Ex Parte Nakamata et alDownload PDFPatent Trial and Appeal BoardDec 23, 201612526600 (P.T.A.B. Dec. 23, 2016) 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. 12/526,600 11/16/2009 Masatoshi Nakamata 859.0082.U1 (US) 7588 10948 7590 12/28/2016 Harrington & Smith, Attorneys At Law, LLC 4 Research Drive, Suite 202 Shelton, CT 06484 EXAMINER D AGOSTA, STEPHEN M ART UNIT PAPER NUMBER 2643 NOTIFICATION DATE DELIVERY MODE 12/28/2016 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): USPTO@hspatent.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 MASATOSHINAKAMATA and WOONHEE HWANG Appeal 2016-003601 Application 12/526,600 Technology Center 2600 Before JASON V. MORGAN, AARON W. MOORE, and DAVID J. CUTITTAII, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-003601 Application 12/526,600 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 39-46, 48—56, 58, 60, and 61, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. THE INVENTION The application is directed to “a method comprising receiving cell- related information from a first access node at a second access node, and using the cell-related information during ... a handover.” (Abstract.) Claim 39, reproduced below, is exemplary: 39. A method, comprising: receiving at a source base station directly from a neighboring base station via an X2 interface for communication between the source base station and the neighboring base station using an X2 application protocol information regarding an availability and capability of at least one cell controlled by the neighboring base station to support one or more features, where the at least one cell is neighbor to a second cell controlled by the source base station, the source base station is currently connected and communicating with a user equipment, and the user equipment is not yet connected and communicating with the neighboring base station, and wherein the information is received as a result of a triggering event associated with the neighboring base station and the neighboring base station is a target base station for connecting and communicating with the user equipment after a handover operation; and using the received information by the source base station to determine, prior to the user equipment connecting and 1 Appellants identify Nokia Corporation as the real party in interest. (See App. Br. 2.) 2 Appeal 2016-003601 Application 12/526,600 communicating with the neighboring base station, the removal of a first cell of the at least one cell from a cell list of handover candidate cells for communicating with the user equipment after the handover operation, wherein the removal of the first cell is based on the information from the neighbor base station received via the X2 interface indicating that the first cell is not available. THE REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: US 6,178,327 B1 US 6,201,968 B1 US 2001/0007819 A1 US 7,072,652 B2 US 7,630,718 B2 Gomez Ostroff et al. Kubota Stephens Choi Jan. 23, 2001 Mar. 13, 2001 July 12, 2001 July 4, 2006 Dec. 8, 2009 3rd Generation Partnership Project, Technical Specification, Group Radio Access Network; Evolved UTRA and UTRAN; Radio Access Architecture and Interfaces (Release 7), 3GPP TR R3.018 V0.6.0 (Oct. 2006) (“TR 3.018”) THE REJECTION Claims 39-46, 48—56, 58, 60, and 61 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Choi, Kubota, Stephens, TR R3.018, and Ostroff or Gomez. (See Final Act. 3—13.) ANALYSIS Appellants’ claims are generally directed to a system in which a source base station receives, directly from a neighboring base station and in response to a triggering event, information regarding the availability and 3 Appeal 2016-003601 Application 12/526,600 capability of a cell controlled by the neighboring base station while user equipment is connected to and communicating with the source base station. The source base station uses the information to determine removal of a cell from a list of candidate cells for communicating with the user equipment after a handover. Claims 39—41, 44—46, 48—51, 54, 55, 58, 60, and 61 The Examiner finds claim 39 obvious in view of Choi, Kubota, Stephens, TR R3.018, and Ostroff or Gomez. (Final Act. 3—6.) Specifically, the Examiner finds that “Choi teaches measurements being sent to the (source) Base Station and the secondary references teach that similar information can come from other (neighboring) base stations.” (Ans. 6.) Appellants challenge this rejection on the following grounds: 1. “Choi does not disclose that a neighboring base station is transmitting the signal strength list directly to a source base station, as appears to be asserted in the rejection.” (App. Br. 8— 9.) 