Ex Parte KarlssonDownload PDFPatent Trial and Appeal BoardMar 27, 201713438862 (P.T.A.B. Mar. 27, 2017) 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. 13/438,862 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). 2 Appeal 2016-006027 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. 3 Appeal 2016-006027 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). 4 Appeal 2016-006027 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 5 Appeal 2016-006027 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 6 Appeal 2016-006027 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 7 Appeal 2016-006027 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). 8 Appeal 2016-006027 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 9 Appeal 2016-006027 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. 10 Appeal 2016-006027 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 11 Copy with citationCopy as parenthetical citation