Seau Sian. Lim et al.

Patent Trials and Appeals Board

Oct 28, 2019

15241583 - (D) (P.T.A.B. Oct. 28, 2019)

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.
15/241,583 08/19/2016 Seau Sian Lim LUTZ 201316US02 6953
48116 7590 10/28/2019
FAY SHARPE/NOKIA
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
EXAMINER
CHOUDHURY, FAISAL
ART UNIT PAPER NUMBER
2478
NOTIFICATION DATE DELIVERY MODE
10/28/2019 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):
Nokia.IPR@nokia.com
docketing@faysharpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SEAU SIAN LIM and SUDEEP KUMAR PALAT
____________________

Appeal 2018-0062511
Application 15/241,583
Technology Center 2400
____________________

Before ALLEN R. Mac DONALD, CARL W. WHITEHEAD JR, and
MICHAEL M. BARRY, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 6–17 and 19–26. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

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. Appeal Br. 1.
Appeal 2018-006251
Application 15/241,583

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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
1. A method of operating a cellular wireless network,
comprising:
[A.] broadcasting information about a capability of a
cellular wireless network on a broadcast channel in
a cell of the cellular wireless network from an
access node associated with the cell, wherein the
information about the capability includes
information about a combined packet switched
emergency call capability of a network
combination including a packet core of the cellular
wireless network and the access node;
[B.] allowing a user equipment to perform emergency
calls in the cell where the information broadcast
about the capability indicates packet switched
emergency calls are supported by the network
combination; and
[C.] making the user equipment select a different cell
which supports emergency calls where the
information broadcast about the capability
indicates packet switched emergency calls are not
supported by the network combination;
[D.] wherein the user equipment selects the different cell
that supports emergency calls after receiving the
broadcast with the information about the capability
indicating packet switched emergency calls are not
supported by the network combination.
Appeal 2018-006251
Application 15/241,583

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REFERENCES2
The prior art relied upon by the Examiner is:
Name Reference Date
Buckley US 2009/0047922 A1 Feb. 19, 2009
Support for IMS Emergency
Calls over GPRS and EPS
(Release 9) 3
3GPP TR 23.869
V0.7.0 (2009-02)
2009

REJECTION
The Examiner rejects claims 6–17 and 19–26 under 35 U.S.C. § 103
as being unpatentable over the combination of 3GPP and Buckley. Final
Act. 3–10.
To the extent that Appellant discusses claims 7–17 and 19–26,
Appellant merely repeats or references (directly or indirectly) the arguments
directed to claim 6. Such a repeated argument (or referenced argument) is
not an argument for “separate patentability.” Thus, Appellant does not
present separate arguments for claims 7–17 and 19–26. Thus, the rejections
of these claims turn on our decisions as to claim 6. Except for our ultimate
decision, we do not discuss the § 103 rejections of claims 7–17 and 19–26
further herein.

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
3 Cited as “3GPP” herein. The 3GPP reference may more fully be referred
to as “3rd Generation Partnership Project; Technical Specification Group
Services and System Aspects; Support for IMS Emergency Calls over GPRS
and EPS; (Release 9).”

Appeal 2018-006251
Application 15/241,583

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OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief and Reply Brief arguments that the Examiner has erred.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 6 under 35 U.S.C. § 103.4
This obviousness rejection is in error because neither [3GPP],
nor Buckley, nor the combination thereof disclose or fairly
suggest the “making” element. . . .
Appeal Br. 8. Appellant acknowledges:
The Buckley wireless device collects information associated
with available access types at the location at which the wireless
device is positioned. The Buckley wireless device generates a
report that lists the collected information. . . . In response to a
SIP [(Session Initiation Protocol)] Invite with an emergency
number, the Buckley mobile station receives and detects a SIP
380 [message] from a network node. The information contained
in the SIP 380 message causes the Buckley mobile station to
conform to instructions in the message, such as instructions to
utilize a different access type for further communications. For
example, instructions may be given to the SIP UA [(User Agent)]
of the Buckley mobile station to choose an alternative domain,
such as a circuit-switched domain, to choose a packet-switched
domain, or to provide a list of access types available to the SIP
UA.
Appeal Br. 8 (emphasis added). Appellant then asserts:
Buckley does not use the claimed information broadcast that in-
dicates packet switched calls are not supported by an access node
or a packet core. The claimed broadcast eliminates emergency
call scenarios in which the user equipment initiates an emergency

