Zisimopoulos, Haris et al.

Patent Trials and Appeals Board

Nov 4, 2019

13696217 - (D) (P.T.A.B. Nov. 4, 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.
13/696,217 11/05/2012 Haris Zisimopoulos 678-4569 PCT
US (P18439-U
3897
66547 7590 11/04/2019
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
ZHANG, RUIHUA
ART UNIT PAPER NUMBER
2416
NOTIFICATION DATE DELIVERY MODE
11/04/2019 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HARIS ZISIMOPOULOS and VAISHALI PAISAL
____________

Appeal 2019-000439
Application 13/696,217
Technology Center 2400
____________

Before JAMES B. ARPIN, ADAM J. PYONIN, and
MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4–7, 9, 12, 14–17, and 20, which
constitute all of the pending claims. See Final Act. 1 and Appeal Br. 14–18
(Claims App’x). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use “Appellant” to refer to the “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Samsung Electronics
Co., Ltd. as the real party in interest. Appeal Br. 1.
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Introduction
Appellant’s disclosure and claims relate “to handover of video calls
from a packet switched network to a circuit switched network in a single
radio environment.” Spec. 1. Independent claim 1 is representative of the
claims on appeal:
1. A method for performing a handover of a video call from
a packet switched network to a circuit switched network by a
mobility management entity (MME) in a wireless network
environment, the method comprising:
receiving, by the MME, a message from an e-node B
(eNB) to perform a video single radio voice call continuity
(vSRVCC) handover for a User Equipment (UE) from the
packet switched network to the circuit switched network during
a video call session in the packet switched network; and
transmitting, by the MME, a vSRVCC handover request
to a circuit switched network entity for performing the
vSRVCC handover of the video call session;
wherein the vSRVCC handover request comprises Sv
flags including vSRVCC capabilities of the UE-associated with
the video call session, and
wherein the vSRVCC capabilities indicate that the
vSRVCC handover is requested by the MME.
Appeal Br. 14 (Claims App’x).
Rejections2 & References
The Examiner rejected claims 1 and 17 under 35 U.S.C. § 103(a) as
unpatentable over (a) the Technical Report for 3rd Generation Partnership

2 In the Final Office Action prior to this Appeal, the Examiner rejected
claims 4, 9, and 12 under 35 U.S.C. § 112. Final Act. 6. After Appellant
filed a Response after Final Action on February 12, 2018, the Examiner
withdrew that rejection in an Advisory Action delivered electronically
March 28, 2018 (“Adv. Act.”).
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Project; Technical Specification Group Services and System Aspects;
Feasibility Study of Single Radio Video Call Continuity (vSRVCC); Stage 2
(Release 10) (3GPP TR 23.8xy V0.1.0 (2010-03)) (hereafter, the “3GPP
vSRVCC TR”) and (b) the Technical Specification for 3rd Generation
Partnership Project; Technical Specification Group Services and System
Aspects; Single Radio Voice Call Continuity (SRVCC); Stage 2 (Release
11) (3GPP TS 23.216 V11.5.0 (2012-06)) (hereafter, the “3GPP SRVCC
TS”). Final Act. 9–12.
The Examiner rejected claims 4, 9, 12, and 20 under § 103(a) as
unpatentable over the 3GPP vSRVCC TR, the 3GPP SRVCC TS, and Chen
(US 2010/0040020 A1; Feb. 18, 2010). Final Act. 12–18.
The Examiner rejected claim 5 under § 103(a) as unpatentable over
the 3GPP vSRVCC TR, the 3GPP SRVCC TS, and Bornier (US
2008/0280612 A1; Nov. 13, 2008). Final Act. 18–20.
The Examiner rejected claims 6 and 7 under § 103(a) as unpatentable
over the 3GPP vSRVCC TR, the 3GPP SRVCC TS, Bornier, and Pirila (US
2005/0180338 A1; Aug. 18, 2005). Final Act. 20–22.
The Examiner rejected claim 14 under § 103(a) as unpatentable over
the 3GPP vSRVCC TR, the 3GPP SRVCC TS, Chen, and the Technical
Specification for 3rd Generation Partnership Project; Technical Specification
Group Services and System Aspects; IP Multimedia Subsystem (IMS)
Service Continuity; Stage 2 (Release 10) (3GPP TS 23.237 V10.1.0 (2010-
03)) (hereafter, the “3GPP IMS TR”), and Bornier. Final Act. 23–25.
The Examiner rejected claims 15 and 16 under § 103(a) as
unpatentable over the 3GPP vSRVCC TR, the 3GPP SRVCC TS, Chen, the
3GPP IMS TR, Bornier, and Pirila. Final Act. 25–27.
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ANALYSIS
Appellant argues error in the rejection of claims 1 and 17 together as a
group and submits no substantive arguments for the rejections of claims 4–7,
9, 12, 14–16, and 20 separate from those made for claims 1 and 17. Appeal
Br. 5–12.3 We select claim 1 as representative of all rejected claims. See 37
C.F.R. § 41.37(c)(1)(iv).
In rejecting claim 1, the Examiner finds the 3GPP vSRVCC TR
teaches the receiving step’s limitations for performing a vSRVCC handover
for a UE, “wherein the vSRVCC handover request comprises Sv flags
including vSRVCC capabilities of the UE associated with the video call
session.” Final Act. 13 (citing the 3GPP vSRVCC TR § 4.1; Fig. 6.1.1.2-1).
The Examiner explains “there is no specific definition of what the Sv flags
are,” and “the vSRVCC handover trigger is considered [to disclose the] Sv
flags because it is for performing the vSRVCC handover function.” Id.
(emphasis omitted). The Examiner more particularly explains that the 3GPP
vSRVCC TR “discloses ‘Sv flag including vSRVCC capabilities of the UE
associated with the video call session’ as illustrated in Fig. 6.1.1.2-1,
because vSRVCC handover trigger is the part of capability of vSRVCC for
video call session, i.e., it establishes or instructs vSRVCC handover.” Adv.
Act. 1 (further explaining that there are “no other properties of ‘Sv flag’
being defined (or what are capabilities) in [the] claim, [so] it can be any
parameter/quantity that represents function(s) of vSRVCC capabilities”).
Regarding Appellant’s Specification, the Examiner notes that “[a]lthough

3 Independent claims 9, 17, and 20 recite limitations commensurate with the
argued limitations of claim 1; claims 4–7, 12, and 14–16 depend, directly or
indirectly, from either independent claim 1 or 9. See Appeal Br. 14–18
(Claims App’x).
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Table 1 presents details of Sv flag[s], but most of them are missing in [the]
claim language, which clearly cannot be recognized by one of ordinary skill
[sic]”). Id.
Appellant contends the Examiner errs, because claim 1 “clearly
[recites] the Sv flags as being part of a vSRVCC handover request” and “that
the Sv flags include vSRVCC capabilities of the UE-associated with the
video call session.” Appeal Br. 8; see also id. at 9 (contending “the
Examiner must reasonably construe the recitation ‘Sv flags’ in view of the
[Specification]”). Appellant’s argument is persuasive.
When construing claim language during prosecution, we give it the
broadest reasonable interpretation consistent with the Specification, as it
would be interpreted by those of ordinary skill in the art. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Smith Int’l, Inc.,
871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (clarifying the broadest reasonable
interpretation is not the broadest possible interpretation—it must
“correspond[] with what and how the inventor describes [the] invention in
the specification, i.e., an interpretation that is ‘consistent with the
specification’”) (quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997)). Here, the Examiner construes the recited Sv flag limitations too
broadly.
Claim 1 recites that a handover request includes “Sv flags,” i.e., more
than one Sv flag. Claim 1 also requires the Sv flags to “includ[e] vSRVCC
capabilities of the UE-associated with the video call session.” These Sv flag
limitations are consistent with the disclosure in the Specification, which
discloses a plurality of different Sv flags, one of which “indicates the UE
capability.” See Spec. 7 (Table 1).
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In finding the handover trigger in the 3GPP vSRVCC TR teaches
these SV flags-related limitations, the Examiner construes the Sv flags
limitations too broadly. The claimed use of Sv flags requires a particular
structure for implementing the related functionality. Regardless whether the
3GPP vSRVCC TR discloses the functionality, the record before us does not
explain how or why an ordinarily skilled artisan would have understood that
a (general) disclosure of the functionality is a teaching or suggestion of
claim 1’s (particular) implementation of the functionality, i.e., by using
multiple Sv flags that include vSRVCC capabilities of the UE, as recited.
Thus, on the record before us, the findings do not show that the cited
art teaches or suggests all limitations of claim 1, and we do not sustain its
rejection under 35 U.S.C. § 103(a). We also, therefore, for the same reasons,
do not sustain the § 103(a) rejections of claims 4–7, 9, 12, 14–17, and 20.
CONCLUSION
We reverse the rejections under 35 U.S.C. § 103(a) of claims 1, 4–7,
9, 12, 14–17, and 20.

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In summary:

REVERSED

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 17 103 3GPP vSRVCC TR, 3GPP SRVCC TS
1, 17
4, 9, 12, 20 103
3GPP vSRVCC TR,
3GPP SRVCC TS,
Chen

4, 9, 12, 20
5 103
3GPP vSRVCC TR,
3GPP SRVCC TS,
Bornier

5
6, 7 103
3GPP vSRVCC TR,
3GPP SRVCC TS,
Bornier, Pirila

6, 7
14 103
3GPP vSRVCC TR,
3GPP SRVCC TS,
3GPP IMS TR,
Bornier

14
15, 16 103
3GPP vSRVCC TR,
3GPP SRVCC TS,
Chen,
3GPP IMS TR,
Bornier, Pirila

15, 16
Overall
Outcome
1, 4–7, 9, 12,
14–17, 20