Ex Parte Yeung et alDownload PDFPatent Trial and Appeal BoardDec 27, 201613343252 (P.T.A.B. Dec. 27, 2016) Copy Citation 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. 13/343,252 01/04/2012 Lui Chu Yeung ALC 3759 4619 76614 7590 12/29/2016 Terry W. Kramer, Esq. Kramer & Amado, P.C. 330 John Carlyle Street 3rd Floor Alexandria, VA 22314 EXAMINER SCHWARTZ, JOSHUA L ART UNIT PAPER NUMBER 2642 NOTIFICATION DATE DELIVERY MODE 12/29/2016 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): mail@krameramado.com ipsnarocp @ alcatel-lucent, com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LUI CHU YEUNG and HAIQING H. MA Appeal 2016-001968 Application 13/343,252 Technology Center 2600 Before MICHAEL J. STRAUSS, MICHAEL M. BARRY, and MICHAEL J. ENGLE, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-001968 Application 13/343,252 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to matching a user roaming request with the user’s home cellular network. Abstract. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of matching a user roaming request with the user’s home network, the method comprising: receiving a user request that includes an international mobile subscriber identification (IMSI); extracting a mobile country code (MCC) from the IMSI; extracting the next M digits from the IMSI as the mobile network code (MNC); searching a MCC-MNC database for the extracted MCC- MNC, wherein each MCC-MNC combination in the MCC-MNC database is associated with a particular roaming partner; and if the extracted MCC-MNC combination is found in the MCC-MNC database, then associate the user request with an identified roaming partner. The prior art relied upon by the Examiner in rejecting the claims on THE INVENTION REFERENCES appeal is: Chandnani et al. Cho US 2001/0016495 Al Aug. 23, 2001 US 6,871,069 B1 Mar. 22, 2005 US 2012/0282924 Al Nov. 8, 2012 US 8,619,665 B2 Dec. 31,2013 Tagg et al. Hedberg et al. REJECTIONS The Examiner made the following rejections: 2 Appeal 2016-001968 Application 13/343,252 Claims 1, 2, 9, 10, 11, and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chandnani and Cho. Final Act. 3—5. Claims 3—6 and 12—15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chandnani, Cho, and Hedberg. Final Act. 5—7. Claims 7 and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chandnani, Cho, and Tagg. Final Act. 7—8. Claims 8 and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chandnani, Cho, Hedberg, and Tagg. Final Act. 9-10. APPELLANTS’ CONTENTIONS 1. In connection with the rejection of claim 1, Appellants contend Cho fails to disclose a database associating each MCC-MNC combination with a particular roaming partner such that the reference fails to teach the step of, if the extracted MCC-MNC combination is found in the MCC-MNC database, then associating the user request with an identified roaming partner. App. Br. 5. 2. In connection with the rejection of claim 5, Appellants contend Cho’s roaming request denial in response to an unmatchable MCC-MNC combination is not equivalent to and does not teach associating the user request with an unidentified roaming partner as required by claim 5. App. Br. 9. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by 3 Appeal 2016-001968 Application 13/343,252 the Examiner in the action from which this appeal is taken (Final Act. 2—11) and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 3—5) and concur with the conclusions reached by the Examiner. We highlight the following for emphasis. Appellants’ invention matches a cellular user’s roaming request, e.g., a service request made to a foreign cellular network, with the user’s home network. Claim 1. “[A]n international mobile subscriber identity (IMSI). . . may include a mobile country code (MCC), a mobile network code (MNC), and a mobile subscriber identification number (MSIN).” Spec. 1 32; see also Chandnani 15. Aspects of the invention “use a combination of the MCC-MNC’s from roaming agreements and roaming partners to match the [user’s] IMSI value in a roaming request to determine a user’s home network.” Spec. 134. Claim 1 relates to extracting the MCC and MNC from the user’s IMSI and identifying a roaming partner corresponding to the extracted MCC and MNC. In connection with contention 1, Appellants argue Cho’s roaming service provider does not teach a roaming partner associated with each MCC-MNC combination in an MCC-MNC database. App. Br. 5. The Examiner responds by finding Cho discloses first and second service providers having an agreement with each other to provide roaming services, which teaches the disputed roaming partner. Ans. 3. The Examiner further finds Cho’s use of a Visiting Location Register (VLR) to check if a user’s MCC-MNC is to be accorded roaming services teaches or suggests the steps of searching a MCC-MNC database and, if the user’s MCC-MNC 4 Appeal 2016-001968 Application 13/343,252 combination is found, associating the user’s request with the found (i.e., “identified”) roaming service provider (i.e., “roaming partner”). Ans. 4. Appellants’ arguments are unpersuasive for lack of sufficient evidence or explanation why the Examiner’s findings are erroneous or not supported by the evidence of record. For example, Appellants fail to explain why Cho’s disclosure of using the MCC-MNC to check a service provider index table to determine whether the service provider is a roaming service provider because there is an agreement for the provision of roaming services with the subscriber’s service provider (Cho col. 2,11. 