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Nov 1, 2016

13480567 (P.T.A.B. Nov. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/480,567 05/25/2012
27045 7590
ERICSSON INC
6300 LEGACY DRIVE
MIS EVR 1-C-11
PLANO, TX 75024
11/03/2016
FIRST NAMED INVENTOR
Sandra Home
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.
P35858-US1 4742
EXAMINER
VIANA DI PRISCO, GERMAN
ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
11/03/2016 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):
kara.coffman@ericsson.com
kathryn.lopez@ericsson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANDRA HOME
Appeal2016-000399
Application 13/480,567 1
Technology Center 2600
Before LARRY J. HUME, LINZY T. McCARTNEY, and SCOTT E. BAIN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellant, the real party in interest is Telefonaktiebolaget
LM Ericsson (publ). App. Br. 1.
Appeal2016-000399
Application 13/480,567
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed and claimed inventions are "related to the re-
registration [of] at least two mobiles at the same time in a home location
register (HLR) from one mobile switching center-visitor location register
(MSC-VLR) to another MSC-VLR." Spec. i-f 1 ("TECHNICAL FIELD").
Exemplary Claims
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitations):
1. A mobile switching center-visitor location register
(MSC-VLR) of a wireless telecommunications network having
a home location register (HLR), at least a second MSC-VLR
and a plurality of mobiles, the MSC-VLR comprising:
a network interface unit configured to communicate with
the network; and
a processing unit that is in communication with the
network interface unit, the processing unit being configured to,
in response to the second MSC- VLR going out of service,
produce a bulk re-registration message that is sent to the
HLR through the network from the network interface unit, the
bulk re-registration message identifYing the second MSC-VLR
to the HLR and causing the HLR to re-register at least two
mobiles, which are registered in the HLR for the second MSC-
VLR, to the MSC-VLR.
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
May 26, 2015); Reply Brief ("Reply Br.," filed Oct. 8, 2015); Examiner's
Answer ("Ans.," mailed Aug. 11, 2015); Final Office Action ("Final Act.,"
mailed Dec. 26, 2014); and the original Specification ("Spec.," filed
May 25, 2012).
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Appeal2016-000399
Application 13/480,567
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Palviainen US 2008/0004014 Al Jan. 3, 2008
Jiang US 2010/0190492 Al July 29, 2010
Rejections on Appeal
RI. Claims 1--4, 6-9, 11-14, and 16-19 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Palviainen. Final Act. 2. 3
R2. Claims 5, 10, 15, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over the combination of Palviainen and Jiang.
Final Act. 10.
ISSUES AND ANALYSIS
We agree with particular arguments advanced by Appellant with
respect to claims 1-20 for the specific reasons discussed below. We
highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.
3 We note the Examiner's explicit statement of the rejection (Final Act. 2)
omits claims 13, 17, and 18 from Rejection RI, and erroneously indicates
claim 27 is subject to Rejection RI. However, the Examiner addresses the
rejection of claims 13, 17, and 18 in the detailed rejection. See Final Act. 7
and 9. We further note claim 27 is not present in this Appeal. See App.
Br. 8-11 ("CLAIMS APPENDIX"). We find these omissions and
misstatements to be harmless error.
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Appeal2016-000399
Application 13/480,567
1. § 102(b) Rejection RI of Claims 1--4, 6-9, 11-14, and 16-19
Issue 1
Appellant argues (App. Br. 4---6; Reply Br. 1-3) the Examiner's
rejection of claim 1under35 U.S.C. § 102(b) as being anticipated by
Palviainen is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses a "mobile
switching center-visitor location register (MSC-VLR) of a wireless
telecommunications network having a home location register (HLR), at least
a second MSC-VLR and a plurality of mobiles" that includes, inter alia, the
limitations of "a processing unit ... configured to, in response to the second
MSC-VLR going out of service, produce a bulk re-registration message ...
identifying the second MSC-VLR to the HLR and causing the HLR to re-
register at least two mobiles," as recited in claim 1?
Analysis
Appellant contends:
The [claimed] bulk re-registration message is sent to an HLR
and causes the HLR to re-register at least two mobiles for a
second MSC-VLR, which is going out of service, to the MSC-
VLR. Notably, the bulk re-registration message "identiffiesl the
second MSC-VLR to the HLR." In contrast, no such bulk re-
registration message is taught by Palviainen . . . [because]
Palvianin 's [sic] MAP-Updatelocation request does not identify
the failed MSCNLR ... [because] the MAP-UpdateLocation
request identifies just the target MSC/VLR 110 to the HLR.
App. Br. 4--5.
In response, the Examiner indicates, for the first time, that "Palviainen
inherently discloses that the MAP-Updated Location request to the HLR
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Application 13/480,567
(Home Location Register) 120 identifies the failed MSC/VLR 710 to the
HLR 120, and this is not based on Examiner speculation as suggested by the
Appellant, but based on Palviainen['s] disclosure and the knowledge of a
person of ordinary skill in the art." Ans. 5 (emphasis added).
The Examiner explains this purported inherency of the disclosure by
pointing to Palviainen's teaching of a listing of International Mobile
Subscriber Identities (IMSI) that identify mobile stations to the network,
"and that a after a complete list or update is produced, a file is sent to a back-
up server such as target MSC/VLR 110 (see paragraph 31 ). Thus, target
MSC/VLR 110 is aware of the mobile stations served by source MSC/VLR
100." Ans. 6. The Examiner further finds Palviainen "discloses that in a
scenario where the source MSC/VLR fails, the network operator re-homes
the base stations associated with the failed source MSC/VLR 100 to be
serviced by the target MSC/VLR 110 (see paragraph 32). Thus, the target
MSC/VLR 110 is made aware that source MSC/VLR 100 has failed." Id.
We disagree with the Examiner's factual findings and finding of
anticipation of claim 1. We disagree because claim 1 requires that the bulk
re-registration message identify the second MSC-VLR to the HLR, which
we find Palviainen's MAP-UpdateLocation request does not do.
We agree with Appellant's argument that "Palvianin 's [sic] MAP-
UpdateLocation request appears to identify the target MSC/VLR 110 to the
HLR, it does not identify the failed MSC/VLR, as required by claim 1."
Reply Br. 2. We also agree with Appellant's argument that, even assuming,
arguendo, the HLR can identify the source MSC/VLR using a list ofIMSI's,
"using the list of IMSI's in connection with the MAP-UpdateLocation
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Application I3/480,567
request to identify the source MSC/VLR is not the same as the MAP-
UpdateLocation request itself identifying the source MSC/VLR to the HLR,
as required by claim I." Id.
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the disclosure of
the cited prior art to disclose the disputed limitation of claim I, such that we
find error in the Examiner's resulting finding of anticipation. Therefore, we
cannot sustain the Examiner's anticipation rejection of independent claim I,
and independent claims 6, I I, and I 6 which recite the disputed limitation in
commensurate form. For the same reasons, we cannot sustain the
anticipation Rejection RI of claims 2--4, 7-9, I2-I4, and I 7-I9, which
variously depend therefrom.
2. § I 03 Rejection R2 of Claims 5, I 0, I 5, and 20
In light of our reversal of the rejections of independent claims I, 6, I I,
and I6, supra, we also reverse obviousness Rejection R2 under§ I03 of
claims 5, I 0, I 5, and 20, which variously and ultimately depend therefrom.
On this record, the Examiner has not shown how the additionally cited
secondary reference to Jiang overcomes the aforementioned deficiencies of
Palviainen, as discussed above regarding claim I.
CONCLUSIONS
(1) The Examiner erred with respect to anticipation Rejection RI of
claims I--4, 6-9, I I-I4, and I6-I9 under 35 U.S.C. § I02(b) over the cited
prior art of record, and we do not sustain the rejection.
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Application 13/480,567
(2) The Examiner erred with respect to obviousness Rejection R2
of claims 5, 10, 15, and 20 under 35 U.S.C. § 103(a) over the cited prior art
combination of record, and we do not sustain the rejection.
DECISION
We reverse the Examiner's decision rejecting claims 1-20.
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
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