Ex Parte Korus et alDownload PDFPatent Trial and Appeal BoardDec 19, 201613723180 (P.T.A.B. Dec. 19, 2016) Copy Citation 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. 13/723,180 12/20/2012 Michael F. Korns CM15536 9689 22917 7590 12/21/2016 MOTOROLA SOLUTIONS, INC. IP Law Docketing 500 W. Monroe 43rd Floor Chicago, IL 60661 EXAMINER CHO, HONG SOL ART UNIT PAPER NUMBER 2467 NOTIFICATION DATE DELIVERY MODE 12/21/2016 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): U S Adocketing @ motorolasolutions. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL F. KORUS, ANATOLY AGULNIK, and PETER M. DROZT Appeal 2015-007509 Application 13/723,180 Technology Center 2400 Before MAHSHID D. SAADAT, JOYCE CRAIG, and ALEX S. YAP, Administrative Patent Judges. YAP, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1-28, which are all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b) We affirm. 1 According to Appellants, the real party in interest is Motorola Solutions, Inc. (App. Br. 2.) Appeal 2015-007509 Application 13/723,180 STATEMENT OF THE CASE Introduction Appellants’ invention “relates generally to wireless communication systems, and, in particular, to Multimedia Broadcast/Multicast Service communication systems.” (Spec. 1:6-7.) Claim 1 is illustrative, and is reproduced below: 1. A method for uniquely identifying a Multicast Broadcast Single Frequency Network (MBSFN) Area serving a user equipment and providing evolved Multimedia Broadcast/Multicast Service (eMBMS) area information in a Multimedia Broadcast/Multicast Service (MBMS) communication system, the method comprising: receiving an MBSFN Area update message from a user equipment, wherein the MBSFN Area update message includes eMBMS information that uniquely identifies an MBSFN Area and comprises an extension identifier derived from one or more of a cell identifier, an eNodeB identifier, an identifier of a group of cells, a service identifier, a tracking area identifier, and a paging area identifier; and determining an MBSFN Area serving the user equipment based on the received eMBMS area identifier. Prior Art and Rejections on Appeal The following table lists the prior art relied upon by the Examiner as evidence in rejecting the claims on appeal: Beckmann et al. (“Beckmann”) US 7,286,554 B2 Oct. 23, 2007 Hsu US 2011/0305184 Al Dec. 15,2011 2 Appeal 2015-007509 Application 13/723,180 Korns et al. US 2012/017028 Al July 5,2012(“Drozt”)2 Zhang et al. (“Zhang”) US 2012/0236776 Al Sept. 20, 2012 Cherian et al. US 2013/0028118 Al Jan. 31, 2013(“Cherian”) Claims 1—4, 7—12, 15—18, and 21—26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Drozt in view of Cherian. (See November 14, 2014 Final Action (“Final Act.”) 2^4.) Claims 5 and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Drozt, in view of Cherian, and further in view of Zhang. (See Final Act. 4.) Claims 6 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Drozt, in view of Cherian, and further in view of Beckmann. (See Final Act. 5.) Claims 13, 14, 27, and 28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hsu, in view of Drozt, and further in view of Cherian. (See Final Act. 5-6.) 2 The Examiner and Appellants refer to this reference as Drotz. 3 Appeal 2015-007509 Application 13/723,180 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own the findings and reasons set forth by the Examiner in the action from which this appeal is taken and the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. (Ans. 3-4.) However, we highlight and address specific findings and arguments for emphasis as follows. With respect to claim 1, the Examiner finds that: Drozt discloses receiving a Multicast Broadcast Single Frequency Network (MBSFN) Area update message from a user equipment, wherein the MBSFN Area update message includes an eMBMS area identifier that uniquely identifies an MBSFN Area (claim 14) and determining an MBSFN Area serving the user equipment based on the received eMBMS area identifier (claim 13), but fails to disclose MBSFN message comprises an extension identifier derived from one or more of a cell identifier, an eNodeB identifier, an identifier of a group of cells, a service identifier, a tracking area identifier, and a paging area identifier. However, Cherian discloses