Ex Parte Nguyen et al

Patent Trial and Appeal Board

Oct 27, 2015

12008599 (P.T.A.B. Oct. 27, 2015)

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.
12/008,599 01/11/2008 John C. Nguyen LUTZ 2 00560 2205
48116 7590 10/27/2015
FAY SHARPE/LUCENT
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
EXAMINER
ZEWARI, SAYED T
ART UNIT PAPER NUMBER
2641
MAIL DATE DELIVERY MODE
10/27/2015 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 JOHN C. NGUYEN, DAVID S. BENCO, and
PARESH KANABAR
____________

Appeal 2013-009670
Application 12/008,599
Technology Center 2600
____________

Before JEAN R. HOMERE, JOHN A. EVANS,
and DANIEL J. GALLIGAN, Administrative Patent Judges.

GALLIGAN, Administrative Patent Judge.

DECISION ON APPEAL1

Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Non-Final Rejection of claims 1–12. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 Our Decision refers to Appellants’ Appeal Brief filed (“Br.”) filed
February 25, 2013; Examiner’s Answer mailed May 6, 2013 (“Ans.”); and
Non-Final Office Action filed January 25, 2012 (“Non-Final Act.”).
2 Appellant identifies Lucent Technologies, Inc. as the real party in interest.
Br. 1.
Appeal 2013-009670
Application 12/008,599

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STATEMENT OF THE CASE
Claims on Appeal
Claims 1 and 7 are independent claims. Claim 1 is reproduced below:
1. A method for paging a mobile station served by a wireless
telecommunications network, the method comprising:

(a) remembering a last known location of the mobile station;

(b) implementing a first paging strategy for the mobile station
within a first collection of cells served by a first mobile
switching center; and

(c) if a response to the first paging strategy is not received by
the first mobile switching center, then:

(d) selecting one or more cells served by a second mobile
switching center based upon the last known location of the
mobile station;

(e) identifying the selected cells in an intersystem paging
request;

(f) forwarding the intersystem paging request from the first
mobile switching center to the second mobile switching center;
and

(g) in response to the second mobile switching center receiving
the intersystem paging request, paging the mobile station in
those cells served by the second mobile switching center which
are identified in the intersystem paging request.

Br. 11 (Claim Appendix).
The prior art relied upon by the Examiner in rejecting the claims on
appeal:
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Application 12/008,599

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Munje US 2005/0192034 A1 Sept. 1, 2005
Rajkotia et al. US 7,512,403 B2 Mar. 31, 2009
Examiner’s Rejections
Claims 1–4 and 6–10 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Munje. Non-Final Act. 5–8.
Claims 5, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Munje and Rajkotia. Non-Final Act. 8–10.

ANALYSIS
Claim 1
Appellants argue that the Examiner relies on two distinct and
unrelated embodiments in Munje to show anticipation of claim 1. Br. 5.
More specifically, Appellants contend the Examiner relies on “elements
from the embodiment depicted in Figure 6 as well as elements from the
embodiment depicted in Figure 7 of Munje.” Id.
Nevertheless, claim 1 recites a condition “if a response to the first
paging strategy is not received by the first mobile switching center, then,”
steps (d)–(g) are performed. Alternatively, dependent claim 6 explicitly
recites “wherein steps (d) through (g) are not executed if a response to the
first paging strategy is received by the first mobile switching center.”
“As under the broadest [reasonable interpretation], the steps
dependent on the ‘if’ [condition] would not be invoked, the Examiner was
not required to find these limitations in the prior art in order to render the
claims [anticipated].” Ex parte Katz, 2011 WL514314, 4 (BPAI 2011).
Therefore, here, under the broadest reasonable interpretation, steps (d)–(g)
of claim 1 conditioned on a non-required operation are not limiting and are,
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Application 12/008,599

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in effect, optional if a response to the first paging strategy is received by the
first mobile switching center.
Thus, the Examiner is required to find limitations (a) and (b) of claim
1, not subject to the “if” condition, in Munje. The Examiner relies upon on
Figure 6, but not Figure 7, of Munje (i.e., one embodiment) to disclose
limitations (a) and (b) of claim 1. Non-Final Act. 5 (citing Munje ¶¶ 46–47).
Because the Examiner has found elements arranged in Munje as set forth in
limitations (a) and (b) of claim 1, and Appellants do not argue error in these
findings, we find no error in the Examiner’s rejection of claim 1.
Based upon the foregoing, we sustain the rejection of claim 1 as well
as the rejections of claims 2–4 and 6, for which no additional persuasive
arguments have been presented. Br. 8. We likewise sustain the rejection of
claim 5, for which no additional persuasive arguments have been presented.
Br. 9.

Claim 7
As discussed above, Appellants argue that the Examiner relies on two
distinct and unrelated embodiments in Munje to show anticipation of claim
7. Br. 5. More specifically, Appellants contend the Examiner relies on
“elements from the embodiment depicted in Figure 6 as well as elements
from the embodiment depicted in Figure 7 of Munje.” Id.
The Examiner finds that the embodiment of Figure 6 and Figure 7 are
analogous and that Figure 7 is a more detailed version of Figure 6. Ans. 3–
4. We disagree. Munje distinguishes the embodiment in Figure 7 from that
in Figure 6. See Munje ¶ 51 (“[T]he first network does not request
forwarding [by the second network] of a first network page, but instead
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reserves the paging function for itself, and asks the second network to relay
a request for the mobile to listen for a page on the first network.”). We are
persuaded the Examiner has not demonstrated Munje discloses the
limitations as set forth in claim 7.
Claim 7 is directed to a network in which:
if a response to the first paging strategy is not returned
from the MS, then:
the first MSC selects one or more cells served by the
second MSC based upon a last known location of the MS;
the selected cells are identified in an intersystem page
request (IPR) that is forwarded to the second MSC; and
the second MSC pages the MS in the cells identified in
the IPR.
Br. 12–13 (Claims Appendix). The Examiner finds Munje’s disclosure of
the first network’s sending a “location area identifier” to the second network
discloses the first MSC’s selecting cells served by the second MSC and
identifying those cells in an intersystem page request (IPR). Non-Final Act.
7 (citing Munje, Fig. 7 (610), Fig. 6 (510), ¶¶ 47, 53). However, the
Examiner has not demonstrated that the second network pages the cells
identified by the location area identifier. Rather, in both Figures 6 and 7,
Munje discloses the second network uses the location area identifier to
generate an “intersection area” of cells to page. Munje, Fig. 6 (520, 530),
Fig. 7 (620, 630), ¶¶ 48, 53). Thus, we are persuaded the Examiner has not
demonstrated Munje discloses that “the second MSC pages the MS in the
cells identified in the IPR,” as recited in claim 7.
As such, we do not sustain the rejection of claim 7, as well as the
rejections of claims 8–12, which depend from claim 7.

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DECISION
We affirm the Examiner’s rejections of claims 1–6; however, we
reverse the Examiner’s rejections of claims 7–12.
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-IN-PART

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