GEMALTO M2M GMBH

Patent Trials and Appeals Board

Jul 29, 2020

15104292 - (D) (P.T.A.B. Jul. 29, 2020)

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.
15/104,292 06/14/2016 Volker BREUER 0088076-000012 5146
21839 7590 07/29/2020
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
TORRES, MARCOS L
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
07/29/2020 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VOLKER BREUER and THOMAS ULRICH

Appeal 2019-003092
Application 15/104,292
Technology Center 2600
____________

Before JOHN A. EVANS, JOHN P. PINKERTON, and
MICHAEL M. BARRY, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1, 3–8, and 10–14, which are all of the
claims pending in this application.1 Appeal Br. 1, Claims App. 1–5. Claims
2 and 9 are canceled. See Appellant’s Response to Final Office Action 2, 4,
7 (filed August 17, 2017). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies GEMAL TO M2M GmbH, as the real
party in interest. Appeal Br. 2.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief and Claims Appendix, filed October 22, 2018
(“Appeal Br.”, “Claims App.”); the Reply Brief filed March 11, 2019
(“Reply Br.”); the Examiner’s Answer mailed January 11, 2019 (“Ans.”);
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STATEMENT OF THE CASE
CLAIMED SUBJECT MATTER
The claims relate to a method for operating a wireless device in a
wireless cellular network. Spec. 1:6–7. The wireless device may comprise a
communication unit for communicating with a network node of the wireless
cellular network, and the wireless cellular network may comprise at least
two radio access networks, each supporting a different access technology.
Id. at 1:7–11, 2:17–18.
CLAIMS
Claims 1 and 8 are independent. An understanding of the invention
can be derived from a reading of representative claim 1, which is reproduced
below with some formatting added:
1. Method to operate a wireless device in a wireless
cellular network, the wireless device comprising a
communication unit and at least one storage element storing
network access rights, the wireless cellular network comprising
at least two radio access networks, the communication unit
being configured to communicate to a network node being part
of the wireless cellular network, the network node belonging to
a first radio access network, the method comprising the steps
for the communication unit of:
detecting if a second radio access network of said
wireless cellular network fulfills a predefined set of access
parameters,
wherein the second radio access network supports
a different access technology than the first radio access
network, and

the Final Office Action mailed May 18, 2018 (“Final Act.”); and the
Specification filed June 14, 2016 (“Spec.”), for their respective details.

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- if the detection step indicates that said second radio
access network fulfills said set of access parameters:
sending a connection release indication to the
network node,
receiving from the network node a connection
release confirmation message, and
sending a connection request message to the
wireless cellular network with selection of said second
radio access network, wherein
the set of access parameters further comprises the
requirement that said network access rights indicate that the
second radio access network is configured as a preferred radio
access network and that the wireless device is entitled to access
the second radio access network.
Appeal Br., Claims App. 1.

REJECTIONS
Claims 1 and 8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Masuda et al. (US 2016/0242116 A1; published August
18, 2016, “Masuda”) and Drazynski et al. (US 2013/0017820 A1; Published
January 17, 2013, “Drazynski”). Final 3–4.
Claims 3–7 and 10–14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Masuda, Drazynski, and Ben-Itzhak et al. (US
2015/0024787 A1; published January 22, 2015, “Ben-Itzhak”). Id. at 4–5.

ANALYSIS
We have reviewed the rejections of Claims 1, 3–8, and 10–14 in light
of Appellant’s arguments that the Examiner erred. We have considered in
this decision only those arguments Appellant actually raised in the Briefs.
Any other arguments which Appellant could have made, but chose not to
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make in the Briefs, are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). We adopt as our own the findings and reasons set forth in
the Examiner’s Answer and in the rejection on Appeal for these claims, to
the extent consistent with our analysis below. We provide the following
explanation to highlight and address specific arguments and findings
primarily for emphasis.

