Wenfu Wu et al.

Patent Trials and Appeals Board

Dec 31, 2019

14104753 - (D) (P.T.A.B. Dec. 31, 2019)

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.
14/104,753 12/12/2013 Wenfu Wu 4657-98000 4271
97698 7590 12/31/2019
Huawei Technologies Co., Ltd.
c/o Conley Rose, P.C.
5601 Granite Parkway, Suite 500
Plano, TX 75024
EXAMINER
CHERY, DADY
ART UNIT PAPER NUMBER
2461
NOTIFICATION DATE DELIVERY MODE
12/31/2019 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):
dallaspatents@dfw.conleyrose.com
uspatent@huawei.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WENFU WU and SHANSHAN WANG
____________

Appeal 2018-0029081
Application 14/104,753
Technology Center 2400
____________

Before MAHSHID D. SAADAT, ERIC S. FRAHM, and JOHN A. EVANS,
Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant2 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of all pending claims, i.e., Claims 1–37. Appeal
Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).

1 An oral hearing was held December 6, 2019. A transcript will be made of
Record in due course.
2 We use the word “Appellant” to refer to “Applicants” as defined in
37 C.F.R. § 1.42(a). The Appeal Brief identifies Huawei Technologies Co.,
Ltd., as the real party in interest. Appeal Br. 3.
Appeal 2018-002908
Application 14/104,753

2
We REVERSE.3
STATEMENT OF THE CASE
The claims relate to a method, device and system for creating
resources during a user equipment (UE) hand-over from a non-3rd
Generation Partnership Project (non-3GPP) system to a 3GPP system. See
Abstract.

INVENTION
Claims 1, 5, 14, and 24 are independent. An understanding of the
invention can be derived from a reading of illustrative Claim 1, which is
reproduced below with some formatting added:
1. A method for creating resources during a handover from
a non-3rd Generation Partnership Project (non-3GPP) access
system to a 3GPP access system, the method comprising:
receiving, by a serving gateway (Serving GW), a first
resource request message from a mobility management network
device, the first resource request message including handover
indication information;
sending, by the Serving GW, a second resource request
message including the handover indication information to a
packet data network gateway (PDN GW);

3 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed July 10, 2017, “Appeal Br.”), the Reply Brief
(filed January 16, 2018, “Reply Br.”), the Examiner’s Answer (mailed
November 14, 2017, “Ans.”), the Final Action (mailed June 17, 2016, “Final
Act.”), and the Specification (filed December 12, 2013, “Spec.”) for their
respective details.
Appeal 2018-002908
Application 14/104,753

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receiving, by the PDN GW, the second resource request
message including the handover indication information; and
obtaining, by the PDN GW, a policy and charging control
(PCC) rules, after the PDN GW receives the second resource
request message.

Rejections
Claims 1–37 stand rejected under pre-AIA 35 U.S.C. 102(b) as
anticipated by “3GPP TS 23.402 V1.0.0 (2007-05)” (“3GPP”). Final Act.
2–6.

ANALYSIS
We have reviewed the rejections of Claims 1–37 in light of
Appellant’s arguments that the Examiner erred. We consider Appellant’s
arguments as they are presented in the Appeal Brief, pages 7–23.

CLAIMS 1–37: ANTICIPATION BY 3GPP.
Because we find a single issue is dispositive of all rejections, we
decide the appeal on the basis of illustrative Claim 1, and refer to the
rejected claims collectively herein as “the claims.” See 37 C.F.R.
§ 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
Multiple Embodiments.
Appellant contends, in making the anticipation rejection, the
Examiner cites three separate and unrelated parts of the 3GPP standard.
Appeal 2018-002908
Application 14/104,753

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Appeal Br. 11. Appellant argues the first reference is to Fig. 5.4.2.6-1,
entitled “Initial E-UTRAN Attach via IETF based S5 or S8,” the second
reference is to Fig. C.3.1-1, entitled “Untrusted Non-3GPP IP Access with
DSMIPv6 over S2c to 3GPP Access Handover in the Non-Roaming
Scenario,” and the third reference is to Fig. C.3-1, entitled “3GPP Access
(UTRAN) to Trusted Non-3GPP IP Access with PMIPv6 Handover for the
Non-Roaming Scenario.” Id. Appellant argues it is improper to make a case
of anticipation through the synthesis of multiple, distinct embodiments.
Appeal Br. 8 (quoting Verdegaal Bros. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987) (“A claim is anticipated only if each and
every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.”).
The Examiner maps the claim recitations to the disclosure of three,
separate figures of the 3GPP reference, i.e., Figure 5.4.2.6-1, Figure C.1.1-1,
and Figure C.3.1-1. See Ans. 3–4. The Examiner finds the three cited
figures “all disclose similar features as claimed by the instant applicant.
Therefore, they can be used in a single embodiment.” Id. 5.
We disagree with the Examiner because we find the three figures
relate to three, separate embodiments disclosed by the 3GPP reference.
Section 5.4.2.6 is entitled “Initial E-UTRAN Attach via IETF based
S5 or S8b” and discloses “[t]his section is related to the case when the UE
powers-on in the LTE network via IETF based S5 or S8b interface. 3GPP,
26. Figure 5.4.2.6-1 (cited by the Examiner) is entitled “Initial E-UTRAN
Attach via IETF based S5 or S8b.” 3GPP, 28.
Appeal 2018-002908
Application 14/104,753

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Whereas § 5.4.2.1 relates to UE power-on in the LTE network via
IETF based S5 or S8b interface, § C.2 relates to “Handovers involving S2b
interface.” 3GPP, 39. Specifically, § C.2.1 relates to “Untrusted Non-3GPP
IP Access with PMIPv6 to E-UTRAN Handover in the Non-Roaming
Scenario.” 3GPP, 39. Figure C.1.1-1 (citied by the Examiner) relates to
“Handover from Trusted Non-3GPP IP Access to E-UTRAN with PMIPv6
on S2a and S5.” 3GPP, 35.
Moreover, whereas § C.2.1 relates to handovers using PMIPv6 on S2a
and S5 interfaces, § C.3 relates to “Handovers Involving S2c Interface.
3GPP, 42. Specifically, § C.3.1 relates to “Untrusted Non-3GPP IP Access
with DSMIPv6 over S2c to 3GPP Access Handover in the Non-Roaming
Scenario. 3GPP, 43. Moreover, Figure C.3.1-1, cited by the Examiner
relates to “Untrusted Non-3GPP S2c (DSMIPv6) to 3GPP Handover. 3GPP,
42.
Thus, we find, the Examiner has synthesized a prima facie case from
multiple, separate embodiments. The Board reverses an anticipation
rejection where the Examiner relies on multiple distinct embodiments within
the single reference. See Ex parte Cucerzan, Appeal 2009-008190; Appl.
11/094,078 (PBAI May 2, 2011). “Thus, it is not enough [in an anticipation
rejection] that the prior art reference discloses part of the claimed invention,
which an ordinary artisan might supplement to make the whole, or that it
includes multiple, distinct teachings that the artisan might somehow
combine to achieve the claimed invention. Net MoneyIn, Inc. v. Verisign,
Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).”
Appeal 2018-002908
Application 14/104,753

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In view of the foregoing, we decline to sustain the rejection of Claims
1–37 under 35 U.S.C. § 102.

CONCLUSION
The rejections of Claims 1–37 under 35 U.S.C. § 102 is REVERSED.

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–37 102 3GPP 1–37

REVERSED