Ex Parte Forssell et al

Patent Trial and Appeal Board

Mar 31, 2016

12530047 (P.T.A.B. Mar. 31, 2016)

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.
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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-
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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.").
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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.
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