NOKIA TECHNOLOGIES OY

Patent Trials and Appeals Board

Jan 19, 2021

2019005520 (P.T.A.B. Jan. 19, 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.
15/379,884 12/15/2016 Istvan Zsolt KOVACS 059864.02491 5478
11051 7590 01/19/2021
SQUIRE PB (Nokia)
Nokia Technologies Oy
ATTN: IP Department
2550 M Street, NW
Washington, DC 20037
EXAMINER
SMITH, JOSHUA Y
ART UNIT PAPER NUMBER
2477
NOTIFICATION DATE DELIVERY MODE
01/19/2021 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):
IP-Squire@SquirePB.com
sonia.whitney@squirepb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ISTVAN ZSOLT KOVACS, JEROEN WIGARD, and
THOMAS JACOBSEN
____________________

Appeal 2019-005520
Application 15/379,884
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, JEAN R. HOMERE, and
SCOTT RAEVSKY, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. Appeal Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b).

1 Appellant identifies the real party in interest as Nokia Technologies.
Appeal Br. 3.
Appeal 2019-005520
Application 15/379,884

2
We REVERSE.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
1. An apparatus comprising:
[A.] at least one memory comprising computer program code;
[B.] at least one processor;
[C.] wherein the at least one memory and the computer
program code are configured, with the at least one
processor, to cause the apparatus at least to:
[i.] send a short identification from a user equipment to a
base station during a contention based access
instance,
[a.] wherein the short identification is generated
based on an initial cell radio network temporary
identification;
[ii.] receive at the user equipment a user equipment radio
network temporary identification from the base
station; and
[iii.] generate at the user equipment a subsequent cell
radio network temporary identification based at
least on[:]
[a.] the short identification and
[b.] the received user equipment radio network
temporary identification.

Appeal 2019-005520
Application 15/379,884

3
REFERENCES2
The Examiner relies on the following references:
Name Reference Date
Nakada US 2001/0053697 A1 Dec, 20, 2001
Sun US 2008/0139214 A1 June 12, 2008
Shi US 2011/0070900 A1 Mar. 24, 2011
Ono US 2015/0003394 A1 Jan. 1, 2015
Bontu US 2015/0147995 A1 May 28, 2015

REJECTIONS
A.
The Examiner rejects claims 1–3, 9–17, 19, and 20, under 35 U.S.C.
§ 103 as being unpatentable over the combination of Sun and Ono. Final
Act. 3–16.
We select claim 1 as the representative claim for this rejection. The
contentions discussed herein as to claim 1 are dispositive as to this rejection.
Therefore, except for our ultimate decision, we do not address the merits of
the § 103 rejection of claims 2, 3, 9–17, 19, and 20 further herein.
B.
The Examiner rejects claims 4 and 5, under 35 U.S.C. § 103 as being
unpatentable over the combination of Sun, Ono, and Shi. Final Act. 16–18.

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
Appeal 2019-005520
Application 15/379,884

4
The Examiner rejects claims 6, under 35 U.S.C. § 103 as being
unpatentable over the combination of Sun, Ono, and Bontu. Final Act. 18–
19.
The Examiner rejects claims 7, 8, and 18, under 35 U.S.C. § 103 as
being unpatentable over the combination of Sun, Ono, and Nakada. Final
Act. 20–22.
The contentions discussed herein as to claim 1 are dispositive as to
these rejections. Therefore, except for our ultimate decision, we do not
address the merits of the § 103 rejections of claims 4–8 and 18 further
herein.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Appellant’s contentions we discuss
are dispositive as to the rejections on appeal. Therefore, Appellant’s other
contentions are not discussed in detail herein.
A.1.
As reproduced supra, part C.iii. of claim 1 requires (emphasis added):
generate at the user equipment a subsequent cell radio network
temporary identification based at least on the short identification
and the received user equipment radio network temporary
identification; 3

3 Claim 13 differs only in that it recites “generate at the base station a
subsequent cell radio network temporary identification based at least on
the short identification and the user equipment radio network temporary
identification.”
Appeal 2019-005520
Application 15/379,884

5
A.2.
In rejecting claim 1, the Examiner finds that the features of part C are
taught in paragraph 144 and 149, and figures 7 and 8 of Sun. Final Act. 4.
A.3.
Appellant contends that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103 because:
[P]aragraphs [0144] and [0149] of Sun do not disclose or suggest
that the user equipment of Sun generates a cell radio network
temporary identification. On the contrary, Sun, in paragraph
[0144], explains that the user equipment sends the random access
preamble sequence to the base station, and that C[-]RNTI
assignment information will be sent in the response message of
the random access preamble sequence to the user equipment.
Paragraph [0149] also fails to disclose or suggest that the user
equipment of Sun generates the C-RNTI, but only discloses that
“. . . the user equipment may determine the corresponding
C-RNTI group according to its random access preamble
sequence and transmission sub-frames and the grouping
relationship in Table 5.”
. . . .
In addition to the above deficiencies, the Final Office
Action cites to Sun paragraphs [0109], [0110], and [0144], as
allegedly disclosing the claimed initial cell radio network
temporary identification, paragraphs [0111] and [0144] as
disclosing the claimed user equipment radio network temporary
identification, and refers to paragraphs [0144] and [0149] as
disclosing the claimed subsequent cell radio network temporary
identification. However, these paragraphs of Sun only disclose
a “C-RNTI grouping mode,” “a C-RNTI group,” “C-RNTI
assignment information," and allocation of the C-RNTI. Sun
makes no distinction between its C-RNTI, such that one of
ordinary skill in the art would interpret Sun to disclose or suggest
an initial C-RNTI, subsequent C-RNTI, or a user equipment
radio network temporary identity that is distinct from its
C-RNTI.
Appeal 2019-005520
Application 15/379,884

6
Therefore, Sun fails to disclose or suggest, at least, . . .
“a subsequent cell radio network temporary identification,” as
recited in claim 1.
Appeal Br. 9–12 (emphasis added).
A.4.
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“A rejection based on section 103 clearly must rest on a factual basis[.]” In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” Id. We conclude the Examiner’s
analysis fails to meet this standard because the rejection does not adequately
explain the Examiner’s findings of fact.
We agree with Appellant that “the combination of Sun and Ono fails
to disclose or suggest” (Appeal Br. 11) “generate . . . a subsequent cell radio
network temporary identification based at least on the short identification
and the user equipment radio network temporary identification” (claim 1,
part C.iii.). We conclude, consistent with Appellant’s argument, that there is
currently insufficient articulated reasoning to support the Examiner’s finding
that Sun teaches, suggests, or otherwise renders obvious limitation C.iii as
required by claim 1.
Therefore, we conclude that there is insufficient articulated reasoning
to support the Examiner’s final conclusion that claim 1 would have been
Appeal 2019-005520
Application 15/379,884

7
obvious to one of ordinary skill in the art at the time of Appellant’s
invention.

CONCLUSION
The Appellant has demonstrated the Examiner erred in rejecting
claims 1–20 as being unpatentable under 35 U.S.C. § 103.
The Examiner’s rejections of claims 1–20 as being unpatentable under
35 U.S.C. § 103 are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 9–17,
19, 20
103 Sun, Ono 1–3, 9–17,
19, 20
4, 5 103 Sun, Ono, Shi 4, 5
6 103 Sun, Ono, Bontu 6
7, 8, 18 103 Sun, Ono, Nakada 7, 8, 18
Overall
Outcome

1–20

REVERSED