Ex Parte Horn et al

Patent Trial and Appeal Board

Oct 30, 2017

12607899 (P.T.A.B. Oct. 30, 2017)

United States Patent and Trademark Office
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.
12/607,899 10/28/2009 Gavin B. Horn 090276US 5415
15055 7590 11/01/2017
Patterson & Sheridan, L.L.P.
Qualcomm
24 Greenway Plaza, Suite 1600
Houston, TX 77046
EXAMINER
DU, HUNG K
ART UNIT PAPER NUMBER
2645
NOTIFICATION DATE DELIVERY MODE
11/01/2017 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):
qu alcomm @ pattersonsheridan .com
PAIR_eOfficeAction@pattersonsheridan.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GAVIN B. HORN, OSOK SONG,
and RAMACHANDRAN SUBRAMANIAN
Appeal 2017-004108
Application 12/607,899
Technology Center 2600
Before: JEAN R. HOMERE, DEBRA K. STEPHENS, and
JOHN A. EVANS, Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 seek our review3 under 35 U.S.C. § 134(a) from the final
rejection of Claims 18, 19, 21, 22, and 113—124. App. Br. 1. Claims 1—17,
1 Our Decision refers to Appellants’ Appeal Brief filed April 22, 2016
(“App. Br.”); Appellants’ Reply Brief filed January 9, 2017 (“Reply Br.”);
Examiner’s Answer mailed November 16, 2016 (“Ans”); the Final Rejection
mailed September 2, 2015 (“Final Act.”), and the Specification filed October
28, 2009 (“Spec.”).
2 The Appeal Brief identifies Qualcomm Incorporated, as the real party in
interest. App. Br. 3.
3 We have considered in this decision only those arguments Appellants
actually raised in the Briefs. Any other arguments which Appellants could
Appeal 2017-004108
Application 12/607,899
20, and 23—112 have been canceled. See Claims Appendix. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The claims in the present application relate to methods, a computer
readable storage memory, and apparatus for secure device pairing. See
Abstract.
Claims 18, 113, 117, and 121 are independent. An
understanding of the invention can be derived from a reading of
exemplary Claim 18, which is reproduced below with some
formatting added:
18. An apparatus, comprising:
means for performing Closed Subscriber Group (CSG)
selection in response to a user selection of a base station
associated with an advertised CSG identified by a CSG
identifier (ID);
means for registering at the selected base station;
means for adding the CSG ID to a whitelist upon
successful registration when the selected base station operates
in closed access mode and the CSG ID is absent from the
whitelist,
and skipping adding the CSG ID to the whitelist upon
successful registration when the selected base station operates
in hybrid access mode.
have made but chose not to make in the Briefs are deemed to be waived. See
37 C.F.R. §41.37(c)(l)(iv).
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Application 12/607,899
113. A method for wireless communications, comprising:
performing Closed Subscriber Group (CSG) selection in
response to a user selection of a base station associated with an
advertised CSG identified by a CSG identifier (ID);
registering at the selected base station;
adding the CSG ID to a whitelist upon successful
registration when the selected base station operates in closed
access mode and the CSG ID is absent from the whitelist; and
skipping adding the CSG ID to the whitelist upon
successful registration when the selected base station operates
in hybrid access mode.
References and Rejection
The Examiner relies upon the prior art as follows:
Koskela, et al., “Koskela” US 2010/0110945 A1 Published May 6,
2010
3GPP, Semi Open Access Issues (UTRA & eUTRA), 3GPP TSG-RAN WG2
Meeting #63, 18 August—22 August 2008 (“Huawei”).
Claims 18, 19, 21, 22, and 113—124 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Koskela and Huawei. Final Act. 4—7.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We are not persuaded by
Appellants’ arguments.
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Appeal 2017-004108
Application 12/607,899
Claims 18,19,21,22, and 113-124: Obviousness over Koskela and
Huawei.
Appellants specifically argue the rejection of independent Claim 18 ,
as well as independent Claims 113, 117, and 121, which recite
commensurate limitations. App. Br. 8.
The Examiner finds the claims recite “means for” and thus, are
presumed to invoke 35 U.S.C. § 112(f). Final Act. 4. With respect to the
independent Claims, 18, 113, 117, and 121, the Examiner finds Koskela
substantially teaches the claimed invention except Koskela fails to teach the
method of skipping the updating when the base station operates in hybrid
access mode. Id. at 5. The Examiner cites Huawei for this teaching. Id. at
5—6 (citing Huawei, § 4, || 3 4). The Examiner finds Huawei teaches that
the CSG ID of the semi-open base station does not have to be added to the
CSG whitelist when the network has successfully processed the LAU
Request. Id. at 2—3. Consequently, the Examiner finds Huawei teaches the
concept of skipping the addition of the CSG ID to the CSG whitelist
regardless of whether it is the network or the user equipment (UE) that skips
the addition. Id.
Appellants dispute the Examiner’s finding that Huawei provides the
missing teaching. App. Br. 9. Appellants acknowledge the cited portions of
Huawei teach a UE will automatically reselect a semi open access cell as it
will be signaled via the NCL (Neighbor Cell List), and that a LAU
Accept/TAU that arrives for the UE will not have the CSG ID of the cell
placed in the whitelist. Id. However, Appellants argue Huawei fails to teach
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Application 12/607,899
that the UE makes an affirmative act to add or skip adding the CSG ID to the
whitelist. Id.; see Reply Br. 3.
We find Appellants’ contentions are not commensurate in scope with
the claims. We find that none of the independent claims recites that UE
make an affirmative act to add or skip adding the CSG ID to the whitelist, as
argued by Appellants. Because Appellants arguments are not commensurate
in scope with the claims, we are not persuaded the Examiner errs.
DECISION
The rejection of Claims 18, 19, 21, 22, and 113—124 under 35 U.S.C.
§ 103(a) is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2013).
AFFIRMED
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