Ex Parte Forssell et alDownload PDFPatent Trial and Appeal BoardMar 31, 201612530047 (P.T.A.B. Mar. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/530,047 02/04/2010 12358 7590 04/04/2016 Mintz Levin/Nokia Technologies Oy One Financial Center Boston, MA 02111 FIRST NAMED INVENTOR Mika Fors sell 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 39700-836N01US/NC57046US 8317 EXAMINER HOUSHMAND, HOOMAN ART UNIT PAPER NUMBER 2465 NOTIFICATION DATE DELIVERY MODE 04/04/2016 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): IPDocketingBOS@mintz.com IPFileroomBOS@mintz.com Nokia.IPR@nokia.com PTOL-90A (Rev. 04/07) ~UNITED STATES PATENT AND TR~ADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MIKA FORSSELL and JANNE TERVONEN Appeal2014-004700 Application 12/530,047 Technology Center 2400 Before HUNG H. BUI, JOHN F. HORVATH, and ADAM J. PYONIN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from a rejection of claims 72-94. Claims 1-71 have been canceled. See App. Br. 19-23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE Introduction Appellants' disclosure is directed to a "method and apparatus for enabling a network to provide information associated with neighboring Appeal2014-004700 Application 12/530,047 network(s) of different access technologies to the wireless device, prior to the wireless device determining the need for a handover." Abstract. Claims 72, 77, 84, and 91 are independent. Claim 72 is reproduced below for reference: 72. A method, comprising: receiving, by a mobile node, at least one message and an access network list from a network node, the message being used to indicate to the mobile node that a handover to a new access network is required or to instruct the mobile node to select the new access network; selecting, by the mobile node, the new access network based at least in part on information associated with the received network access list; and performing, by the mobile node, a handover from a currently used access network to the selected new access network. The Examiner s Re} ection Claims 72-94 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Thalanany (US 2008/0159232 Al; July 3, 2008). Final Act. 6. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner has erred. Appellants do not argue separately claims 72-94. See Reply Br. 5. We select claim 72 as representative of the group. See 37 C.F.R. § 41.37(c)(l)(iv). We adopt the Examiner's findings and conclusions (see Final Act. 2-14; Ans. 10-14) as our own, and we add the following primarily for emphasis. 2 Appeal2014-004700 Application 12/530,047 Appellants argue the Examiner erred, because instead of disclosing the claimed selecting the new access network by the mobile node, "Thalanany discloses a policy function node that is part of the core network selecting an appropriate access network for the handover. Moreover, Thalanany fails to disclose the claim 72 'network access list."' App. Br. 10. We give claims their broadest reasonable interpretation consistent with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Here, Appellants' Specification provides at most examples, but no narrowing definitions, of the claim term "selecting." Thus, Appellants do not persuade us the Examiner erred in finding "the MD initiates the series of steps resulting in a handover to a suitable access network; these steps would need to include the MD selecting an access network" (emphasis removed). Ans. 11. As correctly recognized by the Examiner, Thalanany discloses the mobile device "MD 220 monitors all access networks on the preferred access network list" (Thalanany i-f 25) and "the MD 220 sorts or orders a list of monitored access networks" for use in selecting a new access network (Thalanany. i-f 26). See Ans. 1 O; see also App. Br. 13. Accordingly, we find the recited "selecting, by the mobile node, the new access network based at least in part on ... the received network access list" broadly but reasonably encompasses Thalanany's disclosure of a new access network selection based on the steps initiated by the mobile device. See Ans. 12-13; Final Act. 3. Appellants further argue that: Thalanany' s mobile device has only one choice for the handoff access network, the access network in the Mobile IP Registration Update message. To "select" something means to "choose from a number of things that are related in some way." See Merriam- 3 Appeal2014-004700 Application 12/530,047 Webster Dictionary at www.m-w.com. Because Thalanany's mobile device has only one choice of handoff access network, Thalanany's mobile device cannot possibly disclose the claim 72 "select, by the mobile node, the new access network." Reply Br. 14 (emphasis removed). We find this argument unpersuasive and based on an unduly narrow interpretation of the term select, particularly in light of the Specification. Although Appellants' Specification does not provide a limiting definition of "selecting" (as discussed above), we note the Specification describes exemplary uses of the term, including "the network may send a message to the wireless device that guides or obligates the wireless device to select one of the access networks in the list, provided by the network, in case the wireless device chooses to make a handover." Spec. i-f 40; see also Spec. i-f 3 7 ("the wireless device may be obligated to select the highest priority access network meeting other requirements."). We find Appellants' disclosed obligated selections to be examples of "selecting" within the meaning of claim 72. Accordingly, we find Thalanany's disclosure of the mobile device handover to a new network from the access network list corresponds to the disputed limitations. See Ans. 12 ("the MD 220 completes the transfer of the UP network session associated with the launched application to the target access network 218. As seen here, again, the MD, the mobile node is the device that is performing the function."). 4 Appeal2014-004700 Application 12/530,047 For the reasons set forth, we sustain the Examiner's anticipation rejection of independent claim 72. 1 DECISION The Examiner's rejection of claims 72-94 is affirmed. 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). AFFIRMED 1 Appellants provide additional arguments which rely on the contentions discussed above, as well as contentions regarding a substitution or combination with respect to Thalanany. See App. Br. 16-17. These arguments, however, are unpersuasive for the reasons discussed supra and because the rejection before us is one of anticipation and not obviousness. 5 Copy with citationCopy as parenthetical citation