Ex Parte Mika et al

Patent Trial and Appeal Board

May 22, 2018

14419582 (P.T.A.B. May. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/419,582 03/03/2015
11051 7590 05/24/2018
Squire Patton Boggs (US) LLP
Nokia Technologies Oy
8000 Towers Crescent Drive, 14th Floor
Vienna, VA 22182
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Rinne Mika
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.
059864.02487 5483
EXAMINER
WEI, SIREN
ART UNIT PAPER NUMBER
2467
NOTIFICATION DATE DELIVERY MODE
05/24/2018 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):
sonia.whitney@squirepb.com
ipgeneraltyc@squirepb.com
nokia.ipr@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RINNE MIKA, YANG LIU, HAITAO LI,
SEPPO ILMARI VESTERINEN, and VESELY ALEXANDER
Appeal2018-000919
Application 14/419,582
Technology Center 2400
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and JUSTIN BUSCH,
Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 29-48, which constitute all the claims
pending in this application. Claims 1-28 were cancelled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as "Nokia Technologies Oy."
App. Br. 2. "Nokia Corporation" is the Applicant for the instant patent
application. See Bib. Data Sheet.
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Application 14/419,582
STATEMENT OF THE CASE
Appellants' invention detects the availability of a wireless local area
network (WLAN) by a user equipment (UE) in a wireless wide area network
(WWAN). Spec. i-f 72; Fig. 5. The UE transfers into a WLAN available
state if the WLAN is available to the UE. Spec. i-f 73. The UE otherwise
transfers into a WLAN unavailable state. Id. "[E]ntry of the UE into the
[WLAN] available state or into the [WLAN] unavailable state is
independent of a concurrent [radio resource control (RRC)] state of the UE."
Id. Claim 29, reproduced below, is illustrative:
29. A method, comprising:
detecting, by a user equipment in a wireless wide area
network, availability of a wireless local area network;
transferring into a wireless local area network available
state if the wireless local area network is available; and
transferring into a wireless local area network
unavailable state if the wireless local area network is
unavailable,
wherein the transferring into the wireless local area
network available or unavailable state is independent of a
concurrent radio resource control state of the user equipment.
THE REJECTIONS
The Examiner rejected claims 29, 31, 33, 34, 39, 41, 43, 44, 48 under
35 U.S.C. § 103(a) as unpatentable over Feng et al. (US 2007/0082671 Al,
published Apr. 12, 2007) and Anchan et al. (US 2012/0290686 Al,
published Nov. 15, 2012). Final Act. 4--7. 2
2 Throughout this opinion, we refer to (1) the Final Office Action mailed
April 3, 2017 ("Final Act."); (2) the Appeal Brief filed August 31, 2017
("App. Br."); (3) the Examiner's Answer mailed October 11, 2017 ("Ans.");
and (4) the Reply Brief filed November 6, 2017 ("Reply Br.").
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The Examiner rejected claims 30 and 40 under 35 U.S.C. § 103(a) as
unpatentable over Feng, Anchan, and Jones et al. (US 2005/0181779 Al,
published Aug. 18, 2005). Final Act. 7-8.
The Examiner rejected claims 32 and 42 under 35 U.S.C. § 103(a) as
unpatentable over Feng, Anchan, and Pani et al. (US 2008/0212561 Al,
published Sept. 4, 2008). Final Act. 8.
The Examiner rejected claims 35-37 and 45--47 under 35 U.S.C.
§ 103(a) as unpatentable over Feng, Anchan, and Schmidt et al. (US
2013/0137469 Al, published May 30, 2013). Final Act. 9-12.
The Examiner rejected claim 38 under 35 U.S.C. § 103(a) as
unpatentable over Feng, Anchan, Schmidt, and Chen (US 2003/0207702 Al,
published Nov. 6, 2003). Final Act. 12-14.
THE OBVIOUSNESS REJECTION OVER FENG AND ANCHAN
The Examiner finds Feng discloses many recited elements of
independent claim 29 including, among other things, transferring into a
WLAN available state and WLAN unavailable state if a WLAN is,
respectively, available and unavailable. Final Act. 4--5. The Examiner
further finds the transferring into the WLAN available state and the WLAN
unavailable state "'is independent' of a concurrent RRC state, which would
be encompassed by the RRC state non-dependence disclosed by Feng and
Anchan." Ans. 6.
Appellants argue Feng's transfers into a WLAN available state and a
WLAN unavailable state are not independent of a concurrent RRC state of a
UE. App. Br. 9. According to Appellants, Feng's transfer of a UE into
WLAN available and unavailable states depends on a WW AN state because
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selecting a state based on WLAN directly impacts state in WW AN. Id.
Appellants add that Anchan's transitioning between RRC sub-states depends
on the UE being in an RRC connected mode. Id.
ISSUE
Under§ 103(a), has the Examiner erred in rejecting claim 29 by
finding that Feng and Anchan collectively would have taught or suggested
transferring into a WLAN available or unavailable state is independent of a
concurrent RRC state of a UE?
ANALYSIS
Claims 29, 31, 33, and 34
To resolve the question of patentability under§ 103, we begin by
construing claim 29. During examination, claims are given their broadest
reasonable interpretation consistent with the specification. See In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Claim 29
recites two clauses: (1) transferring into a WLAN available state if the
WLAN is available, and (2) transferring into a WLAN unavailable state if
the WLAN is unavailable. Claim 29's two clauses are similar to the
conditional limitations discussed in Ex parte Schulhauser, No. 2013-007847,
2016 WL 6277792 (PTAB Apr. 28, 2016) (precedential) (rendering claim
limitations conditional by the recitation of "if'). See also MANUAL OF
PATENT EXAMINING PROCEDURE (MPEP) § 2111.04(II) (9th ed. Rev.
08.2017, Jan. 2018) (citing Schulhauser). Despite the two clauses being
conditional limitations, these are the only two possibilities of the WLAN-
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either the WLAN is available or it is not. Thus, one clause from these two
