Ex Parte Kim

Patent Trial and Appeal Board

Jan 14, 2015

11761537 (P.T.A.B. Jan. 14, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/761,537 06/12/2007 Byoung-Jo Kim 2006-A1963 (40147/06701) 1165
83719 7590 01/15/2015
AT & T Legal Department - FKM
AT & T LEGAL DEPARTMENT,
ATTN: PATENT DOCKETING ROOM 2A-207
BEDMINSTER, NJ 07921
EXAMINER
HEIBER, SHANTELL LAKETA
ART UNIT PAPER NUMBER
2641
MAIL DATE DELIVERY MODE
01/15/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BYOUNG-JO KIM
____________

Appeal 2012-009017
Application 11/761,537
Technology Center 2600
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/761,537

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STATEMENT OF THE CASE
The Examiner finally rejected claims 1–20. Appellant appeals from
the final rejection under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
INVENTION
This invention relates to “traffic activity-based forwarding table
updates for Ethernet-based mobile access networks.” (Title). Claim 1,
reproduced below, is representative of the claimed subject matter:
1. A method, comprising:
[a] granting an association request from a mobile terminal;
[b] determining, during a predetermined time interval after
granting the association request, if the mobile terminal has
received traffic from a network and sent traffic to the network;
and
[c] [c1] sending a broadcast update packet to the network [c2] if
it is determined that the mobile terminal has not both received
traffic from and sent traffic to the network within the
predetermined time interval.
(Bracketed matter added).
REJECTIONS
R1. Claims 1–3, 5–11, 13–16, and 18–20 stand rejected under 35
U.S.C. § 103(a) as unpatentable over U.S. Pub. App. No. 2002/0172178 A1;
Nov. 21, 2002 to Suzuki et al. (“Suzuki”) and U.S. Pub. App. No.
2006/0126589 A1; June 15, 2006 to Sayeedi (“Sayeedi”).
R2. Claims 4, 12, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Suzuki, Sayeedi, and U.S. Pub. App. No. 2005/0176420
A1; Aug. 11, 2005 to Graves et al. (“Graves”).

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GROUPING OF CLAIMS
Based on Appellant’s arguments, we decide the appeal of:
The rejection of claims: on the basis of representative claim:
R1. Claims 1–3, 5–11, 13–16, and
18–20. (App. Br. 7-9).
1
R2. Claims 4, 12, and 17. (App.
Br. 9-10).
Individually
See 37 C.F.R. § 41.37(c)(1)(vii)(2004).1

ANALYSIS
R1. REPRESENTATIVE CLAIM 1
A.
Claim 1 recites, in pertinent part:
[b] determining, during a predetermined time interval after
granting the association request, if the mobile terminal has
received traffic from a network and sent traffic to the network;
[c] [c1] sending a broadcast update packet to the network [c2] if
it is determined that the mobile terminal has not both received
traffic from and sent traffic to the network within the
predetermined time interval.

1 Appellant filed a Notice of Appeal on Oct. 21, 2011. The date of filing the
Notice of Appeal determines which set of rules applies to an Ex Parte
appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the
2004 version of the Board Rules last published in the 2011 edition of Title
37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to
the appeal. See also Manual of Patent Examining Procedure (MPEP) 8th
ed., Rev. 8, July 2010.
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Claim Construction
As an initial matter of claim construction, we conclude the contested
second “determining” step [c] of claim 1 covers the four possible conditions
shown in the table shown below, under a broad but reasonable interpretation:

Did the mobile
terminal
receive traffic
from the
network within
the
predetermined
time interval?
Did the
mobile
terminal send
traffic to the
network
within the
predetermined
time interval?
Action
NO NO A. Send a
broadcast update
packet to the
network
NO YES A. Send a
broadcast update
packet to the
network
YES NO A. Send a
broadcast update
packet to the
network
YES YES B. The action is
not specified for
this condition