receiving a cell identifier, tracking area identifier or cell group identifier information (paragraph [0082]). (Final Act. 2-3, emphasis added.) According to the Examiner, “it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the system of Drozt with Cherian so that those information would be a part of the message for the benefit of determining location of a mobile terminal.” (Id. at 3.) Appellants contend that “the currently claimed invention is directed to solving a problem in situations where MBSFN-ArealDs are insufficient to uniquely identify MBSFNs within a PLMN.” (App. Br. 10.) Specifically, 4 Appeal 2015-007509 Application 13/723,180 Appellants contend that “it [is] improper to combine an identifier disclosed by Drozt with an identifier disclosed by Cherian to solve a problem that was not recognized by either Drozt or Cherian.” (Id.; Reply 6.) Appellants’ contentions have not persuaded us the Examiner erred. Here, Examiner has articulated reasoning with a rational underpinning for why a person of ordinary skill in the art at the time of the invention would combine Drozt and Cherian. (Final Act. 3; Ans. 4.) See KSR Int’l Co., v. Teleflex, Inc., 550 U.S. 398, 415, 418 (2007). Moreover, it is error to look “only to the problem the patentee was trying to solve.” KSR, 550 U.S. at 420; see also In re Kahn, 441 F.3d 977, 990 (Fed.Cir.2006) (“[T]he skilled artisan need not be motivated to combine [the prior art] for the same reason contemplated by [the inventor].” (citing In re Beattie, 974 F.2d 1309, 1312 (Fed.Cir.1992) (“[T]he law does not require that the references be combined for the reasons contemplated by the inventor.”)). Furthermore, we agree with the Examiner’s finding that a person of ordinary skill in the art at the time of the invention would combine Drozt and Cherian. Specifically, the combination is nothing more than the predictable use of prior art elements according to their established functions. See KSR at 417 (pointing out that an improvement that is nothing more than the predictable use of prior art elements according to their established functions is likely to be obvious). Appellants further contend that the knowledge “generally available to one of ordinary skill in the art [] would [not] have led to the invention.” (App. Br. 10; Reply 6.) Appellants’ assertion in this regard, however, is mere attorney argument, a conclusory statement, which is unsupported by factual evidence. Thus, this argument is entitled to little probative value. In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011); In re Geisler, 116 F.3d 5 Appeal 2015-007509 Application 13/723,180 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants also contend that “nowhere does Cherian teach a use of a cell identifier or a tracking area identifier to identify anything other than their corresponding area type, that is, using a cell identifier to identify a cell or a tracking area identifier to identify a tracking area . . . .” (App. Br. 10-11, italics and underlining in original, bold added; Reply 6.) “[0]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.” See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Here, the Examiner is relying on Drozt for the teaching or suggestion of receiving a Multicast Broadcast Single Frequency Network (MBSFN) Area update message containing an area identifier and determining an MBSFN Area based on the received eMBSFN area identifier. (Ans. 2.) Cherian, on the other hand, is being relied on for the teaching or suggestion regarding the content (i.e., information) in the MBSFN Area update message, not for the use of the content to identify the area. For the foregoing reasons, we are not persuaded the Examiner erred in rejecting claim 1 and thus, we sustain the 35 U.S.C. § 103 rejection of claim 1. Appellants do not make any separate, substantive patentability arguments regarding independent claims 13, 15, and 27, and dependent claims 2—12, 14, 16—26, and 28, but instead rely solely on their arguments with respect to claim 1. (App. Br. 11.) Therefore, we also sustain the 35 U.S.C. § 103(a) rejections of claims 2—28. 6 Appeal 2015-007509 Application 13/723,180 DECISION We affirm the decision of the Examiner to reject claims 1-28. AFFIRMED 7 Copy with citationCopy as parenthetical citation