CLAIMS 1, 3, 5–8, 10, and 12–14:
OBVIOUSNESS BASED AT LEAST ON MASUDA AND DRAZYNSKI
Appellant presents arguments for the 35 U.S.C. § 103(a) rejection of
claim 1 and relies on those same arguments as a basis for disputing the
35 U.S.C. § 103 rejections of claims 3, 5–8, 10, and 12–14. Appeal Br. 6–
10. Therefore, we analyze these claims on the basis of representative claim
1, and refer to the rejected claims collectively herein as “the claims.” See 37
C.F.R. § 41.37(c)(1)(iv); see also In re Marco Guldenaar Holding B.V., 911
F.3d 1157, 1162 (Fed. Cir. 2018).
In rejecting claim 1 as obvious over the combination of Masuda and
Drazynski, the Examiner finds that Masuda teaches, among other things,
“the wireless cellular network comprising at least two radio access networks
. . . wherein the second radio access network supports a different access
technology than the first radio access network.” Final 3–4 (citing Masuda
¶¶ 16, 41–44, 92, 94–151, and Fig. 1 (items 100-C1, 100-C2)). The
Examiner finds that Drazynski also teaches this limitation because
“Drazynski explicitly discloses that the handoff is between two different
access technologies inter-RAT.” Id. at 2 (citing Drazynski ¶ 53).
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Appellant disputes the Examiner’s findings and contends that neither
Masuda nor Drazynski discloses or suggests two separate or distinct radio
access networks (RANs) supporting different radio access technologies
(RATs). Appeal Br. 7–9. With respect to Drazynski, Appellant
acknowledges the Examiner’s additional finding, but argues that “the use of
inter-RAT does not disclose or suggest the configuration of a second access
network as a preferred radio access network that supports a different access
technology than the first, as recited in the present claims.” Id. at 9 (citing
Drazynski ¶ 53).
In response to Appellant’s arguments, the Examiner asserts, among
other things, that Drazynski’s “teaching of a closed subscriber group white
list does read [on] the limitation of a preferred radio access network since
the UE is going to prefer the allowed CSG cells from the barred ones . . . and
the second radio access network supports a different access technology than
the first radio access network.” Ans. 6 (citing Drazynski ¶¶ 28, 49, 53, and
74). The Examiner therefore argues that “Drazynski disclose[s] the
configuration of a second radio access network as a preferred radio access
network where the second radio access network supports a different access
technology than the first radio access network.” Id.
We are not persuaded of error because the Examiner has shown that
Drazynski teaches or suggests the disputed claim limitations. In particular,
we agree with the Examiner that Drazynski’s mobility procedure, which also
applies to inter-RAT mobility from LTE to HNB,3 teaches or at least
suggests at least two RANs, each supporting a different RAT. See, e.g.,
Drazynski ¶ 53 (describing steps of a mobility procedure from a source

3 Home Node B (“HNB”) refers to a 3G (UMTS) femtocell or small cell.
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eNB/HeNB to a target HeNB that “also apply to inter-RAT mobility from
LTE to HNB”), and Fig. 1B. We also agree with the Examiner that
Drazynski suggests “that the second radio access network is configured as a
preferred radio access network,” as recited. See Ans. 6 (citing Drazynski
¶¶ 53, 74). Drazynski’s UE stores allowed cells on a closed subscriber
group (“CSG”) white-list and distinguishes them from other cells (including
barred cells). Drazynski ¶ 74. Drazynski’s mobility procedure—which
includes mobility from a cell on an LTE network to an HNB cell on a 3G
(UMTS) network—targets cells that are on the UE’s CSG white-list. See,
e.g., Drazynski ¶ 53. These disclosures suggest that during a mobility
procedure (such as from a source cell on an LTE network to a target cell on
a 3G (UMTS) network), the target cell and its RAN would be “preferred”
over other cells (and their associated RANs) not on the UE’s CSG white-list.
Because the Examiner has shown that Drazynski teaches or suggests the
disputed limitations, we need not address whether Masuda does as well. In
re Keller, 642 F.2d 413, 425 (CCPA 1981).
Nor are we convinced by Appellant’s argument that Masuda
discourages modification of its system to achieve the claimed invention. See
Appeal Br. 8 (citing Masuda ¶¶ 44–47). A teaching away requires a
reference to actually criticize, discredit, or otherwise discourage the claimed
solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Although
Masuda’s solution may differ from Appellant’s invention in terms of the
rules and arrangements it uses for cells, Appellant does not present—nor do
we find—any persuasive evidence that Masuda criticizes, discredits, or
otherwise discourages the multi-RAN and multi-RAT features of the
claimed invention. Mere differences between the prior art and the claimed
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invention are not enough to show a teaching away. See In re Beattie, 974
F.2d 1309, 1312–13 (Fed. Cir. 1992).
For the foregoing reasons, we sustain the Examiner’s 35 U.S.C. § 103
rejection of claims 1, 3, 5–7, 8, 10, and 12–14.