clauses needs to occur in the prior art to meet claim 29-not both.
And one clause from these two clauses must occur in the prior art to
meet the disputed limitation of claim 29, which recites that the transferring
into the WLAN available state or the WLAN unavailable state is
independent of a concurrent RRC state of the UE. The Examiner finds, and
we agree, that Feng discloses the first clause-transferring into the WLAN
available state ifthe WLAN is available. Final Act. 4 (citing Feng i-fi-121-23,
Fig. 2).
Feng is directed to a handover of a mobile terminal with dual WLAN
and WW AN interfaces. Feng, Abstract. Upon determining a WLAN
interface is available while the mobile terminal has entered a WWAN active
state, the mobile terminal transfers into a WWAN-to-WLAN state. Id. i123.
Thus, Feng' s method transfers into a WW AN-to-WLAN state (the claimed
"WLAN available state") if the WLAN interface is available.
The ordinary meaning of "independent" is "not dependent: as ... b
(1) : not requiring or relying on something else." MERRIAM-WEBSTER'S
COLLEGIATE DICTIONARY 591 (adj. def. 1) (10th ed. 1993). Thus,
transferring into a WLAN available or unavailable state independent of a
UE's concurrent RRC state is a transfer not dependent on a UE's concurrent
RRC state. The Examiner finds "RRC state non-dependence [is] disclosed
by Feng and Anchan, as [Feng's] WLAN available state is not disclosed to
change or depend on UE RRC mode/state." Ans. 6. We see no error in the
Examiner's reliance on Feng to show that transferring into a WLAN
available or unavailable state is not dependent on a concurrent RRC state,
such as Anchan's RRC state. In short, Appellants have not provided any
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evidence or technical reasoning showing that Feng's transfer into a WLAN
available state somehow depends on an RRC state, such as Anchan's RRC
state, let alone a concurrent RRC state. To the contrary, Appellants
repeatedly assert "Feng makes no mention ofRRC states." App. Br. 9, 15,
20; Reply Br. 4. To the extent that Feng's transfer into a WLAN available
state depends on a concurrent RRC state, such as Anchan's RRC state, we
cannot say on this record. Nor will we speculate in that regard here in the
first instance on appeal.
Therefore, we are not persuaded that the Examiner erred in rejecting
independent claim 29, and claims 31, 33, and 34 not argued separately with
particularity. 3
Claims 39, 41, 43, 44, and 48
We also sustain the Examiner's obviousness rejection of independent
claims 39 and 48. Ans. 12-17. Independent claim 39 is directed to an
apparatus comprising at least one processor and at least one memory
including computer program instructions to perform the recited availability
detection and transfer limitations similar to those recited in claim 29.
Independent claim 48 is directed to a computer program product comprising
at least one non-transitory computer readable storage medium having
computer readable program code instructions to perform similar limitations.
The broadest reasonable interpretation of an apparatus and product claim
3 Although Appellants nominally argue the Examiner's rejection of claims
31, 33, and 34 separately (see App. Br. 10-12), Appellants reiterate
arguments similar to those for claim 29, which we find to be unpersuasive
for the reasons previously discussed. We, therefore, group these claims with
claim 29.
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with structure that performs a function that need only occur if a condition
precedent is met still requires structure for performing the function should
the condition occur. See Schulhauser at 14--15. Therefore, our
interpretation of apparatus claims 39 and 48 differ from method claim 29
because their structure, namely the hardware configured to perform the
recited functions, is present in the system regardless of whether the only two
possibilities of the WLAN discussed above are met and the function is
actually performed.
The Examiner further finds, and we agree, that Feng discloses the
second clause-transferring into a WLAN unavailable state if the WLAN is
unavailable. Final Act. 4 (citing Feng i-fi-121-23, Fig. 2). Upon determining
a WLAN interface is available while the mobile terminal has entered a
WW AN idle state, the mobile terminal transfers into a WLAN idle state. Id.
i123. Thus, Feng's method transfers into a WLAN idle state (the claimed
"WLAN unavailable state") ifthe WLAN interface is unavailable.
For the reasons discussed above, Appellants have not provided any
evidence or technical reasoning showing that Feng's transfer into a WLAN
unavailable state somehow depends on an RRC state, such as Anchan's RRC
state, let alone a concurrent RRC state. Nor will we speculate in that regard
here in the first instance on appeal.
Therefore, we are not persuaded that the Examiner erred in rejecting
independent claims 39 and 48, and claims 41, 43, and 44 not argued
separately with particularity. 4
4 Although Appellants nominally argue the Examiner's rejection of claims
41, 43, and 44 separately (see App. Br. 16-21), Appellants reiterate
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THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner's obviousness rejections of claims 30,
32, 35-38, 40, 42, and 45--47. Final Act. 7-14. Despite nominally arguing
these claims separately, Appellants reiterate similar arguments made
previously and allege that the additional cited references fail to cure those
purported deficiencies. App. Br. 21-26. We are not persuaded by these
arguments for the reasons previously discussed.
CONCLUSION
The Examiner did not err in rejecting claims 29--48 under 103(a).
DECISION
The Examiner's decision in rejecting claims 29--48 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). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
arguments similar to those for claims 39 and 48, which we find to be
unpersuasive for the reasons previously discussed. We, therefore, group
these claims with claims 39 and 48.
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