Ex Parte Shaheen

Patent Trial and Appeal Board

Nov 23, 2016

13412198 (P.T.A.B. Nov. 23, 2016)

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.
13/412,198 03/05/2012 Kamel M. Shaheen ITC-2-900US03 6688
24374 7590 11/28/2016
VOLPE AND KOENIG, P.C.
DEPT. ICC
UNITED PLAZA
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103
EXAMINER
MIAH, LITON
ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
11/28/2016 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):
eoffice @ volpe-koenig. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAMEL M. SHAHEEN
Appeal 2014-009164
Application 13/412,198
Technology Center 2600
Before ST. JOHN COURTENAY III, CARLA M. KRIVAK, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—4, 6—7, and 10-17, which are all of the claims
pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellant, the real party in interest is InterDigital
Technology Corporation. App. Br. 3.
2 According to Appellant, claims 5, 8. 9, and 18 have been canceled. App.
Br. 14-17.
Appeal 2014-009164
Application 13/412,198
INVENTION
Appellant’s invention relates to a method and system for the
interworking of cellular networks and wireless local area networks.
Abstract. Claim 1 is illustrative and reads as follows:
1. A wireless transmit/receive unit (WTRU) comprising:
at least one transceiver configured to receive a user service from
an Internet Protocol (IP) multimedia subsystem (IMS) via a
wireless local area network (WLAN); and
a handover controlling entity configured to:
initiate a handover of the user service from the WLAN to a
cellular network; and
perform the handover while continuously receiving the user
service from the IMS during the handover and maintaining a
connection to the WLAN and a connection to the cellular
network simultaneously.
REJECTIONS3
Claims 1—3, 6, 11, and 12 stand rejected under 35 U.S.C. § 102(a) as
anticipated by Salkintzis, "WLAN/3G Interworking Architectures for Next
Generation Hybrid Data Networks" IEEE International Conference on
Communications, Vol. 7, pp. 3984—88 (June 2004) (“Salkintzis”).
Claims 4, 7, 10, and 13—17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Salkintzis and Marsh et al. (US
2004/0266426 Al; published Dec. 30, 2004).
3 The Examiner also rejected claims 5, 9, and 18, which were pending at the
time of the Final Action. Those claims were subsequently canceled and are
not at issue in this appeal. See App. Br. 14—15.
2
Appeal 2014-009164
Application 13/412,198
ANALYSIS
Appellant argues Salkintzis fails to disclose the limitation “perform
the handover while continuously receiving the user service from the IMS
during the handover,” recited in claim 1. App. Br. 8. Appellant
acknowledges Salkintzis describes that users may access “the same set of
services” while roaming, but Appellant disagrees that such disclosure
teaches performing a handover while continuously receiving a user service
from the IMS, as claim 1 requires. Id. at 9.
In response, the Examiner explains that Salkintzis discloses “the
subscriber is able to maintain access to the same set of services as the
subscriber roam[s] between WLAN and 3G radio network[s], which is
considered as the handing over from one network to another network while
continuously receiving the same set of service[s].” Ans. 3 (citing Salkintzis
p. 3987—88). The Examiner further explains that “the user services can have
access to services such IP multimedia services from its operator’s IP
Network,” which “is considered as the recited ‘IMS’.” Id. (citing Salkintzis
Fig. 4). Therefore, the Examiner finds Salkintzis discloses performing the
handover by roaming between WLAN and 3G, while still receiving the
service from the operator's IP network. See id.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987) (citations omitted).
We are persuaded by Appellant’s arguments that the Examiner erred.
See App. Br. 11—12. The Examiner finds Salkintzis discloses (1) access to
services such as IP multimedia services from its operator’s IP Network; and
3
Appeal 2014-009164
Application 13/412,198
(2) the subscriber is able to maintain access to the same set of services as the
subscriber roams between WLAN and 3G radio networks. Final Act. 3;
Ans. 3). Based on these findings, the Examiner asserts Salkintzis anticipates
claim 1. The Examiner's finding, however, is based on speculation and lacks
the supportive evidence needed to establish a prima facie case of
anticipation. See Ans. 3. The Examiner has not identified, nor do we find,
any express or inherent description in Salkintzis of “continuously receiving
the user service from the IMS during the handover,” as claim 1 recites
(emphasis added). See Verdegaal Bros. 814 F.2d at 631.
Accordingly, on the record before us, we do not sustain the 35 U.S.C.
§ 102(a) rejection of independent claim 1, independent claim 6, which
recites similar limitations, or claims 2, 3, 11, and 12, dependent therefrom.4
See App. Br. 11—12. We also do not sustain the 35 U.S.C. § 103(a) rejection
of the remaining claims because the Examiner has not identified any
teachings in the other applied prior art to overcome the above-noted
deficiency of Salkintzis.
DECISION
We reverse the decision of the Examiner rejecting claims 1—4, 6—7,
and 10-17.
REVERSED
4 We do not address Appellant’s other contentions in support of the
patentability of claim 1 because the argument discussed above is dispositive
of the issue in this appeal.
4