Forssell, Mika et al.

Patent Trials and Appeals Board

Jun 24, 2020

12530047 - (D) (P.T.A.B. Jun. 24, 2020)

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.
12/530,047 02/04/2010 Mika Forssell 39700-836N01US/
NC57046US
8317
12358 7590 06/24/2020
Mintz Levin/Nokia Technologies Oy
One Financial Center
Boston, MA 02111
EXAMINER
HOUSHMAND, HOOMAN
ART UNIT PAPER NUMBER
2465
NOTIFICATION DATE DELIVERY MODE
06/24/2020 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):
IPDocketingBOS@mintz.com
IPFileroomBOS@mintz.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 MIKA FORSSELL and JANNE TERVONEN
Appeal 2019-001642
Application 12/530,047
Technology Center 2400
Before ERIC B. CHEN, JEFFERY S. SMITH, and
JOHN F. HORVATH, Administrative Patent Judges.
HORVATH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 72–94. Appeal Br. 8. Claims 1–71
have been cancelled. Id. at 14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Nokia
Technologies Oy. Appeal Br. 2.
Appeal 2019-001642
Application 12/530,047
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CLAIMED SUBJECT MATTER
The invention is directed to “a method and apparatus for providing
network-guided handover for redirecting wireless devices in a heterogeneous
access network environment.” Spec. ¶ 2.
Claim 72, reproduced below, is illustrative of the claimed subject
matter:
72. A method, comprising:
receiving, by a mobile node and from a network node of
a first access network, a handover command and an access
network list, the access network list comprising information
about a plurality of access networks, and the handover
command instructing the mobile node to select a new access
network for a handover;
selecting, by the mobile node and in response to
receiving the handover command, a second access network to
perform the handover, the second access network selected, by
the mobile node rather than the network node, from the access
network list; and
performing, by the mobile node, the handover from the
first access network to the second access network.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Ovadia US 2006/0111111 A1 May 25, 2006
Dutta US 2006/0276192 A1 Dec. 7, 2006

