ex Parte Kanauchi et al

Patent Trial and Appeal Board

Jan 31, 2018

13146694 (P.T.A.B. Jan. 31, 2018)

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.
13/146,694 09/30/2011 Masashi Kanauchi 17470/155001 6462
22511 7590
OSHA LIANG L.L.P.
TWO HOUSTON CENTER
909 FANNIN, SUITE 3500
HOUSTON, TX 77010
EXAMINER
LINDENBAUM, ALAN LOUIS
ART UNIT PAPER NUMBER
2466
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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@oshaliang.com
escobedo @ oshaliang. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASASHI KANAUCHI, AKI OHASHI, KEISUKE SUZUKI, and
ITSUMA TANAKA
Appeal 2016-000426
Application 13/146,6941
Technology Center 2400
Before JAMES R. HUGHES, CARL L. SILVERMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1 and 3-9. Appellants have canceled claim 2. Br. 11.
We have jurisdiction over the remaining pending claims under 35 U.S.C.
§ 6(b). Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994)
(precedential).
We affirm.
1 Appellants identify NTT DOCOMO, Inc. as the real party in interest.
Br. 4.
Appeal 2016-000426
Application 13/146,694
STATEMENT OF THE CASE
Introduction
Appellants’ disclosed and claimed invention generally relates to a
mobile station “originating an emergency call via a CS [(circuit switching)]
network even in a state of camping on a PS [(packet switching)] dedicated
network.” Spec. ^ 20. In an exemplary embodiment, the packet switching
network (i.e., a first network) is an LTE (Long Term Evolution)-scheme
network and the circuit switching network (i.e., a second network) is a
UMTS (Universal Mobile Telecommunications System)-scheme network.
Spec. ^ 26. However, according to the Specification, networks of different
schemes may be used as the packet switching and circuit switching
networks. Spec. 27-28.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics'.
1. A mobile station, comprising:
an emergency call originating process unit configured to
originate an emergency call via a cell under the control of a
second network having a circuit switching network,
when an emergency call originating trigger is detected
while camping on a cell under the control of a first network that
is a packet switching dedicated network,
when the mobile station is not assigned M-TMSI (M-
Temporary Mobile Subscriber Identity) paid out by a packet
switching center under the control of the first network, and
when it is determined that camping on the cell under the
control of the second network is possible.
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Appeal 2016-000426
Application 13/146,694
The Examiner’s Rejection
Claims 1 and 3-9 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Mittal et al. (US 2008/0102784 Al; May 1, 2008) (“Mittal”).
Non-Final Act. 2-7.
ANALYSIS2
Appellants argue Mittal does not anticipate independent claim 1
because Mittal does not disclose that the mobile station is not assigned M-
TMSI, as required by the claim language. Br. 7-8. Appellants assert “Mittal
is completely silent on the presence or absence of M-TMSI.” Br. 8.
Additionally, Appellants contend Mittal “fails to disclose that a failure of the
emergency call may be caused by the M-TMSI.” Br. 8.
“A reference anticipates a claim if it discloses the claimed invention
such that a skilled artisan could take its teachings in combination with his
own knowledge of the particular art and be in possession of the invention.'''’
In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995); see also Continental Can
Co. v. Monsanto Co., 948 F.2d 1264, 1268-69 (Fed. Cir. 1991) (to
anticipate, every element of the claims must appear in a single prior art
reference, or if not expressly shown, then demonstrated to be known to
persons experienced in the field of technology). The Examiner may rely on
what one of ordinary skill in the art would have understood from a statement
in an anticipatory reference. See In re Baxter Travenol Labs., 952 F.2d 388,
391 (Fed. Cir. 1991). Where, as here, “the [Examiner] shows a sound basis
2 Throughout this Decision we have considered the Appeal Brief, filed
May 4, 2015 (“Br.”); the Examiner’s Answer, mailed on August 6, 2015
(“Ans.”); and the Non-Final Office Action, mailed October 15, 2014 (“Non-
Final Act.”), from which this Appeal is taken.
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Application 13/146,694
for believing that the products of the applicant and the prior art are the same,
the applicant has the burden of showing that they are not.” In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990).
Further, when construing claim terminology during prosecution before
the Office, claims are to be given their broadest reasonable interpretation
consistent with the Specification, reading claim language in light of the
Specification as it would be interpreted by one of ordinary skill in the art.
In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
We are mindful, however, that limitations are not to be read into the claims
from the Specification. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993). 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).
In response, the Examiner finds “a person of ordinary skill in the art,
at the time of the invention, would have understood that the invention [of]
Mittal would not be assigned a[n] M-TMSI (M-Temporary Mobile
Subscriber Identity), because Mittal has absolutely nothing to do with a[n]
M-TMSI.” Ans. 8. The Examiner explains that M-TMSI is only present in
an LTE network. Ans. 8. However, the claims do not recite or require the
packet switching network to be an LTE-scheme network. Ans. 8. The
Examiner notes Mittal is not an LTE network and, therefore, would not
include an M-TMSI. Ans. 8. Thus, the Examiner finds the mobile station in
Mittal would not be assigned an M-TMSI. Ans. 8.
Mittal is generally directed to “handling emergency calls in wireless
communication systems.” Mittal ^ 1. The Examiner finds, and we agree,
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Application 13/146,694
Mittal discloses, inter alia, a mobile station comprising an emergency call
originating process unit configured to originate an emergency call via a cell
under the control of a circuit switching network (i.e., the claimed second
network) when an emergency call originating trigger is detected while
camping on a cell under the control of a packet switching network (i.e., the
claimed first network). Non-Final Act. 2 (citing Mittal 1,2, 25, 27, 32,
and 33). Mittal describes the packet switching network (i.e., the first
network) as a UTRAN (Universal Terrestrial Radio Access Network-
scheme and the circuit switching network (i.e., the second network) as a
GSM (Global System for Mobile Communications)-scheme network. Mittal
32, 37. Appellants do not rebut the Examiner’s finding that M-TMSI is
only present on LTE networks. Thus, because the claims are not limited to
LTE networks (see, e.g., Spec. ^ 27), we agree with the Examiner (see Ans.
8) that an ordinarily skilled artisan would understand the mobile station in
Mittal is not assigned an M-TMSI. Accordingly, we do not find Appellants’
arguments persuasive of Examiner error.
Additionally, Appellants’ argument that Mittal does not disclose that a
failure of an emergency call may be caused by the M-TMSI (see Br. 8) is not
persuasive of error because it is not commensurate in scope with the claim
language, which does not recite a limitation regarding the failure of an
emergency call. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(limitations not appearing in the claims cannot be relied upon for
patentability); see also Ans. 9.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 1. For similar reasons, we also sustain the Examiner’s rejection of
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Application 13/146,694
independent claim 9, which recites similar limitations and was not argued
separately. See Br. 9. Further, we sustain the Examiner’s rejection of claims
3-8, which depend therefrom and were not argued separately.
DECISION
We affirm the Examiner’s decision rejecting claims 1 and 3-9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f)(2014).
AFFIRMED
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