Ex Parte ZHAO et al

Patent Trial and Appeal Board

May 5, 2016

11960220 (P.T.A.B. May. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111960,220 12/19/2007
82313 7590 05/09/2016
Conley Rose - BlackBerry Files
Attn: J. Robert Brown
5601 Granite Parkway, Suite 500
Plano, TX 75024
FIRST NAMED INVENTOR
Xiaoming ZHAO
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.
32976-US-PAT
(4214-04500)
CONFIRMATION NO.
4107
EXAMINER
RANDHAWA,MANDISH K
ART UNIT PAPER NUMBER
2475
NOTIFICATION DATE DELIVERY MODE
05/09/2016 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):
ConleyRoseReporting@dfw.conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIAOMING ZHAO, JAMES EARL WOMACK, ZHIJUN CAI,
and WEI WU
Appeal2014-003943 1
Application 11/960,220
Technology Center 2400
Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and
GARTH D. BAER, Administrative Patent Judges.
BAER, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify Research In Motion Limited as the real party in
interest. Appeal Br. 2.
Appeal2014-003943
Application 11/960,220
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's final rejection of claims 1-6, 8-16, and 18-20. Appeal Br. 4.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
BACKGROUND
A. The Invention
Appellants' invention is directed to a system "for controlling user
equipment connectivity to packet data networks." Abstract. Independent
claims 1 and 12 are representative and reproduced below, with emphasis
added to the disputed elements:
1. A system for controlling user equipment (UE)
connectivity to packet data networks (PDNs), comprising:
a profile maintaining information related to connectivity
of the UE to a plurality of PDN s, wherein one or more of the
plurality of PDN s are added to the profile by a user of the UE;
and
one or more processors programmed to:
connect to a first PDN of the plurality of PDN s; and
connect to one or more additional PDNs of the
plurality of PDNs, while connected to the first PDN,
wherein the additional PDN s are selected based upon the
first PDN and at least one of:
the user-added one or more of the plurality of
PDN s maintained by the profile; and
behavior information data related to behavior
of the UE' s activity.
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Application 11/960,220
12. A method for controlling user equipment (UE)
connectivity to packet data networks (PDN s ), comprising:
maintaining a profile of information related to
connectivity of the UE to a plurality of PDNs, wherein one or
more of the plurality of PDN s are added to the profile by a user
of the UE;
by:
determining which of the plurality of PDN s to connect to
a network system automatically selecting the PDN
from the plurality of PDN s in the profile based on an
analysis of UE activity, or
selecting the PDN from the user-added one or more
of the plurality of PDN s maintained by the profile; and
setting a default parameter that is used to determine
whether selection of the PDN by the network system or the user
will have priority.
Appeal Br. 19, 22 (Claims App.).
B. The Reiections on Appeal
The Examiner rejects claims 1, 4---6, 8, 11-13, and 18-20 under
35 U.S.C. § 103(a) as unpatentable over U.S. Provisional Application No.
60/887 ,484 ("Karaoguz '484") in view of Sinnreich et al.
(US 2009/0279506 Al,published Nov. 12, 2009). 2 Final Act. 2-3.
2 During prosecution, the Examiner originally cited Karaoguz
(US 2008/0181179 Al, published July 31, 2008), which claims priority to
Karaoguz '484. See Final Office Action, mailed June 14, 2012. In response
to Appellants' challenge that the subject matter disclosed in Karaoguz did
not find support in Karaoguz '484, the Examiner subsequently cited
Karaoguz '484 for the relevant subject matter. See, e.g., Non-final Office
Action, mailed September 17, 2012.
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Appeal2014-003943
Application 11/960,220
The Examiner rejects claims 2-3 and 9-10 under 35 U.S.C. § 103(a)
as unpatentable over Karaoguz '484 in view of Sinnreich, and further in
view of Hind (US 2008/0287125 Al, published Nov. 20, 2008). Final
Act. 6.
The Examiner rejects claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Karaoguz '484, in view of Sinnreich, and further in view
of Faccin (US 2008/0254768 Al, published Oct. 16, 2008). Final Act. 8.
The Examiner rejects claims 15-16 under 35 U.S.C. § 103(a) as
unpatentable over Karaoguz '484, in view of Sinnreich, in view of Faccin,
and further in view of Hind. Final Act. 9.
ANALYSIS
A. Claims 1---6, 8-11, and 19-20
Appellants argue that an obviousness determination begins with a
finding that the prior art as a whole, in one form or another, contains all of
the elements of the claimed invention. Appeal Br. 10 (citing Graham v.
John Deere Co., 383 U.S. 1, 22 (1966)). However, we agree with the
Examiner that the mere existence of differences between the prior art and the
claim does not establish non-obviousness. See Ans. 7 (citing Dann v.
Johnston, 425 U.S. 219, 230 (1976)). Instead, the relevant question is
"whether the difference between the prior art and the subject matter in
question is a [difference] sufficient to render the claimed subject matter
unobvious to one skilled in the applicable art." Dann, 425 U.S. at 228
(internal quotations and citations omitted). Further, even assuming
arguendo that Appellants' argument is correct, the argument is not
determinative as to the patentability of the claims because, as discussed
