Ex Parte Lindholm et al

Patent Trial and Appeal Board

Mar 4, 2016

12810878 (P.T.A.B. Mar. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/810,878 06/28/2010
27045 7590
ERICSSON INC
6300 LEGACY DRIVE
MIS EVR 1-C-11
PLANO, TX 75024
03/08/2016
FIRST NAMED INVENTOR
Fredrik Lindholm
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.
P24876-US1 9760
EXAMINER
OH, ANDREW CHUNG SUK
ART UNIT PAPER NUMBER
2466
NOTIFICATION DATE DELIVERY MODE
03/08/2016 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):
kara.coffman@ericsson.com
kathryn.lopez@ericsson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDRIK LINDHOLM, BO ASTROM, and
ALF HEIDERMARK1
Appeal2014-004202
Application 12/810,878
Technology Center 2400
Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 2, 4--13, 15-24, and 27-35, which constitute all the
claims pending in this application. Claims 1, 3, 14, 25, and 26 were
cancelled. App. Br. 2. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Telefonaktiebolaget LM Ericsson as the real party in
interest. App. Br. 1.
Appeal2014-004202
Application 12/810,878
STATEMENT OF THE CASE
Introduction
Appellants' invention is directed to allowing a mobile terminal, which
possesses no Internet Protocol (IP) identity in a home network, access to an
IP-based network. Spec. 3. In particular, the mobile terminal generates a
network information element that the IP-based network recognizes. Spec. 3.
Claim 27 is representative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
27. A method of providing a mobile terminal associated with
a user with access to a visited Internet Protocol (IP) Multimedia
Subsystem (IMS) mobile communication network, comprising:
generating, by the mobile terminal, a network information
element, wherein the network information element comprises
a home network identifying element that identifies
a home network of said user, and
a domain name of said visited IMS mobile
communication network as a base domain identifier;
wherein the mobile terminal does not have any dedicated
IMS identities and no IMS subscription in the home network;
executing, by said visited IMS mobile communication
network, a subscription generating procedure for generating a
subscription which comprises a user profile for said user upon
recognizing said network information element; and
providing said mobile terminal access based on said
subscription, wherein said home network of said user is a circuit
switched mobile communication network.
References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lundin US 2001/0003093 Al June 7, 2001
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Application 12/810,878
Gabor
Torabi
Torvinen et al. ("Torvinen")
Zhang
Patel et al. ("Patel")
Jerome et al. ("Jerome")
Boman
US 2003/0229787 Al
US 2005/0276229 Al
US 2006/0155995 Al
US 2006/0212700 Al
US 2008/0090555 Al
US 2009/0150403 Al
WO 2006/050758 Al
The Examiner's Rejections
Dec. 11, 2003
Dec. 15, 2005
July 13, 2006
Sept. 21, 2006
Apr. 17, 2008
June 11, 2009
May 18, 2006
Claims 2, 5, 7, 10, 12, 13, 15, 17, 19, 22, 24, 27, 28, 30, 32, 34, and 35
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Torabi,
Zhang, and Boman. Final Act. 3-8.
Claims 4 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Torabi, Zhang, Boman, and Jerome. Final Act. 8-9.
Claims 6 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Torabi, Zhang, Boman, Jerome, and Patel. Final Act. 9.
Claims 8; 9; 20; and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Torabi, Zhang, Boman, and Torvinen. Final Act.
10-11.
Claims 11 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Torabi, Zhang, Boman, and Lundin. Final Act. 11-12.
Claims 29, 31, and 33 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Torabi, Zhang, Boman, and Gabor. Final Act. 12-
13.
Issues on Appeal
1. Did the Examiner err in finding the combination of Torabi, Zhang,
and Boman teaches or reasonably suggests a network information element
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comprising "a domain name of said visited IMS mobile communication
network as a base domain identifier," as recited in claim 27?
2. Did the Examiner err in finding the combination of Torabi, Zhang,
and Boman teaches or reasonably suggests a visited IMS mobile
communication network generating a user profile using "at least one of
default settings and information obtained from the home network," as recited
in claim 28?
ANALYSIS2
We have reviewed the Examiner's rejections in light of Appellants'
arguments the Examiner has erred. App. Br. 7-9; Reply Br. 1-5. We
disagree with Appellants' conclusions. We adopt as our own: (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Final Act. 2-13), and (2) the reasons set forth by the
Examiner in the Answer in response to arguments made in Appellants'
Appeal Brief (Ans. 2-16). We highlight and address specific findings and
arguments below.
Claims 2, 4-13, 15-24, 27, 29, 31, and 33
Appellants contend the Examiner erred in finding the combination of
Torabi, Zhang, and Boman teaches or suggests "a domain name of said
visited IMS mobile communication network as a base domain identifier," as
recited in independent claim 27. App. Br. 7. In particular, Appellants argue
2 In this Opinion, we refer to Appellants' Appeal Brief ("App. Br.," filed
August 19, 2013), the Reply Brief ("Reply Br.," filed January 7, 2014), the
Final Office Action ("Final Act.," mailed March 21, 2013), and the
Examiner's Answer ("Ans.," mailed on November 8, 2013).
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Application 12/810,878
the Examiner's reference to Appellants' Specification in support of the
Examiner's interpretation of the disputed "base domain identifier" is
misplaced because the Specification merely describes a base domain, not, as
Examiner asserts, a base domain identifier. Reply Br. 3 (quoting Ans. 13
(citing Spec. 3, 7)). Additionally, Appellants argue the "Examiner is
attempting to improperly import elements from Appellants['] specification
into the claims in making the rejection." Reply Br. 3 (quoting MPEP
§2111).
We are unpersuaded of Examiner error. When construing claim
terminology during prosecution before the Office, claims are to be given
their broadest reasonable interpretation consistent with the specification,
reading claim language in light of the specification as it would be interpreted
by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). In this case, Appellants' Specification is
devoid of any limiting definition of a "base domain identifier." At best, we
find the Specification provides a description of a "base domain" as the
"highest domain for locating a resource." Spec. 3, 7. Further, the
Specification provides an example of a network information element that
includes a "base domain":
the network information element may schematically have the
form @ims.mnc .mcc. .com, where ... represents a string
identical to a domain name of the operator of IP based
communication network 202. As can be seen, the domain name
is the base domain, as it immediately precedes
the root "com" and stands for the top-level domain.
Spec. 7. Thus, consistent with the Specification, we interpret the claimed
"base domain" as the highest domain of a network information element, and
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the "domain name" as a string that at least identijzes the base domain (e.g.,
the top level domain (such as .org, .com, etc.)) and the second level domain
(i.e., the string immediately preceding the top level domain) even if also
identifying one or more lower level or subdomains (e.g., third and fourth
level domains). Accordingly, we interpret the complete domain name as
serving as and teaching the "base domain identifier" because the domain
name identifzes the base domain.
Appellants further contend "since the inclusion of lower-level
domains [from Zhang's visited network 'vMCC.vMNC.WLAN.3GPP
Network.org'] is clearly not the top-level or 'based domain identifier"'
(App. Br. 8 (citing Zhang i-f 40)), Zhang's visited network "from the roaming
identifier does not fairly show a 'base domain identifier,' ... because the
roaming identifier as a whole refers to lower level subdomains" (Reply Br. 4
(citing MPEP § 2111.03)).
We are not persuaded the Examiner erred because, as the Examiner
explains, the transitional phrase "' [c] omprises' [from claim 27] is open
ended and implies that further elements may be included in a list comprising
a set list of elements." Ans. 14. See In re Baxter, 656 F.2d 679, 686,
(CCPA 1981 ); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948)
("comprising" leaves "the claim open for the inclusion of unspecified
ingredients even in major amounts").
Paragraph 40 of Zhang, as relied upon by the Examiner, teaches:
The realm name portion can include the realm name of the
home network, a separator, and the realm name of the visited
network in order, and the separator may be"@" or"." or"%"
or"!".
For instance, if the realm name of the visited network is
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vMCC.vMNC.WLAN.3GPP Network.org and the realm name
of the home network is hMCC.hMNC.WLAN.3GPP
Network.org, the realm name portion of the user identity field
is: hMCC.hMNC.WLAN.3GPP Network.org@
vMCC.vMNC.WLAN.3GPP Network.org.
Zhang i-f 40. The Examiner finds, and we agree, under a broad but
reasonable interpretation of "base domain identifier" as discussed supra,
Zhang's realm name of the visited network "vMCC.vMNC.WLAN.3GPP
Network.org" (a network information element) comprises "3GPP Network"
(domain name) of a visited network (a visited IMS mobile communication
network), wherein "3GPP Network" (domain name) serves as the highest
domain of"vMCC.vMNC.WLAN.3GPP Network.org" (network
information element), and, thus, "3GPP Network" is a base domain
identifier.
Lastly, Appellants contend, for the first time in the Reply Brief, that
"such a separation of the lower domains from the rest of the domain is
impermissible since such a separation renders the lower domains
'vMCC.vMCV.WLAN' unsatisfactory for its intended purpose." Reply Br.
4. This argument is untimely and waived. See Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative) ("[T]he reply brief [is not]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner's rejections, but were not.").
Further, Appellants fail to explain why the Examiner's reliance on Zhang's
"3GPP Network" from the visited network "vMCC.vMNC.WLAN.3GPP
Network.org" is a separation rendering the lower domains
"vMCC.vMCV.WLAN" unsatisfactory for its intended purpose. Appellants
provide no evidence or reasoning supporting an interpretation of the
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disputed network information element or what is required of the disputed
network information element that would distinguish over the teachings of
Zhang. Instead, such contentions amount to no more than naked assertions
that the corresponding elements were not found in the prior art and are,
therefore, unpersuasive of Examiner error. See 37 C.F.R. § 41.37(c)(l)(iv);
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Therefore, we agree with
the Examiner's findings discussed supra.
Accordingly, we sustain the rejection of independent claim 27 and, for
the same reasons, independent claims 12, 24, 34, and 35 (argued together
with claim 27) under 35 U.S.C. § 103(a) as being unpatentable over Torabi,
Zhang, and Boman together with the rejection of dependent claims 2, 4--11,
13, 15-23, 29, 31, and 33, which were not separately argued separately.
App. Br. 7.
Claims 28, 30, and 32
Appellants argue "Torabi 's serving network does not retrieve
anything that can be fairly analogized to the claimed 'default settings and
information obtained from the home network,"' as recited in claim 28. App.
Br. 9 (citing Torabi i-fi-125, 57).
Paragraph 69 of Torabi, relied on by the Examiner, recites:
For instance, a service discovery function executed at serving
visited network may perform a database lookup to determine
the user's home network and an accompanying roaming
agreement. A query may be sent to the home network to obtain
the user's HE services. Accordingly, the home network would
respond to the query by performing a lookup of the subscriber
database and retrieving for the visited network a list of HE
services (or at least the user's HE services that are included in
the roaming agreement). The query may also be used to
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retrieve user preferences and/ or user terminal equipment
capabilities from the home network.
As the Examiner explains, "[t]he visited network queries the home
network for information in order to determine the services to be offered to
the roaming subscriber." Ans. 16 (citing Torabi i-f 69). See also Final Act. 8
(citing Torabi i-f 69). We agree. In other words, the visited network retrieves
home environment (HE) services, user preferences, and user terminal
equipment capabilities obtained from the home network. Thus, the
Examiner finds, and we agree, Torabi teaches or suggests "at least one of
default settings and information obtained from the home network."
Accordingly, we sustain the rejection of claim 28 and, for the same
reasons, claims 30 and 32 under 35 U.S.C. § 103(a) as being unpatentable
over Torabi, Zhang, and Boman.
DECISION
We affirm the Examiner's decision to reject claims 2, 4--13, 15-24,
and 27-35 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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