Ex Parte Karlsson

Patent Trial and Appeal Board

Mar 27, 2017

13438862 (P.T.A.B. Mar. 27, 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.
13/438,862 04/04/2012 Josefin KARLSSON 3602-774 2177
6449 7590 03/29/2017
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
607 14th Street, N.W.
SUITE 800
WASHINGTON, DC 20005
EXAMINER
SEFCHECK, GREGORY B
ART UNIT PAPER NUMBER
2477
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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):
PTO-PAT-Email @rfem. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEFIN KARLS SON
Appeal 2016-006027
Application 13/438,8621
Technology Center 2400
Before LARRY J. HUME, KIMBERLY McGRAW, and SCOTT E. BAIN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 2, 4, 6—9, 12—17, 19, 21—24, and 27-41. Appellant
has canceled claims 3, 5, 10, 11, 18, 20, 25, and 26. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Telefonaktiebolaget
LM Ericsson (publ). App. Br. 2.
Appeal 2016-006027
Application 13/438,862
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed and claimed inventions "are directed towards a
core network node (400), and corresponding method therein, for radio
resource management with the use of a maximum allowed Gn/Gp SGSN
Quality of Service (QoS) parameter reflecting a maximum allowed QoS of a
serving network." Abstract (emphasis omitted).
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitation):
1. A method for performing radio resource
management by a Gateway GPRS Support Node, GGSN, and a
Policy and Charging Rules Function, PCRF that are comprised
in a radio network, the method comprising:
a Gn/Gp Serving GPRS Support Node (SGSN) receiving
a communications request;
the Gn/Gp SGSN, in response to the communication
request, transmitting a message towards a gateway node, the
message comprising a maximum allowed Gn/Gp SGSN quality
of service (QoS) parameter, wherein said maximum allowed
Gn/Gp SGSN QoS parameter indicates a maximum allowed
QoS of a serving network;
the gateway node or a Policy and Charging Rules
Function (PCRF) comparing the maximum allowed Gn/Gp
2 Our Decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Nov. 23, 2015); Reply Brief ("Reply Br.," filed May 24, 2016); Examiner's
Answer ("Ans.," mailed March 24, 2016); Final Office Action ("Final Act.,"
mailed June 24, 2015); and the original Specification ("Spec.," filed
Apr. 4, 2012).
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Application 13/438,862
SGSN QoS parameter with a QoS parameter associated with the
communication request; and
the gateway node or the PCRF determining a
communication decision, for the communications request based
on the comparing.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Virtanen US 6,879,834 B2
Sarja et al. ("Sarja") US 7,715,339 B2
Franceschini et al. ("Franceschini") US 8,472,966 B2
Bakker et al. ("Bakker") US 8,477,724 B2
Apr. 12, 2005
May 11,2010
June 25, 2013
July 2, 2013
Rejections on Appeal
Rl. Claims 1, 8, 9, 13—16, 23, 28—32, 40, and 41 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Sarja. Ans. 2.3
R2. Claims 2, 17, 33—36, 38, and 39 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Sarja and
Franceschini. Ans. 5.
R3. Claims 12, 24, and 27 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Sarja and Virtanen. Ans. 7.
3 We note the Examiner omitted claims 40 and 41 in the explicit statement
of Rejection Rl (Ans. 2; Final Act. 2), but addressed these claims in the
detailed rejection. See Ans. 4 and Final Act. 4. We find this omission by
the Examiner to be harmless error.
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Application 13/438,862
R4. Claims 4, 6, 7, 19, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Sarja, Franceschini,
and Virtanen. Ans. 8.
R5. Claim 37 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Sarja and Bakker. Ans. 10.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 7—10), we decide the
appeal of anticipation Rejection R1 of claims 1, 8, 9, 13—16, 23, 28—32, 40,
and 41 on the basis of representative claim 1.
Remaining claims 2, 4, 6, 7, 12, 17, 19, 21, 22, 24, 27, and 33—39 in
rejections R2 through R5, not argued separately or with specificity, stand or
fall with the respective independent claim from which they depend.4
ISSUE
Appellant argues (App. Br. 7—10; Reply Br. 2—5) the Examiner's
rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated by Sarja is
in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] method for performing radio resource management by a
4 See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) ("When the
appellant fails to contest a ground of rejection to the Board, section
1.192(c)(7) [(now section 41.37(c)(l)(iv))] imposes no burden on the Board
to consider the merits of that ground of rejection .... [T]he Board may treat
any argument with respect to that ground of rejection as waived"). In
addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986); In re Sernaker,
702 F.2d 989, 991 (Fed. Cir. 1983).
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Application 13/438,862
Gateway GPRS Support Node, GGSN, and a Policy and Charging Rules
Function, PCRF that are comprised in a radio network," that includes, inter
alia, the step of "a Gn/Gp Serving GPRS Support Node (SGSN) receiving a
communications request," wherein "the Gn/Gp SGSN, in response to the
communication request, transmits] a message towards a gateway node, the
message comprising a maximum allowed Gn/Gp SGSN quality of service
(QoS) parameter," as recited in claim 1?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments that
Appellant could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claim 1, and
we incorporate herein and adopt as our own: (1) the findings and reasons set
forth by the Examiner in the Final Office Action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellant's arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.