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Application 11/960,220
below in greater detail, we agree with the Examiner that the cited prior art
teaches all of the claimed elements.
Appellants also argue that the combination of Karaoguz '484 and
Sinnreich fails to disclose "connect[ing] to one or more additional PDNs ...
while connected to the first PDN," as recited in independent claims 1 and 19,
and similarly recited in independent claim 20. Appeal Br. 10-11. More
specifically, Appellants argue that Karaoguz '484 fails to disclose
concurrent connections to multiple PDNs because Karaoguz '484 describes a
hand-over procedure for a first network to a second network, where the
second network provides a communication service to a mobile
communication device only if a hand-off from the first network to the
second network occurs. Appeal Br. 11-12. Appellants further argue that
Sinnreich fails to disclose concurrent connections to multiple PDN s because
Sinnreich describes changing from a first mode of access (i.e., first network)
to a second mode of access (i.e., second network) for subsequent
communication corresponding to a session while disconnecting the first
mode of access. Appeal Br. 13. Appellants also argue that both Karaoguz
'484 and Sinnreich are directed to handoffs between radio networks, and that
Appellants' specification makes clear that a PDN is not a radio network.
Appeal Br. 14 (citing Spec. i-f 18).
We do not find these arguments persuasive. The claims recite
"connect[ing] to one or more additional PDNs," rather than providing a
communication service. We agree with the Examiner that Karaoguz '484
teaches a mobile communication device connected to a first network, and
further teaches that the first network communicates preliminary handover
information to a second network in anticipation of a handoff of the mobile
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Application 11/960,220
communication device to the second network. Ans. 2--4 (citing Karaoguz,
'484 p. 9, 11. 13-24). Thus, we agree with the Examiner that Karaoguz '484
teaches connecting to an additional network (i.e., the second network) while
the mobile communication device is connected to the first network. Final
Act. 3. We also disagree with Applicants that Karaoguz '484 is limited to
non-packet based radio networks, as Karagouz '484 discloses packet-based
networks, including WiFi, mobile WiMAX, and 802 .15. See Karaoguz
'484, p. 6, 11. 26-28. Further, we conclude that the Examiner's
interpretation of "PDN" is reasonable, as we agree with the Examiner that
neither Appellants' claims nor Appellants' specification distinguishes the
claimed "PDN" from the networks disclosed in Karaoguz '484. See Ans. 6
(citing Spec. i-f 1 7).
Accordingly, we sustain the Examiner's rejection of independent
claims 1 and 19-20, and claims 2-6 and 8-11, not argued separately.
B. Claims 12-16 and 18
Appellants also argue that the combination of Karaoguz '484 and
Sinnreich fails to disclose "setting a default parameter that is used to
determine whether selection of the PDN by the network system or the user
will have priority," as recited in independent claim 12. Appeal Br. 14--15.
More specifically, Appellants disagree with the Examiner's taking of official
notice that the aforementioned claim element was obvious at the time of the
invention. Appeal Br. 15. Appellants also argue that none of the references
the Examiner cited as providing support for the official notice (i.e.,
Akerfeldt (US 2004/0113938 Al, published June 17, 2004), Greanias
(US 5,157,384 A; Oct. 20, 1992), Altschuler et al. (US 6,195,622 Bl, issued
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Application 11/960,220
Feb. 27, 2001), or Coez et al. (US 6,981,044 Bl, issued Dec. 27, 2005))
discloses the disputed element. Appeal Br. 15-17.
We do not find this argument persuasive. We agree with the
Examiner that Karaoguz '484 teaches two options for selecting a second
network for a handoff of a mobile communication device: (1) automatically
selecting a network based on historical hand-off behavior or pattern
indicated by a roaming profile and (2) selecting a network based on user-
defined criteria. Final Act. 5; Ans. 8. We further agree that the Examiner
has provided sufficient documentary evidence (e.g., Akerfeldt) that
determining whether a selection by a system or a user will have priority was
known to one of ordinary skill in the art at the time of the invention. Ans. 8.
"[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill." KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007). Thus, we agree with the Examiner that using
Akerfeldt's technique to improve the system taught by the combination of
Karagouz '484 and Sinnreich to include a default parameter that determines
whether an automatic network selection of a network or a user selection of a
network will have priority would have been obvious to one of ordinary skill
in the art because the improvement yields no more than predictable results.
Ans. 9.
Accordingly, we sustain the Examiner's rejection of independent
claim 12, and claims 13-16 and 18, not argued separately.
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Application 11/960,220
DECISION
We affirm the Examiner's rejection of claims 1-6, 8-16, and 18-20
under 35 U.S.C. § 103(a).
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
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