Ex Parte Muniere

Patent Trial and Appeal Board

Apr 28, 2014

10634766 (P.T.A.B. Apr. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte VINCENT MUNIERE
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Appeal 2012-000601
Application 10/634,766
Technology Center 2600
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Before JOHN A. JEFFERY, CARL W. WHITEHEAD JR., and
JASON V. MORGAN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 2, 8-10, 16, 17, 23-25, and 34-36. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellant’s invention allocates packet mode resources in a mobile
radio system by including “cause data” specifying signaling data transfer
requirements in an Enhanced General Packet Radio Services (EGPRS)
packet channel request. See generally Spec. 15-16; Fig. 4. Claim 2 is
illustrative:
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2. A method of allocating packet mode resources in a mobile
radio system, said method comprising:
a mobile station sending to the network for signaling data
transfer requirements, an EGPRS (Enhanced General Packet
Radio Services) packet channel request
including cause data specifying signaling data transfer
requirements.

THE REJECTION
The Examiner rejected claims 2, 8-10, 16, 17, 23-25, and 34-36 under
35 U.S.C. § 102(e)1 as anticipated by Landais (US 2002/0080758 A1;
published June 27, 2002). Ans. 3-5.2

CONTENTIONS
The Examiner finds that Landais’ “EGPRS-capable” mobile phone, in
a one-phase process, sends to a network an EGPRS packet channel request
that is said to include “cause data” specifying signaling data transfer
requirements. Ans. 4, 6-10. To support this position, the Examiner cites a
standard discussed in Landais, namely the Global System for Mobile
Communication (GSM) Standard 3GPP TS 04.60 (“3GPP460”). Ans. 6-10.
Appellant argues that while 3GPP460 describes using an EGPRS
packet channel request, it is not sent for signaling data transfer requirements;
rather, a standard packet channel request is said to be used for this purpose.

1 Although this reference also qualifies as prior art under § 102(b) because it
published more than one year before the present application’s filing date of
August 6, 2003, we deem the Examiner’s error in this regard harmless as it
does not affect our assessment of the merits of the anticipation rejection.
2 Throughout this opinion, we refer to (1) the Appeal Brief filed May 5,
2011 (“App. Br.”); (2) the Examiner’s Answer mailed May 26, 2011
(“Ans.”); and (3) the Reply Brief filed October 18, 2011 (“Reply Br.”).
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Application 10/634,766

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App. Br. 12-13; Reply Br. 4-7. Appellant adds that Landais’ packet channel
request is not inherently an EGPRS packet channel request. App. Br. 13-15.
Appellant argues various other recited limitations summarized below.

ISSUES
Under § 102, has the Examiner erred by finding that Landais
discloses:
(1) a mobile station sending to a network, for signaling data transfer
requirements, an EGPRS packet channel request including cause data
specifying signaling data transfer requirements as recited in claim 2; and
(2) the signaling requirements include requirements for transferring
signaling messages recited in claims 9 and 10?

ANALYSIS
Claims 2, 8, 16, 17, 23-25, and 34-36
We begin by construing the key disputed limitation of representative
claim 2 that recites, in pertinent part, that an EGPRS packet channel request
includes “cause data” specifying signaling data transfer requirements. This
recitation of what the cause data specifies merely indicates its content—
content that constitutes non-functional descriptive material that does not
further limit the claimed invention or patentably distinguish over prior art
that otherwise renders the claims unpatentable.3 That claim 2 does not recite

3 See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also Ex parte
Nehls, 88 USPQ2d 1883, 1887-89 (BPAI 2008) (precedential) (discussing
cases pertaining to non-functional descriptive material).
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any elements that actually use this “cause data” to perform a particular
function only further bolsters this conclusion.
In any event, even if we were to give the cause data’s content
patentable weight, it is nevertheless quite broad in that EGPRS packet
channel request messages themselves effectively specify signaling data
transfer requirements, at least to the extent that associated data—signaling or
otherwise—comports with the EGPRS service.
Turning to the rejection, we first note that it is undisputed that the
3GPP460 standard relied upon by the Examiner is cited in Landais and
describes using an EGPRS packet channel request. App. Br. 12
(acknowledging this fact). Nor is it disputed that Landais discloses an
EGPRS-supported mobile station in paragraph 29. App. Br. 11.
The question, then, is whether Landais’ EGPRS-supported mobile
station necessarily sends an EGPRS packet channel request to a network,
and if so, whether that request includes cause data specifying signaling data
transfer requirements.
On this record, we find no error in the Examiner’s position in this
regard. First, the mobile station in Landais’ one-phase access procedure, on
which the Examiner principally relies, initially sends a packet channel
request message 1 to a network. Landais ¶¶ 0041, 0076-77; Fig. 1.
Although Landais does not explicitly state that this particular mobile station
is EGPRS-capable, the Examiner nonetheless finds as much based on
Landais’ references to (1) EGPRS-capable mobile stations in paragraph 29,
and (2) the 3GPP460 standard that describes one-phase access procedures in
connection with EGPRS mobile stations. Ans. 6-10 (citing 3GPP460 at 41).
In this scenario, the mobile station would send an associated EGPRS packet
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channel request message to the network as the Examiner indicates (id.), the
content of which is detailed on page 146 of the 3GPP460 standard.
Given the breadth of the recited “cause data” limitation noted above,
we see no error in the Examiner’s position that the data associated with
EGPRS packet channel requests used in connection with Landais’ EGPRS-
capable mobile stations contain some sort of “cause data” specifying
signaling data transfer requirements, at least to the extent that this data
comports with the EGPRS service. In that sense, the very transmission of
this EGPRS data to the network would effectively signal that this data
comports with the EGPRS standard and its data transfer requirements.
To be sure, page 146 of the 3GPP460 standard indicates that EGPRS
packet channel requests are used only for the three listed types of access
requests (including one-phase requests), and that standard packet channel
requests are used for all other purposes, including page responses, cell
updates, etc., as Appellant indicates. App. Br. 12; Reply Br. 5-7. Still,
nothing in the claim precludes the acknowledged “user data” of the
transmitted EGPRS packet channel request messages from anticipating the
recited “cause data” limitation, not only due to the non-functional aspects of
this data’s content noted above, but also its breadth. Appellant’s attempt to
distinguish the EGPRS packet channel request’s “user data” from the recited
“signaling data” that is said to be included in standard packet channel
requests (App. Br. 6) is unavailing, for these arguments are not
commensurate with the scope of the claim that does not preclude such “user
data.”
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Therefore, we are not persuaded that the Examiner erred in rejecting
representative claim 2, and claims 8, 16, 17, 23-25, and 34-36 not argued
separately with particularity.4

Claims 9 and 10
We likewise sustain the Examiner’s rejection of claims 9 and 10.
Both claims depend from claim 8 that calls for the signaling data transfer
requirements to include requirements for transferring signaling messages in
accordance with a mobility management protocol. Claims 9 and 10 specify
particular types of signaling messages, namely cell update messages and
paging response messages, respectively.
Although these claims specify these particular types of messages,
claim 8, from which claims 9 and 10 depend, merely requires that the
signaling data transfer requirements include requirements for transferring
signaling messages. Nothing in these claims precludes the requirements
associated with transferring data and associated messages under the EGPRS
standard noted above. These EGPRS-based requirements, like those recited
in claim 1, are fully met by transmitting EGPRS packet channel request data
to a network which would effectively signal that this data comports with the
EGPRS standard and its data transfer requirements. Appellant’s arguments
(App. Br. 15-16) are unavailing and not commensurate with the scope of the
claims.

4 We note in passing that no antecedent basis exists for “the network” in line
3 of independent claims 2 and 16. We leave to the Examiner to determine
whether this issue renders those claims and their dependent claims indefinite
under § 112(b).
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CONCLUSION
The Examiner did not err in rejecting claims 2, 8-10, 16, 17, 23-25,
and 34-36 under § 102.

DECISION
The Examiner’s decision rejecting claims 2, 8-10, 16, 17, 23-25, and
34-36 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)(1)(iv).

AFFIRMED

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