Ex Parte Drevon et al

Patent Trial and Appeal Board

Sep 10, 2018

11556730 (P.T.A.B. Sep. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/556,730 11/06/2006
30594 7590 09/12/2018
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
FIRST NAMED INVENTOR
Nicolas Drevon
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.
29250P-000017/US 9253
EXAMINER
SNJI,NIZARN
ART UNIT PAPER NUMBER
2645
NOTIFICATION DATE DELIVERY MODE
09/12/2018 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):
dcmailroom@hdp.com
pshaddin@hdp.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ExparteNICOLAS DREVON, ALAIN BULTINCK, and
LAURENT THIEBAUT
Appeal2018-001513
Application 11/556,730 1
Technology Center 2600
Before ROBERT E. NAPPI, BETH Z. SHAW, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 37-39 and 41-56. Appellants have canceled claims 1-36 and 40.
App. Br. 22. We have jurisdiction over the remaining pending claims under
35 U.S.C. § 6(b ).
We affirm-in-part.
1 Appellants identify Alcatel Lucent as the real party in interest. App. Br. 1.
Appeal2018-001513
Application 11/556,730
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention generally relates to
updating the configuration of a mobile communication network with respect
to Tracking Areas (i.e., a location area or routing area used to keep track of a
mobile device's location). Spec. 1: 11-12, 2:6-12, 3:30-32, 4: 15-17. In a
disclosed embodiment, an ENB (enhanced Node B) sends (for example, at
start-up or periodically) a Tracking Area registration message, or registration
request, to a Paging Coordination Entity (PCE) managing the Tracking Area.
Spec. 10:6-13. According to the Specification, the PCE accepts or rejects
the request and, if accepted, "the PCE adds (and/or possibly removes,
depending on information within the registration message) the ENB address
... associated with the Tracking Area(s)." Spec. 10:14--18; see also Fig. 3.
Claims 37 and 43 are exemplary of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
37. A method for configuring a cellular mobile
communication network with Tracking Areas, comprising:
sending, from an Enhanced Node B (ENB), a request
message to a Mobility Management Entity (MME), the request
message including at least one Tracking Area supported by the
ENB, in order to indicate to the MME that the ENB is to be
associated with the at least one Tracking Area; and
receiving, at the ENB from the MME, one of a [sic] accept
message and a reject message indicating that the request message
is one of accepted and rejected, the ENB having both the
capability of receiving an accept message and the capability of
receiving a reject message.
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Application 11/556,730
43. A Mobility Management Entity (MME) of a mobile
communication network, configured to:
receive a request message from an Enhanced Node B
(ENB), the request message including at least one Tracking Area
supported by the ENB, in order to indicate to the MME that the
ENB is to be associated with the at least one Tracking Area;
said MME further configured to send an accept message
or a reject message to said ENB;
said MME further having both the capability of accepting
said request and the capability of rejecting said request.
The Examiner's Rejections
1. Claims 37, 38, 41--46, and 49-56 stand rejected under
35 U.S.C. § I03(a) as being unpatentable over Motegi et al. (US
2003/0109254 Al; June 12, 2003) ("Motegi") and Applicants' Admitted
Prior Art ("AAPA"). Final Act. 3-9.
2. Claim 39 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Motegi, AAPA, and De Sousa (US 2008/0298275 Al;
Dec. 4, 2008 (PCT filing date: June 3, 2005)). Final Act. 9-10
3. Claims 47 and 48 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Motegi, AAP A, and the Examiner's taking of
Official Notice. Final Act. 10-11.
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Application 11/556,730
ANALYSIS 2
Claims 37-39, 41, 42, 47, 48, 50, and 51
In rejecting, inter alia, independent claim 37, the Examiner finds
Motegi teaches or suggests most of the recited limitations, but does not
expressly teach that its disclosed base station is an enhanced Node B (ENB)
and that the ENB is to be associated with at least one Tracking Area. Final
Act. 3-5. We begin our analysis with a brief review of Motegi.
Motegi is generally directed to location registration area configuration
in a mobile communication network. See Motegi ,r,r 2, 9 ("a location
registration area configuring method"). Motegi describes an exemplary
network comprising a plurality of mobile stations, a plurality of base stations
connected to a network, and a location information management server.
Motegi ,r 9, Fig. 1. Motegi further describes the location information
management server as "configured to manage location registration areas
formed of cells established by the base stations and location information
about locations of the mobile stations." Motegi ,r 9.
Further, as base stations are added or removed from the network in
Motegi, the location information management server updates a location
registration area management table accordingly. Motegi ,r 61.
2 Throughout this Decision, we have considered the Appeal Brief, filed
August 31, 2017 ("App. Br."); the Reply Brief, filed November 27, 2017
("Reply Br."); the Examiner's Answer, mailed November 2, 2017 ("Ans.");
and the Final Office Action, mailed April 12, 2017 ("Final Act."), from
which this Appeal is taken.
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Application 11/556,730
Figure 5 of Motegi is illustrative and is reproduced below:
Fig .. 5 (s1~\RT.) -x--............... ..
I .. ... .......... N /iS~T,IFIC,\;f ~
r-····················--<. o_ F REMOVAL RE-El I.E. D
l ~ROM BASE STATION?
_..-----A-.. ,.<-, S53 ~---"-
N --~~OTfF!CATION~"- r ...................... ! ................... ·-, 852 ~------<.._NEWJNSTALLAIJON 13,ECEIVED DELETE THE --
~ROM BASE STAI .ION? BASE STATION FROM
...... LC(,ATlm~ REGISrRA'nON
AREA MANAGEMENT TAHU:
,.........---~-------------------· .. ·
REGISTER THE BASE STA.TION SS4 ON THE LOCAT!ON REGISTPNION --- .
,\REA MANAGEMENT TABLE
RECONFIGURE LOCAT!ON
REGlSTRATION AREAS
-··--- S56
Figure 5 of Motegi is a flowchart identifying the processing steps taken by
the location information management server when a base station is added or
removed from the network. Motegi ,r 4 7; see also Motegi ,r 71. Motegi
teaches if the location information management server determines that the
"notification" received from the base station is for removal (S51 ), the base
station and its accompanying information is deleted from the location
registration area management table (S52). Motegi ,r 71. If the location
information management server determines that the "notification" received
from the base station relates to a new installation of a base station (S53), the
location information management server registers information about the
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newly installed base station in the location registration area management
table (S54). Motegi ,r 71. Additionally, the location information
management server will notify the base station that it has been registered
(S56). Motegi ,r 71.
Appellants argue the Examiner erred in finding the location
information management server in Motegi teaches or suggests the claimed
Mobility Management Entity (MME). App. Br. 9-12. In particular,
Appellants assert that Motegi' s system ( which Appellants argue if further
described in a patent identified in the Background section of Motegi) 3 relates
to, and incorporates network elements used in previous generation networks
and that "it is well-known in the industry that a 'Mobility Management
Entity (MME)' (recited in claim 37) is different from a central database
( conventionally called a Home Location Register, or HLR), or Home
Subscriber Server (HSS), where the MME is known to not be a part of the
HLR and/or HSS." App. Br. 10.
As an initial matter, it is well settled that mere attorney arguments and
conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
( attorney argument is not evidence). Appellants do not provide persuasive
evidentiary support for their assertion. Contrary to Appellants' arguments,
the Examiner finds, and we agree, Motegi' s location information
management server teaches the claimed MME. See Final Act. 4; Ans. 9-10.
The Examiner's finding is consistent with Appellants' Specification, in
which "the network entity in charge of MM [(Mobility Management)]
3 Onoe et al. (US 5,361,396; Nov. 1, 1994).
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function is called Mobility Management Entity (MME) ... regardless of the
physical network node(s) where these functions can be located."
Spec. 3:22-26. As described above, Motegi's location information
management server is performing Mobility Management functions by, at
least, managing location information of the mobile stations. Cf Spec. 2:6-
12 (Mobility Management functions include "keeping track of MS/UE
[(mobile stations/user equipment)] location with the accuracy of an area ...
[and] using subscription data held in a subscriber database such as a Home
Location Register (HLR) or Home Subscriber Server (HSS).").
Appellants also contend that "Motegi does not allow the base station
and the location information management server to, eventually, interwork
over an interface that would connect the base station and the location
information management server." See App. Br. 12. We disagree. As shown
in Figure 2 of Motegi, the location information management server is
comprised of location registration area management table, a deleting unit,
and a network communication unit. Motegi ,r 61, Fig. 2. Motegi discloses
that the network communication unit "performs transmission/reception of
information to or from each base station ... through the network." Motegi
,r 61. The transmission and reception of information between the location
information management server and base stations are all that the claims
require. Cf claim 37 (sending a request message from an ENB to the MME
and receiving an accept or reject message at the ENB from the MME).
Accordingly, we are not persuaded of error.
Additionally, Appellants assert the Examiner erred in finding Motegi,
alone or in combination with AAP A, teaches or reasonably suggests an ENB
sending a request message to an MME to associate the ENB with an
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identified Tracking Area. App. Br. 8-19; Reply Br. 2---6. In particular,
Appellants argue that rather than sending a "request message" to associate a
Tracking Area with an ENB, as recited in the claims, the base station (i.e.,
Motegi's ENB, as modified by AAPA) issues a "mandate" to a location
information management server to add or remove a base station and its
accompanying location information to/from a location registration area
management table. App. Br. 12-19 (citing Motegi ,r,r 70-71, Fig. 5); Reply
Br. 2-6. In other words, Appellants argue the base station in Motegi issues a
notification to either add or remove a base station and its accompanying
location information and the location information management server does
not have the ability ( or opportunity) to accept or reject the notification. See
App. Br. 13-14.
