Ex Parte RasanenDownload PDFPatent Trial and Appeal BoardJul 29, 201610878609 (P.T.A.B. Jul. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/878,609 0612912004 12358 7590 08/02/2016 Mintz Levin/Nokia Technologies Oy One Financial Center Boston, MA 02111 FIRST NAMED INVENTOR Juha A. Rasanen 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. 39700-617001 US/NC40074US 4912 EXAMINER LEE, JUSTIN YE ART UNIT PAPER NUMBER 2644 NOTIFICATION DATE DELIVERY MODE 08/02/2016 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 TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JURA A. RASANEN Appeal2015-001107 Application 10/878,609 Technology Center 2600 Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR., and JEFFREYS. SMITH, Administrative Patent Judges. Per Curiam. DECISION ON APPEAL STATEMENT OF THE CASE Appellant is appealing the rejection of claims 17, 23, and 67-73 under 35 U.S.C. § 134(a). Claims 1 and 4 are allowed, and claim 72 is indicated as allowable if rewritten in independent form. Appeal Brief 4. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal2015-001107 Application 10/878,609 Introduction Appellant's invention relates to a communication system "configured to provide control such that at least two data sessions on a data carrier are policy controlled by means of a policy controller entity." Abstract. Representative Claim (Disputed limitations emphasized) 17. An apparatus, comprising: a first policy controller1 configured to receive a request for policy control for at least one of a plurality of data sessions on a data carrier, the request received from at least one of an application and a server, the first policy controller configured to select one of a plurality of policy controllers and forward the received request to the selected one of the plurality of policy controllers, wherein the first policy controller forwards the received request based on at least a user equipment identity to enable the same selected policy controller to provide policy control for the plurality of data sessions from a user equipment identified by the user equipment identity. Rejections on Appeal Claims 17, 23, 69, and 70 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over ForslOw (US 6,937,566B1; August 30, 2005), in view ofMahendran (US 2005/0147072 Al; July 7, 2005) and Chen (US 2005/0025116 Al; February 3, 2005), and further in view of Applicant Admitted Prior Art ("AAPA"), Specification i-fi-13-14. Final Rejection 2. 1 Claim 17 recites a single controller, or "means," associated with several functions. In the event of further prosecution, the Examiner should consider whether claim 17 fails to pass muster under§ 112, first paragraph because the claim is directed to a single "means." See In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983) ("single means" claims are properly rejected under the first paragraph of§ 112). 2 Appeal2015-001107 Application 10/878,609 Claims 67, 68, 71, and 73 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over ForslOw, in view ofMahendran and Chen, and further in view of AAPA. Final Rejection 5. ANALYSIS Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Final Rejection (mailed September 24, 2013), the Appeal Brief (filed June 13, 2014), the Answer (mailed August 27, 2014), and the Reply Brief (filed October 27, 2014) for the respective details. We have considered in this decision only those arguments Appellant actually raised in the Briefs. Appellant argues Examiner error because the Examiner relied on a portion of Applicant's Background (of the Specification) as admitted prior art and that was used to reject "wherein the first policy controller forwards the received request based on at least a user equipment identity to enable the same selected policy controller to provide policy control for the plurality of data sessions from a user equipment identified by the user equipment identity," appearing in claim 17. Appeal Brief 15. Particularly, Appellant contends "Applicant's Background does not disclose or suggest how to enable the same policy controller to provide policy control for multiple data sessions of a user equipment." Appeal Brief 15 (emphasis in original). Appellant additionally contends "the use of the same policy decision function for sessions with a user equipment, although mentioned in the Applicant's Background, is not admitted prior art." Reply Brief 5. 3 Appeal2015-001107 Application 10/878,609 We find Appellant's arguments persuasive and disagree with the Examiner's findings. The Examiner finds that the AAPA "teaches to enable the same selected policy controller to provide policy control for the plurality of data sessions from a user equipment identified by the user equipment identity," because "the same policy decision function should be used for policing all related session[ s ]." Final Rejection 4, citing Specification i-f 14. The Examiner additionally finds the "AAP A teaches a user equipment may have several simultaneous sessions with different application functions," and reproduces Appellant's statement appearing in the Specification that: [ w ]hen a user equipment multiplexes several application session in one PDP context, the same policy decision function should be used for policing all related session to avoid complications in the gateway. Answer 3, citing Specification i-f 14, lines 8-13. "[A] statement by an applicant during prosecution identifying certain matter not the work of the inventor as 'prior art' is an admission that the matter is prior art." Riverwood Intern. Corp. v. R.A. Jones & Co., Inc., 324 F.3d 1346, 1354 (Fed. Cir. 2003). Here, Appellant's Specification includes no express or implicit identification of the statement as being work of another. The statement is part of a paragraph describing a problem to be solved by Appellant, as the paragraph concludes that "[c]onsequently, the sessions cannot be multiplexed in the same data carrier, such as a PDP context." Specification i-f 14; see also i-f 15. On its face, the statement indicates what "should be" done, not what has been done. Accordingly, we find paragraph 14 of the Specification does not comprise AAP A, and none of the cited references cure this deficiency. 4 Appeal2015-001107 Application 10/878,609 Therefore, we reverse the Examiner's obviousness rejection of independent claim 17, as well as independent claims 67 and 68 commensurate in scope, as well as claims 23 and 69-73 that depend therefrom. DECISION We reverse the Examiner's rejections of claims 17, 23, and 67-73. REVERSED 5 Copy with citationCopy as parenthetical citation