Ex Parte Masuda et alDownload PDFPatent Trial and Appeal BoardMay 11, 201612918199 (P.T.A.B. May. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/918,199 12/03/2010 Masafumi Masuda 22850 7590 05/13/2016 OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP, 1940 DUKE STREET ALEXANDRIA, VA 22314 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 365921US8PCT 6661 EXAMINER DANIEL JR, WILLIE J ART UNIT PAPER NUMBER 2462 NOTIFICATION DATE DELIVERY MODE 05/13/2016 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): patentdocket@oblon.com oblonpat@oblon.com ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASAFUMI MASUDA, TAKAAKI SATO, and SEIZO ONOE Appeal2014-003615 Application 12/918, 199 Technology Center 2400 Before ROBERT E. NAPPI, JAMES W. DEJMEK, and GARTH D. BAER, Administrative Patent Judges. NAPPI, Administrative Patent Judge. STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1through3, 5, 6, 8, and 27. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. Appeal2014-003615 Application 12/918,199 INVENTION Appellants' invention relates to a mobile communication system configured to permit a cell under a femto radio base station node to register a mobile station only under specific conditions. Abstract. Claim 1 is illustrative of the invention and reproduced below: 1. A mobile communication system configured to determine whether a location registration processing of a mobile station is allowed to a cell under a radio base station which is capable of being set to either an open state or a closed state, wherein the location registration processing of the mobile station is allowed to the cell under the radio base station, only when the radio base station is set to the open state, when the radio base station is set to the closed state and manages an access list in which the mobile station is set as an accessible mobile station, or when the radio base station is set to the closed state and manages an access list in which specific information indicating all mobile stations is set as information indicating the accessible mobile station. REJECTION AT ISSUE The Examiner has rejected claims 1 through 3, 5, 6, 8, and 27 under 35 U.S.C. § 102(e) as unpatentable over Mukherjee (US 2008/0267153 Al; Oct. 30, 2008). Answer 3-7. 1 ISSUE Appellants argue, on pages 8 through 14 of the Appeal Brief and pages 2 through 6 of the Reply Brief, that the Examiner's rejection of 1 Throughout this opinion we refer to the Appeal Brief filed August 16, 2013, Reply Brief filed January 22, 2014, and the Examiner's Answer mailed on November 22, 2013. 2 Appeal2014-003615 Application 12/918,199 independent claim 1 is in error. Appellants' arguments present us with the following issues: 1) Did the Examiner err in finding that Mukherjee discloses the access list includes specific information indicating all mobile stations as accessible mobile stations? 2) Did the Examiner err in finding that Mukherjee discloses location registration? 3) Did the Examiner err in finding that Mukherjee discloses the base station manages an access list? 4) Did the Examiner err in not construing the claim as requiring all three conditions for location registration? ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' contentions that the Examiner has erred. Further, we have reviewed the Examiner's response to Appellants' arguments. We disagree with Appellants' conclusion that the Examiner erred in rejecting claims 1 through 3, 5, 6, 8, and 27. Appellants' arguments directed to the first three issues center around the claim 1 limitation directed to "or when the radio base station is set to the closed state and manages an access list in which specific information indicating all mobile stations is set as information indicating the accessible mobile station." In response to Appellants' arguments, the Examiner finds the claim language is in the alternative and, as such, only one of the claimed states of the base station must be met. Ans. 12-13. The Examiner finds because Appellants do not argue that Mukherjee does not disclose the first two claimed states, open and closed with user access list, Appellants agree 3 Appeal2014-003615 Application 12/918,199 the reference discloses these two states and the claim is met. Ans. 12-13. Thus, before we address the first three issues, we must address the fourth lSSUe. Independent claims 1 and 5 are directed to a system (a device), independent claim 27 is directed to a base station (a device) and independent claim 8 is directed to a method. We disagree with the Examiner's claim interpretation with respect to the device claims, but concur with the Examiner with respect to the method claim. Each of the independent claims recites a limitation directed to location registration only (a) when the radio base station is set to the open state, (b) when the radio base station is set to the closed state and manages an access list in which the mobile station is set as an accessible mobile station, or ( c) when the radio base station is set to the closed state and manages an access list in which specific information indicating all mobile stations is set as information indicating the accessible mobile station. The state of the mobile base station cannot simultaneously be both open and closed, as the conditions are mutually exclusive. Based upon the broadest reasonable interpretation, the method of claim 8 ends when the base station is determined to be set open and the remaining steps are not reached (i.e. only step (a) above is performed). 