2. “[Ejven if Kubota teaches that base stations communicate between each other before the mobile connects to the target base station, there is still nothing in this combination of references that would have suggested ... at least the claimed features where a source base station receives directly from a neighboring base station information regarding an availability and capability of at least one cell controlled by the neighboring base station to support one or more features; where the source base station uses the received information to determine, prior to the user equipment connecting and communicating with the 4 Appeal 2016-003601 Application 12/526,600 neighboring base station, the removal of a first cell of the at least one cell from a cell list of handover candidate cells for communicating with the user equipment after the handover operation.” (App. Br. 15—17.) 3. “Choi teaches away from the claimed subject matter.” (App. Br. 14—15.) 4. “[Tjhere is clear error in rejecting the claims based on a combination of multiple references where the primary reference, Choi, would have to be modified in a manner that changes the principle of operation of the prior art invention being modified.” (App. Br. 22.) 5. “[Tjhere is no suggestion to combine the references as the examiner is attempting to do (at least not until after reading applicants’ patent application).” (App. Br. 22.) We find Appellants’ arguments insufficient to show error on the part of the Examiner. The arguments regarding the teachings of Choi and Kubota are not persuasive because, as the Examiner points out (see Ans. 8), they attack the references individually, rather than the combination as whole. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants’ “teaching away” argument is not persuasive because merely teaching a different way (receiving the information from the user equipment instead of from the neighboring base station) is not teaching away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a 5 Appeal 2016-003601 Application 12/526,600 teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”). The “change the principle of operation” argument fails to show error because the Examiner’s modification changes an aspect of Choi’s system (the source of the information) but not Choi’s principle of operation, which is to move the user equipment to an appropriate neighbor cell. Finally, Appellants’ argument that the combination lacks the required motivation is not persuasive of error because Appellants do not address the motivation identified by the Examiner. (See Final Act. 6.) For these reasons, we sustain the rejection of claim 39, as well as the rejections of claims 40, 41, 44^46, 48—51, 54, 55, 58, 60, and 61, for which no additional arguments are offered. Claim 56 Independent claim 56 is similar to independent claim 39, except that it is directed to sending information from the neighboring base station instead of receiving information at the source base station. Appellants argue the claim is patentable over the combination because “[tjhere is nothing in Choi that suggests that a neighboring base station determines information corresponding to at least one cell controlled by the neighboring base station, where the information is regarding an availability and capability of the at least one cell to support one or more features.” (App. Br. 24.) We are not persuaded of error because Appellants are again merely arguing the references individually and, therefore, sustain the rejection of claim 56. Claims 42 and 52 Dependent claims 42 and 52 recite that “the triggering event comprises a hardware failure in one or more cells controlled by the 6 Appeal 2016-003601 Application 12/526,600 neighboring base station.” We agree with the Examiner that it would have been obvious to one skilled in the art to use a hardware failure (such as failure of a cell) as the trigger for sending information about the availability of a cell (such as it not being available due to the failure) and, therefore, sustain the rejection of claims 42 and 52. Claims 43 and 53 Dependent claims 43 and 53 recite that “the information received from the neighboring base station comprises information that a feature is not supported by a cell of the at least one cell and where the received information is used to initiate a handover to another cell with a request not to execute the feature not supported.” Appellants argue “[tjhere is nothing in any of the cited references that suggests] that. . . [the] information is used to initiate a handover to another cell with a request not to execute the feature not supported.” (App. Br. 27—28.) We agree. The portions of the references cited by the Examiner describe determining cells that support certain features or are suitable, but lack any teaching or suggestion of including “a request not to execute the feature not supported.” We thus decline to sustain the rejections of claims 43 and 53. 7 Appeal 2016-003601 Application 12/526,600 DECISION The rejections of claims 39-42, 44-46, 48—52, 54—56, 58, 60, and 61 are affirmed. The rejections of claims 43 and 53 are reversed. 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). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation