Liebhart, Rainer et al.

Patent Trials and Appeals Board

Jun 30, 2020

2019003736 (P.T.A.B. Jun. 30, 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.
14/371,881 08/28/2014 Rainer Liebhart 059864.02342 7786
11051 7590 06/30/2020
SQUIRE PB (Nokia)
Nokia Technologies Oy
ATTN: IP Department
2550 M Street, NW
Washington, DC 20037
EXAMINER
CHOWDHURY, HARUN UR R
ART UNIT PAPER NUMBER
2473
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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):
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 RAINER LIEBHART and DEVAKI CHANDRAMOULI
Appeal 2019-003736
Application 14/371,881
Technology Center 2400
Before JAMES R. HUGHES, LINZY T. McCARTNEY, and
JOYCE CRAIG, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 22–24 and 27–35 are pending, stand rejected, are appealed by
Appellant,1 and are the subject of our decision under 35 U.S.C. § 134(a).
See Non-Final Act. 1–2; Appeal Br. 1.2 We have jurisdiction 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(a). Appellant identifies the real party in interest as Nokia Solutions
and Networks Oy. See Appeal Br. 2.
2 We refer to Appellant’s Specification (“Spec.”), filed July 11, 2014
(claiming benefit of PCT/US12/21294 (filed Jan. 13, 2012)); Appeal Brief
(“Appeal Br.”), filed Dec. 20, 2018; and Reply Brief (“Reply Br.”), filed
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Application 14/371,881

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CLAIMED SUBJECT MATTER
The invention “relate[s] to wireless communications networks” (Spec.
¶ 1) utilizing apparatuses, computer programs embodied in computer
readable media, and methods “for routing messages in a machine-type
communication (MTC) architecture” (Spec. ¶ 6). More specifically, the
method for routing messages in a MTC architecture includes “receiving a
request at a MTC-proxy residing at an egress of a network,” where the
“request includes an international mobile subscriber identity (IMSI)” for a
destination (user equipment or mobile device) outside the network. The
MTC-proxy replaces the IMSI in the request with an external identifier
before routing the request outside the network, where the external identifier
is different than the Mobile Station International Subscriber Directory
Number (MSISDN), and the MTC-proxy stores a mapping of the IMSI to
the external identifier. See Spec. ¶¶ 6–9; Abstract. Claims 22, 30, and 33
are independent. Claim 22, reproduced below, is illustrative of the claimed
subject matter:
22. A method, comprising:
receiving a request at a machine-type communication
proxy residing at an egress of a network, the request comprising
an international mobile subscriber identity for which a
destination is outside the network;
before routing the request outside the network, replacing,
by the machine-type communication proxy, the international
mobile subscriber identity in the request with an external
identifier, wherein the external identifier is different from a

Apr. 8, 2019. We also refer to the Examiner’s Final Office Action (“Final
Act.”), mailed Mar. 2, 2018; and Answer (“Ans.”) mailed Feb. 8. 2019.
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Application 14/371,881

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Mobile Station International Subscriber Directory Number
(MSISDN);
querying a home subscriber server with the international
mobile subscriber identity to retrieve the corresponding external
identifier; and
storing, in a memory of the machine-type communication
proxy, a mapping of the international mobile subscriber identity
to the corresponding external identifier.
Appeal Br. 24 (Claims App.) (emphasis added).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Jain et al.
(“Jain ’372”)
US 2013/0279372 A1 Oct. 24, 20133
Jain et al.
(“Jain ’894”)
US 2013/0084894 A1 Apr. 4, 20134
Ronneke US 2012/0302229 A1 Nov. 29, 20125
REJECTIONS6
1. The Examiner rejects claims 22–24 and 27–35 under 35 U.S.C.
§ 103(a) as being unpatentable over Jain ’372 and Jain ’894. See Final Act.
3–11.
2. The Examiner rejects claims 22, 30, and 33 under 35 U.S.C.
§ 102(e) as being anticipated by Ronneke. See Final Act. 12–16.

3 Jain ’372 claims benefit of US 61/556,109, filed Nov. 4, 2011.
4 Jain ’894 claims benefit of US 61/542,726, filed Oct. 3, 2011.
5 Ronneke claims benefit of PCT/EP2010/051867, filed Feb. 15, 2010.
6 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. §§ 102 and 103. Because the present
application has an effective filing date (Jan. 13, 2012) prior to the AIA’s
effective date, this decision refers 35 U.S.C. §§ 102(e) and 103(a).
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Application 14/371,881

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ANALYSIS
Obviousness Rejection of Claims 22–24 and 27–35
The Examiner rejects independent claim 22 (as well as independent
claims 30 and 33, and dependent claims 23, 24, 27–29, 31, 32, 34, and 35) as
being obvious over Jain ’372 and Jain ’894. See Final Act. 3–5; Ans. 16–24;
see also Final Act. 5–11; Ans. 24–35. Appellant contends that Jain ’372 and
Jain ’894 do not teach the disputed limitations of claim 22. See Appeal Br.
5–11; Reply Br. 2–4. Specifically, Appellant contends, inter alia, that
neither Jain ’372, nor Jain ’894 teaches or suggests that the “MTC-IWF
replaces the international mobile subscriber identity (IMSI) in the request
with an external identifier that is not a MSISDN before routing the request
outside the network” as required by claim 22. Appeal Br. 8–9; see Appeal
Br. 7–11; Reply Br. 2–4. Appellant contends that Jain ’372, instead, teaches
sending “a trigger request to the MTC-IWF” that includes “an MTC device
identification (ID) . . . to indicate a target UE” (Appeal Br. 9 (citing Jain
’372 ¶ 42)), “the MTC-IWF . . . send[s] [a] trigger report to the MTC server”
(Appeal Br. 9 (citing Jain ’372 ¶¶ 47–48)), and “the trigger report includes
an external identifier [(IE)] which is of type IMSI” (Appeal Br. 9 (citing Jain
’372 ¶ 88(Table 6))). Thus, according to Appellant, Jain ’372 does not
“disclose or suggest that its MTC-IWF replaces the IMSI in the trigger
report with an external identifier that is not a MSISDN” and “also fails to
disclose or suggest that the MTC-IWF makes any type of replacement of
identifiers.”
With respect to Jain ’894, Appellant contends the reference describes
“an identifier used by the MTC [device] in the triggering request to the MTC
server can be different from the identifier used by the MTC server in the
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Application 14/371,881

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triggering request sent to the public land mobile network (PLMN)” (Appeal
Br. 10 (citing Jain ’894 ¶ 26)). Thus, according to Appellant, Jain ’894
“fails to disclose or suggest that a MTC proxy replaces the international
mobile subscriber identity (IMSI) in the request with an external identifier
that is not a MSISDN before routing the request outside the network.”
We agree with Appellant that the Examiner-cited portions of Jain ’372
and Jain ’894 (see Jain ’372 ¶¶ 35–39, 42, 44, 46–49, 70–71 (Table 2), 73,
77, 85 (Table 4), 88 (Table 6), 92–94, 106; Figs. 2, 3; and Jain ’894 ¶¶ 21,
26, 36, 38, 39, 61, 62; Figs 2a, 2b) do not teach or MTC proxy replacing an
IMSI with an IE or storing a map of the IDs as required by Appellant’s claim
22. See Appeal Br. 5–11; Reply Br. 2–4. As cited by the Examiner, Jain
’372 describes three different messages (Trigger Report 312, Trigger Report
314, and Trigger Delivery Request 302 involving the MTC-IFW 54 (the
MTC proxy recited in claim 22). See FIGS. 2, 3; Jain ’372 ¶¶ 42, 47, 48, 71,
84, 85, 88. In the case of Trigger Reports 312 and 314 (FIG. 3), the MTC-
IFW forwards Trigger Report 312 to the MTC server (Trigger Report 314).
The MTC–IFW does not substitute an external identifier (IE) with an IMSI
or store the information. Even if a substitution of an identifier takes place at
the MTC-IFW, Jain ’372 (¶¶ 70–71 (Table 2), 88 (Table 6)) indicates the
identifiers are IMSI identifiers. In the case of Trigger Delivery Request 302,
which may include an external identifier (IE) that is not an IMSI (Jain ’372
¶¶ 70–71 (Table 2); FIG. 3), this request is sent from the server to the MTC-
IFW and there is no indication that the MTC–IFW substitutes the external
identifier with an IMSI or stores the information. At best, Jain ’372
describes the Home Subscriber Server (HSS) mapping the User Equipment
(UE) MTC Device ID to an IMSI, not the MTC-IFW.
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Similarly, the Examiner-cited portions of Jain ’894 (see Jain ’894
¶¶ 21, 26, 36, 38, 39, 61, 62; FIGS. 2a, 2b) do not describe the required
identifier substitution. Although Jain ’894 describes the MTC device
identifier in the trigger requests being different (see Jain ’894 ¶ 26) and that
the external identifier is not an IMSI or MSISDN (see Jain ’894 ¶ 36) it is
the HSS that substitutes or maps the external device identifier and an IMSI.
See Jain ’894 ¶¶ 38, 61.
It is unclear from the Examiner’s rejection if (and how) Jain ’372 and
Jain ’894 describe a proxy (MTC–IFW) that substitutes an external ID with
an IMSI that is not a MSISDN and stores a mapping of the identifiers as
required by claim 22. The Examiner does not explain sufficiently how the
cited portions of Jain ’372 in combination with Jain ’894 at least suggest the
disputed features of “replacing, by the machine-type communication proxy,
the international mobile subscriber identity in the request with an external
identifier” as recited in claim 22.
Consequently, we are constrained by the record before us to find that
the Examiner erred in concluding that the combination of Jain ’372 and Jain
’894 renders obvious Appellant’s claim 22. Independent claims 30 and 33
include limitations of commensurate scope. Claims 23, 24, 27–29, 31, 32,
34, and 35 depend from and stand with their respective base claims.
Accordingly, we reverse the Examiner’s rejection of claims 22–24 and 27–
35.
Anticipation Rejection of Claims 22, 30, and 33
The Examiner rejects claims 22, 30, and 33 under 35 U.S.C. § 102(e)
as being anticipated by Ronneke. See Final Act. 12–16.
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Appellant contends Ronneke does not anticipate claim 22. See
Appeal Br. 17–22; Reply Br. 5–7. Specifically, Appellant contends
“Ronneke . . . merely describes that a translator translates the device specific
identifier into a translated identifier associated with a second network
domain, and sends a status defined by the translated identifier.” Therefore,
“Ronneke fails to disclose or suggest any information that its proxy replaces,
before routing the request outside the network.” Appeal Br. 20–21; see
Appeal Br. 19–21; Reply Br. 5–7.
We agree with Appellant that the Examiner-cited portions of Ronneke
do not disclose the disputed features of claim 22—“before routing the
request outside the network, replacing, by the machine-type communication
proxy, the international mobile subscriber identity in the request with an
external identifier” (Appeal Br. 24 (Claims App.)). As pointed out by
Appellant (see App. Br. 20–21; Reply Br. 5–6), Ronneke does not explicitly
disclose substituting an identifier or sending a message (request) including a
substituted identifier to an external network. At best Ronneke discloses
translating an identifier between network domains and sending the message
including the translated identifier to a server within the network including
the proxy. See Ronneke ¶¶ 28–29.
It is unclear from the Examiner’s rejection if (and how) Ronneke
discloses a proxy substituting an external ID with an IMSI that is not a
MSISDN as required by claim 22. The Examiner does not explain
sufficiently how the cited portions of Ronneke disclose the disputed features
of claim 22.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding that Ronneke anticipates Appellant’s claim 22.
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Independent claims 30 and 33 include limitations of commensurate scope.
Accordingly, Appellant’s contentions persuade us of error in the Examiner’s
anticipation rejection of representative independent claim 22, and we reverse
the Examiner’s rejection of claims 22, 30, and 33.
CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 22–
24 and 27–35 under 35 U.S.C. § 103(a). Appellant has also shown that the
Examiner erred in rejecting claims 22, 30, and 33 under 35 U.S.C. § 102(e).
We, therefore, do not sustain the Examiner’s rejections of claims 22–24 and
27–35.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
22–24, 27–35 103(a) Jain ’372,
Jain ’894
22–24, 27–35
22, 30, 33 102(e) Ronneke 22, 30, 33
Overall
Outcome
22–24, 27–35

REVERSED