John Harris et al.

Patent Trials and Appeals Board

Dec 19, 2019

14819076 - (D) (P.T.A.B. Dec. 19, 2019)

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.
14/819,076 08/05/2015 John HARRIS 089229.01066 1096
32294 7590 12/19/2019
Squire PB (NVA/DC Office)
ATTN: IP Department
2550 M Street, NW
Washington, DC 20037
EXAMINER
ABELSON, RONALD B
ART UNIT PAPER NUMBER
2476
NOTIFICATION DATE DELIVERY MODE
12/19/2019 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):
IP-Squire@SquirePB.com
sonia.whitney@squirepb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN HARRIS, SEAN KELLEY, and TERO HENTTONEN
____________

Appeal 2018-002790
Application 14/819,076
Technology Center 2400
____________

Before ERIC S. FRAHM, BETH Z. SHAW,
and NORMAN H. BEAMER, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–3, 5, 6, 8, 9, 16–18, 20, 21, 23, 24, 31, 32, and
34–36. Claims 4, 10, 19, 25, 33, 37, and 38 are objected to. (Ans. 5.)
Claims 7, 11–15, 22, and 26–30 are cancelled. We have jurisdiction over the
pending rejected claims under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant states that it believes the real party in interest is
Nokia Solutions and Networks Oy. (Appeal Br. 2.)
Appeal 2018-002790
Application 14/819,076

2

CLAIMED SUBJECT MATTER
Appellant’s disclosed and claimed invention is directed to providing
cellular network insights, such as cellular network conditions, based on
virtual international mobile subscriber identities (IMSI) included in paging
messages. (Abstr.) Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method, comprising:
detecting, by a device, at least one paging message over a
cellular system; and
extracting, from the at least one paging message, at least
one cellular network insight comprising at least one cellular
network condition,
wherein the cellular network insight is encoded by an
order in which page addresses are conveyed in the paging
message.
(Appeal Br. 28 (Appendix 1).)

REJECTIONS
The Examiner rejected claims 1, 5, 6, 8, 9, 16, 20, 21, 23, 24, and 34
under 35 U.S.C. § 103 as being unpatentable over Diachina et al. (US
2014/0329550 A1, pub. Nov. 6, 2014), Yang et al. (US 2008/0081613 A1,
pub. Apr. 3, 2008), and Fujii (US 2014/0215119 A1, pub. July 31, 2014).
(Final Act. 2–4.)
The Examiner rejected claims 2, 3, 17, 18, 31, 32, 35, and 36 under 35
U.S.C. § 103(a) as being unpatentable over Diachina, Yang, Fujii, and
Kim et al. (US 2013/0051228 A1, pub. Feb. 28, 2013). (Final Act. 4–5.)
Appeal 2018-002790
Application 14/819,076

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ISSUE ON APPEAL
Appellant’s arguments present the following issue2:
Whether the Examiner erred in finding the combination of Diachina,
Yang, and Fujii would have taught or suggested the independent claim 1
limitation, “wherein the cellular network insight is encoded by an order in
which page addresses are conveyed in the paging message,” and the
commensurate limitations of independent claims 9, 16, and 24. (Appeal Br.
12–16, 18–19, 21–22.)
ANALYSIS
For the claim limitation at issue, the Examiner finds that Diachina “is
silent” regarding encoding a cellular network insight by an order in which
page addresses are conveyed in the paging message, but relies on the
disclosure in Yang of conveying multiple addresses a paging message, and
on the disclosure in Fujii of performing ring buffer read operations in the
opposite order of write operations, and finds the combination teaches or
suggests the limitation. (Final Act. 3.)
Appellant argues, and we agree, the multiple addresses included in the
paging message of Yang are not used to convey information, other than to
identify the devices to which the message is sent — i.e., the order of the
addresses in the message conveys no information. (Appeal Br. 11, 14; Yang
Fig. 6, ¶ 9.)

2 Rather than reiterate the arguments of Appellant and the findings of the
Examiner, we refer to the Appeal Brief (filed Nov. 2, 2017) (“Appeal Br.”);
the Reply Brief (filed Jan. 19, 2018) (“Reply Br.”); the Final Office Action
(mailed July 5, 2017) (“Final Act.”); and the Examiner’s Answer (mailed
Dec. 22, 2017) (“Ans.”) for the respective details.
Appeal 2018-002790
Application 14/819,076

4

Appellant further argues Fujii is non-analogous art, because it relates
to control of a storage device, including reading data from storage addresses
in the opposite order of writing. (Appeal Br. 14; Fujii Abstr., ¶¶ 9, 42.) We
agree. As held in In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011):
Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.

Fujii is directed to the field of storage technology, a different field from the
cellular network technology of Appellant’s subject matter. (Fujii, Abstr.)
Nor is the method of reading from, and writing data to, storage disclosed in
Fujii reasonably pertinent to the problem of conveying cellular network
insights to network devices. Therefore, we agree that Fujii is non-analogous
art. Moreover, even if considered, Fujii, like Diachina and Yang, provides
no teaching or suggestion that the order of addresses, whether in a paging
message or some other context, can be used to convey information.
The Examiner cites In re Keller, 642 F.2d 413 (CCPA 1981), which
emphasizes that the references relied on should be considered in
combination, rather than individually. (Ans. 6–7.) However, as discussed
above, nothing in the combination on which the Examiner relies provides
any teaching or suggestion of encoding cellular network insight by an order
in which page addresses are conveyed in the paging message.
Accordingly, the Examiner has not made out a prima facie case of
obviousness, and we do not sustain the Examiner’s obviousness rejections of
Appeal 2018-002790
Application 14/819,076

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independent claims 1, 9, 16, and 24 as obvious over Diachina, Yang, and
Fujii. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
We also do not sustain the Examiner’s rejections of claims 5, 6, 8, 20,
21, 23, and 34 over Diachina, Yang, and Fujii, which claims depend from
claims 1, 9, or 16. The Kim reference is not relied on for the limitation at
issue. (Final Act. 4–5.) Therefore, we also not sustain the Examiner’s
rejections of claims 2, 3, 17, 18, 31, 32, 35, and 36 over Diachina, Yang,
Fujii, and Kim, which claims depend from claims 1, 9, 16, or 24.

CONCLUSION
In summary:

REVERSED

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5, 6, 8, 9, 16,
20, 21, 23, 24, 34
103 Diachina, Yang, Fujii  1, 5, 6, 8, 9, 16,
20, 21, 23, 24, 34
2, 3, 17, 18, 31,
32, 35, 36
103 Diachina, Yang,
Fujii, Kim
2, 3, 17, 18, 31,
32, 35, 36
Overall Outcome 1–3, 5, 6, 8, 9, 16–
18, 20, 21, 23, 24,
31, 32, 34–36