2 The Examiner has found, and Appellants have not contested, Mukherjee's teachings of the base station being set to 2 The Board previously has construed similar method steps in this same manner. See, e.g., Ex parte Fleming, Appeal 2014-002849, 2014 WL 7146104 (PTAB Dec. 12, 2014) (expanded panel decision on rehearing), Ex parte Urbanet, Appeal 2011-002606, 2012 WL 4460637 (PTAB Sept. 19, 2012), and Ex parte Katz, Appeal 2010-006083, 2011 WL 514314 (BP AI Jan. 27, 2011). 4 Appeal2014-003615 Application 12/918,199 public meets the limitation of the base station being open. Ans. 11. Thus, Appellants' arguments have not persuaded us the Examiner erred in rejecting independent claim 8. We reach a different conclusion however with respect to device claims 1, 5, and 27. The broadest reasonable interpretation of a system claim having structure that performs a function, which only needs to occur if a condition precedent is met, still requires structure for performing the function should the condition occur. This interpretation of the system claim differs from the method claim because the structure (i.e., a processor programmed to perform an algorithm for carrying out the recited function should the recited condition be met) is present in the system regardless of whether the condition is met and the function is actually performed. Unlike claim 8, which is written in a manner that does not require all of the steps to be performed should the condition precedent not be met, claims 1, 5, and 2 7 are limited to the structure capable of performing all the recited functions. In other words, in this case, the system of claims 1, 5, and 27 are narrower in scope than the method of claim 8. Thus, in order to show anticipation a claim reciting structure that performs a function tied to a condition precedent, the Examiner must cite prior art that discloses or renders obvious such structure. Having determined that the broadest reasonable interpretation of independent claims 1, 5, and 27 requires structure which performed the three alternative steps we consider Appellants' arguments directed to the first three issues using claim 1 as representative of claims 1 through 3, 5, 6, and 27. 5 Appeal2014-003615 Application 12/918,199 Appellants' arguments directed to the first issue assert l\1ukherjee does not teach the access list includes information indicating all mobile stations. App. Br. 10-11. The Examiner finds Mukherjee discloses that the base station can be set to private, which meets the claimed closed state. Ans. 11, 15. Further, the Examiner finds that Mukherjee discloses that the base station, when set to private, may allow access to subscribed users and non- subscribed users (who can access to basic service such as voice, text and make emergency calls), thus providing access to all users. Ans. 15 (citing Mukherjee para. 36). The Examiner considers this disclosure of providing access to all users and the indication of the setting to meet the disputed claim. Ans. 16. We concur, and we note paragraph 36 of Mukherjee specifically states that the subscription can be implemented on the base station level, further demonstrating that the base station maintains information for all mobile stations. Thus, Appellants' argument directed to the first issue have not persuaded us of error in the Examiner's anticipation rejection of claim 1. Appellants' arguments directed to the second issue assert that Mukherjee describes the mobile device "camping" on a cell and does not teach location registration or any aspects of handover as claimed. App. Br. 11-12. We are not persuaded of error in the Examiner's rejection by this argument. Representative claim 1 does not recite handover, rather it recites location registration. Appellants' Specification discusses location registration as being used to assist in call signaling so that the appropriate base station signals the mobile unit for a call. Specification 4--5. Mukherjee similarly discloses that mobile devices are paged (a call signaling) by base stations on which they are camped. See Mukherjee paras. 25 and 26. Thus, 6 Appeal2014-003615 Application 12/918,199 Appellants' arguments directed to the second issue have not persuaded the Examiner erred in equating camping and location registration. Appellants' arguments directed to the third issue focus on the "emergency access" feature of Mukherjee and assert that it is not the same as the claimed access list that indicates all stations. App. Br. 12. We are not persuaded of error by these arguments. As discussed above, we concur with the Examiner's finding that Mukherjee discloses that the subscription can be implemented on the base station level, and that when set to private, the base station may be set to all access to all users, which includes text and voice service, not just emergency access as argued by Appellants. Thus, Appellants' arguments directed to the third issue have not persuaded us of error in the Examiner's rejection of claim 1. With respect to the fourth issue, as discussed above we concur with Appellants that the Examiner's claim interpretation with respect to claims 1, 15, and 27 is improper and the Examiner must show the prior art teaches all three conditions. However, the Examiner did find Mukherjee discloses all three conditions and Appellants' arguments have not persuaded us of error in those findings by the Examiner. Accordingly, we sustain the Examiner's rejection of independent claim 1 and the claims grouped with claim 1, claims 2, 3, 5, 6, and 27. 7 Appeal2014-003615 Application 12/918,199 DECISION The decision of the Examiner to reject claims 1 through 3, 5, 6, 8, and 2 7 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 8 Copy with citationCopy as parenthetical citation