Gras, Laurence et al.

Patent Trials and Appeals Board

Feb 8, 2021

2019004402 (P.T.A.B. Feb. 8, 2021)

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.
12/676,891 12/01/2010 Laurence Gras LUTZ 201121US01 6024
48116 7590 02/08/2021
FAY SHARPE/NOKIA
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
EXAMINER
PREVAL, LIONEL
ART UNIT PAPER NUMBER
2416
NOTIFICATION DATE DELIVERY MODE
02/08/2021 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
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURENCE GRAS, BRUNO MONGAZON-CAZAVET, and
FRANCOIS TABURET
Appeal 2019-004402
Application 12/676,891
Technology Center 2400
Before CAROLYN D. THOMAS, MIRIAM L. QUINN, and
TERRENCE W. MCMILLIN, Administrative Patent Judges.
QUINN, Administrative Patent Judge.
DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 4, 6–10, 12–24, 26, 30, 31, and
33–42, which constitute all the claims pending in this application. See Final
Act. 1. Claims 2, 5, 11, 25, 27–29, and 32 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to an interworking node for interworking
between WiMAX and 3GPP networks.
Claims 1, 6, 31, 33, and 41 are independent claims. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An apparatus for interworking between WiMAX and
3rd Generation Partnership Project (3GPP) networks,
comprising:
an interworking (IWK) node configured to communicate
with a 3GPP network using a 3GPP Gi interface between the
IWK node and a gateway general packet radio service (GPRS)
support node (GGSN) in the 3GPP network, configured to
communicate with a WiMAX network using a WiMAX R3
interface between the IWK node and a Home Connectivity
Service Network (CSN) in the WiMAX network, and configured
to interwork between the 3GPP network and the WiMAX
network in conjunction with providing internet protocol (IP)
connectivity services of the WiMAX network to a dual-mode
WiMAX/3GPP mobile station (MS) when the MS is served by a
radio access network (RAN) of the 3GPP network and in
conjunction with providing IP connectivity services of the 3GPP

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Alcatel Lucent of
Paris, France. Appeal Br. 1.
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network when the MS is served by an access service network
(ASN) of the WiMAX network;
wherein the IWK node is configured to interwork between
the 3GPP network and the WiMAX network in conjunction with
providing the MS with access to the Home CSN of the WiMAX
network to authenticate the MS based on a WiMAX subscriber
identifier for the MS when the MS is served by the RAN of the
3GPP network using a dedicated access point name (APN) in the
WiMAX network mapped to an IWK address at the IWK node;
wherein the IWK node is configured to interwork between
the 3GPP network and the WiMAX network in conjunction with
providing the MS with access to a packet core network of the
3GPP network to authenticate the MS based on a 3GPP
subscriber identifier for the MS when the MS is served by the
ASN of the WiMAX network using the dedicated APN mapped
to the IWK address at the IWK node.
Appeal Br. 31−32 (Claim Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Feather US 2004/0081173 A1 Apr. 29, 2004
Qian US 2008/0205343 A1 Aug. 28, 2008
Bucker US 2009/0052396 A1 Feb. 26, 2009
Kim US 2005/0282547 A1 Dec. 22, 2005

REJECTIONS
Claims Rejected 35 U.S.C. § Reference(s)/Basis
1, 3, 4, 6–10, 12, 13,
15–19, 21, 23, 24, 26,
30, 31, 33–42
103(a) Bucker, Qian
8, 14 103(a) Bucker, Qian, Kim
20, 22 103(a) Bucker, Qian, Kim,
Feather
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OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Our opinion focuses on the Examiner’s reliance on Bucker as applied to
claims 1, 6, 31, 33, and 41 (the independent claims). Appellant presents
arguments for claim 1, and repeats substantially the same arguments for the
remaining independent claims 6, 31, 33, and 41. Appeal Br. 19−30.
Therefore, we analyze the obviousness rejection of the independent claims
based on the argument and evidence presented for claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv). For the reasons that follow, we determine that Appellant
has not persuaded us that the Examiner erred.

Discussion of Appellant’s Argument in the Appeal Brief
Appellant argues that the claim recites two distinct “wherein” clauses,
neither of which Bucker teaches as asserted by the Examiner. The first
“wherein” clause recites:
wherein the IWK node is configured to interwork between
the 3GPP network and the WiMAX network in conjunction with
providing the MS with access to the Home CSN of the WiMAX
network to authenticate the MS based on a WiMAX subscriber
identifier for the MS when the MS is served by the RAN of the
3GPP network using a dedicated access point name (APN) in the
WiMAX network mapped to an IWK address at the IWK node.
Appeal Br. 31 (Claim Appendix). For ease of discussion, and according to
Appellant, this clause provides a mobile station (MS or user terminal) access
to the 3GPP network with authentication by the WiMAX network. See
Reply 4. The second “wherein clause recites:
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wherein the IWK node is configured to interwork between
the 3GPP network and the WiMAX network in conjunction with
providing the MS with access to a packet core network of the
3GPP network to authenticate the MS based on a 3GPP
subscriber identifier for the MS when the MS is served by the
ASN of the WiMAX network using the dedicated APN mapped
to the IWK address at the IWK node
Appeal Br. 32 (Claim Appendix). Simply stated, and according to
Appellant, this clause provides the mobile station with access to the
WiMAX network with authentication by the 3GPP network. See Reply 4.
Appellant contends that the Examiner erred in finding Bucker teaches
the two wherein clauses because:
Rather, Bucker uses an expanded AAA in a WiMAX
network that stores MS information that includes a common
privacy key for creating a message authentication code (MAC)
for the MS; a home agent address (HA@) for the MS; and a home
address (HoA) for the MS in its home network. The Bucker
system uses the expanded AAA to authenticate access requests
from the MS in both the UMTS/3GPP and WiMAX networks
and controls switching between the two networks using a care-of
address (CoA).
Appeal Br. 16, 18 (repeating this argument verbatim for all independent
claims at pages 20, 21, 23, 24, 26, 27, and 29). Appellant’s argument
characterizes Bucker’s disclosure in a certain manner, for example by stating
that Bucker uses an “expanded AAA” and a “message authentication code”
and that it “controls switching between the two networks using a care-of-
address.” The argument, however, does not identify how any of these
characterized features of Bucker distinguish from the claim, i.e., how the
expanded AAA distinguishes from the claimed interworking node. The
failure of Appellant to explain clearly and persuasively how Bucker differs
from the claimed subject matter puts us in an untenable position of having to
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speculate about what Appellant contends constitutes error in the Examiner’s
rejection. Therefore, we find that the argument presented in the Appeal
Brief does not show error in the Examiner’s rejection.