Appellant contends:
Sarja at most discloses an SGSN transmitting to a gateway
(GGSN) a message comprising a "requested QoS attribute."
(See Sarja at col. 4, line 35). Nowhere, however, does Sarja
disclose (let alone suggest) that the message sent to the gateway
also includes "a maximum allowed Gn/Gp SGSN quality of
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Application 13/438,862
service (QoS) parameter [that] . . . indicates a maximum
allowed QoS of a serving network," as required by claim 1.
App. Br. 7—8 (emphases omitted).
Appellant further argues:
[E]ven if we assume for the sake of argument that the "APN
specific maximum QoS attributes" disclosed in Sarja is the
same as or equivalent to the recited maximum allowed Gn/Gv
SGSN QoS parameter, Sarja does not disclose that the "APN
specific maximum QoS attributes" are included in the messase
sent from the SGSN to the GGSN, as is expressly required by
claim 1. In other words, nowhere does Sarja disclose (or
suggest) that the messase sent from the SGSN to the GGSN
includes the "APNspecific maximum QoS attributes."
Instead, Sarja teaches that "APN specific maximum QoS
attributes . . . can be configured to the GGSN." But it does not
necessarily follow that the message sent from the SGSN to the
GGSN must necessarily include the APN specific maximum
QoS attributes merely because the APN specific maximum QoS
attributes can be configured to the GGSN. There are numerous
ways that the APN specific maximum QoS attributes "can be
configured to the GGSN" that do not require the APN specific
maximum QoS attributes being transmitted in a message from
the SGSN to the GGSN.
App. Br. 8—9. Finally, Appellant contends "[ujnless the Examiner can point
to specifically where Sarja discloses that the message sent from the SGSN
to the GGSN includes the 'APN specific maximum QoS attributes,' the
Examiner's rejection must be reversed." App. Br. 10.
In response, the Examiner finds, and we agree,
Sarja discloses that "binding information" related to such QoS
attributes is required by the GGSN/PCRF to make a decision on
the request, and that QoS can be downgraded from that
requested based upon these APN specific maximum attributes,
for different charging rates, where an indication of such is
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Application 13/438,862
added to Call Detailed Records (CDRs) created for the PDP
context by the GGSN and possibly the SGSN.
Ans. 12 (citing Sarja col. 4,11. 55—64).
The Examiner further finds, "such disclosure clearly establishes for
one of ordinary skill in the art that such binding information, in the form of
requested QoS and TFT (traffic flow template), is supplied with the request
in at least one embodiment of 'configuring, to the GGSN' information about
the APN specific maximum attributes of the 'serving' GPRS support node
(i.e. SGSN . . .)." Ans. 12—13 (citing Sarja col. 1,11. 36-45 and col. 5,11.
36-40).
In the Reply Brief, Appellant alleges the Examiner sets forth a
"wholly new theory as to why Sarja discloses" the contested limitation.
Reply Br. 2. This purportedly new theory is "Sarja discloses that the
'binding information' that is transmitted by the SGSN to the GGSN
comprises the 'APN specific maximum QoS attributes' that are mentioned in
Sarja." Reply Br. 2 (citing Sarja col. 4,11. 64—65). Appellant contends there
is no evidence to support the Examiner's finding that the "binding
information" includes the recited "APN specific maximum QoS attributes."
Reply Br. 2—3.
We agree with the Examiner's overall finding that Sarja anticipates
claim 1, but differ only with respect to the precise location of the request for
a particular level of QoS. As Appellant suggests, it appears the cited portion
of Sarja discloses the requested QoS is not part of the binding information,
per se, but instead is found in the "PDP context request." See Sarja col. 5,
11. 36—37 ("The PDP context request in this case includes e.g. binding
information, requested QoS . . . "). As a matter of claim construction, we
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Application 13/438,862
read the recited "message" at issue onto Sarja's disclosure of the "request,"
i.e., PDP context request.
However, while we differ in one particular aspect with the Examiner's
findings regarding the disclosure of Sarja with respect to where the QoS
level is requested, we note Appellant acknowledges the QoS parameter used
to request a particular level of QoS is found in the PDP context request.
