Ex Parte Sundell et al

Patent Trial and Appeal Board

Aug 24, 2016

13140991 (P.T.A.B. Aug. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/140,991 06/20/2011
27045 7590
ERICSSON INC
6300 LEGACY DRIVE
MIS EVR 1-C-11
PLANO, TX 75024
08/26/2016
FIRST NAMED INVENTOR
Hans-Olof Sundell
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.
P27768-US2 1492
EXAMINER
SEFCHECK, GREGORY B
ART UNIT PAPER NUMBER
2477
NOTIFICATION DATE DELIVERY MODE
08/26/2016 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 HANS-OLOF SUNDELL, HANS-AKE LUND, and
FOLKE LARS GUNNAR AHLSTROM1
Appeal2015-004856
Application 13/140,991
Technology Center 2400
Before BRUCE R. WINSOR, JOHN F. HORVATH, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1, 2, 4---6, and 8. Claims 1 and 5 are independent.
Claims 3 and 7 are cancelled. We have jurisdiction over this appeal under
35 U.S.C. § 6(b). We REVERSE.2
1 According to Appellants, the real party in interest is Telefonaktiebolaget
LM Ericsson. See Appeal Brief 1.
2 Throughout this Opinion, we refer to: (1) Appellants' Specification filed
June 20, 2011 (Spec.); (2) the Final Office Action (Final Act.) mailed June
10, 2014; (3) the Appeal Brief (Appeal Br.) filed Dec. 3, 2014; (4) the
Examiner's Answer (Ans.) mailed Jan. 27, 2015; and (5) the Reply Brief
(Reply Br.) filed Mar. 27, 2015.
Appeal2015-004856
Application 13/140,991
BACKGROl.J1'-JD
According to Appellants, the application relates to a packet switching
network that sends an end marker packet onto the network to assist the target
radio access network ("RAN") in reordering downlink packets to the user
equipment ("UE") in the case where the serving gateway ("GW") must also
be changed in the handover. Spec. 2--4. Claim 1 is illustrative and is
reproduced below with disputed limitations emphasized:
1. A method for a packet data network gateway (PDN-GW)
on a wireless telecommunications network having a target radio
access network (RAN) and a serving gateway (GW) comprising
the steps of:
generating an end marker packet with a processing unit
after receiving an update bearer request message at a network
interface which indicates the serving GW will switch from a
source serving GW to a target serving GW; and
sending the end marker packet onto the network with the
network interface to the source serving GW then to a source
RAN, then to the target serving GW and then to the target RAN
using generic routing encapsulation (GRE) where any one of
bits of a GRE header field reserved to indicate to discard the
end marker packet is set to a value of one to indicate the end
marker packet is an end marker packet to assist the target RAN
in reordering of downlink data.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal:
Dolganow et al.
("Dolganow")
US 8, 1 79 ,846 B2
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May 15, 2012
Appeal2015-004856
Application 13/140,991
Farinacci et al., Generic Routing Encapsulation (GRE), Network
Working Group RFC 2784, (2000) ("Farinacci").
3GPP TSG SA WG2 Meeting #67, End marker during Handover
procedure with Serving GW change, 3GPP DRAFT: S2-085423, 3rd
Generation Partnership Project (3GPP), vol. SA WG2 (2008) ("CATT").
REJECTION
Claims 1, 2, 4---6, and 8 stand rejected under pre-AIA (America
Invents Act) 35 U.S.C. § 103(a) as being as being unpatentable over CATT,
Farinacci, and Dolganow. Final Act. 2.
Our review in this appeal is limited to the above rejection and issues
raised by Appellants. We have not considered other possible issues that
have not been raised by Appellants and which are, therefore, not before us.
See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
ISSUE
Did the Examiner err in finding that the combination of CATT,
Farinacci and Dolganow teaches or suggests "sending the end marker packet
onto the network with the network interface to the source serving GW then
to a source RAN, then to the target serving GW and then to the target
RAN," as recited in claim 1?
DISCUSSION
The Examiner relies on CATT's discussion of two separate
embodiments to teach or suggest sending the end marker packet in the
claimed sequence. Final Act. 8. Specifically, the Examiner states "[t]he
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Application 13/140,991
various embodiments shown in the rejection from the disclosure of CATT
illustrates [sic] how the interconnection between components of analagous
[sic] networks can vary." Id.
Appellants contend that the Examiner errs because "the Examiner has
not provided sufficient articulated reasoning as to how or why such a
limitation would be obvious to one of skill in the art. As such, the rejection