4 Appellant repeats this argument (Appeal Br. 10–11) for the “wherein”
clause of claim 6. We reach the same result for the same reasons.
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Application 15/241,583

5
call to a cellular wireless network that is not capable of pro-
cessing the call. In fact, Buckley is an example of an efficiency
problem the claimed method was intended to resolve - i.e., an
emergency call that fails because the network was never capable
of supporting the call followed by a sequence of messages to
identify an alternate way to complete the emergency call. There-
fore, it is not appropriate to rely on the cited portions of Buckley
for disclosure of the “making” element.
Appeal Br. 10 (emphasis added).
The Examiner responds to Appellant’s “making” argument as follows:
Examiner notes that he must give each limitation of its broadest
reasonable interpretation. Message that indicates circuit-
switched domain used for emergency call as taught by Buckley
at paragraph [0022] corresponds to the broadcast information and
this message is indicating emergency call through circuit switch
domain means emergency call is not through packet switch do-
main (=packet core). When the message indicates that the emer-
gency call is supported by the circuit switch domain[, it] means
the message indicates that the emergency calls are not
supported by the packet switch network . . . . Buckley also
broadly solves the “efficiency problem” argued by applicant
since the network would be capable of making that call based on
access type and that the network would be available as disclosed
by Buckley (i.e., the call would not fail as argued by applicant
since the networks are available). Again, applicant does not
specifically claim how the capability information is broadcasted.
Instead, applicant merely claims that the UE [(user equipment)]
has the ability to select another/different cell based on the
broadcasted capability information by the network combination
when the capability information indicates packet switched
emergency calls are not supported by the network combination
which, again, is what is broadly taught in para. [0022] of
Buckley, as noted above, where the UE chooses an alternative
domain (cell) when the network combination is not supported as
broadly claimed.
Ans. 6–7 (bolded italic emphasis added).
Appeal 2018-006251
Application 15/241,583

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We are unpersuaded by Appellant’s argument. We disagree with
Appellant’s assertions and we agree with the Examiner’s reasoning. We
agree with the Examiner that “[i]n the applicant’s claim 6, the claim
limitation does not further say how the information indicates that an
emergency call is not supported by packet core network.” Ans. 6 (emphasis
omitted).5 We conclude that the “making” limitation is of such breadth so as
to include standard cell switching but limited to cells that support the needed
purpose. As the Examiner correctly finds, Buckley teaches that needed
purpose of using the circuit-switched domain for an emergency call when a
packet switch emergency call is not supported by the cell. Final Act. 6, lines
5–7.

CONCLUSION
The Examiner has not erred in rejecting claims 6–17 and 19–26 as
being unpatentable under 35 U.S.C. § 103.
The Examiner’s rejection of claims 6–17 and 19–26 and as being
unpatentable under 35 U.S.C. § 103 is affirmed.

5 The Appellant points to paragraphs 20, 25, 26, and 31 as supporting the
“making” clause of claim 6. Appeal Br. 3; see also Reply Br. 3–4
(additionally citing Fig. 2). As with the Examiner’s determination as to
claim 6 itself, we conclude that this disclosure lacks any particular limiting
specificity as to how to implement the claim 6 requirement for “indicating
packet switched emergency calls are not supported by the network
combination,” as recited.
Appeal 2018-006251
Application 15/241,583

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
6–17, 19–26 103 Buckley, IMS
Emergency Calls over
GPRS and EPS (3GPP
Release 9)
6–17, 19–26

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