Ex Parte Van Lieshout et al

Patent Trial and Appeal Board

Nov 25, 2013

11089194 (P.T.A.B. Nov. 25, 2013)

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.
11/089,194 03/24/2005 Gert-Jan Van Lieshout 678-1990 3157
66547 7590 11/25/2013
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
LEE, JUSTIN YE
ART UNIT PAPER NUMBER
2644
MAIL DATE DELIVERY MODE
11/25/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GERT-JAN VAN LIESHOUT and HIMKE VAN DERVELDE
____________

Appeal 2011-002804
Application 11/089,194
Technology Center 2600
____________

Before DENISE M. POTHIER, JUSTIN BUSCH, and
CATHERINE SHIANG, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4, 6-9, 20, and 23-31. Claims 3, 5, 10-19, 21, and
22 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
Invention
Appellants’ invention relates to a technique for transmitting
information concerning a multicast service. See Spec. 1:9-14; Abstract.
Claim 1 is reproduced below with emphasis:
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1. A method of transmitting information related to a multicast
service in a mobile telecommunications network, the method comprising:
determining whether the network supports multicast service reception
for a user terminal in a URA_PCH state;
transmitting one or more ATTACH messages, requesting provision of
consistent service availability information to cells for one or more multicast
services available in a registration area in which the user terminal is present,
between radio network controllers having cells in the registration area; and
providing consistent service availability information for the one or
more multicast services from the radio network controllers to all cells of the
registration area in accordance with the one or more ATTACH messages.

The Examiner relies on the following as evidence of unpatentability:
Yi US 2004/0057387 A1 Mar. 25, 2004
Sarkkinen US 2004/0137885 A1 July 15, 2004
Kuwano US 2004/0152473 A1 Aug. 5, 2004
Pirskanen US 2004/0157640 A1 Aug. 12, 2004
Jung US 2005/0213541 A1 Sept. 29, 2005
Beming US 2006/0106865 A1 May 18, 2006

Timur Friedman & Don Towsley, Multicast Session Membership Size
Estimation, 2 Proc. of INFOCOM ’99 965-972 (1999) (“Friedman”).

Ericsson, lur linking – URA_PCH/CELL_PCH, 3GPP TSG-RAN3 Meeting
#41(Tdoc R3-040297) 2-4 (2004) (“Ericsson”).

The Rejections
Claims 1, 20, 28, and 29 are rejected under 35 U.S.C. § 112, ¶ 1 as
failing to comply with the written description requirement. Ans. 4-5.
Claims 1, 2, 4, 6, 7, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Beming, Kuwano, and Ericsson. Ans. 5-7.
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Beming, Kuwano, Ericsson, and Yi. Ans. 8.
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Claims 20 and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Beming, Kuwano, Ericsson, and Jung. Ans. 9-11.
Claims 24-27 and 31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Beming, Kuwano, Ericsson, Jung, and Sarkkinen.
Ans. 12-14.
Claims 28-30 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Beming, Ericsson, Pirskanen, and Friedman. Ans. 14-19.

