Ex Parte Bienn et al

Patent Trial and Appeal Board

May 31, 2017

13278782 (P.T.A.B. May. 31, 2017)

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.
13/278,782 10/21/2011 Marvin Bienn P34556-US2 2551
27045 7590 06/02/2017
F.RTrSSON TNC EXAMINER
6300 LEGACY DRIVE MANSOURY, NOURALI
M/SEVR 1-C-ll
PLANO, TX 75024 ART UNIT PAPER NUMBER
2414
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
kathryn.lopez@ericsson.com
michelle. sanderson @ eric sson .com
candy.sanders@ericsson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARVIN BIENN and GARY STEPHENS1
Appeal 2016-008449
Application 13/278,782
Technology Center 2400
Before JASON V. MORGAN, NABEEL U. KHAN, and
KAMRAN JIVANI, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Telefonaktiebolaget
LM Ericsson. App. Br. 2.
Appeal 2016-008449
Application 13/278,782
Introduction
This is an appeal, under 35 U.S.C. § 134(a), from the Examiner’s
rejection of claims 1—3, 9-11, 17—20, 22—25, and 27—34. Non-Final
Act. (Oct. 22, 2015), Office Action Summary. The Examiner objects to, but
does not reject, claims 4—8, 12—16, 21, and 26. Id. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE and enter NEW GROUNDS OF REJECTION.
Invention
The invention is directed to “[a]n Anchor Mobile Switching Center
emulation (MSCe) and a Target MSCe . . . that take part in an intersystem
handoff of a Mobile Station (MS) which is in communication with a
B-party.” Spec. 32 (abst.).
Exemplary Claim (Emphasis added)
1. An Anchor Mobile Switching Center emulation (MSCe)
for supporting an intersystem handoff of a Mobile Station (MS)
from an Anchor Network to a Target Network, wherein the MS
is in communication with a B-Party, wherein the Anchor
Network comprises an Anchor Base Station (BS), the Anchor
MSCe and an Anchor Media Gateway (MGW), and wherein the
Target Network comprises a Target BS, a Target MSCe and a
Target MGW, the Anchor MSCe comprising:
a Target MSCe message interface configured to send a Handoff
Request message to the Target MSCe, wherein the Handoff
Request message comprises a Session Initiation Protocol (SIP)
INVITE message that contains a TIA/EIA-41
FacilitiesDirective2 INVOKE message.
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Application 13/278,782
Rejections
Claims 1—3, 9—11, 17—20, and 22—25 are rejected, under
35 U.S.C. § 103(a), as obvious over Zhang (US 2010/0142488 Al; June 10,
2010), Fors (US 6,931,249 B2; Aug. 16, 2005), and McConnell
(US 7,406,324 Bl; July 29, 2008). Non-Final Act. 5-9.
Claims 1—3, 9-11, 17—20, and 22—25 are rejected, under
35 U.S.C. § 103(a), as obvious over Zhang, Marin (US 7,697,480 B2;
Apr. 13, 2010), and McConnell. Non-Final Act. 5—9.2
Claims 27, 29, 31, and 33 are rejected, under 35 U.S.C. § 103(a), as
obvious over Zhang, Fors, McConnell, and Punj (US 7,773,581 B2; Aug. 10,
2010). Non-Final Act. 9—10.
Claims 27, 29, 31, and 33 are rejected, under 35 U.S.C. § 103(a), as
obvious over Zhang, Marin, McConnell, and Punj. Non-Final Act. 9-10.
Claims 28, 30, 32, and 34 are rejected, under 35 U.S.C. § 103(a), as
obvious over Zhang, Fors, McConnell, and Bienn (US 2003/0169768 Al;
Sept. 11,2003). Non-Final Act. 11.
Claims 28, 30, 32, and 34 are rejected, under 35 U.S.C. § 103(a), as
obvious over Zhang, Marin, McConnell, and Bienn. Non-Final Act. 11.
The Examiner has withdrawn rejections of: claims 1—8 under
35 U.S.C. § 112 12; and claims 1—34 under 35 U.S.C. § 101.
2 As reflected above, independent claims 1,9, 17, and 22 are rejected as
obvious over: Zhang, Fors, and McConnell; and, alternatively, Zhang,
Marin, and McConnell. The remaining claims are also each rejected, in
alternative form, as obvious over these two combinations (some rejected
over further references).
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Application 13/278,782
ISSUES
Has the Examiner shown that the combination of Zhang, Fors, and
McConnell teaches or suggests claim l’s “Handoff Request message
comprises a Session Initiation Protocol (SIP) INVITE message that contains
a TIA/EIA-41 FacilitiesDirective2 INVOKE message”?
Has the Examiner shown that the combination of Zhang, Marin, and
McConnell teaches or suggests claim l’s “Handoff Request message
comprises a Session Initiation Protocol (SIP) INVITE message that contains
a TIA/EIA-41 FacilitiesDirective2 INVOKE message”?
ANALYSIS
The Examiner rejects independent claims 1,9, 17, and 22 under the
same findings and conclusions; only stating “see similar rejection to claim
1” for each of claims 9, 17, and 22. Non-Final Act. 7—9. We address
illustrative claim 1.
For the reasons below, the Examiner errs in applying each of the
above two combinations against claim 1. The same errors extend to
independent claims 9, 17, and 22 and remaining dependent claims 2, 3, 10,
11, 18-20, 23-25, and 27-34.
Zhang, Fors, and McConnell
The Examiner finds that Zhang teaches or suggests all of the
recitations of claim 1, except the following composition of the Handoff
Request message: “comprises a Session Initiation Protocol (SIP) INVITE
message that contains a TIA/EIA-41 FacilitiesDirective2 INVOKE
message” (emphasized within reproduced claim 1). Non-Final Act. 5—6.
The Examiner relies on McConnell as teaching the comprised SIP INVITE
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message and Fors as teaching the comprised TIA/EIA-41
FacilitiesDirective2 INVOKE message. Id. at 6.
Appellants contend that the Examiner erred because none of the
references suggest, and the Examiner provides no rationale for, the
following claimed nesting of messages: (i) a Handoff Request comprising a
SIP INVITE message and (ii) a SIP INVITE message containing a TIA/EIA
41 FacilitiesDirective2 INVOKE message. See, e.g., App. Br. 7. Appellants
correctly summarize these Appeal Brief contentions in the Reply Brief,
stating:
[A]s the Applicant argued in the Third Appeal Brief’s pages 6—
16, Zhang, Fors and McConnell respectively disclose separate
and distinct messages[,] namely a Handoff Request, a TIA-41
FACDIR2 Invoke message, and a SIP REFER message/SIP
INVITE message[,] but they do not disclose or suggest the
independent claim l’s highlighted technical feature “the
Handoff Request message comprises a Session Initiation
Protocol (SIP) INVITE message that contains a TIA/EIA-41
FacilitiesDirective2 INVOKE message”.
Reply Br. 2—3 (emph. omitted). The Appeal Brief contends the references
teach a separated Handoff Request message, SIP INVITE message, and
TIA-41 FACDIR2 Invoke message insofar: “Zhang’s paragraphs [0066] and
[0080] only teach a Handoff Request message” (App. Br. 7); “Fors discloses
separate and distinct messages—FACDIR2 message and Handoff Request”
{id. at 8); “[Fors’] Handoff Request 4 contains parameters that are mostly
obtained (directly transferred) from the FACDIR2 message 3 (see col. 2,
lines 11-29) [and thus] does not contain a TIA-41 FACDIR2 INVOKE
message” {id. at 9—10); “McConnell. . . discloses separate and distinct
messages—SIP INVITE and IS-41 signaling” {id. at 12); “McConnell
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discloses that the ‘[t]o initiate the handoff, CSCF 34 may send a SIP
INVITE message to a network element, . . . which, in turn, engages in IS-41
signaling” {id. at 13).
