Jussi-Pekka Koskinen et al.

Patent Trials and Appeals Board

Oct 18, 2019

15197048 - (D) (P.T.A.B. Oct. 18, 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.
15/197,048 06/29/2016 Jussi-Pekka KOSKINEN 059864.02440 9334
11051 7590 10/18/2019
Squire Patton Boggs (US) LLP
Nokia Technologies Oy
ATTN: IP Department
2550 M Street, NW
Washington, DC 20037
EXAMINER
KHAN, SUHAIL
ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
10/18/2019 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
nokia.ipr@nokia.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 JUSSI-PEKKA KOSKINEN, ILKKA KESKITALO,
and JARKKO T. KOSKELA1
_____________

Appeal 2018-008592
Application 15/197,048
Technology Center 2600
______________

Before ROBERT E. NAPPI, MARC S. HOFF, and
JASON M. REPKO, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1 through 32, which constitute all the
claims pending in this application. We have jurisdiction over the pending
claims 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). According to Appellant, the real party in interest is Nokia
Technologies Oy. App. Br. 3.
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Application 15/197,048

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INVENTION
The invention is directed to a method for optimizing a communication
system by having a network element identify a procedure to be used by the
user equipment in response to a paging message. Abstract.
Claim 1 is illustrative of the invention and is reproduced below.
1. A method comprising:
identifying, by a network element, a signaling procedure
to be used by a user equipment as a response to a paging
message; and
indicating the signaling procedure from the network
element to the user equipment.

REJECTIONS AT ISSUE2
The Examiner has rejected claims 1 through 3, 5 through 12, 14
through 19, 21 through 28, and 30 through 32 under 35 U.S.C. § 102(a)(1)
as being anticipated by Chang (US 2016/0165572 A1, published June 9,
2016). Final Act. 2–8.
The Examiner has rejected claims 4, 13, 20, and 29 under 35 U.S.C.
§ 103as being unpatentable over Chang, and Martin (US 2016/0302153 A1,
published Oct. 13, 2016). Final Act. 8–9.
ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have not persuaded us of error in the

2 Throughout this Decision, we refer to the Appeal Brief (“App. Br.”) filed
May 7, 2018, Reply Brief (“Reply Br.”) filed August 27, 2018, the Final
Office Action (“Final Act.”) mailed December 7, 2017, and the Examiner’s
Answer (“Ans.”) mailed August 8, 2018.
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Application 15/197,048

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Examiner’s anticipation rejection of claims 1 through 3, 5 through 12, 14
through 19, 21 through 28, and 30 through 32 and obviousness rejection of
claims 4, 13, 20, and 29.

Independent claim 1
Appellant argues the Examiner’s rejection of independent claims 1 is
in error as Chang does not teach identifying, by a network element, a
signaling procedure to be used by a user equipment (UE) as a response to a
paging message as recited in claim 1. Appellant argues that Change teaches
switching from a connectionless scheme to a connection scheme, which is
different from identifying signaling procedure to be used as a response to a
paging message. App. Br. 10–11, Reply Br. 3–4. Appellant states, “Chang
does not identify any signaling procedure for the user equipment to use as a
response to a paging message. Instead, Chang only makes a yes/no
determination regarding the current usage of a connectionless scheme for
data transmission by the UE.” Reply Br. 3.
The Examiner responds to Appellant’s argument citing Chang
paragraphs 87 through 94 and 100 through 104 as teaching the disputed
limitation.
We concur with the Examiner that Chang teaches the disputed
limitation. Chang teaches there is a conventional scheme in which user
equipment communicates, which is referred to as a connection scheme. See
Chang para. 3–4. There is a second scheme referred to as a connectionless
scheme. Chang para 9. Chang teaches in one embodiment when a base
station receives a paging message, the base station (network element)
identifies whether the user equipment is in a connectionless state and if so
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notifies the user equipment to release from the connectionless state and
establish a conventional connection scheme. See Chang para. 87–90. After
the message to release the connectionless communication, the base station
transmits a page message to which the user equipment responds by
establishing the conventional connection scheme. Chang para. 93–94. We
consider this to meet the claim as the base station by informing the user
equipment to release the connectionless communication so as to establish the
conventional connection scheme for communication to be used in
responding to the paging message. This is made clearer in a further
embodiment of Chang in which the base station’s message to release from
the connectionless communication also includes an indication of why, (e.g.
receipt of downlink traffic (paging)), the user equipment is to release from
the connectionless scheme and re-establish a new connectionless scheme.
See Chang para. 105. Accordingly, Appellant’s arguments have not
persuaded us of error and we sustain the Examiner’s rejection of claim 1.

Independent claims 10, 17, and 26
With respect to the rejection of independent claims 10, 17, and 26,
Appellant presents similar arguments directed to the anticipation rejection
based upon Chang. App. Br. 15, 16, 19, 20, 24, and 25.
Each of independent claims 10, 17, and 26 recite a limitation similar
to the disputed limitation discussed above with respect to claim 1. We are
not persuasive of error in the Examiner’s rejection of claims 10, 17, and 26
for the same reasons discussed with respect to claim 1, and we sustain the
Examiner’s rejections of independent claims 10, 17, and 26.

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Dependent claims 2 through 3, 5 through 9, 11, 12, 14 through 16, 18,
19, 21 through 25 and 27, 28, and 30 through 32.
With respect to each of these dependent claims Appellant asserts they
are allowable for the reasons discussed with respect to claim 1. Further,
Appellant restates the limitations, and merely alleges that “the office Action
did not address this feature.” See e.g., Answer 12.
These statements are not separate arguments under 37 C.F.R
§ 41.37. Rather, Appellant’s statements regarding claims 2 through 3, 5
through 9, 11, 12, 14 through 16, 18, 19, 21 through 25 and 27, 28, and 30
through 32 are considered to be nothing more than a general allegation of
patentability and are not considered separate patentability arguments. See In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art”).
Accordingly, we sustain the Examiner’s rejection of these claims for the
same reasons as claim 1.

Claims 4, 13, 20, and 29.
With respect to each of these dependent claims Appellant asserts they
are allowable for the reasons discussed with respect to claim 1. Further,
Appellant states:
Claim 4 further recites "wherein the explicit indication
comprises an indication to use one of a radio resource control
connection setup request, a radio resource control connection
resume request, or a radio resource control re-establishment
request." However, the Office Action did not directly address
this feature.
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App Br. 28–31.
The Examiner in the Final Rejection finds that Chang does not
explicitly disclose the RRC setup/connection, resume re-establish request
and that Martin does. Answer 8 (citing Martin para. 62–63).
Appellant’s arguments have not persuaded us of error, as the
Appellant has not addressed the Examiner’s finding concerning Martin.
Additionally, as discussed above, we find that Chang teaches the network
device notifying the user equipment to use the conventional scheme to
respond to a page and Chang identifies that the conventional scheme starts
with a RCConnectRequest signal which meets the claim (see Fig. 1 and
paras. 3–4). Accordingly, we sustain the Examiner’s rejection of claims 4,
13, 20, and 29.
CONCLUSION
The Examiner’s decision rejecting claims 1 through 32 is affirmed.

Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–3, 5–12, 14–19,
21–28, 30–32
102 Chang  1–3, 5–12,
14–19, 21–
28, 30–32

4, 13, 20, 29 103 Chang, and Martin  4, 13, 20, 29
Outcome 1–32

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

AFFIRMED