REJECTIONS
Claims 84–90 stand rejected under 35 U.S.C. § 112 ¶ 1 as failing to
comply with the written description requirement. Final Act. 7.
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Application 12/530,047
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Claims 77–83 and 91–94 stand rejected under 35 U.S.C. § 112 ¶ 2 as
indefinite. Final Act. 7–8.
Claims 72–94 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Ovadia and Dutta. Final Act. 8–31.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential). Appellant argues for the patentability of claims 72–94
as a group. See Appeal Br. 9–12. We select claim 72 as a representative
claim, and review the rejection of claims 72–94 based on the rejection of
claim 72. See 37 C.F.R. § 41.37(c)(iv). Any arguments not raised by
Appellant are waived. Id.
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We are not persuaded by Appellant’s
arguments, and sustain the Examiner’s rejection for the reasons stated in the
Final Action and Answer, which we adopt as our own. We highlight the
following for emphasis.
Rejections under 35 U.S.C. § 112 ¶¶ 1–2
The Examiner rejects claims 84–90 under 35 U.S.C. § 112 ¶ 1 as
failing to comply with the written description requirement. Final Act. 7.
The Examiner rejects claims 77–83 and 91–94 under 35 U.S.C. § 112 ¶ 2 as
indefinite. Id. at 7–8. Appellant states “[t]he 35 U.S.C. § 112 rejections are
not the focus of the Appeal, and Appellant will address the matter of form
. . . rejections later.” Appeal Br. 9 n.1.
As noted above, any arguments not raised by Appellant in the Appeal
Brief are waived. See 37 C.F.R. § 41.37(c)(iv). Accordingly, we summarily
Appeal 2019-001642
Application 12/530,047
4
affirm the Examiner’s rejection of claims 84–90 as lacking written
description, and the Examiner’s rejection of claims 77–83 and 91–94 as
indefinite.
Rejections under 35 U.S.C. §103(a)
Appellant argues that the Examiner erred in rejecting claims 72–94
because Ovadia does not disclose a mobile terminal receiving a handover
command from a first network node. See Appeal Br. 10 (“But sending a
number of neighbors to a mobile station . . . is simply not the same as
sending a handover command to a mobile station . . . .”). We are not
persuaded by this argument, which fails to address the full scope of the
Examiner’s rejection. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”).
The Examiner finds the combination of Ovadia and Dutta teach a
mobile terminal receiving a handover command and an access network list
from a first network node. See Final Act. 9. Specifically, the Examiner
finds Ovadia teaches the mobile terminal receives an access network list
from a first network node “but not explicitly a handover command.” Id.
Instead, the Examiner finds Dutta teaches the mobile terminal receives a
handover command from the first network node. Id. at 9–10 (citing Dutta
¶ 12); see also Ans. 9–10 (citing Dutta ¶ 12) (“Dutta was utilized to teach
the feature of handover command.”).
We agree with the Examiner. Dutta discloses the IEEE 802.11 Media
Independent Handover Function (MIHF), which defines various Media
Independent Command Service (MICS) commands, including “MIH Poll,
MIH Scan, MIH Configure, and MIH Switch,” which can be used to
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“instruct an MIH device to poll connected links . . . to scan for newly
discovered links, to configure new links and to switch between available
links.” Dutta ¶ 12. Dutta further discloses “MIH commands can be both
local and remote,” i.e., issued by either the mobile terminal or a network
node. Indeed, as the Examiner correctly found, Appellant’s Specification
identifies the industry standard MIH Switch command as a command that
“may be used to command the wireless device to perform a handover.”
Final Act. 4–5 (quoting Spec. ¶ 34).
Appellant next argues the Examiner erred in rejecting claims 72–94
because “Ovadia and Dutta, whether considered independently or in
combination, do not disclose or suggest a mobile node itself selecting a
second address network for a handover as required by claims 72–94.” Reply
Br. 2.
The Examiner finds the combination of Ovadia and Dutta teaches this
limitation. See Final Act. 10–11. Specifically the Examiner finds that
Ovadia teaches a mobile station or MSS scans a list of BSs (base stations)
and selects a handover BS in response to receiving a handover command
from a serving BS (e.g., a request to scan the list of BSs provided on a
network access list). Id. at 9–10 (citing Ovadia ¶¶ 39–40; Dutta ¶ 12).
Appellant disagrees, and argues that Ovadia instead teaches that it is the
serving BS that selects the handover network because the serving BS “[i]n
view of the HO-Pre-notification response messages . . . selects an
appropriate target BS for handover.” Appeal Br. 10–11 (quoting/citing
Ovadia ¶ 45, Figs. 3–4); Reply Br. 4–5.
We are not persuaded by Appellant’s argument, which fails to
consider the complete teachings of Ovadia. Ovadia teaches “hand-over
[HO] begins with a decision for [the] MSS to hand-over its . . . network
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attachment from a serving BS to a target BS,” and that “the decision may
originate . . . at the MSS.” Ovadia ¶ 40. Moreover, “the HO decision will
be made based on service criteria (e.g., which BS will provide the best air-
interface to the MSS),” and will be made “by an MSS in view of the . . .
scanning operations.” Id. ¶¶ 40–41.
Although Ovadia does teach that the serving BS “selects an
appropriate target BS for handover,” as Appellant observes, Ovadia further
teaches the “appropriate target BS” is one or more recommended target BSs
because after “select[ing] an appropriate target BS,” the serving BS sends
MOB_BSHO-REP message 406 to the MSS, which “identif[ies] the
recommended target base station (or stations, if applicable).” Id. ¶ 45
(emphasis added). The MSS then “determines if it will accept a hand-over
to the target BS (or one of the target BSs) that is/are identified in the
MOB_BSHO-REP message.” Id. ¶ 57 (emphasis added). If the MSS rejects
the recommended target BS or BSs, “the HO process is cancelled.” Id. If
the MSS accepts (one of) the recommended target BSs, it sends MOB_HO-
IND message 408 to the serving BS. Id. ¶ 58, Fig. 4. The MOB_HO-IND
message includes a BS_ID (base station identifier), and “informs the serving
BS that the MSS has authorized HO to the selected target BS,” i.e., to the
BS identified by the BS_ID. Id. (emphases added). Thus, Ovadia’s MSS
not only (a) selects whether to handover to any one of the one or more target
BSs recommended by the serving BS, but also (b) selects the recommended
target BS, if any, to which it will be handed over.
Accordingly, for the reasons explained above, we agree with the
Examiner that the combination of Ovadia and Dutto teach each of the
limitations of claim 72, and sustain the Examiner’s rejection of that claim.
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For the same reasons, we sustain the Examiner’s rejections of claims 73–94
over the combination of Ovadia and Dutto, which are not separately argued.
CONCLUSION
The Examiner’s rejection of claims 84–90 under 35 U.S.C. § 112 ¶ 1
for failing to comply with the written description requirement is sustained.
The Examiner’s rejection of claims 77–83 and 91–94 under 35 U.S.C.
§ 112 ¶ 2 as indefinite is sustained.
The Examiner’s rejection of claims 72–94 under 35 U.S.C. § 103(a) as
unpatentable over Ovadia and Dutta is sustained.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § References / Basis Affirmed Reversed
84–90

112 ¶ 1 Written
Description
84–90

77–83, 91–
94
112 ¶ 2 Definiteness 77–83, 91–
94

72–94

103(a) Ovadia, Dutta 72–94

Overall
Outcome
72–94

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED