Ex Parte Nylander et alDownload PDFPatent Trial and Appeal BoardSep 21, 201612991502 (P.T.A.B. Sep. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/991,502 11/08/2010 27820 7590 09/23/2016 WITHROW & TERRANOVA, PLLC 106 Pinedale Springs Way Cary, NC 27511 FIRST NAMED INVENTOR Tomas Nylander 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. 3000-488 9442 EXAMINER HOANG, THAI D ART UNIT PAPER NUMBER 2463 NOTIFICATION DATE DELIVERY MODE 09/23/2016 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): patents@wt-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOMAS NYLANDER, MATS BUCHMAYER, and JARI VIKBERG Appeal2015-004677 Application 12/991,502 1 Technology Center 2400 Before LARRY J. HUME, SCOTT B. HOW ARD, and MATTHEW J. McNEILL, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-8 and 14--17. Appellants have withdrawn claims 9-13 from consideration. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 According to Appellants, the real party in interest is Telefonaktiebolaget LM Ericsson (publ). App. Br. 2. Appeal2015-004677 Application 12/991,502 STATEMENT OF THE CASE2 The Invention Appellants' disclosed and claimed "invention relates to a method and arrangement in a telecommunication system, in particular to paging optimization in an evolved UTRAN (E-UTRAN) applying so called Home eNodeBs ... [and m]ore particularly, the present invention relates to methods and arrangements in a gateway node and a core network node for paging a communication device." Spec. 1, 11. 5-9 ("Technical Field"). Exemplary Claims Claims 1 and 2, reproduced below, are representative of the subject matter on appeal (emphases added to contested limitations): 1. A method in a gateway node for forwarding a page message to a communication device, wherein the gateway node serves a plurality of radio base stations, wherein a radio communication system comprises the gateway node; the communication device and said plurality of radio base stations, the method comprising: receiving the page message and a list of Closed Subscriber Group (CSG) Identities, in conjunction therewith, wherein each of the CSG Identities is indicative of which radio base stations among said plurality of radio base stations the communication device is allowed to access; 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed Feb. 19, 2014); Examiner's Answer ("Ans.," mailed June 6, 2014); Final Office Action ("Final Act.," mailed Aug. 21, 2013); and the original Specification ("Spec.," filed Nov. 8, 2010). We note Appellants did not file a Reply Brief in response to the factual findings and legal conclusions in the Examiner's Answer. 2 Appeal2015-004677 Application 12/991,502 selecting, based on the list of CSG Identities received in conjunction with the received page message, a subset of radio base stations among said plurality of radio base stations; and forwarding the page message to each radio base station in the selected subset of radio base stations, whereby the communication device is paged only via radio base stations that the communication device is allowed to access. 2. The method according to Claim 1, further configuring the gateway node, before receiving the page message, to select the subset of radio base stations based on the list of CSG Identities that will be received in conjunction with the page message. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Gupta et al. ("Gupta") US 2009/0094680 Al Apr. 9, 2009 Rejections on Appeal RI. Claim 2 stands rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Ans. 3. R2. Claims 1-8 and 14-17 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Gupta. Ans. 4. ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments that Appellants could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv). 3 Appeal2015-004677 Application I2/99I,502 We agree with particular arguments advanced by Appellants with respect to the indefiniteness Rejection RI of claim 2 and anticipation Rejection R2 of claim I for the specific reasons discussed below. We highlight and address specific findings, arguments, and conclusions regarding claims I and 2 for emphasis as follows. 1. § I I2, iJ 2 Rejection RI of Claim 2 Issue 1 Appellants argue (App. Br. I 0) the Examiner's rejection of claim 2 under 35 U.S.C. § I I2, second paragraph, as being indefinite is in error. These contentions present us with the following issue: Did the Examiner err in concluding "[i]t is confusing how 'to select the subset of radio base stations based on the list of CSG Identities that will be received in conjunction with the page message' 'before receiving the page message', wherein the page message comprises the list of CSG [Closed Subscriber Group]," in connection with the definiteness of dependent claim 2 under§ I I2? Ans. 3--4. Analysis Appellants contend: Claim 2 is about configuring the gateway node to be able to perform a selection step once the CSG identities are received with the page message. The gateway node would need to be so configured so that once the page message and CSG identities are received, it can perform other steps. This claim appears clear on its face, and Applicants respectfully request reconsideration and allowance of the claim. App. Br. IO (emphasis added). 4 Appeal2015-004677 Application 12/991,502 While Appellants' argument appears to be conclusory, relating to preparatory configuration actions to be taken by the gateway node in advance of receiving the page message and the actual CSG Identities list, we do not agree with the Examiner's conclusion that the current recitation of claim 2 is confusing, and reasonably interpreted as being inconsistent with the recitations of claim 1. "[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim ... indefinite." Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008) (precedential). See also In re Packard, 751F.3d1307, 1324 (Fed. Cir. 2014), (J. Plager concurring) ("In my view (and that of the per curiam court), it is within the authority of the USPTO to so interpret the applicable standard"). We disagree with the Examiner's conclusion of indefiniteness because claim 1, from which claim 2 depends, recites "receiving the page message and a list of Closed Subscriber Group (CSG) Identities, in conjunction therewith" (emphasis added), which can reasonably be interpreted as the list of CSG Identities being received at the same time as the page message. Dependent claim 2 recites, "configuring the gateway node, before receiving the page message, to select the subset of radio base stations based on the list of CSG Identities that will be received .... " Thus, claim 2 does not require, and explicitly disclaims, the page message needing to be received in order to configure the gateway node. We read this limitation as merely requiring preparatory action to configure the 5 Appeal2015-004677 Application 12/991,502 gateway node to account for the fact that CSG Identities will be received in the future. 3 Therefore, on this record, we are persuaded of at least one error in the Examiner's resulting legal conclusion of indefiniteness of dependent claim 2. 2. § 102(e) Rejection R2 of Claims 1-8 and 14--17 Issue 2 Appellants argue (App. Br. 10-12) the Examiner's rejection of claim 1 under 35 U.S.C. § 102(e) as being anticipated by Gupta is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art discloses a "method in a gateway node for forwarding a page message to a communication device" that includes, inter alia, the steps of "receiving the page message and a list of Closed Subscriber Group (CSG) Identities, in conjunction therewith; wherein each of the CSG Identities is indicative of which radio base stations among said plurality of radio base stations the communication device is allowed to access," and "forwarding the page message to each radio base station in the selected subset of radio base stations, whereby the communication device is paged only via radio base stations that the communication device is allowed to access," as recited in claim 1? Analysis Appellants contend, "Gupta has not been shown to disclose a network node that forwards any message to a selected subset of radio base stations. 3 Although not before us on Appeal, we leave it to the Examiner to determine whether claim 2 meets the enablement requirement of 35 U.S.C. § 112, first paragraph. 6 Appeal2015-004677 Application 12/991,502 Instead, in Gupta, the communication device (or access terminal - a mobile phone) requests access to an access point that it may or may not have access to .... The access point must then determine whether to grant access based on the access list ... [but] in the present claims, no determination is made because only radio base stations that have been selected will page the communications device." App. Br. 11 (citing Gupta i-fi-153-54). In particular, Appellants contend Gupta does not disclose "receiving" or "forwarding" a page message, as claimed. Id. Anticipation of a claim under 35 U.S.C. § 102 occurs when each claimed element and the claimed arrangement or combination of those elements is disclosed, inherently or expressly, by a single prior art reference. Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). A reference inherently discloses an element of a claim "if that missing characteristic is necessarily present, or inherent, in the single anticipating reference." Schering Corp. v. Geneva Pharms.; 339 F.3d 1373; 1377 (Fed. Cir. 2003) (citation omitted) (emphasis added). "Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." Therasense, 593 F.3d at 1332 (citing Cont'! Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264,1269 (Fed. Cir. 1991)). We agree with Appellants' arguments, and disagree with the Examiner's findings regarding the disclosure of Gupta. We disagree with the Examiner because, while Gupta generally discloses access control, there is no explicit disclosure of a page message, nor is there any evidence of record that would support a finding that such a page message is inherently disclosed by the disclosure of Gupta. 7 Appeal2015-004677 Application 12/991,502 Therefore, based upon the findings above, on this record, we are persuaded of at least one error in the Examiner's reliance on the cited prior art to disclose the disputed "page message" limitations of claim 1, such that we cannot sustain the Examiner's anticipation rejection of independent claim 1, or independent claim 8 which recites the contested limitations in commensurate form. For the same reasons, we cannot sustain the anticipation rejection of dependent claims 2-8 and 14--17 which variously depend from claims 1 and 8. CONCLUSIONS (1) The Examiner erred with respect to indefiniteness Rejection RI of claim 2 under 35 U.S.C. § 112, second paragraph, and we do not sustain the rejection. (2) The Examiner erred with respect to anticipation Rejection R2 of claims 1-8 and 14--17 under 35 U.S.C. § 102(e) over the cited prior art of record, and we do not sustain the rejection. DECISION We reverse the Examiner's decision rejecting claims 1-8 and 14--17. 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). REVERSED 8 Copy with citationCopy as parenthetical citation