THE WRITTEN DESCRIPTION REJECTION
Regarding independent claim 1, the Examiner finds that the disclosure
does not describe the limitation, “requesting provision of consistent service
availability information to cells for one or more multicast services available
in a registration area in which the user terminal is present, between radio
network controllers having cells in the registration area,” so as reasonably to
convey to an ordinarily skilled artisan that Appellants had possession of this
claimed invention. Ans. 4-5. Appellants argue that the disclosure
demonstrates possession. App. Br. 5-6 (citing Spec. 4:28-30, 11:13-20,
Fig. 4, 209). We agree with Appellants.
Appellants use the phrase, “consistent service availability
information” or “service availability information,” on multiple occasions.
The disclosure states “the network has to provide consistent service
availability information in all cells across the URA [UTRAN (Universal
Mobile Telecommunications Service Terrestrial Radio Access Network)
Registration Area].” Spec. 4:30-32. Additionally, the Specification states
the network needs to ensure that all cells that are part of the Registration
Area (RA) “need[] to transmit consistent information regarding whether an
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MBMS [Multimedia Broadcast Multicast Services] service is available or
not in that cell, i.e. whether the cell is part of the multicast service area or
not.” Spec. 10:39-11:2; see also Spec. 11:10-12. Lastly, Appellants state
the service RNC (Radio Network Controller) sends a message to a DRNC
(drift RNC) and “requests the DRNC to provide correct service availability
information in all cells of the URA for one or more service. This message is
referred to as URA-ATTACH message in the following.” Spec. 11:18-20.
Taken as a whole, the disclosure reasonably conveys to an ordinarily
skilled artisan that the ATTACH message includes a request to provide
correct service availability information in all cells of a registration area (e.g.,
cells of the URA) for a multicast service. Granted, the disclosure does not
use the word, “provision,” but does state “requests . . . to provide” the
consistent service availability information. Spec. 11:18-19. We find that
this portion of the disclosure reasonably describes the phrase, “requesting
provision of consistent service availability information” to an ordinarily
skilled artisan. Other than stating the disclosure “does not explicitly define
the term ‘service availability information’,” the Examiner does not rebut
Appellants’ argument. Ans. 20.
On balance, we find that Appellants have demonstrated they had
possession of the claimed “requesting provision of consistent service
availability information” as recited and that the Examiner erred in rejecting
claims 1, 20, 28, and 29 under 35 U.S.C. § 112, ¶ 1 as failing to comply with
the written description requirement.

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OBVIOUSNESS REJECTION OVER BEMING, KUWANO, AND
ERICSSON
Appellants argue Beming fails to teach any transmitting message that
requests availability information be sent to cells. App. Br. 7. Appellants
further contend that Ericsson fails to cure this deficiency. App. Br. 7-8.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Beming, Kuwano, and Ericsson collectively would have taught or
suggested transmitting an ATTACH message requesting “provision of
consistent service availability information to cells for an available multicast
service”?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of representative claim 1. Appellants’ arguments focus on Beming
failing to provide availability information with a message sent to cells. App.
Br. 7-8. Specifically, Appellants assert that “[a]vailability information refers
to information regarding whether an MBMS service is available or not in
that cell.” App. Br. 7. However, claim 1 does not restrict “availability
information” to only this type of information.
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations and quotations
omitted). While, as discussed above, the disclosure discusses the phrase,
“consistent service availability information,” there is no definition of this
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term. See generally Spec. Additionally, Appellants have not demonstrated
the above-quoted phrase is a term of art. Thus, we give the phrase,
“consistent service availability information,” its broadest reasonable
construction.
As a general proposition, merely reciting what data or information
represents (e.g., “consistent service availability” information) constitutes
non-functional descriptive material, because the information does not further
limit the claimed invention either functionally or structurally. Here, the
recitation “consistent service availability information” merely describes
what the information elements represent. Such information does not limit
the claimed steps either functionally or structurally. Rather, the information
is merely being transmitted and provided. Thus, the recited information
elements are properly considered to contain non-functional descriptive
material that do not patentably distinguish over the prior art. See In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also Ex parte Nehls,
88 USPQ2d 1883, 1887-89 (BPAI 2008) (precedential) and Ex parte Curry,
84 USPQ2d 1272 (BPAI 2005), aff’d (Fed. Cir. No. 2006-1003,
June 12, 2006).
Even assuming that the limitation “consistent service availability
information” is considered functional descriptive material, Beming teaches
transmitting information related to service and its availability as recited.
Specifically, the Examiner finds Beming teaches transmitting MBMS
ATTACH REQ and MBMS ATTACH RESP messages between the CRNC
(Controlling Radio Network Controller) and the SRNC (Serving RNC). See
Ans. 5-6, 20-21 (citing Fig. 6, ¶ 98). Beming shows that the MBMS
ATTACH REQ message at step 604 includes a UE (User Equipment) id and
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the MC address (i.e., an APN (Access Point Name) and IP (Internet
Protocol) multicast address). Beming also discloses and shows transmitting
“Transmission = PTP Tx,” indicating that the CRNC intends to provide PTP
transmission of the MBMS service. Beming ¶ 98, Fig. 6. The UE id and
MC address sent during step 604 relates to the user equipment and multicast
address to be used during service. The Transmission information sent
during step 605 further relates to the type of transmission to be sent during a
multicast service (e.g., MBMS) or what transmission type is available.
Collectively, this information relates to a multicast service and its
availability information. Thus, as broadly as recited, the ATTACH
messages in Beming request provision of consistent service availability
information.
In the Reply Brief, for the first time, Appellants assert that Beming
does not transmit the ATTACH message to all cells of a registration area.
Reply Br. 3. This argument is not consistent with the claim language that
recites transmitting the ATTACH message to cells – not all cells. Moreover,
such an argument is untimely and waived. See Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner's rejections, but were not.”).
Based on the above discussion, we need not address whether Ericsson
or Kuwano cures any purported deficiency. App. Br. 8; Reply Br. 3.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and claims 2, 4, 6, 7, and 9 not
separately argued with particularity (App. Br. 9).

