Ex Parte Huang et al

Patent Trial and Appeal Board

Aug 23, 2016

12829981 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/829,981 07/02/2010
74365 7590 08/25/2016
Slater Matsil, LLP
17950 Preston Road, Suite 1000
Dallas, TX 75252
FIRST NAMED INVENTOR
Yinghua HUANG
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.
HW 0810218US 9591
EXAMINER
MAGLOIRE, VLADIMIR
ART UNIT PAPER NUMBER
2641
NOTIFICATION DATE DELIVERY MODE
08/25/2016 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):
uspatent@huawei.com
docketing@slatermatsil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YINGHUA HUANG, BOYUN XIE,
ZUOY AN ZHU, MINGJIANG XIE,
XIAOFEI MA, WEN GAO, and XIAOYING XU
Appeal2015-002168
Application 12/829,981
Technology Center 2600
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JON M. JURGOV AN, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 18, and 22--49.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm, and enter a new ground of rejection in accordance with
37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest Huawei Technologies
Co., Ltd. (App. Br. 2).
2 Claim 21 was indicated as allowable. Claims 2-17, 19, and 20 were
canceled.
Appeal2015-002168
Application 12/829,981
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to obtaining cell reselection priority for
mobile communication terminals (Spec. if 2). Claim 1 is illustrative of the
invention and reads as follows:
1. A method of obtaining priority for cell reselection for a
terminal in a network also including an evolved Node B ( eNB)
and a Mobile Management Entity (MME), the method
compnsmg:
obtaining from the MME, by the eNB, information
specific to the terminal;
determining, by the eNB, a list of priorities for cell
reselection specific to the terminal according to the information
obtained from the MME and information previously stored by
the eNB; and
transmitting, by the eNB, the list of priorities to the
terminal.
The Examiner ;s Rejections
Claims 1, 18, 22-24, 26-28, 30-32, 34--36, 38--40, 42, 44--47, and 49
stand rejected under 35 U.S.C. § 102(b) as anticipated by Ueda (US
2006/0183482 Al; Aug. 17, 2006) (see Final Act. 3-9).
Claims 25, 33, and 41 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ueda and Eerolainen (US 2008/0176564 Al; July 24,
2008) (see Final Act. 9-10).
Claims 29, 37, and 43 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ueda and Yi (US 2010/0216469 Al; Aug. 26, 2010) (see
Final Act. 10-11).
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Application 12/829,981
Claim 48 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Ueda (see Final Act. 11).3
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions that the Examiner erred. We are not persuaded by Appellants'
contentions.
Transmitting, by the eNB, the List of Priorities
Regarding claim 1, Appellants contend a "list of priorities" means
"list of priorities of cells, frequencies, or systems for cell reselection," and
Ueda's pre-filtered neighbor cell list, which does not include use priority for
each frequency or frequency band, is not a list of prioritized frequencies
(App. Br. 5-10; Reply Br. 1--4). Appellants' contention is not
commensurate with the scope of claim 1, which does not require frequency
or any other specific information to be included in the list of priorities. We
agree with the Examiner's finding that the broadest reasonable interpretation
consistent with Appellants' disclosure of "list of priorities" includes a list of
prioritized cells, i.e., neighboring cells that meet Ueda's selection criteria of
capability and frequency priority, and thus, have been prioritized over the
nearby excluded cells that do not meet the criteria (Ans. 2-3 (citing Ueda
i-f 88)) (see In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997): claim
language is given its broadest reasonable interpretation during prosecution).
3 The rejection of claim 48 was withdrawn by the Examiner (see Ans. 2).
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Application 12/829,981
Appellants further contend Ueda does not disclose "transmitting, by
the [evolved Node BJ" a list of priorities to the terminal, because Ueda's
user equipment terminal has no need for priority information to be
transmitted to it, as the radio network controller node has already filtered out
neighboring cells with poor priority (App. Br. 10-11; Reply Br. 4--5).
Appellants' contention is not persuasive of Examiner error, because as
discussed supra, the list of priorities is the filtered neighboring cell list. We
therefore agree with the Examiner's finding that this list is transmitted by the
node (i.e., the radio network controller/node B) to the terminal (i.e., the user
equipment) (Ans. 3--4 (citing Ueda i-f 88)).
Determining, by the eNB, the List of Priorities
Appellants contend Ueda does not disclose "determining, by the
[evolved Node BJ, a list of priorities for cell reselection specific to the
terminal according to the information obtained from the [Mobile
Management Entity J and information previously stored by the eNB," as
recited in claim 1 (App. Br. 11; Reply Br. 5---6). Appellants argue Ueda's
frequency priority has been preset by the network beforehand, thus the list of
frequency priorities is not determined by radio network controller node
using information obtained from the Mobile Management Entity (i.e.,
Ueda's International Mobile Subscriber Identity information, IMSI) and
information previously stored by the eNB (i.e., frequency channel
information, UARFCN) (id.).
Appellants' contention is not persuasive of Examiner error. The
Examiner finds, and we agree, that Ueda's radio network controller node
determines the filtered list of neighboring cells (i.e., "list of priorities") by
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Application 12/829,981
deleting cells that do not match both the user equipment capability (i.e.,
IMSI) and the prioritized frequency bands (i.e., UAFRCN) that are reported
to it by the network (Ans. 4 (citing Ueda i-fi-188, 108-112)).
CONCLUSION
As discussed herein, Appellants' arguments have not persuaded us
that the Examiner erred in finding Ueda discloses the disputed limitations of
independent claim 1, independent claims 18, 38, and 49 which are argued on
the same basis as claim 1 (App. Br. 11 ), and the remaining claims which are
not argued separately (App. Br. 11-12). Therefore, we sustain the
Examiner's rejections of claims 1, 18, 22--47, and 49.
Pursuant to our authority under 3 7 C.F .R. § 41. 50(b ), we enter the
following new ground of rejection for claim 48.
NEW GROU-ND OF REJECTION
Claim 48 is rejected under 35 U.S.C. § 102(b) as anticipated by Ueda
(US 2006/0183482 Al; Aug. 17, 2006).
Regarding claim 48, Ueda discloses a method of obtaining priority for
cell reselection for a terminal in a network also including an evolved Node B
(eNB) and a Mobile Management Entity (MME) (see Ueda Figs. 21-22;
i-fi-f 102, 106-107, 122-127), the method comprising:
obtaining from the MME, by the eNB, information specific to the
terminal (i-f l 06: mobile subscriber identity (IMSI) is specific to the
terminal);
determining, by the eNB, a list of priorities for cell reselection
specific to the terminal according to the information obtained from the MME
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Application 12/829,981
and information previously stored by the eNB (i-fi-f 122-124: priority of
frequency band for each cell is determined by load; Fig. 22: Frequency
Priority is labeled 1-5; i-f l 02: neighboring cell list is filtered based on
frequency priority to create "list of [neighboring cell] priorities"); and
transmitting, by the eNB, the list of priorities to the terminal (i-fi-f l 02,
124: filtered neighboring cell list is sent to user equipment UE);
wherein each entry in the list of priorities for cell reselection specific
to the terminal is a priority level labeled by an integer (i-fi-f 125-126, Fig. 22:
Frequency Priority is labeled by integers 1-5).
DECISION
We affirm the Examiner's decision to reject claims 1, 18, 22--47, and
49.
In a new ground of rejection pursuant to our authority under 37 C.F.R.
§ 41.50(b), we reject claim 48 under 35 U.S.C. § 102(b) as anticipated by
Ueda.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
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( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the 1\1PEP § 1214.01 (9th ed., rev. 07.2015, Nov. 2015).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
37 C.F.R. § 41.50(b)
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