Ex Parte Horn et al

Patent Trial and Appeal Board

Jul 28, 2016

12269611 (P.T.A.B. Jul. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/269,611 11112/2008
23696 7590 08/01/2016
QUALCOMM INCORPORATED
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
FIRST NAMED INVENTOR
Gavin B. Horn
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.
072324Ul 1662
EXAMINER
WANG,FANGHWA
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
08/01/2016 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):
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GA VIN B. HORN, FAITH ULUPINAR, P ARAG A. AGASHE,
and RAJAT PRAKASH
Appeal2015-002509
Application 12/269,611
Technology Center 2600
Before ST. JOHN COURTENAY III, THU A. DANG,
MELISSA A. RAAP ALA, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1---6, 8-17, 19, and 20. Claims 7 and 18 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Appeal2015-002509
Application 12/269,611
A. INVENTION
According to Appellants, the invention relates "generally to wireless
communications, and more particularly to utilizing restriction codes in
conjunction with attempts to connect to wireless access points." (Spec. i-f 3).
B. REPRESENTATIVE CLAIM
Claim 1 is exemplary:
1. A method for connection establishment m a
wireless communication network, comprising:
measuring, by a mobile device, one or more
communication metrics-related parameters corresponding to a
restricted association access point;
determining by the mobile device whether the restricted
association access point is identified in a maintained list of
accessible femto access points stored at a memory of the mobile
device, wherein the maintained list of accessible femto access
points identifies one or more femto access points that the mobile
device is authorized to access;
in response to a determination that the restricted
association access point is identified in the maintained list of
accessible femto access points, determining a rank of the
restricted association access point based on the one or more
communication metrics-related parameters;
transmitting, from the mobile device to the restricted
association access point, a request to establish a connection to
the wireless communication network via the restricted
association access point, wherein the request is transmitted to the
restricted association access point based at least in part on the
determination that the restricted association access point is
identified in the maintained list of accessible femto access points
and the rank;
receiving, by the mobile device from the restricted
association access point, a rejection that includes a restriction
code that indicates the restricted association access point is
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unsuitable for establishing the connection to the communication
network; and
refraining from re-attempting, by the mobile device, to
establish the connection to the communication network via the
restricted association access point based at least in part on the
restriction code.
C. PRIOR ART AND REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dalsgaard
Roberts
ulHaq
Rahman
Nylander
US 6,792,284 Bl
US 2006/0040700 Al
US 2006/0258354 Al
US 2007/0250713 Al
US 7,925,259 B2
Sept. 14, 2004
Feb.23,2006
Nov. 16, 2006
Oct. 25, 2007
Apr. 12, 2011
Claims 1--4, 6, 8-15, 17, 19, and 20 stand rejected under 35 U.S.C. §
103(a) as unpatentable over the teachings oful Haq, Nylander, Dalsgaard,
and Roberts.
Claims 5 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the teachings of ul Haq, Nylander, Dalsgaard, Roberts,
and Rahman.
II. ISSUES
The principal issues before us are whether the Examiner erred in
finding that the combination of ul Haq, Nylander, Dalsgaard, and Roberts
teaches or would have suggested "in response to a determination that the
restricted association access point is identified in the maintained list of
accessible femto access points [that identifies one or more femto access
points that the mobile device is authorized to access], determining a rank of
the restricted association access point" based on communication "metrics-
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related parameters;" and "receiving, by the mobile device from the restricted
association access point, a rejection that includes a restriction code" (claim
1, emphases added). In particular, the issues include 1) whether Roberts
discloses or suggests determining a rank of a restricted access point in
response to determining that the restricted access point is identified in a
maintained "list" of "accessible" access points that identifies at least one
access point that the device is authorized to access; and 2) whether
Dalsgaard discloses or suggests receiving a rejection from an access point
"by the mobile device" (claim 1 ).
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Roberts
1. Roberts discloses flagging information for a cell which is known to be
unsuitable for selection in a neighboring cell list stored on a user equipment
(UE) (Abstr.),wherein the neighboring cell list is transmitted or compiled,
thereby allowing the UE to have prior knowledge of the transmission
frequencies of the neighboring cells and to scan these frequencies
accordingly (i-f 36). The neighboring cell lists may contain GSM cells that
are barred (unsuitable), wherein the barred cell may keep their indices in the
list but no measurement is performed, i.e., no scan at the frequency of that
cell is made (i-f 39).
2. The UE determines whether the measurement data meets a
predetermined criterion and stores the measurement data in an order relative
to the meeting of the criterion (cell ranking list) (i-f 41 ). The UE then uses
the measurement results to identify the highest ranked cell, and checks
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whether the identified cell at the identified frequency is suitable Cil 44). If
the identified cell is not suitable, the UE flags the identified cell as
unsuitable (i1 45).
