Ex Parte Xing et al

Patent Trial and Appeal Board

Apr 11, 2018

12298184 (P.T.A.B. Apr. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/298, 184 0512612009
48116 7590 04/13/2018
FAY SHARPE/LUCENT
1228 Euclid Avenue, 5th Floor
The Halle Building
FIRST NAMED INVENTOR
Pingping Xing
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.
LUTZ 200908US01 5698
EXAMINER
NGUYEN, DINH
Cleveland, OH 44115-1843 ART UNIT PAPER NUMBER
2645
NOTIFICATION DATE DELIVERY MODE
04/13/2018 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):
docketing@faysharpe.com
ipsnarocp@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PINGPING XING, ZHONGJI HU, YU CHEN, and HUA CHAO
Appeal2017-006015
Application 12/298,184 1,2
Technology Center 2600
Before JASON V. MORGAN, JEFFREY A. STEPHENS, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-7, 9-13, and 15-19. Appellants have canceled claims 8, 14, and
20. See Final Act. 2. We have jurisdiction over the remaining pending
claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Alcatel Lucent as the real party in interest. App. Br. 1.
2 This application was also the subject of Appeal No. 2013-002524 (decided
May 19, 2015).
Appeal2017-006015
Application 12/298, 184
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention is directed to
"establishing a service in a first frequency in a communication network,
wherein the first frequency does not support the service or supports it in a
limited way." Spec. 2-3. In a disclosed embodiment, a non-MB MS
(Multimedia Broadcast Multicast Service) service is established in a MBMS
dedicated frequency. Spec. 3--4. According to the Specification, it is known
that MBMS dedicated frequencies typically only support MBMS service and
do not support non-MBMS services. Spec. 2. Thus, when a service to be
established (e.g., a non-MBMS service) is not supported on a frequency (i.e.,
a dedicated MBMS frequency), a user device is redirected to a second
frequency that supports the desired service (i.e., the non-MBMS service).
Spec. 3--4.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
1. A method for establishing a non-MBMS service in a first
frequency in a communication network, said method comprising:
determining said non-MBMS service to be established;
and
re-selecting to a second frequency that is preferred for
said non-MEMS service or re-directing to a second frequency
that is preferred for said non-MEMS service, so as to carry out
said non-MEMS service in said second frequency;
wherein said first frequency supports a MBMS service and
does not support said non-MBMS service or supports said non-
MBMS service in a limited way.
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Application 12/298, 184
The Examiner's Rejections
1. Claims 1-5, 9-12, and 15-17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Choi et al. (US 2006/0140159 Al;
June 29, 2006) ("Choi") and Applicants' Admitted Prior Art ("AAPA") 3.
Final Act. 5-8.
2. Claims 6 and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Choi, AAPA, and Wallentin et al. (US 6,347,091
B 1; Feb. 12, 2002) ("Wallentin"). Final Act. 8-9.
3. Claims 7, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Choi, AAPA, and Jeong et al. (US 2006/0058047
Al; Mar. 16, 2006) ("Jeong"). Final Act. 9-11.
ANALYSIS 4
In rejecting the independent claims, the Examiner relies on the
combined teachings and suggestions of Choi and Applicants' Admitted Prior
Art. See Final Act. 5---6, 8. AAPA discloses "typically, the MSMS [sic,
MBMS] dedicated frequency only supports MBMS service, but does not
support any non-MBMS services or supports non-MBMS services (for
example data service) in a limited way." Spec. 2; see also Final Act. 6.
3 The Examiner cites to the published application (US 2009/0318149 Al;
Dec. 24, 2009) in rejecting the claimed invention. See, e.g., Final Act. 5;
Ans. 3. Herein, we cite to the Specification as filed by Appellants.
4 Throughout this Decision, we have considered the Appeal Brief, filed
August 22, 2016 ("App. Br."); the Reply Brief, filed March 1, 2017 ("Reply
Br."); the Examiner's Answer, mailed January 3, 2017 ("Ans."); and the
Final Office Action, mailed March 9, 2016 ("Final Act."), from which this
Appeal is taken.
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Application 12/298, 184
Choi is generally directed to methods for establishing a signaling
bearer connection of a Multimedia Broadcast/Multicast Service (MBMS) on
an interface between a Radio Access Network (RAN) and a Core Network
(CN}-i.e., an Iu interface. Choi i-f 2. Choi explains MBMS is a point-to-
multipoint service. Choi i-f 32. Further, on an Iu interface, the user plane of
MBMS services is shared. Choi i-f 32. However, Choi discloses that "[i]f
each UE [(user equipment)] uses one signaling connection, it will ...
increase the traffic of the information on [the] Iu interface and the processes
on the RNC [(Radio Network Controller)] and SGSN [(Service GPRS
Supporting Node)]." Choi i-f 32. Thus, Choi is directed to "establishing a
shared Iu signaling connection for the same kind of MBMS service." Choi
i-f 3 6. Choi discloses the shared Iu signaling connection is used for the
