Ex Parte Sohn

Patent Trial and Appeal Board

Jun 24, 2013

11732192 (P.T.A.B. Jun. 24, 2013)

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.
11/732,192 04/02/2007 Chang-Ho Sohn 1235-274 9750
66547 7590 06/25/2013
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
SCHWARTZ, JOSHUA L
ART UNIT PAPER NUMBER
2642
MAIL DATE DELIVERY MODE
06/25/2013 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 CHANG-HO SOHN
____________

Appeal 2011-012861
Application 11/732,192
Technology Center 2600
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/732,192
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STATEMENT OF THE CASE
The Examiner finally rejected claims 1-18. (App. Br. 3). Claim 19
was cancelled during prosecution. Appellant appeals therefrom under 35
U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

INVENTION
This invention relates to "an apparatus and method for reducing the
amount of time required to establish a packet communication in a mobile
communication system." (Spec. 1). Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A mobile communication system for providing a packet
service, comprising:
a radio network controller (RNC) for broadcasting a system
information block (SIB) signal including Always-On
availability information and, upon receipt of a radio resource
control (RRC) connection request message for requesting an
Always-On mode, maintaining a preservation state in
communication with a core network; and
a user equipment (UE) for detecting the Always-On availability
information in the SIB signal received from the RNC to
determine whether the Always-On mode is available and, if the
Always-On mode is available, generating the RRC connection
request message to transmit the generated RRC connection
request message to the RNC.
(Disputed limitation emphasized).

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REJECTION
R1. The Examiner rejected claims 1-18 under 35 U.S.C.
§ 103(a) as being unpatentable based upon the teachings and suggestions of
Xue (U.S. Patent Application Publication Number 2005/0153691 A1,
Published July 14, 2005) and Guyot (U.S. Patent Application Publication
Number 2006/0073831 A1, published April 6, 2006). (Ans. 3-6).

ANALYSIS
INDEPENDENT CLAIMS 1 AND 14
Issue: Under § 103, did the Examiner err in finding the cited
references, either alone or in combination, would have taught or
suggested "a radio network controller (RNC) for broadcasting a
system information block (SIB) signal including Always-On
availability information," within the meaning of claim 1 and the
commensurate language of claim 14?

The Examiner finds "Xue at ¶14 line 14 and further explained at ¶ 45
l. 1-9 teaches where the system broadcast information relating to whether or
not the network connection supports always on availability." (Ans. 7).
Appellant contends:
[Xue] does not teach any broadcasting of an SIB signal
including Always-On availability information. That is, in Xue,
the Preferred Roaming List (PRL), which is cited by the
Examiner in paragraphs 14 and 49 of Xue, is not broadcast to a
UE, but is instead built into a mobile device. (See paragraph 6
of Xue).
(App. Br. 11).
Appellant's contentions are persuasive. We find the Examiner's cited
sections of Xue do not teach or fairly suggest the limitation at issue. (Ans.
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7). Xue paragraph 14, line 14, merely discloses that “always-on” is a feature
that networks support. Also, Xue paragraph 45, lines 1-9, discloses the
"device service information" is not broadcast, but is instead added to the
preferred roaming list (PRL) table in the cell phone. Moreover, the
Examiner has not explained why it would have been obvious for an artisan
to modify the combination of Xue and Guyot to broadcast the claimed
"Always-On availability information" (claim 1), since Xue teaches the PRL
table is included in the cell phone. (Xue ¶ [0006]). For these reasons, we
are persuaded of Examiner error.
We reverse the Examiner's rejection of claim 1 and claim 14, which
recites commensurate language. We also reverse the Examiner's rejection of
claims 2 and 3, and claims 15 and 16, which depend from claims 1 and 14
respectively.
B. INDEPENDENT CLAIMS 4, 7, AND 10
A.
Issue: Under § 103, did the Examiner err in finding the
cited references, either alone or in combination, would have
taught or suggested "detecting, at a user equipment (UE), the
SIB signal received from the RNC to determine whether an
Always-On mode is available," within the meaning of claim 4
and the commensurate language of claims 7 and 10?

Appellant contends claims 4, 7, and 10 are patentable for the same
reasons argued with respect to claims 1 and 14 limitations at issue above.
(App. Br. 11). We are not persuaded by Appellant's contentions because
claims 4, 7, and 10 do not recite commensurate limitations ("a system
information block (SIB) signal including Always-On availability
information," claim 1, emphasis added). Specifically, claims 4, 7, and 10,
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do not require the SIB signal to include "Always-On availability
information."
Xue's cell phone uses the received system information to determine
the availability of “always on” mode by looking up in the preferred roaming
list (PRL) whether the SID/NID ("radio controller") supports “Always on”
mode. Thus, we find Xue and Guyot in combination would have taught or
suggested the limitation "detecting, at a user equipment (UE), the SIB signal
received from the RNC to determine whether an Always-On mode is
available," within the meaning of claim 4, and the commensurate language
of claims 7 and 10. (Ans. 3-7; ¶ [0045]). For these reasons, on this record,
we are not persuaded of Examiner error.
B.
Appellant contends neither Xue or Guyot would have taught or
suggested the limitation of "transmitting an RRC connection release
message to the UE to release a wireless connection between the UE and the
RNC," within the meaning of claim 4 and commensurate language of
claim 7 because there is "nothing in paragraph 60 of Xue that could be
reasonably construed as teaching or suggesting" the limitation at issue.
(App. Br. 13).
The Examiner finds and we agree:
See Xue at ¶60 ll. 1-3, where upon creating connection
paths, and determining that the required service levels can be
met the system "releases" a connection from reserve to be used
to connect the mobile device to the network. When a switch to a
new system is made the old system is left behind.
(Ans. 7). In the Reply Brief, Appellant fails to traverse the specific factual
findings made by the Examiner. Notwithstanding Appellant's arguments, we
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find the weight of the evidence supports the Examiner's underlying factual
findings and ultimate legal conclusion of obviousness.
C.
Appellant contends neither Xue or Guyot would have taught or
suggested "maintaining, at the RNC, a wired connection between the RNC
and the core network to define a preservation state," within the meaning of
claim 4 and commensurate language of claim 7. (App. Br. 12-13).
The Examiner finds:
First, in an always-on system there will be maintenance of a
preservation state in network. Second Guyot at Fig 1, discloses
where the RNC elements are connected to the MSC elements
and to the Core Networks with wired connections, as indicated
by the solid lines. The always on state is maintained by the use
of wired connections meeting the limitation of the claims.
(Ans. 7-8).
Appellant responds "there is nothing in Xue or Guyot that makes any
reference to defining the preservation state." (Reply Br. 3).
Appellant's contentions are not persuasive because Appellant's
conclusory statement (Reply Br. 3), unsupported by factual evidence, does
not rebut the Examiner's finding the combination of Xue and Guyot would
have taught or suggested the broadest reasonable interpretation of a
"preservation state."1 (Ans. 7-8). Moreover, Appellant fails to cite a more
narrow definition of "preservation state" in the Specification.2

1 Mere attorney arguments and conclusory statements that are unsupported
by factual evidence are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997).
2 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
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Notwithstanding Appellant's arguments, we find the weight of the
evidence supports the Examiner's underlying factual findings and ultimate
legal conclusion of obviousness. Accordingly, we affirm the Examiner's
rejection of claims 4, 7, and 10.

DEPENDENT CLAIMS 5, 8, AND 11
Appellant contends the cited references would not have taught or
suggested "the SIB signal includes Always-On availability information for
determining whether the Always-On mode is available in the RNC," as
recited in claim 5 and commensurate language of claims 8 and 11. (App.
Br. 15).
We are persuaded by Appellant's contentions for the same reasons
discussed above with respect to the commensurate limitations recited in
claims 1 and 14. Therefore, we reverse the Examiner's rejection of
dependent claims 5, 8, and 11.

INDEPENDENT CLAIM 17
Appellant contends the cited references would have taught or
suggested “‘wherein the RRC connection request message includes an ID
(Identification) of the mobile communication terminal and RRC connection
establishment cause values including location registration and the Always-

by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
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On mode," within the meaning of claim 17. (App. Br. 16)(emphasis
omitted).
We conclude Appellant's arguments urging patentability are
predicated on non-functional descriptive material.3 Non-functional
descriptive material is not entitled to patentable weight.4 Specifically, the
claimed: "ID (Identification) of the mobile communication terminal" and
"values including location registration and the Always-On mode," are
merely arrangements of data that are not positively recited as changing or
altering the computer or machine function. For these reasons, on this record,
we are not persuaded of Examiner error.

REMAINING CLAIMS
Although Appellant presents nominal separate arguments for rejected
claims not addressed above, we affirm the Examiner's rejection of these
claims for the reasons set forth by the Examiner in the Answer and for the
reasons discussed above regarding commensurate limitations and issues.
(App. Br. 15-16).

3 Cf. Functional descriptive material consists of data structures and computer
programs which impart functionality when employed as a computer
component. See Interim Guidelines for Examination of Patent Applications
for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off. Gaz. Pat.
Office 142 (November 22, 2005), especially pages 151-152.
4 The informational content of non-functional descriptive material is not
entitled to weight in the patentability analysis. See Ex parte Nehls, 88
USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84
USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No.
2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d
1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).
See also MPEP §2111.05, Eighth Edition, Rev. 9, Aug. 2012).
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DECISION
We affirm the Examiner's rejection of claims 4, 6, 7, 9, 10, 12, 13, 17,
and 18 under § 103.
We reverse the Examiner's rejection of claims 1-3, 5, 8, 11, and 14-16
under § 103.
No time period for taking any action connected with this appeal may
be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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