Ex Parte De Franca Lima et al

Patent Trial and Appeal Board

Aug 19, 2016

12770853 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121770,853 04/30/2010
27045 7590
ERICSSON INC
6300 LEGACY DRIVE
MIS EVR 1-C-11
PLANO, TX 75024
08/23/2016
FIRST NAMED INVENTOR
Octavio Jose De Franca Lima
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.
P30995-US2 1494
EXAMINER
HARLEY, JASON A
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
08/23/2016 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):
kara.coffman@ericsson.com
kathryn.lopez@ericsson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OCT A VIO JOSE DE FRANCA LIMA
and KE-CHI JANG
Appeal2015-002422
Application 12/770,853
Technology Center 2400
Before ERIC S. FRAHM, CATHERINE SHIANG, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-3, 5-9, 11-16, 18-23, and 25-28, which are all the
claims pending and rejected in the application. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to mobile
communication systems. See generally Spec. 1. Claim 1 is exemplary:
Appeal2015-002422
Application 12/770,853
1. A method of interworking between a packet-switched
network and a circuit-switched network, said method
compnsmg:
generating a tunneling packet encapsulating a circuit
services domain message;
sending said tunneling packet with said circuit services
domain message from a sending device in one of the circuit-
switched or packet-switched networks to a receiving device in
the other one of the circuit-switched and packet switched
networks; and
including an interworking option in a header of said
tunneling packet to indicate an interworking protocol used by
the sending device, said interworking option comprising an
interworking class value indicating a class of the interworking
protocol used by the sending device and a revision value
indicating a version of the interworking protocol within the
given class used by the sending device, wherein the revision
value is selected from a set of hierarchical values to indicate
backward compatibility between the designated version of the
interworking protocol and at least one other version of the
interworking protocol.
References and Rejection
Claims 1-3, 5-9, 11-16, 18-23, and 25-28 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Leung (U.S. Patent No.
6,879,581 Bl, Apr. 12, 2005) and Zhao (U.S. Pub No. 2003/0193911 Al,
Oct. 16, 2003).
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
conclusion that the Examiner erred in finding Leung teaches "generating a
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Appeal2015-002422
Application 12/770,853
tunneling packet encapsulating a circuit services domain message," as
recited in independent claim 1. 1 See App. Br. 6; Reply Br. 2-3.
The Examiner initially cites Leung's Abstract and column 6, lines 15-
21 for teaching the disputed claim limitation. See Final Act. 3. In the
response, the Examiner cites Leung's column 6, lines 15-21. See Ans. 3--4.
We have examined the cited Leung portions, and they do not discuss
"generating a tunneling packet encapsulating a circuit services domain
message," as required by claim 1. See App. Br. 6; Reply Br. 2-3. In
particular, Leung teaches encapsulating packetized traffic-not a circuit
services domain message. See Leung 6: 18-19 ("The packetized data traffic
and packetized voice traffic are encapsulated .... "). Absent further
explanation from the Examiner, we do not see how the cited Leung portions
teach the disputed claim limitation.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner's rejection of claim 1, and corresponding dependent
claims 2-3 and 5---6.
Each of independent claims 7, 14, and 21 recites a claim limitation
that is substantially similar to the disputed limitation of claim 1. See claims
7, 14, and 21. Therefore, for similar reasons, we do not sustain the
Examiner's rejection of independent claims 7, 14, and 21, and corresponding
dependent claims 8-9, 11-13, 15-16, 18-20, 22-23, and 25-28.
1 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
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Appeal2015-002422
Application 12/770,853
DECISION
We reverse the Examiner's decision rejecting claims 1-3, 5-9, 11-16,
18-23, and 25-28.
REVERSED
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