Ex Parte Zhang

Patent Trial and Appeal Board

Mar 19, 2014

10594646 (P.T.A.B. Mar. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HAI ZHANG
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Appeal 2011-011606
Application 10/594,646
Technology Center 2600
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Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
ANDREW J. DILLON, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 3-6, 9-12, 14-17, and 21-25. Claims 2, 7, 18, and
19 are cancelled, and claims 8, 13, and 20 are indicated as containing
allowable subject matter. App. Br. 3; Ans. 10.1 We have jurisdiction under
35 U.S.C. § 6(b). We reverse.

1 Throughout this opinion, we refer to (1) the Appeal Brief filed February
15, 2011 (“App. Br.”); (2) the Examiner’s Answer mailed May 4, 2011
(“Ans.”); and (3) the Reply Brief filed July 5, 2011 (“Reply Br.”).
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STATEMENT OF THE CASE
Appellant’s invention realizes Multimedia Broadcast/Multicast
Service (MBMS) activation by verifying whether MBMS bearer capabilities
of user equipment (UE) are less than those required based on a message
received from the UE that carries the UE’s bearer capabilities. See generally
Abstract; Spec. 17-20; Figs. 4-5. Claim 1 is illustrative:
1. A method for activating a Multimedia Broadcast/Multicast Service
(MBMS) in a network, the network comprising at least one Serving GPRS
Support Node (SGSN) for connecting user equipment (UE) via a radio
access network, at least one GGSN, and at least one BM-SC, wherein the
SGSN and the GGSN are operatively connected while the GGSN and the
BM-SC are operatively connected;
the method comprising the steps:
a1. creating, by a UE, a Packet Data Protocol (PDP) Context through
interaction with the network and sending a joining message to the network
via an SGSN which the UE belongs to; and
a2. after receiving the joining message, implementing, by the network,
an authorization to the UE, if the UE has passed the authorization,
permitting the UE to activate an MBMS UE Context and the UE sending a
request for activating an MBMS Context which carries MBMS bearer
capabilities of the UE to the SGSN which the UE belongs to;
b. verifying, by the SGSN before sending a Create MBMS Context
Request, whether the MBMS bearer capabilities of the UE are less than
Required MBMS Bearer Capabilities if the SGSN has the Required MBMS
Bearer Capabilities, wherein the Required MBMS Bearer Capabilities are
used to identify the maximum QoS ability of the MBMS service requested
by the UE; and
c. rejecting, by the SGSN, the request for activating an MBMS
Context if the MBMS bearer capabilities of the UE are less than the
Required MBMS Bearer Capabilities, or creating the MBMS UE Context if
the MBMS bearer capabilities of the UE are not less than the Required
MBMS Bearer Capabilities.

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THE REJECTIONS
The Examiner rejected claims 1 and 23-25 under 35 U.S.C. § 103(a)
as obvious over Hwang (US 2004/0147266 A1; published July 29, 2004)
and Alakoski (US 2004/0073928 A1; published Apr. 15, 2004). Ans. 3-6.
The Examiner rejected claims 3-6, 9-12, 14-17, 21, and 22 under
35 U.S.C. § 103(a) as obvious over Hwang, Alakoski, and Fuchs
(US 2004/0266440 A1; published Dec. 30, 2004). Ans. 6-10.