Reply Br. 3.5
Therefore, although we differ with the Examiner on a narrow, particular
disclosure of Sarja, we find Sarja still anticipates claim 1. The Board need
not recite and agree with the Examiner's rejection in haec verba to avoid
issuing a new ground of rejection. See In re Leithem, 661 F.3d 1316, 1319
(Fed. Cir. 2011). In Leithem, the Federal Circuit explained:
Under the [APA] Act, an applicant for a patent who appeals a
rejection to the Board is entitled to notice of the factual and
legal bases upon which the rejection was based. 5 U.S.C.
§ 554(b)(3). The Board's rules are in accord and provide that
when the Board relies upon a new ground of rejection not relied
5 With respect to Sarja's disclosure of a requested QoS level, Appellant
admits:
Sarja further notes that, in addition to including "binding
information," a PDP context may also include a QoS parameter
(e.g., a "requested QoS") and a traffic flow template (TFT).
Specifically, Sarja states, "[t]he PDP context request in this case
includes [three items] e.g. [1] binding information, [2] requested
QoS and [3] TFT . . . ." (See Sarja at col. 5, lines 37-39). Thus,
Sarja discloses that the "binding information" is separate and
distinct from the QoS information (e.g., "requested QoS"). Thus,
the disclosed "binding information" is not "in the form of
requested QoS and TFT" as argued by the Examiner in the
Examiner's Answer....
Reply Br. 3 (emphases omitted).
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Application 13/438,862
upon by the examiner, the applicant is entitled to reopen
prosecution or to request a rehearing. See 37 C.F.R. § 41.50(b).
The Board need not recite and agree with the examiner's
rejection in haec verba to avoid issuing a new ground of
rejection. "[T]he ultimate criterion of whether a rejection is
considered 'new' in a decision by the [Bjoard is whether
[applicants] have had fair opportunity to react to the thrust of
the rejection." In re Kronig, 539 F.2d 1300, 1302-03 (CCPA
1976) (holding no new ground of rejection when the Board
relied on the same statutory basis and the same reasoning
advanced by the examiner).
Id.
Appellant makes additional arguments in the Reply Brief, in
particular, that Sarja merely discloses the GGSN transmits information to the
UE "through the SGSN," and Sarja does not disclose that the "APN
maximum allowed attributes" are "configured to the GGSN 'through the
SGSN', [but instead] merely discloses the GGSN transmits information to
the UE 'through the SGSN.'" Reply Br. 4 (emphasis in original omitted &
emphasis added).
Appellant's contentions are unpersuasive because they are not
commensurate with the scope of the claim, which does not recite
"configured to the GGSN," but which instead recites "the Gn/Gp SGSN . . .
transmitting a message towards a gateway node . . . ." Claim 1 (emphasis
added). See In re Self 671 F.2d 1344, 1348 (CCPA 1982) (limitations not
appearing in the claims cannot be relied upon for patentability).
Appellant additionally contends the Examiner improperly shifted the
burden of production because "it is the Examiner's burden to show that Sarja
inherently discloses that the SGSN sends to the GGSN a message
comprising the APN specific maximum QoS attributes." Reply Br. 5
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Application 13/438,862
(emphasis added). We are not persuaded by Appellant's argument because,
on the record before us, we find no reliance upon inherency by the Examiner
to disclose any claimed limitation. Instead, we find the Examiner made
various findings on the record regarding the disclosure of Sarja as cited
above, and Appellant has not rebutted the Examiner's findings by providing
persuasive evidence or argument.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the disclosure of the
cited prior art to disclose the disputed limitation of claim 1, nor do we find
error in the Examiner's resulting finding of anticipation. Therefore, we
sustain the Examiner's anticipation rejection of independent claim 1, and
grouped claims 8, 9, 13—16, 23, 28—32, 40, and 41 which fall therewith. See
Claim Grouping, supra.
Rejections R2—R5 of Claims 2, 4, 6, 7, 12, 17, 19, 21, 22, 24, 27, and 33—39
In view of the lack of any arguments directed to obviousness
Rejections R2 through R5 of claims 2, 4, 6, 7, 12, 17, 19, 21, 22, 24, 27, and
33—39 under § 103(a), we sustain the Examiner's rejection of these claims.
Arguments not made are waived.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2—6) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellant has not shown.
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Application 13/438,862
CONCLUSIONS
(1) The Examiner did not err with respect to anticipation Rejection
R1 of claims 1, 8, 9, 13-16, 23, 28-32, 40, and 41 under 35 U.S.C. § 102(b)
over the cited prior of record, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 through R5 of claims 2, 4, 6, 7, 12, 17, 19, 21, 22, 24, 27, and
33—39 under 35 U.S.C. § 103(a) over the cited prior art combinations of
record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 4, 6—9, 12—
17, 19, 21—24, and 27-41.
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). See 37
C.F.R. §41.50(f).
AFFIRMED
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