Addressing the rejection’s lack of an obviousness rationale for the
claimed nesting of messages, the Appeal Brief persuasively contends that the
presented rationales merely conclude (i.e., without prior art support) such
nesting of the references’ cited messages would result in improved service.
Id. at 13—15. Appellants explain that the presented rationale for comprising
McConnell’s SIP INVITE message within Zhang’s Handoff Request is
merely “to improve the quality of service in the communication
network.” Id. at 14 (quoting Non-Final Act. 6). Appellants further explain
that the presented rationale for containing Fors’ TIA/EIA-41
FacilitiesDirective2 INVOKE message within McConnell’s SIP INVITE
message is also merely “to improve the quality of service in the
communication network.” Id. (quoting Non-Final Act. 6). And,
Appellants persuasively add:
[I]f the “suggestion” requirement of 35 U.S.C. § 103 can be met
by merely stating there is desire “to improve the quality service
in the communications network” then the suggestion
requirement can always be met and is utterly meaningless.
Simply put, there is always an advantage associated with
“improving the quality of service in the communications
network” that can be met by combining old elements which can
be identified through hindsight once that combination is known.
Id. at 15 (emph. omitted).
We agree with all of the above arguments as to the stated deficiencies
of the presented rejection (but make no holding of whether there is a
suggestion, e.g., by the references, to nest their cited messages as claimed).
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Application 13/278,782
We add, however, the Examiner’s obviousness rationales do not propose to
nest the references’ cited messages as claimed. Rather, the rationales
propose to include Fors’ and McConnell’s messages (or the like) within
“systems” as follows: “include FacilitiesDirective2 INVOKE message as
taught by Fors ... in the system of Zhang, . . . implemented in eMSC, in
order to provide handover to improve the quality of service” (Non-Final Act.
6 (emph. added)); and “include SIP INVITE as taught by [McConnell]... in
the system of Zhang and Fors, . . . implemented in eMSC, in order to
provide handover to improve the quality of service” {id. (emph. added)).
The Examiner insufficiently responds to the above deficiencies.
Addressing the application of Fors, the Examiner only changes the rationale
for the application of Fors by newly stating the resultant FacilitiesDirective2
INVOKE message “supports] inter-system handoffs in the communications
network” (Ans. 4). Addressing the application of McConnell, the Examiner
only changes the rationale for the application of McConnell by newly stating
the resultant SIP INVITE message “indicates a client is being invited in a
call session” {id.). However, the Examiner’s findings and conclusions still
fall short of showing that it would have been obvious to an artisan of
ordinary skill to nest the references’ cited messages in the manner recited,
thus the rejections fails to reach all “differences between the prior art and the
claims at issue[.]” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007) (applying Graham v. John Deere Co. of Kansas City, 383 U.S. 1
(1966)).
Accordingly, we do not sustain the Examiner’s rejection of claims 1—
3, 9-11, 17—20, 22—25, and 27—34 as obvious over Zhang, Fors, and
McConnell (and, for some claims, further references).
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Application 13/278,782
Zhang, Marin, and McConnell
As noted supra, the Examiner duplicates all rejections by presenting
Marin as alternative support for the applied teachings of Fors. See fn. 2.
That is, Marin and Fors are presented as interchangeable support for the
proposed combination. See, e.g., Non-Final Act. 5 (“over Zhang ... in view
of. . . Fors or Marin . . .” and “Fors (or Marin). . . discloses . . .”). The
application of Marin is likewise deficient, as the application of Fors, because
the Examiner does not indicate whether and why Marin supports nesting of
the references’ cited messages as claimed. Even assuming otherwise, the
Examiner’s application of Marin’s TIA-41 FACDIR2 INVOKE message
(id. at 5—6 (citing Marin col. 11,11. 1—13)) would not cure the Examiner’s
erred application of McConnell’s SIP INVITE message.
Accordingly, we do not sustain the Examiner’s rejection of claims 1—
3, 9-11, 17—20, 22—25, and 27—34 as obvious over Zhang, Marin, and
McConnell (and, for some claims, further references).
