Ex Parte HADownload PDFPatent Trial and Appeal BoardSep 22, 201613453036 (P.T.A.B. Sep. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/453,036 04/23/2012 Kwang-Jun HA 76277 7590 09/26/2016 IP LEGAL SERVICES, LLC P.O. Box 651325 Sterling, VA 20165 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. 801.0055 7313 EXAMINER BANTHRONGSACK, JEFF ART UNIT PAPER NUMBER 2462 NOTIFICATION DATE DELIVERY MODE 09/26/2016 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): email@iplsllc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KW ANG-JUN HA Appeal2015-004900 Application 13/453,036 Technology Center 2400 Before KAL YANK. DESHPANDE, DAVID M. KOHUT, and JUSTIN T. ARBES, Administrative Patent Judges. ARBES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1-20, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 1 We REVERSE. 1 Our decision will make reference to Appellant's Appeal Brief ("App. Br.," filed December 1, 2014) and Reply Brief ("Reply Br.," filed March 27, 2015), and the Examiner's Answer ("Ans.," mailed February 11, 2015) and Final Office Action ("Final Act.," mailed January 2, 2014). Appeal2015-004900 Application 13/453,036 INVENTION Appellant's invention is directed to a method and femtocell base station that provide different levels of service according to a user's membership status. Spec. i1i12, 8-10. Claim 1 recites: 1. A method for providing different levels of service by a femtocell base station according to a subscription status of user equipment, the method comprising: determining whether the user equipment coupled to the femtocell base station is a closed subscriber group (CSG) member or a non-CSG member based on subscription information of the user equipment; and allocating a first IP address to user equipment determined as the CSG-member and allocating a second IP address to user equipment determined as the non-CSG member, wherein the first IP address is associated with an Intranet service and the second IP address is associated with an Internet service. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Hom (hereinafter "Hom '980") Kong Hom US 2010/0112980 Al US 2011/0069659 Al WO 2010/121198 Al 2 May 6, 2010 Mar. 24, 2011 Oct. 21, 2010 Appeal2015-004900 Application 13/453,036 REJECTIONS Claims 1, 9, 11, 14--16, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hom and Kong. Final Act. 4--9; Ans. 2---6. Claims 2-8, 10, 12, 13, and 17-19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hom, Kong, and Hom '980. Final Act. 9-16; Ans. 7-14. ISSUE Appellant argues that the Examiner's rejections of claims 1-20 are in error. App. Br. 10-13; Reply Br. 5---6. These arguments present us with the following issue: Did the Examiner err in finding that Kong teaches "allocating a first IP address to user equipment determined as the CSG-member and allocating a second IP address to user equipment determined as the non-CSG member," as recited in independent claim 1 and similarly recited in independent claim 16? ANALYSIS Independent claim 1 recites determining whether user equipment is a "closed subscriber group (CSG) member" or "non-CSG member," and "allocating a first IP address to user equipment determined as the CSG-member and allocating a second IP address to user equipment determined as the non-CSG member, wherein the first IP address is associated with an Intranet service and the second IP address is associated with an Internet service." Thus, the claim requires allocating a first IP address to one device (i.e., user equipment) based on that user equipment 3 Appeal2015-004900 Application 13/453,036 being determined to be a member of the CSG, and allocating a second IP address to a device (i.e., user equipment) based on that user equipment being determined not to be a member of the CSG. Applying the broadest reasonable interpretation in light of the Specification, we do not interpret the claim language as permitting the same user equipment to be determined to be both a CSG-member and a non-CSG member (and thus allocated both a first IP address and a second IP address). In other words, the claim requires the "user equipment determined as the CSG-member" to be different from the "user equipment determined as the non-CSG member." Claim 1 recites a method of providing "different" levels of service according to user equipment subscription status, where a first IP address associated with "an Intranet service" is allocated to the CSG-member user equipment and a second IP address associated with "an Internet service" is allocated to the non-CSG member user equipment. The Specification similarly differentiates "CSG-member user equipment" from "non-CSG member user equipment." See, e.g., Spec. i-fi-14, 17-20, 39--41, Fig. 1 (depicting first user equipment 101 that is a CSG member and second user equipment 103 that is a non-CSG member). Claim 16 recites similar limitations to claim 1, and we interpret claim 16 in the same manner. The Examiner relies on Hom as allegedly teaching the step of determining whether user equipment is a CSG member, but acknowledges that Hom does not disclose the allocating steps of claim 1. Ans. 2-3, 15-16. The Examiner relies on Kong as allegedly teaching the allocating steps, finding that Kong teaches allocating first and second IP addresses to a terminal "after setting the initial service flow." Id. (citing Kong i-fi-f 14, 18, 44). 4 Appeal2015-004900 Application 13/453,036 Appellant argues that the Examiner erred because Kong teaches allocating two IP addresses to the same terminal, rather than allocating different IP addresses to different pieces of user equipment based on their membership status in the CSG. See App. Br. 10-12; Reply 5---6. Appellant's argument is persuasive of error by the Examiner. Kong discloses: In accordance with still yet another aspect of the present invention, a method for providing [a Local BreakOut (LBO)] service in a wireless communication system is provided. The method includes setting, at a femto gateway, an initial service flow and allocating a first IP address to a terminal, after setting the initial service flow, setting, at a femto base station, an LBO service flow information-based LBO service flow to allocate a second IP address to the terminal, and transmitting, at the terminal, traffic using at least one of the first IP address and the second IP address. Kong i-f 14 (emphasis added); see also id. i-fi-118, 72-73 (disclosing that "[t]he terminal" performs a procedure with the femto gateway to obtain a first IP address for Internet use, and "[t]he terminal" performs another procedure to obtain a second IP address for local use). Thus, Kong (1) sets an initial service flow and allocates a first IP address to a terminal, and (2) sets an LBO service flow information-based LBO service flow and allocates a second IP address to that terminal. Regardless of whether the terminal is determined to be a CSG member or not, the first and second IP addresses are allocated to the same terminal. 2 As explained above, we do not interpret the 2 The Examiner appears to acknowledge this. See Ans. 3, 16 (finding that Kong discloses allocating a first IP address to "a terminal" and allocating a second IP address to "the terminal"). 5 Appeal2015-004900 Application 13/453,036 claims as permitting the same user equipment to be determined to be both a CSG-member and a non-CSG member (and thus allocated both a first IP address and a second IP address). Therefore, we do not agree with the Examiner that Kong teaches "allocating a first IP address to user equipment determined as the CSG-member and allocating a second IP address to user equipment determined as the non-CSG member," as recited in independent claim 1 and similarly recited in independent claim 16. This issue is dispositive with respect to the rejection, and, therefore, we need not reach the remaining arguments made by Appellant. See App. Br. 11-12. Accordingly, we do not sustain the Examiner's rejection of independent claims 1 and 16. We also do not sustain the rejections of dependent claims 2-15 and 17-20, for which Appellant relies on the same argument regarding claims 1 and 16, and the Examiner relies solely on Kong for the disputed limitation. See App. Br. 12-13; Final Act. 5-8; Ans. 2-3, 5---6, 15-17. CONCLUSION Appellant has persuaded us of error in the Examiner's decision to reject claims 1, 9, 11, 14-16, and 20 as unpatentable over Hom and Kong under 35 U.S.C. § 103(a). Appellant has persuaded us of error in the Examiner's decision to reject claims 2-8, 10, 12, 13, and 17-19 as unpatentable over Hom, Kong and Hom '980 under 35 U.S.C. § 103(a). 6 Appeal2015-004900 Application 13/453,036 DECISION For the above reasons, the Examiner's decision to reject claims 1-20 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation