Ex Parte 6,879,830 et al

Patent Trial and Appeal Board

Oct 23, 2017

95001192 (P.T.A.B. Oct. 23, 2017)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,192 05/28/2009 6,879,830 60851-379770 1712
23370 7590 10/23/2017
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
EXAMINER
FOSTER, ROLAND G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/23/2017 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
____________

HTC CORPORATION,
Requester,

v.

IPCOM GMBH,
Patent Owner.
____________

Appeal 2015-007683
Reexamination Control 95/001,192
Patent 6,879,830 B1
Technology Center 3900
____________

Before STEPHEN C. SIU, MICHAEL R. ZECHER, and
THOMAS L. GIANNETTI, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON REMAND
35 U.S.C. § 144

Appeal 2015-007683
Reexamination Control 95/001,192
Patent 6,879,830 B1

2
In an earlier Decision, mailed October 27, 2015 (“Decision”), we
reversed the Examiner’s non-adoption of the rejection of claims 1, 5–26, and
28–37 as unpatentable over various combinations of references including
Anderson,1 McDonald,2 GSM,3 and/or PACS.4 Decision 19. Claim 1 reads
as follows:

1. A mobile station for use with a network including a
first base station and a second base station that achieves a
handover from the first base station to the second base station by:
storing link data for a link in a first base station,
holding in reserve for the link resources of the first base
station, and
when the link is to be handed over to the second base
station:
initially maintaining a storage of the link data in the
first base station,
initially causing the resources of the first base station
to remain held in reserve, and
at a later timepoint determined by a fixed period of time
predefined at a beginning of the handover, deleting the link data
from the first base station and freeing up the resources of the first
base station, the mobile station comprising:
an arrangement for reactivating the link with the first base
station if the handover is unsuccessful.

1 U.S. Patent No. 6,088,590; issued July 11, 2000 (“Anderson”).
2 U.S. Patent No. 5,222,248; issued June 22, 1993 (“McDonald”).
3 Global System for Mobile Communications, “Digital Cellular
Telecommunications System (Phase 2+); Mobile Radio Interface Layer 3
Specification (GSM 04.08 version 6.1.1.1 Release 1997)” (“GSM”).
4 American National Standards Institute, “American National Standard for
Telecommunications – Personal Access Communications System Air
Interface Standard,” 1998 (“PACS”).
Appeal 2015-007683
Reexamination Control 95/001,192
Patent 6,879,830 B1

3
On appeal, the U.S. Court of Appeals for the Federal Circuit vacated
our determination of “obviousness of independent claims 1, 18, 30, and 34,
and their corresponding dependent claims based on the ‘arrangement for
reactivating the link’ means plus-function limitation,” but “affirm[ed] . . .
findings that the prior art discloses all the other limitations of the challenged
claims on appeal,” and remanded the case to the Board for further
consideration in light of its guidance. IPCom GMBH & Co. v. HTC Corp.,
861 F.3d 1362, 1378 (Fed. Cir. 2017). In particular, the Federal Circuit
remands this matter “for the Board to identify the corresponding algorithm
(if any) in the specification [corresponding to the claimed “arrangement”].”
Id. at 1371.
Pursuant to the instructions from the Federal Circuit, we provide the
following clarification. Claim 1 and claims dependent therefrom recite a
mobile station comprising an arrangement for reactivating a link with the
first base station. Claims 18, 30, and 34 (and claims dependent therefrom)
recite similar features. We agree with Requester that the Specification
discloses a mobile station that “can reactivate the link to old base station
BS1 by sending a simple message.” See Requester’s Comments Under
37 C.F.R. § 41.77(c) dated September 2, 2014 (“3PR Comments”) 11–12
(citing Spec. 5:10–12). Hence, the specific “algorithm” disclosed in the
Specification that corresponds to steps potentially performed by the claimed
“arrangement” (assumed to invoke means-plus-function for the purposes of
this matter) is the step of “sending a message,” as disclosed in the
Specification. Spec. 5:10–12.
Appeal 2015-007683
Reexamination Control 95/001,192
Patent 6,879,830 B1

4
Requester argues that both Anderson and McDonald disclose
reactivating a link, as recited in claim 1, by execution of an “algorithm” of
sending a message. 3PR comments 12–13. For example, McDonald
discloses reactivating a link by performing an “algorithm” in which a user
“enter[s] the desire into the subscriber [or into a “mobile station” containing
an “arrangement”],” which “then . . . informs the . . .controller [of the
desire]” and subsequent “returning to the previous channel [i.e., reactivation
of the link].” McDonald 3:14–21. We, therefore, agree with Requester and
determine that one of skill in the art would have understood that “informing”
a controller of a desire to reactivate a link (and resultant reactivation of the
link) would have encompassed “sending a message” to convey that desire.
We determine that “sending a message” is a generally understood and
widely accepted method of “informing” or communicating, in general –
particularly among those of skill in the art who are of ordinary creativity and
who are not automatons. KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007).

DECISION
We maintain our previous decision that claims 1, 5–17, 19–22, and 24
are unpatentable under 35 U.S.C. § 103(a) over Anderson and McDonald;
claim 23 and 25 are unpatentable under 35 U.S.C. § 103(a) over Anderson,
McDonald, and GSM; claims 18, 26, and 28–37 are unpatentable under
35 U.S.C. § 103(a) over Anderson and McDonald or, alternatively, over
Anderson, McDonald, and any one of GSM or PACS.

Appeal 2015-007683
Reexamination Control 95/001,192
Patent 6,879,830 B1

5
AFFIRMED

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PATENT OWNER:

KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing – 22
Suite 2800
Atlanta, GA 30309

THIRD PARTY REQUESTER:

PERKINS COIE LLP
Patent- Sea
P.O. Box 1247
Seattle, WA 98111-1247