The Examiner finds the notification from the base station in Motegi
teaches the claimed "request message" and that the location information
management server responds to the base station with either an accept
message (i.e., the notification to the base station that the newly installed base
station was successfully registered (S56)) or a reject message (in response to
a notification of removal from the base station (i.e., when the outcome of
S51 is Yes)). Final Act. 4--5; Ans. 8, 10-11.
At the outset, we note independent claim 3 7 recites a method wherein
the MME (i.e., location information management server) sends "one of a
[sic] accept message and a reject message indicating that the request
message is one of accepted and rejected." See claim 37 (emphasis added).
Thus, the plain language of claim 37 requires only an accept message or a
reject message.
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Additionally, we note claim 37 further recites "the ENB having both
the capability of receiving an accept message and the capability of receiving
a reject message." Neither the claim nor the Specification describes that the
ability of the ENB to receive a message is affected by the content (i.e.,
accepted or rejected) of the received message. Additionally, Appellants do
not claim the use of the particular content of the message. Accordingly, the
ENB must be, at least, capable of receiving a message from the MME.
When construing claim terminology during prosecution before the
Office, claims are to be given their broadest reasonable interpretation
consistent with the Specification, reading claim language 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).
We are mindful, however, that limitations are not to be read into the claims
from the Specification. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993). Because "applicants may amend claims to narrow their scope, a
broad construction during prosecution creates no unfairness to the applicant
or patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007) ( citation omitted).
Regarding the claimed "request message," we disagree with
Appellants that the Examiner erred in finding Motegi' s notification teaches
or reasonably suggests the request message. As described in Appellants
Specification, "the ENB sends a Tracking Area(s) registration message, or
registration request, to the PCE( s ). " Spec. 10: 10-11 ( emphasis added).
Continuing, the Specification interchangeably uses the terms. See, e.g.,
Spec. 10: 15-17 ("When the registration request is accepted, the PCE adds
(and/or possibly removes, depending on information within the registration
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message) the ENB address in the Radio Access Network entity list.")
(Emphases added). Thus, the Specification makes clear that what is sent by
the ENB may be referred to as a registration message or request.
Accordingly, we agree with the Examiner that Motegi's notification teaches
or reasonably suggests the claimed "request message."
Further, we agree with the Examiner that the notification by the
location information management server to the base station indicating that
the newly installed base station has been registered, teaches or reasonably
suggests receiving at the ENB (i.e., base station) from the MME (i.e.,
location information management server), an accept message indicating that
the request message (i.e., notification) is accepted. See Final Act. 5. An
obviousness analysis "need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
Here, an ordinarily skilled artisan would understand that by sending a
notification (from the location information management server to the base
station) that the base station has been registered, Motegi teaches that the
notification (i.e., registration notification request) has been accepted and that
the base station will receive the message.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of independent
claim 37. For similar reasons, we also sustain the Examiner's rejection of
independent claim 41, which recites similar limitations and was not argued
separately. See App. Br. 19; see also 37 C.F.R. § 4I.37(c)(l)(iv) (2017).
Additionally, we sustain the Examiner's rejections of claims 38, 39, 42, 47,
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48, 50, and 51, which depend directly or indirectly therefrom and were not
argued separately with particularity. See App. Br. 19-20; see also 37 C.F.R.
§ 4I.37(c)(l)(iv).
Claims 43-46, 49, and 52-56
We note, sua sponte, independent claim 43 recites, in relevant part,
that the MME has "both the capability of accepting said request and the
capability of rejecting said request." Independent claim 53 includes a
similar limitation. In rejecting claims 43 and 53, the Examiner relies on the
findings made in support of the rejection of independent claim 3 7. See Final
Act. 8-9.
Claims 43 and 53 are of different scope than claim 37 in that claims
43 and 53 recite that the MME must be capable of accepting and rejecting
the registration request. We are not persuaded the Examiner has sufficiently
explained how the cited portions of Motegi teaches rejecting a request by
responding to a notification of a removal of a base station by deleting its
entry from the location registration area management table (see, e.g., Final
Act. 4--5; Ans. 8, 10-11). Thus, the Examiner has not shown by a
preponderance of evidence how the cited portions of Motegi teach the
location information management server (i.e., the claimed MME) is capable
of rejecting a registration request.
For the reasons discussed supra, and constrained by the record before
us, we do not sustain the Examiner's rejection of independent claims 4 3 and
53. Additionally, we do not sustain the Examiner's rejection of claims 44--
46, 49, 52, and 54--56, which depend directly or indirectly therefrom.
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DECISION
We affirm the Examiner's decision rejecting claims 37-39, 41, 42, 47,
48, 50, and 51.
We reverse the Examiner's decision rejecting claims 43--46, 49, and
52-56.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED-IN-PART
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