11—18, col. 4,11. 11—28) fails to teach or suggest using the MCC-MNC to search a database having a MCC- MNC associated with a roaming partner. Furthermore, Appellants fail to persuade us determining, from the service provider index table, the service provider is a roaming service provider (i.e., there is a roaming agreement between two service providers) does not at least suggest associating the user making the request with a service provider. Therefore, for the reasons supra, we sustain the rejection of independent claim 1 and, for similar reasons, the rejection of independent claim 10 under 35 U.S.C. § 103(a) over Chandnani and Cho together with the rejections of dependent claims 2-4, 6— 9, 11—13, and 15—18 which are not argued separately. Furthermore, we note in passing and without reliance in arriving at our final decision, performance of the step of associating the user request with an identified roaming partner as recited by method claim 1 is conditional on finding the extracted MCC-MNC combination is associated with a particular roaming partner.1 Therefore, because claim 1 does not 1 We do not decide whether our observation concerning claim 1 is also applicable to claim 10, which is directed to instructions stored on a non- transitory machine-readable storage medium. 5 Appeal 2016-001968 Application 13/343,252 require making the association when no roaming partner is identified, the association need not be taught or suggested by the prior art. See Ex parte Schulhauser, Appeal No. 2013-007847, at 9-10 (PTAB Apr. 28, 2016) (precedential) (the broadest reasonable interpretation of a method claim encompasses methods where only the non-conditional steps are performed and the conditional method step need not be shown in establishing invalidity). Regardless, we find that the combination of Chandnani and Cho teaches this conditional limitation for the reasons discussed above. In connection with contention 2, Appellants argue Cho’s denial of a roaming request in response to an unmatchable MCC-MNC combination fails to teach or suggest the disputed limitation of claim 5 because, according to Appellants, there is no association made between the user request and an unidentified roaming partner. App. Br. 9. Appellants argue “when no MCC- MNC match is found, limited connectivity may still be provided. This is not the same as denial of the request.” Id. The Examiner responds by finding the Specification does not provide a definition for the phrase “associate with an unidentified roaming partner” as recited by claim 5. Ans. 4. Therefore, under a broad but reasonable interpretation consistent with the Specification, the Examiner finds Cho’s decision to discard a call because the number is not in the database falls within the scope of associating the user request with an unidentified roaming partner. Ans. 5. Appellants’ contention 2 is unpersuasive of Examiner error. As found by the Examiner, the Specification does not define what is meant by associating the user request with an unidentified roaming partner. In support of this limitation, Appellants direct attention to Spec. 137,11. 4—5, which discloses that if no match is found, a procedure may be implemented 6 Appeal 2016-001968 Application 13/343,252 including “refusing a connection to the roaming user or providing only very limited connectivity to the roaming user.” However, the identified disclosure makes no reference to the disputed association of claim 5 and, therefore, is at most a non-limiting example. Furthermore, although Appellants argue the disputed association with an unidentified roaming partner, when interpreted in light of the Specification, includes providing limited connectivity and, therefore, distinguishes over Cho’s complete denial of service, we note the Specification also discloses the alternative of “refusing a connection to the roaming user,” which is what Cho teaches. Given that Cho teaches an alternative expressly identified in the portion of the Specification that Appellants rely on for written description of claim 5 (i.e., “refusing a connection to the roaming user”), Appellants have not sufficiently persuaded us of error in the Examiner finding that, under a broad but reasonable interpretation consistent with Appellants’ Specification, the disputed association of claim 5 includes and is taught or suggested by Cho’s denial of a roaming request when the request contains an unmatchable MCC-MNC combination. Accordingly, we sustain the rejection of claims 5 and 14 under 35 U.S.C. § 103(a) over Chandnani, Cho, and Hedberg. DECISION We affirm the Examiner’s decision to reject claims 1—18. 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). AFFIRMED 7 Copy with citationCopy as parenthetical citation