CLAIMS 4 AND 11:
OBVIOUSNESS BASED ON MASUDA, DRAZYNSKI, AND BEN-ITZHAK
In rejecting claim 4 (and claim 11, which recites similar limitations)
as obvious over the combination of Masuda, Drazynski, and Ben-Itzhak , the
Examiner finds, among other things, that Ben-Itzhak teaches “wherein the
availability of the second radio access network is determined by measuring
signaling from network nodes belonging to neighbour cells.” Final 4–5
(citing Ben-Itzhak ¶ 21). The Examiner explains that in Ben-Itzhak, “the
neighboring AP can be equated to the neighboring cell.” Ans. 7 (citing
Ben-Itzhak ¶¶ 21–23, 27–30). The Examiner explains further “the claims
never specif[y] the technologies or if they are cellular,” and “they are only
required to communicate with network node that is part of the wireless
cellular network,” which “Masuda discloses in par. 0003” with its “WLAN
in combination with mobile telephone system.” Id.
Appellant disputes the Examiner’s findings and asserts that “in Ben-
Itzhak the availability of networks is based on if an SSID is received, which
would be received as broadcast by the network itself through an access
point, and not from any neighboring cell.” Appeal Br. 10 (citing Ben-Itzhak
¶ 21) (emphasis omitted). Appellant asserts further that “Ben-Itzhak deals
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with wireless computer networks as evidenced by the use of SSIDs, and not
cellular networks as recited in the present claims.” Id. at 10–11.
We are not persuaded that the Examiner’s proposed combination is
erroneous. Notwithstanding the cited disclosures of Ben-Itzhak, the
Examiner’s rejection also relies on Drazynski, which teaches the disputed
limitation with its reference to the 3GPP TS 36.300 technical specification’s
ANR Inter-RAT/Inter-frequency Automatic Neighbor Relation Function.
See Drazynski ¶ 90. Moreover, Appellant’s Specification acknowledges that
[a]ccording to the known access technology standards, network
nodes of one radio access network provide information through
the signalling to wireless devices concerning neighbour cells
including those from different radio access networks which are
read resp. decoded by the wireless devices. This method is
known e.g. for LTE as automatic neighbourhood relation
(ANR). Alternatively also dedicated measurement control
information can be used to retrieve the necessary data
concerning neighbour cells from different radio access
networks.
Spec. 7:7–16. In other words, Appellant admits in the Specification that the
subject matter recited in claims 4 and 11 is a known technique in accordance
with known access technology standards.
Nor do Appellant’s arguments include any persuasive evidence that
the proposed combination would have been uniquely challenging or
anything more than a routine exercise of combining familiar elements
according to known methods or applying known techniques to achieve
predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416–17
(2007) (Explaining as examples of combinations likely to be obvious “[t]he
combination of familiar elements according to known methods . . . when it
does no more than yield predictable results” and “the mere application of a
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known technique to a piece of prior art ready for the improvement.”); see
also Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418).
For the foregoing reasons, we sustain the Examiner’s 35 U.S.C. § 103
rejection of claims 4 and 11.

DECISION
We affirm the Examiner’s rejection of claims 1, 3–8, and 10–14 under
35 U.S.C. § 103.
CONCLUSION

In summary:

Claims
Rejected
35 U.S.C. § Referemce)s/Basis Affirmed Reversed
1, 8 103 Masuda, Drazynski 1, 8
3–7, 10–14 103 Masuda, Drazynski,
Ben-Itzhak
3–7, 10–
14

Overall
Outcome
1, 3–8,
10–14

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED