Ex Parte Witzel et al

Patent Trial and Appeal Board

May 18, 2016

12312347 (P.T.A.B. May. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/312,347 11/06/2009
27045 7590
ERICSSON INC
6300 LEGACY DRIVE
MIS EVR 1-C-11
PLANO, TX 75024
05/20/2016
FIRST NAMED INVENTOR
Andreas Witzel
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.
P23051-US2 5238
EXAMINER
PHUNG,LUAT
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
05/20/2016 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):
kara.coffman@ericsson.com
kathryn.lopez@ericsson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS WITZEL and RALF KELLER
Appeal2014-009035
Application 12/312,347
Technology Center 2400
Before MONICA S. ULLAGADDI, JOYCE CRAIG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
ULLAGADDI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Claim 1, reproduced below with a key disputed limitation emphasized,
is illustrative of the claimed subject matter:
A method for registering a terminal, in a packet-switched
service domain, over a circuit-switched access domain wherein
a circuit-switched network part is provided, the method
comprising the steps of the circuit-switched network part:
- receiving a packet switched service domain registration
message packed in a circuit-switched transport bearer, the
packet switched service domain registration message indicating
Appeal2014-009035
Application 12/312,347
a request for a packet switched service domain registration for
registering the terminal;
- selecting an adapter node for handling the terminal, on
the basis of the received message, by determining the adapter
node's identifier wherein the selected adapter node converts the
received packet switched service domain registration message
into a message of the packet-switched service domain and
performs registration of the terminal in the packet-switched
service domain on behalf of the terminal; and
- sending the packet switched service domain registration
message by means of circuit-switched control protocol towards
the selected adapter node using the selected adapter node's
identifier.
REJECTION
Claims 1-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mahdi (US 2007 /0058788 Al; Mar. 15, 2007) and Lundin
(US 2007/0091877 Al; Apr. 26, 2007). Final Act. 6-13.
ANALYSIS
In the Final Office Action, the Examiner cites Mahdi for teaching the
"receiving" and "sending" limitations recited in claim 1, but finds Mahdi is
silent as to "selecting an adapter node" and "the selected adapter node
convert[ing] the received ... message." Final Act. 6-7 compare with id. at 5
(describing Mahdi's CAAF [Circuit-switched Subsystem Access Adaptation
Function] as performing a conversion function in paragraph 46). The Final
Office Action does not explicitly articulate that Lundin teaches the entirety
of the disputed "selecting" limitation, which includes the "converting"
portion recited therein. Id. at 7. Rather, the Examiner finds Lundin's "Gs
interface ... allow[ s] communication between circuit switched cores and
packet switched cores, permitting circuit switched endpoints to register in
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Application 12/312,347
packet-based networks." Id. at 7 (emphasis added). The Examiner finds this
teaching in Lundin "would allow the registration method of Mahdi to be
facilitated by an adapter interface as claimed." Id.
In the Advisory Action, the Examiner cites Mahdi's Remote User
Agent (RUA) as teaching an "adapter node that converts the received ...
message." Advisory Act. 4 (emphasis omitted). In the Answer, the
Examiner further finds that the claimed "adapter node" does not encompass
Mahdi's CAAF. Ans. 6-7. The Examiner also cites Lundin's "selecting [of]
the SGSN and transmitting to the selected SGSN [Serving General Packet
Radio Service (GPRS) Support Node] in the packet network" as teaching
"select[ing] the RAU [Remote User Agent, RUA] in Mahdi which performs
the claimed conversion to register the terminal." Advisory Act. 5.
Appellants present arguments individually rebutting (i.) the findings
based on the interpretation of references set forth in the Final Office Action
and (ii.) the findings based on the interpretation of the references set forth in
the Advisory Action. For the reasons discussed below, arguments (i.) and
(ii.) persuade us the Examiner erred in finding the combination of Mahdi and
Lundin teaches or suggests the disputed limitation.
With regard to claim 1, Appellants argue (i.) Mahdi's RUA does not
"convert [a] received ... registration message ... and perform registration
of [a] terminal in the packet-switched service domain on behalf of the
terminal." App. Br. 11. We concur. Paragraph 42 of Mahdi describes the
CAAF, not the RUA, as providing "the message or protocol conversion
necessary to allow the RUA and the user element to exchange [session
control signaling] messages between the CS and MS." Reply Br. 2-3.
Similarly, paragraph 46 of Mahdi describes the CAAF as "separat[ing] CS
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Application 12/312,347
access signaling provided by the user element 16 into three types of
signaling." Lastly, paragraph 47 describes Mahdi's RUA as "combin[ing]
the session control signaling and the bearer control signaling to present
unified session control signaling into the MS 14 on behalf of the user
element 16." Even assuming, arguendo, the unified session control
signaling could be considered to have been converted, we find argument (i.)
persuasive because Mahdi's RUA "does not convert any messages, much
less convert a 'packet switched service domain registration message' into a
message of the packet-switched service domain." See Reply Br. 2 (emphasis
omitted); see also App. Br. 11.
Appellants also argue (ii.) Mahdi and Lundin fail to teach or suggest
"selecting an adapter node for handling the terminal, on the basis of the
received message" because Lundin describes "only one Gs interface ... so
there is no disclosure ofLundin's Gs interface (or an 'adapter node'
associated with the Gs interface) being selected on the basis of ... move
information." App. Br. 10 (emphasis added). In the Answer, the Examiner
reiterates the Response to Arguments section of the Final Office Action
finding that "there are multiple CS and PS core nodes in a pool, as
represented by MSCs [Mobile Switching Centers] and SGSNs in the
network, and a unique ID is used to identify the core node in the pool" and
explaining that "[t]he Gs is merely an abstract interface between an MSC
and an SGSN." Ans. 9. We find argument (ii.) persuasive because the
record before us does not indicate that the Examiner rebutted Appellants'
argument that Lundin' s "move information" is not the basis for the
"selecting," or articulated a position regarding the basis upon which any of
the Gs interface, MSC, or SGSN are selected.
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Application 12/312,347
For the foregoing reasons, we are persuaded the Examiner erred in
finding the combination of Mahdi and Lundin teaches or suggests the
disputed limitation recited in claim 1, the commensurate limitation of claim
19, and the limitations of claims 2-14 and 20-22 which depend therefrom.
With regard to claim 15, Appellants argue Mahdi and Lundin do not
teach or suggest "contacting a handler for the terminal for handling a
conversion of the received packet switched service domain registration
message into a message of the packet-switched service." App. Br. 12-13.
Appellants argue Mahdi's RUA does not perform any conversion for reasons
similar to reasons discussed with respect to claim 1. Reply Br. 6. For the
reasons discussed above with respect to claim 1, we are persuaded Mahdi's
RUA does not perform the claimed "conversion" and more particularly,
converting a "packet switched service domain registration message into a
message of the packet-switched service domain," as recited in claim 15.
For the foregoing reasons, we are persuaded the Examiner erred in
finding the combination of Mahdi and Lundin teaches or suggests the
disputed limitation recited in claim 15, the commensurate limitations of
claims 23 and 24, and the limitations of claims 16-18 which depend from
claim 15. Therefore, we do not sustain the rejection of claims 1-24 under
35 U.S.C. § 103(a) for obviousness over Mahdi and Lundin.
DECISION
The Examiner's rejection of claims 1-24 is reversed.
REVERSED
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