Ex Parte Landais et al

Patent Trials and Appeals Board

Feb 25, 2019

13879762 - (D) (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/879,762 08/19/2013
48116 7590
FAY SHARPE/NOKIA
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
02/27/2019
FIRST NAMED INVENTOR
Bruno Landais
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.
LUTZ 201641US01 9366
EXAMINER
MCCALLUM, LATRESA A
ART UNIT PAPER NUMBER
2469
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
docketing@faysharpe.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex Parte BRUNO LANDAIS, LAURENT THIEBAUT, and
ALESSIO CASATI
Appeal2018-005710
Application 13/879,762 1
Technology Center 2400
Before, ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 4--8, 10-13 and 15-19, which are all the claims
pending in the application. Appellants have canceled claims 2, 3, 9, and 14.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is ALCATEL LUCENT,
Inc. App. Br. 1.
Appeal2018-005710
Application 13/879,762
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention relates to control of
access network/access technology selection for the routing of IP traffic by a
user equipment, and Quality of Service (QoS) support, in a multi-access
communication system. Spec. 1, Title.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal ( emphasis added to disputed prior-art limitations):
1. A method for a control of access network or access
technology selection for routing of IP traffic by a User
Equipment (UE) in a multi-access Evolved Packet System
(EPS) communication system, based on operator's policies,
wherein the operator's policies include EPS Quality of Service
(QoS)-based policies, based on IP traffic matching specific EPS
QoS filters on an EPS QoS provided by the EPS system to the
IP traffic and determined by a Policy and Charging Rules
Function PCRF, the method comprising:
if the User Equipment cannot use Radio Access
Technologies selection rules based on an IP address of IP
traffic, the User Equipment selecting an access network or
access technology for the routing of IP traffic, based on the
EPS QoS-based policies, and on the EPS QoS associated with a
Service Data Flow carrying the traffic, of which the User
Equipment is notified when a service has started.
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Oct. 5, 2017); Reply Brief ("Reply Br.," filed May 14, 2018); Examiner's
Answer ("Ans.," mailed March 13, 2018); Final Office Action ("Final Act.,"
mailed Nov. 10, 2016); and the original Specification ("Spec.," filed
Apr. 16, 2013).
2
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Application 13/879,762
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Lu et al. ("Lu") US 2010/0208698 Al Aug. 19, 2010
Aramoto et al. ("Aramoto") US 2011/0317560 Al Dec. 29, 2011
Rejection on Appeal
Claims 1, 4--8, 10-13, and 15-19 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Lu and Aramoto.
Final Act. 6.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 4--5), we decide the appeal
of the obviousness rejection of claims 1 and 15, on the basis of
representative claim 1.
Remaining rejected claims 4--8, 10-13, and 16-19, not argued
separately (App. Br. 5---6), stand or fall with the respective independent
claims from which they depend. 3
ISSUE
Appellants argue (App. Br. 4--5; Reply Br. 2-5) the Examiner's
rejection of claim 1 under 35 U.S.C. § I03(a) as being obvious over the
combination of Lu and Aramoto is in error. These contentions present us
with the following issue:
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
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Application 13/879,762
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] method for a control of access network or access technology
selection" that includes, inter alia, the conditional limitation:
if the User Equipment cannot use Radio Access Technologies
selection rules based on an IP address of IP traffic, the User
Equipment selecting an access network or access technology for
the routing of IP traffic, based on the EPS QoS-based policies,
and on the EPS QoS associated with a Service Data Flow
carrying the traffic, of which the User Equipment is notified
when a service has started,
as recited in claim 1? ( emphasis added).
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1
and 15, and we incorporate herein and adopt as our own: ( 1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellants' arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.
Appellants contend, regarding independent claim 1, that "no fair
reading indicates that a determination is made that RAT selection rules
cannot be used by the UE, before selecting an access network or access
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Application 13/879,762
technology, as is a recited element of claim 1. Furthermore, the reference is
silent in regards to making this determination based on an IP address of IP
traffic." App. Br. 4--5.
Appellants further contend "Aramoto fails to teach or fairly suggest
any causal relationship between the inability to use RAT selection rules and
the UE's selection of an access network or access technology." App. Br. 5.
The Examiner concludes:
In response to Appellant's argument, the claim does not disclose
the word determination. The claim discloses the word "if' and
is followed by a negative limitation "cannot use Radio Access
Technologies selection rules .... " The only place the word
determine is used is in the preamble which has no patentable
weight. The claims do not require a determination as to whether
or not RAT selection rules can be used. The limitation is in the
form of an if, then statement and a negative limitation.
Ans. 29.
Based upon our review of the record, we agree with the Examiner's
underlying factual findings in support of the legal conclusion of
obviousness. Moreover, as a matter of claim construction in further support
of the Examiner's conclusion of obviousness, and using the broadest
reasonable interpretation of claim 1, we conclude the conditional step of "if
the User Equipment cannot use Radio Access Technologies selection rules
based on an IP address of IP traffic" may never occur. See Ex parte
Schulhauser, Appeal No. 2013-007847, at *9 (PTAB, April 28, 2016)
(precedential) (holding "[t]he Examiner did not need to present evidence of
the obviousness of the remaining method steps of claim 1 that are not
required to be performed under a broadest reasonable interpretation of the
claim ( e.g., instances in which the electrocardiac signal data is not within the
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threshold electrocardiac criteria such that the condition precedent for the
determining step and the remaining steps of claim 1 has not been met"); see
also Ex parte Katz, Appeal No. 2010-006083, 2011 WL 514314, at 4--5
(BPAI Jan. 27, 2011). 4
Here, we apply the precedential guidance of Schulhauser. Under the
holding of Schulhauser, the Examiner need not present evidence establishing
the obviousness of the conditional "if' step of claim 1, because it is not
required to be performed under the broadest reasonable interpretation of the
claim, e.g., instances when the UE can use the Radio Access Technologies
selection rules based on an IP address of IP traffic, such that the condition
precedent for the applying step, i.e., "if the User Equipment cannot use the
Radio Access Technologies selection rules based on an IP address of IP
traffic," is not met. Claim 1 ( emphasis added).
Therefore, we find Appellants' argument that Aramoto fails to teach or
suggest the conditional selection step of claim 1 to be unavailing, because it
is not commensurate with the broadest reasonable interpretation of claim 1.
See In re Schulhauser, Appeal 2013-007847, at *9.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
4 See, also e.g., 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); Cybersettle, Inc. v. Nat 'l Arbitration
Forum, Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007) (unpublished) ("It is
of course true that method steps may be contingent. 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.").
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and suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of representative independent claim 1, and
grouped claims 4--8, 10-13, and 15-19 15, which fall therewith. See Claim
Grouping, supra. 5
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 1-11) not in response to a shift in the Examiner's position
in the Answer, we note arguments raised in a Reply Brief that were not
raised in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 1, 4--8, 10-13, and 15-19 under 35 U.S.C. § 103(a), over the cited
prior art combinations of record, and we sustain the rejection.
5 We reiterate that Appellants did not provided a separate, substantive
argument against the obviousness rejection of independent "User
Equipment" claim 15, but instead relied upon the arguments with respect to
claim 1. See App. Br. 4--5; Reply Br. 11.
7
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Application 13/879,762
DECISION
We affirm the Examiner's decision rejecting claims 1, 4--8, 10-13,
and 15-19.
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
8