NEW GROUNDS OF REJECTION
Pursuant to 37 C.F.R. § 41.50(b), we newly reject claim 1 under 35
U.S.C. § 103(a) as obvious over Zhang, Fors, and McConnell. Except as
detailed above, we adopt the Examiner’s findings as they relate the 35
U.S.C. § 103(a) rejection of claim 1 as being obvious over Zhang, Fors, and
McConnell. We further find claim 1 ’s restrictions of the Handoff Request
message constitute nonfunctional descriptive subject matter and accordingly
do not patentably distinguish the claimed invention over the applied prior
art. We need not give patentable weight to descriptive material absent a new
and unobvious functional relationship between the descriptive material and
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Application 13/278,782
the device. See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008)
(precedential); see also In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); Ex
parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative)
(“Nonfunctional descriptive material cannot render nonobvious an invention
that would have otherwise been obvious.”), affd, No. 06-1003 (Fed. Cir.
2006) (Rule 36).
Claim 1 ’s Handoff Request message restrictions convey only the
content of the Handoff Request message. Namely, the restrictions merely
specify that the “Handoff Request message comprises a Session Initiation
Protocol (SIP) INVITE message that contains a TIA/EIA-41
FacilitiesDirective2 INVOKE message[.]” There is no indication that the
“comprise[d] Session Initiation Protocol (SIP) INVITE message that
contains a TIA/EIA-41 FacilitiesDirective2 INVOKE message” denotes
more than a sequence of data. That is, claim 1 ’s restrictions of the Handoff
Request message merely specifies the information’s formatting (SIP
message within a Handoff Request message; TIA/EIA-41
FacilitiesDirective2 message nested within the SIP message) and types
(INVITE message; INVOKE message).
Claim 1 ’s restrictions of the Handoff Request message also lack a
functional or structural relationship to the claimed invention. The only
claimed feature concerning the Handoff Request message is claim 1 ’s
recitation that the “Target MSCe message interface [is] configured to send
[the] Handoff Request message to the Target MSCe[.]” Whereas the recited
capability to send a message restricts the claimed system, the message
contents (as recited here) only restrict the sent information. Indeed, there is
no recitation of the claimed system processing the information such that the
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information material affects the operation or structure of the anchor mobile
switching center emulation of claim 1.
Accordingly, we newly reject claim 1 under 35 U.S.C. § 103(a) as
being unpatentable over Zhang, Fors, and McConnell.
Except as detailed above, we further adopt the Examiner’s findings as
they relate to the 35 U.S.C. § 103(a) rejection of claims 2, 3, 9—11, 17—20,
and 22—25 as being unpatentable over Zhang, Fors, and McConnell. The
disputed handoff request recitations of these claims are, for the reasons
discussed, also directed to nonfunctional descriptive subject matter that are
not merited patentable weight. Therefore, we also newly reject these claims
under 35 U.S.C. § 103(a) as being unpatentable over Zhang, Fors, and
McConnell.
Furthermore, Appellants’ arguments with respect to claims 27—34 are
similarly directed to mere message content representing nonfunctional
descriptive material in the context of the claimed invention. See App. Br.
17—18; Reply Br. 3^4. Therefore, for similar reasons, we also newly reject
claims 27, 29, 31, and 33 under 35 U.S.C. § 103(a) as being unpatentable
over Zhang, Fors, McConnell, and Punj, and claims 28, 30, 32, and 34 under
35 U.S.C. § 103(a) as being unpatentable over Zhang, Fors, McConnell, and
Bienn.
DECISION
We reverse the Examiner’s rejection of claims 1—3, 9—11, 17—20, 22—
25, and 27-34.
We newly reject claims 1—3, 9-11, 17—20, 22—25, and 27—34 under
35 U.S.C. § 103(a).
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37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under 37 C.F.R. § 41.52 by the Board upon the same record. . . .
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).
REVERSED
37 C.F.R, $ 41.50(b)
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