Dalsgaard
3. Dalsgaard discloses determining if a suitable neighbor cell supporting
the GPRS service is found among the neighbor cell, wherein if there is a
suitable neighbor cell and other network requirements are met, the terminal
transmits a special cell access request (Fig. 4, steps 43, 44, and 46).
4. After having received a response to the special cell access request
from the network, a cell reselection is performed according to the standard.
If permission to perform cell reselection is granted, the terminal moves to a
user of the selected neighbor cell where it is offered the GPRS services
available in the cell. The terminal might instead of transmitting the special
cell service request to the network, perform a normal cell change to one of
the cells found acceptable (col. 8, 11. 14--27).
IV. ANALYSIS
Appellants contend "Roberts does not disclose a maintained list of
accessible access points which it checks to determine whether a restricted
association access point is identified therein" nor "does it then rank a
restricted association access point in response to a determination that the
restricted association access point is in the maintained list" (App. Br. 12).
According to Appellants, Roberts' "GSM Neighbour Cell List and ranking
list are not lists of 'accessible' access points that identify access points that
the 'mobile device is authorized to access"' because Roberts' lists "can
include cells which are not necessarily accessible and which need not be
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identified as access points that the mobile device is authorized to access"
(Reply Br. 5).
Appellants then contend Dalsgaard "specifically describes that a
'special cell access request' is transmitted from the terminal to its own cell
(the serving cell)" (App. Br. 13). In particular, according to Appellants "the
terminal in Dalsgaard does not interact with the target cell unless and until
it has received permission or approval of its communication request from the
network through its serving celf' (id.).
Furthermore, Appellants contend that "the Examiner relies on
impermissible hindsight to piece together the individual naked parts of [ul]
Haq, Nylander, Dalsgaard, and Roberts in order to come to his conclusion"
(App. Br. 15).
We have considered all of Appellants' arguments and evidence
presented. However, we disagree with Appellants' contentions regarding the
Examiner's rejections of the claims. We agree with the Examiner's findings,
and find no error with the Examiner's conclusion that the claims would have
been obvious over the combined teachings.
As a preliminary matter of claim construction, we give the claims
their broadest reasonable interpretation consistent with the Specification.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). While we interpret
claims broadly but reasonably in light of the Specification, we nonetheless
must not import limitations from the Specification into the claims. See
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en bane).
As to Appellants' contentions that Roberts' lists "are not lists of
'accessible' access points that identify access points that the 'mobile device
is authorized to access"' because Roberts' lists "can include cells which are
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not necessarily accessible and which need not be identified as access points
that the mobile device is authorized to access" (Reply Br. 5), we note the
scope of claim 1 as recited does not preclude a list including non-accessible
cells as well as accessible cells. That is, claim 1 merely requires
determining whether the access point is in a list of accessible access points,
but does not require that the list is of only accessible access points (see claim
1).1
1 We note that although claim 1 recites "determining ... whether the
restricted association access point is identified in a maintained list" wherein,
determining a "rank" of the access point is performed "in response" to the
determination that the access point is identified in the list (emphasis added),
both sides of the predicate condition (the access point is either identified in
the list or is not identified in the list) are not covered within the scope of the
claim. That is, the claim requires determining the rank of the access point
only in response to a determination that the access point is identified in the
list, but is silent as to \x1hen the access point is determined to not be
identified in the list. Thus, under a broad but reasonable interpretation, a
question arises as to whether the contested conditional "whether" the access
point is identified in the list is positively recited as actually requiring the
performance of the recited step of determining the rank in response thereto,
since the determination could possibly be that the access point is not
identified in the list. Our reviewing court provides persuasive, non-
precedential guidance: "If the condition for performing a contingent step is
not satisfied, the performance recited by the step need not be carried out in
order for the claimed method to be performed." Cybersettle, Inc. v. Nat 'l
Arbitration Forum, Inc., 243 Fed.Appx. 603, 607 (Fed. Cir. 2007)
(Unpublished case); Applera Corp. v. Illumina, Inc., 375 Fed.Appx. 12, 21
(Fed. Cir. 2010) (unpublished) (affirming a district court's interpretation of a
method claim as including a step that need not be practiced if the condition
for practicing the step is not met). Other Board panels have addressed
similar conditional steps or acts in method claims, e.g., Ex parte Katz, No.
2010-006083, 2011WL514314, at *4--5 (BPAI 2011).
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Furthermore, the claim and the Specification do not provide any
specific definition for a list of "accessible" femto access points other than
the list "identifies one or more femto access points that the mobile device is
authorized to access" (claim 1, emphasis added). That is, claim 1 merely
defines the list as comprising at least one access point that a mobile device
can access.