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OBVIOUSNESS REJECTION OVER BEMING, KUWANO, AND
ERICSSON
Regarding claim 8, the Examiner finds that Beming, Kumano, and
Ericsson do not disclose a serving radio network controller (SRNC) that
updates the information when (a) a first user terminal interested in a MSBS
enters the registration area in a URA_PCH state or (b) a last user terminal
interested in a MBMS leaves the registration area in a URA_PCH state.
Ans. 8. The Examiner turns to Yi to teach this missing limitation and
proposes including such a teaching with the Beming/Kumano/Ericsson
method to provide an identification code for MBMS service. Id.
Appellants argue that Yi fails to remedy the alleged deficiencies of Beming,
Kuwano, and Ericsson described for claim 1. We are not persuaded for the
above-stated reasons.
Additionally, Appellants assert that Yi fails to relate to the
transmission of an ATTACH message based on entering and leaving a
registration area. App. Br. 10; Reply Br. 5.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 8 by finding
Beming, Kumano, Ericsson, and Yi collectively would have taught, or
suggested, a SRNC transmits the one or more ATTACH messages when i) a
first user terminal interested in at least one of the multicast service and a
broadcast service enters the registration area in a URA_PCH state; or ii) a
last user terminal interested in at least one of the multicast service and a
broadcast service leaves the registration area in a URA_PCH state?

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ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of claim 8. Appellants argue that Yi describes adding and deleting
a MBMS ID from a service list, but does not transmit an ATTACH message
based on entering or leaving a registration. App. Br. 10. While we
acknowledge Yi alone does not disclose including this information in an
ATTACH message, we must consider what the cited references collectively
teach and suggest.
As stated above, Beming teaches transmitting an ATTACH message
whenever a user requests a particular MBMS service. Ans. 5-6 (citing ¶¶ 94,
97-98). Yi teaches allocating and deallocating a MBMS-ID by the UTRAN
or a core network (CN). Yi ¶ 144. Yi specifically teaches adding a new
MBMS-ID when user equipment enters a network that has the ability to
receive a new service that is not currently provided. Id. In a particular
scenario, when a user entering a network is also requesting a newly-added
service, the collective teachings of Beming and Yi suggest not only adding
the MBMS-ID to a MBMS list, but also transmitting an ATTACH message
when a user interested in a MSBS enters a registration area so as to provide
the identification code for the MBMS service in the ATTACH message. See
Ans. 8, 23.
We further find this position reasonable and consistent with the
Specification. The disclosure does not require the ATTACH message
to be transmitted every time the user enters a registration area. See
Spec. 12:26-32. Similarly, the Examiner’s proposed combination would not
result in transmitting an ATTACH message every time the user terminal
interested in a MSBS enters the registration area, but would include
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transmitting the ATTACH message when the user terminal desires the new
service when entering the registration area. See Ans. 8, 23. Accordingly,
Appellants have not persuaded us of error in the rejection of claim 8.

REMAINING OBVIOUSNESS REJECTIONS

Regarding claims 20 and 23-31, Appellants argue that the additionally
cited references of Jung, Sarkkinen, Pirskanen, and Friedman do not cure the
purported deficiencies of Beming, Kuwano, and Ericsson. App. Br. 11-14;
Reply Br. 5-6. We are not persuaded for the above-noted reasons.

CONCLUSION
The Examiner did not err in rejecting claims 1, 2, 4, 6-9, 20, and 23-
31 under § 103.

DECISION
The Examiner’s decision rejecting claims 1, 2, 4, 6-9, 20, and 23-31 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)(1)(iv).

AFFIRMED