THE OBVIOUSNESS REJECTION OVER HWANG AND ALAKOSKI
The Examiner finds that Hwang discloses every recited element of
claim 1 except for carrying MBMS bearer capabilities and using a Packet
Data Protocol (PDP) Context, but cites Alakoski as teaching these features
in concluding that the claim would have been obvious. Ans. 3-6, 10-12.
Appellant argues that the cited prior art does not teach or suggest that
the UE sends a request for activating an MBMS Context that carries the
UE’s MBMS bearer capabilities to a Serving GPRS Support Node (SGSN)
to which the UE belongs, as claimed. App. Br. 7-8; Reply Br. 4. Appellant
adds that Hwang’s SGSN does not verify whether the UE’s bearer
capabilities are less than the required capabilities as claimed, but rather
determines whether the UE is qualified to receive MBMS service based on
the UE’s initial identity. App. Br. 8-9; Reply Br. 5. Lastly, Appellant
contends that Hwang’s target radio network controller (TRNC), as opposed
to the SGSN, transmits the relied-upon connection reject message. App. Br.
10-11; Reply Br. 5-6. Appellant adds that this reject message is based on
whether the initial UE identity is qualified —not based on the MBMS bearer
capabilities as claimed. Id.
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ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Hwang and Alakoski collectively would have taught or suggested
(1) the UE sends a request for activating an MBMS Context that carries the
UE’s MBMS bearer capabilities to an SGSN to which the UE belongs;
(2) verifying, by the SGSN before sending a Create MBMS Context
Request, whether the MBMS bearer capabilities of the UE are less than
Required MBMS Bearer Capabilities if the SGSN has the required
capabilities; and (3) rejecting, by the SGSN, the request for activating an
MBMS Context if the UE’s MBMS bearer capabilities are less than the
required capabilities?

ANALYSIS
We do not sustain the Examiner’s rejection of representative claim 1
essentially for the reasons indicated by Appellant. App. Br. 7-11; Reply Br.
4-6. As Appellant indicates (Reply Br. 5), the Examiner’s rejection
acknowledges that Hwang’s requests do not carry MBMS bearer
capabilities, and cites Alakoski as teaching that feature. Ans. 3-6. But in the
response to arguments, the Examiner finds that Hwang alone teaches this
feature in connection with the functionality of Figures 9A and 9B. Ans. 10.
Despite this shift in position, we find neither of the Examiner’s
positions availing on this record. In Hwang’s Figure 9A, after UE 910
acquires system information from a received broadcasting channel (BCH)
signal, the UE transmits a radio resource control (RRC) connection request
message to servicing radio network controller (SRNC) 920. Hwang ¶¶
0084-85. After the RRC connection is established, the UE transmits an
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Activate MBMS context request message to SGSN 940 indicating that the
UE desires to receive MBMS service. Hwang ¶ 0085; Fig. 9A (step 921).
Upon receiving this message, the SGSN activates the MBMS context, and
then transmits an Activate MBMS context response message to the UE.
Hwang
¶ 0086; Fig. 9A (step 923).
We fail to see—nor has the Examiner shown—how the Activate
MBMS context request message sent from Hwang’s UE to the SGSN carries
MBMS bearer capabilities as claimed. That Hwang’s paragraph 85 notes
that all information related to transmitting UE data to the UE is stored in the
MBMS context only further undermines the Examiner’s position that this
information would also be included in the UE’s request to the SGSN. To the
extent that the Examiner’s modified position in the response to arguments is
based on the UE’s identity as somehow inherently containing MBMS bearer
capabilities (see Ans. 10), the Examiner has not shown persuasively how or
why this is the case. Nor will we speculate in that regard here in the first
instance on appeal. In any event, that the Examiner concedes that Hwang’s
request does not carry MBMS bearer capabilities in the rejection (see Ans.
5) only further undermines the Examiner’s position in this regard.
The Examiner’s reliance on Alakoski is likewise unavailing. Even
assuming, without deciding, that Alakoski’s MBMS quality of service (QoS)
information constitutes MBMS bearer capabilities, it is Alakoski’s Policy
Control Function (PCF)—not the UE2—that provides this information to a
Gateway GPRS Service Node (GGSN). See Alakoski ¶¶ 0029, 0032. To the
extent that the Examiner’s position is based on modifying Hwang’s MBMS