Thus, as a matter of claim construction, we observe that claim 1 is
silent regarding what step or act (action) is performed in the event that the
mobile terminal both receives and sends traffic “within the predetermined
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time interval.” Thus, under a broad but reasonable interpretation, we
conclude claim 1 is amenable to two plausible constructions in the event that
a mobile terminal both receives and sends traffic during the predetermined
time interval: either the broadcast packet is sent to the network, or it is not
sent to the network.2 Because there are only two possibilities (to send or not
send the broadcast update packet), we conclude the scope of the claim
covers either action (send or not send packet) in the event that the mobile
terminal both receives and sends traffic during the predetermined time
interval (corresponding to the “YES”, “YES” condition in the table shown
above). Further, regarding the conditional language of claim 1, our
reviewing court guides that “optional elements do not narrow the claim
because they can always be omitted.” In re Johnston, 435 F.3d 1381, 1384
(Fed. Cir. 2006).
Here, however, we focus our §103 analysis on the first three
conditions shown in the table regarding contested limitation [c].

Regarding limitation [c], Appellant contends:
Claim 1 recites “determining ... if the mobile terminal has
received traffic from a network and sent traffic to the network,”
and taking subsequent action on the basis of such a

2 In the event of further prosecution, we leave it to the Examiner to consider
the holding of Miyazaki as applied to at least claim 1: “[I]f a claim is
amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim . . . indefinite.” Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). See
also In re Packard, 2013-1204, WL 1775996 at *15 (Fed. Cir. May 6, 2014),
(J. Plager concurring)(“ In my view (and that of the per curiam court), it is
within the authority of the USPTO to so interpret the applicable standard”).
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determination. In contrast, Suzuki describes a base station
having an inactivity timer that is reset when the base station
receives traffic from a mobile station or when the base station
sends traffic to the mobile station. (Suzuki, ¶[0087].) The
specification of the present application describes that one-way
traffic (e.g., the or construction of Suzuki) is not sufficient to
update forwarding tables. (See Specification, ¶¶ [0023],
[0026].)
(App. Br. 4).
Appellant’s contentions are unpersuasive because they are not
commensurate with the broader scope of claim 1. Specifically, claim 1 does
not preclude resetting an inactivity timer because claim 1 is silent regarding
a timer. Limitation [c] merely requires: [c1] “sending a broadcast update
packet” based on the [c2] determination “that the mobile terminal has not
both received traffic from and sent traffic to the network within the
predetermined time interval.” (Claim 1). Thus, limitation [c] is met if at
least one of conditions 1, 2, or 3, is taught or suggested by the cited
combination of references. (See our Table above – Condition 1: “NO NO”,
Condition 2: “NO YES”, Condition 3: “YES NO”).
Regarding Appellant’s reference to the description in the Specification
which purportedly precludes one-way traffic (App. Br. 4), we decline
Appellant’s invitation to read limitations from the Specification into the
claims.3 We conclude the scope of limitation [c] encompasses one or more
of conditions 1–3 as shown in the Table above.

3 Our reviewing court guides: “[A]lthough the specification often describes
very specific embodiments of the invention, we have repeatedly warned
against confining the claims to those embodiments . . . . [C]laims may
embrace ‘different subject matter than is illustrated in the specific
embodiments in the specification.’” Phillips v. AWH Corp., 415 F.3d 1303,
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We find Suzuki’s base station’s determination that the mobile
terminal has not received traffic from a network and not sent traffic to the
network teaches or suggests limitation [b]: “determining . . . if the mobile
terminal received traffic from a network and sent traffic to the network,”
within the meaning of claim 1. (Ans. 5). Specifically, Suzuki’s Figure 11
and paragraph 87 describe that during the interval when the timer starts
(1111) and when the timer expires (1112), the base station determines “if the
mobile terminal has received traffic from a network and sent traffic to the
network,” within the meaning of claim 1.
Furthermore, limitation [c] under a broad but reasonable interpretation
(see Table above) reads on Suzuki as follows: [c] [c1] “sending a
broadcast update packet to the network" (sending request 1113, ¶87)
[c2] "if it is determined that the mobile terminal has not both received
traffic from and sent traffic to the network within the predetermined
time interval.” (Ans. 5; Fig. 11, ¶87).
Specifically Suzuki describes (¶87):
Thereafter, if transmission/ reception of a packet is not carried
out for a specific time, the inactivity timer expires (1112).
When the inactivity timer expires, the base station transmits a
radio traffic channel disconnection request to the mobile
station (1113), and the radio traffic channel is disconnected
(1114).