Examiner’s Findings Regarding Bucker
Furthermore, we find that the Examiner adequately explains the
rejection in the Examiner’s Answer. For example, the Examiner finds, and
we agree, that Bucker’s AAA node performs the recited functions of the
interworking node. Ans. 5. For instance, the Examiner states that the AAA
server serves both the 3GPP network and the WiMAX network. Id. at 6
(citing Bucker ¶ 29).
The Examiner further finds, and we agree, that Bucker explains how a
user terminal may be authenticated on the WiMAX network using the saved
3GPP authentication information (thereby teaching the second “wherein”
clause). Id. at 5 (citing Bucker ¶¶ 6−9, 10, 11); see also id. at 7 (citing
Bucker ¶ 37 and explaining also that the International Mobile Subscriber
Identity (IMSI) may be used to authenticate the user terminal on the
WiMAX network).
Additionally, the Examiner finds, and we agree, that Bucker saves the
WiMAX network authentication, which the AAA server uses to authenticate
the user terminal when on the 3GPP network (thereby teaching the first
“wherein” clause). Id. at 5; see also id. at 7 (citing Bucker ¶ 37 and
explaining that the AAA server replies with the WiMAX terminal home
address “HoA” and other WiMAX terminal identifiers, to set up an R4
tunnel to the WiMAX Network from the GGSN (in the 3GPP network) if
there was an earlier established connection to the 3GPP network). The
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Examiner concludes, and we agree, that Bucker stores the WiMAX
subscriber ID and uses it to authenticate the user terminal in the 3GPP
network. Id. at 7−8; see also Bucker ¶ 33.
Finally, the Examiner finds, and we agree, that Bucker explains
setting up a connection to either the WiMAX or 3GPP network using a PDP
context activation request (in the 3GPP network) or an access authentication
request (in the WiMAX network) such that an access point name or APN
reaches the home agent (HA), and, more importantly, the AAA server. Id. at
6−7 (citing Bucker ¶ 35).
What emerges from the Examiner’s explanation of Bucker is that the
AAA server stores the mobile station’s identifiers in the both the 3GPP and
WiMAX network so that, as the mobile station roams from one network to
the other, the AAA server provides the authentication information necessary
for the seamless handover between networks. Accordingly, we find that
Bucker supports the Examiner’s rejection of claim 1.

Claim Interpretation of “Interworking”
In its Reply, Appellant agrees with the Examiner’s determination that
the word “interworking” may be defined as “the state or an instance of two
or more things working with or being made to work with each other.”
Reply 2; Ans. 4−5 (citing Webster’s dictionary). Appellant, however, takes
issue with the Examiner’s application of the defined term. Reply 2−3. More
specifically, Appellant disagrees that “switching a user terminal between a
cellular network and a WiMAX network is the definition of ‘interworking’.”
Id. at 2. Appellant states that the Examiner erred because “the
‘interworking’ definition does not incorporate the ‘switching’ term or
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contemplate ‘switching’ a ‘user terminal’ between different networks.” Id.
at 3; see also id. at 11 (arguing that the “claimed ‘interworking’ feature does
not switch the MS between the 3GPP network and the WiMAX network or
vice versa”). This argument is not persuasive.
The manner in with the recited “interworking (IWK) node” performs
“interworking” is defined by the claim language itself. The claim language
states that the “IWK node is configured to interwork between the 3GPP
network and the WiMAX network” and describes doing so by providing the
access via authentication. Thus, the Examiner has reasonably pointed out
that the AAA server performs the recited “interworking” because the AAA
server performs the recited authentication that results in providing the
mobile station access to the recited networks. Therefore, we find that
Appellant’s argument that “interworking” does not encompass “switching”
is not persuasive in showing that the Examiner erred. For the same reason,
Appellant’s argument that the independent claims do not mention any
“handover” is not persuasive. See Reply 3 (arguing that only some
dependent claims recite “handovers”).
CONCLUSION
Appellant’s arguments have not persuaded us that the Examiner erred
in relying on Bucker as teaching the first and second “wherein” clauses as
argued by Appellant. Therefore, the Examiner’s rejections are sustained.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 4,
6−10, 12,
13, 15–19,
21, 23, 24,
26, 30, 31,
33–42
103(a) Bucker, Qian 1, 3, 4, 6–
10, 12, 13,
15–19, 21,
23, 24, 26,
30, 31, 33–
42

8, 14 103(a) Bucker, Qian, Kim 8, 14
20, 22 103(a) Bucker, Qian,
Kim, Feather
20, 22
Overall
Outcome
1, 3, 4, 6–
10, 12–24,
26, 30, 31,
33–42

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