2 Alakoski refers to UE as an exemplary mobile device. Alakoski ¶ 0032.
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context request message sent from the UE to the SGSN to somehow also
include QoS information such as that sent from Alakoski’s PCF (see Ans. 5-
6), we find such a position untenable on this record.
Nor do we find that the UE’s MBMS bearer capabilities—the very
information carried by the UE’s activation request—are also used as a basis
to verify whether those capabilities are less than those required as claimed.
As Appellant indicates (App. Br. 8; Reply Br. 5), Hwang’s SGSN 440 in
Figure 4 determines whether the UE 410 is qualified to receive MBMS
service depending on the initial UE identity—not the UE’s bearer
capabilities that are received via the UE’s activation request.3 See Hwang
¶ 0050. In any event, it is unclear whether Hwang’s qualification
determination involves determining whether the UE’s MBMS bearer
capabilities are less than those required, for Hwang notes that UEs are
qualified if they subscribe for the MBMS service. Id. Although these
qualifications are not limited to this subscription example, we cannot say—
nor has the Examiner shown—that determining these qualifications are
based on the UE’s bearer capabilities carried by the UE’s activation request
as claimed.
But even if we were to accept the Examiner’s position in this regard
(which we do not), we find the Examiner’s reliance on Hwang’s Figure 4 in
connection with the recited SGSN’s request rejecting step is likewise
problematic. As shown in step 419 of Hwang’s Figure 4, the TRNC—not

3 Notably, the Examiner acknowledges this identity-based determination.
See Ans. 11 (“Hwang discloses the SGSN determines whether the UE is
qualified for receiving the corresponding MBMS service, depending on the
initial UE identity included in the received Authentication request message .
. . .” (emphasis added)); Ans. 4 (same).
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the SGSN—transmits the RRC connection reject message based on
information it receives from the SGSN as Appellant indicates. App. Br. 10
(citing Hwang ¶ 0051). Notably, this rejection can be responsive to the
TRNC’s receiving an authentication confirmation from the SGSN that would
result in the TRNC’s rejecting requests for UEs that the SGSN otherwise
deems qualified to receive MBMS service. See Hwang ¶¶ 0067-69.
Although the TRNC can also reject requests for UEs that the SGSN deems
to be unqualified to receive MBMS service (Hwang ¶ 0066), it is the
TRNC—not the SGSN—that ultimately rejects the request.
To be sure, the SGSN can inform the UE that it is unqualified to
receive MBMS service and indicate that this service is unavailable
responsive to a request message in steps 921 and 923 of the Figure 9A
embodiment. Hwang ¶ 0086. But we cannot say—nor has the Examiner
shown—that this response is based on the UE’s MBMS bearer capabilities
carried by the request. Moreover, to the extent that this response constitutes
rejecting the request, Hwang does not specify the nature of this
qualification-based determination apart from whether the UE subscribes for
MBMS service as noted previously. Hwang ¶ 0050. The Examiner has not
shown that determining these qualifications are based on the UE’s bearer
capabilities carried by the UE’s activation request as claimed.
Nor has the Examiner shown that a negative response from the SGSN
in step 923 of Hwang’s Figure 9A constitutes the recited verification and
rejection steps. To the extent that the Examiner relies on Hwang’s RRC
connection reject message 953 in Figure 9B as teaching the recited rejection
(see Ans. 11-12 (citing Hwang ¶¶ 0097-98)), we find such a position
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unavailing, for it is the SRNC—not the SGSN—that sends this rejection
message.
Therefore, we are persuaded that the Examiner erred in rejecting
(1) independent claim 1; (2) independent claim 23, which recites
commensurate limitations; and (3) dependent claims 24 and 25 for similar
reasons.

THE OTHER OBVIOUSNESS REJECTION
Because the Examiner has not shown that Fuchs cures the deficiencies
noted above regarding independent claim 1, we do not sustain the
obviousness rejection of dependent claims 3-6, 9-12, 14-17, 21, and 22 (Ans.
6-10) for similar reasons.

CONCLUSION
The Examiner erred in rejecting claims 1, 3-6, 9-12, 14-17, and 21-25
under § 103.

ORDER
The Examiner’s decision rejecting claims 1, 3-6, 9-12, 14-17, and 21-
25 is reversed.

REVERSED

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