"same kind of MBMS service ... [but] a UE dedicated Iu signaling
connection is established if [the] UE receives other services besides MBMS
service or moves." Choi i-f 70. In other words, a dedicated Iu signaling
connection is used for non-MBMS service. Choi i-f 70; see also Choi i-f 79
("it is necessary to establish a dedicated Iu connection for the UE to control
user plane resources of other service or user mobility if the user uses other
services (e.g.[,] voice) besides MBMS service or moves").
Choi describes the process for establishing a dedicated Iu connection
when the UE needs to receive non-MBMS service. Choi i-f 153. Figure 5 of
Choi is illustrative and is reproduced below:
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Application 12/298, 184
: SGSN
~
RIG., 5
.A "-.· +
GGSN
Figure 5 of Choi shows the flow of establishing a dedicated Iu signaling
connection. Choi i-fi-165, 153. As shown, the UE (i.e., mobile station MS)
receives MBMS data (501). Choi i-f 154. The UE provides uplink data for
non-MBMS service and the RNC initiates the Iu signaling connection
procedure (502, 502) to establish a dedicated Iu connection. Choi i-fi-f 155,
156. After the SCCP (signaling connection control part) Connection
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Request has been processed (504, 505), the SGSN sends a RAB (radio
access bearer) Assignment Request (506) to the RNC, which sends a radio
bearer (RB) Establishment message (507) to the UE. Choi i-fi-f 157-160. At
step 507, the RNC sends a RB establishment message to the MS (i.e., UE)
and requests to establish radio resources. Choi i-f 160. Completion messages
are sent (507, 508) and the MS begins sending uplink data packets (510) for
the non-MBMS service. Choi i-fi-f 155, 161-163.
Appellants dispute that Choi teaches reselecting or redirecting to a
second frequency to support non-MBMS service (or a second frequency that
is otherwise preferred for non-MBMS service). App. Br. 6-9; Reply Br. 3-
9. Specifically, Appellants argue "Choi is silent regarding frequency, and in
particular regarding frequency as it relates to MBMS and non-MBMS
transmission. Moreover, Choi is silent with regard to the claimed feature of
the second frequency being preferred for non-MBMS service." App. Br. 7
(emphasis omitted). Rather, Appellants assert, Choi is directed to the
establishment of a dedicated Iu signaling connection and not to the
transmission of non-MBMS services. App. Br. 7-8; Reply Br. 3--4.
As an initial matter, it is irrelevant that the prior art and the present
invention may have different purposes. See Nat 'l Steel Car, Ltd. v.
Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004) ("A finding
that two inventions were designed to resolve different problems ... is
insufficient to demonstrate that one invention teaches away from another.").
Further, non-obviousness cannot be established by attacking references
individually where, as here, the ground of unpatentability is based upon the
teachings of a combination of references. In re Keller, 642 F.2d 413, 426
(CCP A 1981 ). Rather, the test for obviousness is whether the combination
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Application 12/298, 184
of references, taken as a whole, would have suggested the patentee's
invention to a person having ordinary skill in the art. In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, the Examiner relies on the combined teachings and suggestions
of Choi and AAP A. AAP A teaches it was known-and typical-that a
dedicated frequency only supports MBMS service, but not any non-MBMS
service (or supports it in a limited way). See Spec. 2. Thus, an ordinarily
skilled artisan would understand that a second (i.e., different) frequency
would be used for non-MBMS services. Accordingly, as the Examiner
explains, when the UE in Choi requires non-MBMS service (and a dedicated
Iu signaling connection is established), one of ordinary skill in the art would
understand that the UE is redirected to a frequency that supports the non-
MBMS services. Ans. 3--4 (citing Choi, Fig. 5 (507, 510)). Additionally,
the skilled artisan would understand a frequency that is able to support the
desired services (i.e., non-MBMS services) is preferable to a frequency that
cannot support the desired services (e.g., a dedicated frequency that supports
only MBMS services).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of independent
claim 1. For similar reasons, we also sustain the Examiner's rejection of
independent claims 9 and 15, which recite similar limitations and for which
Appellants advance similar arguments to those presented for claim 1. See
App. Br. 10-17. Further, we sustain the Examiner's rejection of claims 2-7,
10-13, and 16-19, which depend directly or indirectly therefrom and for
which Appellants do not provide separate arguments of patentability. See,
e.g., App. Br. 9-20; see also 37 C.F.R. § 41.37(c)(l)(iv) (2015).
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DECISION
We affirm the Examiner's decision rejecting claims 1-7, 9-13, and
15-19.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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