We find no error with the Examiner's reliance on Roberts to disclose
and suggest determining "whether a barred cell is identified in the
maintained list" and then, "in response to the determination, performs the
signal measurement," then "determines the rank to rebuild the cell ranking
list using the signal measurement results," and then "selecting the highest
ranked cell" (Ans. 7; FF 1-2). That is, upon (in response to) identifying
(determining) that the cell (access point) is in the maintained list, Roberts
discloses determining the rank of the cell based on the measurement results
(id.). We agree with the Examiner's finding that Roberts discloses or at least
suggests determining a rank of an access point based on the metrics-related
parameters in response to determining that the cell is in the maintained list
(id.).
In Roberts, the neighboring cell lists contain both cells that are
suitable and cells that are barred (unsuitable), wherein the barred cell may
keep their indices in the list but no measurement is performed, i.e., no scan
at the frequency of that cell is made (FF 1 ). That is, the neighboring cell
lists contain all accessible cells that can be accessed by a device, whereas
barred/unsuitable cells (although accessible) are not measured or scanned
(id.). Thus, we also agree with the Examiner finding that Roberts discloses
and suggests that the "maintained list" is a "maintained list of accessible
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fomto access points" that identifies "one or more" access points that the
mobile device "is authorized to access" as required by claim 1.
Although Appellants also contend "the terminal in Dalsgaard does not
interact with the target cell unless and until it has received permission or
approval of its communication request from the network through its serving
cell" (App. Br. 13), claim 1 does not preclude interaction of the terminal
with the target cell "unless" or "until" it has received permission or
approval. In particular, claim 1 merely requires receiving the
communication from an access point by the mobile device. Here, Appellants
are conceding that Dalsgaard discloses and suggests interaction of the
terminal and the target cell (although Appellants appear to contend that such
interaction is not a direct interaction, which is not commensurate in scope
with the specifically recited language of the claim).
We agree with the Examiner's finding that in Dalsgaard, "the cell
access request for connection establishment is transmitted from the terminal
to the found neighboring cell (i.e., a target cell)" (Ans. 10). In particular,
Dalsgaard discloses determining there is a suitable neighbor cell, and then
transmitting a special cell access request from the terminal (FF 3), wherein
the request is sent to the suitable neighbor cell (FF 4). Thus, we find no
error with the Examiner's reliance on Dalsgaard for disclosing or suggesting
receiving the request from an access point by the mobile device, as required
by claim 1.
Furthermore, the test for obviousness is what the combined teachings
would have suggested to one of ordinary skill in the art. See In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Thus, even assuming
arguendo that Roberts does not specifically disclose a list of "accessible"
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access points, we conclude that the skilled artisan, upon reading Roberts'
teaching and suggestion of identifying/determining access points in a
maintained list to determine suitable access points (FF 1-2), would have
found it obvious to identify/ determine access points in a maintained list of
"accessible" access points to determine suitable access points. Similarly,
assuming arguendo that Dalsgaard does not receive the request directly from
an access point by a mobile device, we conclude that the skilled artisan,
upon reading Dalsgaard's teaching and suggestion of receiving a rejection
from an access point (FF 3--4), would have found it obvious to receive a
rejection directly from an access point by the mobile device.
Although Appellants contend that such finding of obviousness "relies
on impermissible hindsight" (App. Br. 15), we are mindful the Supreme
Court has clearly stated the "combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007). Appellants have provided no evidence that the Examiner's proffered
modification of Roberts or Dalsgaard would have been "uniquely
challenging or difficult for one of ordinary skill in the art" (Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)).
Nor have Appellants provided any objective evidence of secondary
considerations, which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Systems, Inc. v. Tetra Pak Cheese and Powder
Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Rather, we find Appellants' invention is simply a modification of
familiar prior art practices or acts (as taught or suggested by the cited
combination of references) which would have realized a predictable result.
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The skilled artisan is "a person of ordinary creativity, not an automaton."
KSR, 550 U.S. at 420-21.
Based on this record, we find no error in the Examiner's rejection of
independent claim 1, and independent claims 10-13 falling therewith (App.
Br. 15), as well as claims 2--4, 6, 8, 9, 14, 15, 17, 19, and 20 depending
respectively from claims 1 and 13, over ul Haq, Nylander, Dalsgaard, and
Roberts.
As for claims 5 and 16, Appellants merely contend Rahman does not
cure the deficiencies of ul Haq, Nylander, Dalsgaard, and Roberts (App. Br.
16). However, as discussed above, we find no deficiencies with respect to ul
Haq, Nylander, Dalsgaard, and Roberts. Consequently, we also affirm the
Examiner's rejection of claims 5 and 16 over ul Haq, Nylander, Dalsgaard,
and Roberts, in further view of Rahman.
V. CONCLUSION AND DECISION
We affirm the Examiner's rejections of claims 1---6, 8-17, 19, and 20
under 35 U.S.C. § 103(a).
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).
AFFIRMED
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