1323 (Fed. Cir. 2005) (en banc) (citations omitted). 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).

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Thus, Suzuki’s base station determines that the mobile terminal has
not both received traffic from a network and sent traffic to the network
between the start of the timer 1111 and the expiration of the timer 1112 (i.e.,
there is no transmission/ reception of a packet for a specific time, i.e., for a
predetermined time interval as claimed). (id.). This corresponds directly to
the first (“NO” “NO” condition in our claim 1 table described above).
Regarding limitation [c] [c1] “sending a broadcast update packet to
the network,” (emphasis added) , we find Suzuki’s radio traffic channel
disconnection request (id.) would have taught or suggested the claimed
“sending a broadcast update packet to the network,” because the mobile
station is operably connected to the network and is thus part of the network.
Therefore, we find unavailing Appellant’s contention in the Reply Brief (6):
Appellant respectfully submits that the recitation of claim 1
clearly indicates that the mobile terminal is not understood to
be part of the network, because claim 1 recites “determining ...
if the mobile terminal has received traffic from a network and
sent traffic to the network.”
(Reply Br. 6).
We conclude that the broadest reasonable interpretation of “network”
includes any arrangement of interconnected devices or nodes which are
capable of communication. In Suzuki, the mobile terminal is connected to at
least the base station and therefore becomes part of the “network.” (Suzuki
Fig. 4).
Moreover, in the Examiner’s proffered combination of Suzuki and
Sayeedi, Sayeedi (¶25) sends an “A9-update-A8 message” (“broadcast
update packet”) to a packet control function (PCF)/ Suzuki’s mobile
switching center (“network”), not to the mobile terminal. (Ans. 5, 15).
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Because the combined teachings and suggestions of the of cited
references (Suzuki, ¶87, Fig. 11; Sayeedi ¶25) fall within the scope of claim
1, on this record, we are not persuaded the Examiner erred.
B.
Further regarding limitation [c] [c1] “sending a broadcast update
packet . . .,” Appellant contends:
The Appellant noted that the purpose of such a packet is
to update network forwarding tables. (See id., p. 3., citing
Specification, ¶¶ [0016], [0022], Figs. 1, 2.) The Appellant
distinguished this from Suzuki, which discloses the
transmission of a disconnection signal from a base station to a
mobile station at the expiration of an inactivity timer. (See
4/20/11 Response, p.3, citing Suzuki, ¶¶ [0087], Fig. 4.)
Therefore, the Appellants concluded that Suzuki does not
disclose or suggest "sending a broadcast update packet to the
network," as recited in claim 1.
(App. Br. 6).
Appellant’s contentions are unpersuasive because they are not
commensurate with the scope of the recited “broadcast update packet” under
a broad but reasonable interpretation. Specifically claim 1 is silent
regarding the argued limitation of “the broadcast update packets updating
network forwarding tables,” as contended by Appellant. (App. Br. 6). We
again decline to read limitations described in Appellant’s Specification (e.g.,
Fig. 3) into the claim. See n.3 supra.
As previously discussed, we find Suzuki’s broadcast of a “radio traffic
channel disconnection request” would have taught or suggested the broadest
reasonable interpretation of “broadcast update packet.” Specifically,
Suzuki's “radio traffic channel disconnection request” is a packet of data that
updates the mobile terminal with the request to disconnect, and thus informs
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the mobile terminal of the expiration status of the activity timer. (Suzuki
¶ 87). Further, Suzuki’s “radio traffic channel disconnection request” is
broadcast by the base station to the mobile terminal. (Id.). Appellant fails to
cite a definition of “broadcast update packet” in the Specification to support
a more narrow interpretation.4
As discussed above, in the Examiner’s combination of Suzuki and
Sayeedi, Sayeedi sends an “A9-update-A8 message” (“broadcast update
packet”) to a packet control function (PCF 111), i.e., Suzuki’s mobile
switching center (“network”). (Ans. 5, 15). For these reasons, on this
record, we are not persuaded the Examiner erred.
C.
Appellant contends the combination of Suzuki and Sayeedi proposed
by the Examiner is non-obvious because:
In the Response filed April 20, 2011, the Appellant noted that
the purpose of sending a broadcast update packet is to update
parameters relating to an ongoing data connection. (See 4/20/11
Response, p. 4, citing Sayeedi, ¶¶ [0019], [0023], [0025];
Specification, ¶¶ [0016]-[0017].) The Appellant contrasted this
purpose with that of Suzuki, which describes a system wherein
a connection to a mobile station is disconnected if the mobile
station is inactive for an inactivity time interval. (See 4/20/11
Response, p. 4, citing Suzuki, ¶ [0087.) Therefore, the

4 Any special meaning assigned to a term “must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention.” Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) (“A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.”).
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Appellant concluded, one of skill in the art would not have been
motivated to combine Suzuki and Sayeedi in the manner
proposed by the Examiner because there is no motivation to
send broadcast update packets updating the routing
information for a device that is being activated due to
inactivity.
(Emphasis added; App. Br. 7).
Appellant’s contentions are unpersuasive because the contentions do
not consider and address the combined teachings and suggestions of the
references, as relied on by the Examiner. (Ans. 5, 14). Specifically,
Appellant’s contention does not address the Examiner’s finding that the
combination of Suzuki and Sayeedi would send broadcast update packets to
the network bridge (e.g., Mobile switching center or PCF/PDSN), not to the
mobile station as Appellant contends. (App. Br. 7; Ans. 6).
Sayeedi describes the general teaching of sending update messages
(e.g., A9-update-A8 msg.) to the network elements (PCF/PDSN) that
manage applications (e.g., packet data application; ¶2). (¶25, lines 1–2; Fig.
1). Similarly, Suzuki's MSC has a Home Location Register (HLR ) for
storing information related to the mobile terminal. (¶69.) These teachings
evidence it was known to those skilled in the art to send updates of the
mobile terminal status to the network elements involved with managing
applications, to enable the network elements to effectively manage network
resources.
We conclude it would have been obvious to one skilled in the art to
send a broadcast update message, including the updated activity timer status
(Sayeedi ¶ 26) and the mobile terminals' disconnection (Suzuki Fig. 11,
1113) from the base station to a Mobile switching center (or PCF), when the
mobile terminal disconnects. This broadcast update message would enable
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the applications (video, Sayeedi ¶2; Suzuki ¶7) to more efficiently send
application data to the base stations and mobile terminals.
Specifically, when the network receives the broadcast update message
indicating the activity timer expired and the mobile terminal using a video
application is disconnected, the application and network would know to
delay sending the video to a base station until the mobile terminal reconnects
again, possibly at different base station.5 (Suzuki Fig. 10). Therefore, we
find an artisan would have been motivated to combine Suzuki's mobile
terminal inactivity determination (and sending an update request to
disconnect) with Sayeedi's general teaching of sending updates of mobile
terminal status (e.g., connection and timer status) to the network elements
involved with managing applications. The motivation for the combination
would have been to use the available network resources more efficiently.
(Ans. 16).
For these reasons, on this record, we are not persuaded the Examiner
erred. Accordingly, we sustain rejection R1 of representative claim 1, and
the grouped claims rejected under rejection R1 which fall therewith. (See
Grouping of Claims, supra.).

5 “A suggestion, teaching, or motivation to combine the relevant prior art
teachings does not have to be found explicitly in the prior art, as the
teaching, motivation, or suggestion may be implicit from the prior art as a
whole, rather than expressly stated in the references.... The test for an
implicit showing is what the combined teachings, knowledge of one of
ordinary skill in the art, and the nature of the problem to be solved as a
whole would have suggested to those of ordinary skill in the art.” In re
Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (citing In re Kotzab, 217 F.3d
1365, 1370 (Fed. Cir. 2000)).
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R2. DEPENDENT CLAIMS 4, 12, AND 17
Regarding the claims which stand rejected under rejection R2,
Appellant urges these claims are patentable by virtue of their dependency
from their respective associated independent claims. (App. Br. 9–10.)
However, we find no deficiencies regarding the rejection R1 of the base
claims for the reasons discussed above regarding claim 1. Therefore, we
sustain the Examiner's rejection R2 of claims 4, 12, and 17. (See Grounds of
Rejection, supra.).
DECISION
We affirm the Examiner's rejections R1 and R2 of claims 1–20 under
§ 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).

AFFIRMED

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