merely amounts to impermissible conclusory statements based on hindsight
reasoning." Appeal Br. 6. Appellants further contend "[t]here is nothing in
CATT to suggest combining these two alternative approaches, as suggested
by the Examiner." Id. (emphasis omitted).
We agree that the Examiner fails to sufficiently explain why a person
of ordinary skill in the art would have modified the first embodiment of
CATT with the second embodiment of CATT. Without a persuasive
articulated reasoning that is supported by a rational underpinning for
modifying the reference as proposed, the Examiner's rejection appears to be
the result of an impermissible hindsight analysis. See In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness."), cited with approval in KSR Int 'l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007).
Here, the Examiner must provide a rationale explaining why a person
of ordinary skill would have modified the first embodiment of CATT with
the second embodiment of CATT to achieve the claimed sequence in the
sending of the end marker packet. See also Ball Aerosol & Specialty
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Application 13/140,991
Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009)
(explaining that the skilled artisan's motivation "should be made explicit").
In the rejection, the Examiner states that "one of ordinary skill in the
art would recognize that these embodiments in CATT could be combined
and/ or modified based upon the particular network configuration, UE
requirements, Serving MME/GW relocation, etc." Ans. 3 (emphasis added).
This is not sufficient. KSR requires that the Examiner explain why one of
skill in the art would have modified the first embodiment of CATT with the
second embodiment of CATT based upon the particular network
configuration. The Examiner did not do so. This rationale is of particular
importance here where CATT indicates that the first embodiment relates to a
different networking scenario than the second CATT embodiment (i.e.,
CATT' s first embodiment is a "procedure ... used to hand over a UE from a
source eN odeB to a target eN odeB when the MME is unchanged and the
MME decides that the Serving GW is to be relocated" while CATT' s second
embodiment states "the inter eNodeB handover with MME relocation
procedure is used to relocate MME, or both the MME and the Serving GW."
Catt Fig. 5.5.1.1.3 and Fig. 5.5.1.2, respectively.
We also note that even if the first embodiment of CATT is modified
based on the second embodiment of CATT, the proposed combination still
fails to teach or suggest the entire claimed sequence in the sending of the
end marker packet. For example, as noted by the Examiner, the first
embodiment of CATT suggests sending the end marker to: (1) the Source
Serving GW; then to the (2) Source RAN; and then to the (4) Target RAN,
while the second embodiment of CATT suggests sending the end marker to:
(1) the Source Serving GW; then to the (2) Source RAN; and then to the
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Application 13/140,991
(3) Target Serving GW. Final Act. 3. Thus, even when combined, the two
embodiments fail to teach or suggest sending the end marker packet to
"[(3)] the Target Serving GW and then to the [(4)] Target RAN," as recited
in the claim (emphasis added). Therefore, in addition to providing a
rationale indicating why one skilled in the art would have modified the first
embodiment of CATT based on the second embodiment of CATT, the
Examiner is also required to provide an additional rationale indicating why
the proposed combination would have been modified to teach or suggest the
missing limitation. See In re Royka, 490 F.2d 981, 985 (CCPA 1974) (to
establish prima facie obviousness of a claimed invention, all the claim
features must be taught or suggested by the prior art). The Examiner fails to
provide this additional rationale.
Accordingly, we agree with Appellants that the Examiner's articulated
reasons for the proposed modification lack rational underpinnings.
Because we agree with at least one of the dispositive arguments
advanced by Appellants, we need not reach the merits of Appellants' other
contentions.
We are thus constrained to reverse the Examiner's obviousness
rejection of independent claims 1 and 5 and their respective dependent
claims over CATT, Farinacci, and Dolganow.
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Application 13/140,991
DECISION
We reverse the Examiner's decision rejecting claims 1, 2, 4---6, and 8
under 35 U.S.C. § 103(a) as being unpatentable over CATT, Farinacci, and
Dolganow.
REVERSED
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