Nokia Technologies Oy

Patent Trials and Appeals Board

Dec 1, 2021

2020002589 (P.T.A.B. Dec. 1, 2021)

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.
14/890,143 11/09/2015 Mika RINNE NC82295-US-PCT 9868
12358 7590 12/01/2021
Mintz Levin/Nokia Technologies Oy
One Financial Center
Boston, MA 02111
EXAMINER
NAVAR, ERICA
ART UNIT PAPER NUMBER
2643
NOTIFICATION DATE DELIVERY MODE
12/01/2021 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
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKA RINNE and SAMI KEKKI

Appeal 2020-002589
Application 14/890,143
Technology Center 2600

Before JAMES R. HUGHES, LARRY J. HUME, and
JUSTIN BUSCH, Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 49–67 and 69–73. We have jurisdiction over the
pending claims under 35 U.S.C. § 6.
We AFFIRM.
STATEMENT OF THE CASE
The invention relates generally to facilitating “interworking of radio
access networks and, more particularly, to the interworking of cellular radio
access networks and wireless local area networks.” Spec. 1:2–4. More

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
Corporation. Appeal Br. 2.
Appeal 2020-002589
Application 14/890,143

2
specifically, the claimed invention relates to (1) maintaining sets of
information regarding (a) first relative priorities for selection of cellular
networks and (b) second relative priority for selection between a wireless
local area network (WLAN) and a cellular network, (2) modifying, at a base
station, the second relative priority without modifying the first relative
priority such that the second relative priority is cell-specific, and
(3) providing portions of the maintained information to a user equipment
(UE) to assist the UE in selecting a network. See Appeal. Br. 21. Claims 49
(method), 57 (device), and 65 (device) are independent claims.
Claim 49, which is illustrative of the claimed subject matter, is
reproduced below:
49. A method comprising:
maintaining, at a base station, a set of information defining
a first relative priority of selection among a plurality of cellular
radio access networks;
maintaining, at the base station, a wireless access selection
information defining a second relative priority of selection
between a wireless local area network and a cellular radio access
network;
modifying, by the base station, the second relative priority
of selection without modifying the first relative priority of
selection, the second relative priority of selection being modified
by the base station to be specific to a cell associated with the base
station; and
performing, by the base station, an assisted network
selection by at least providing, to a user equipment, at least a
portion of the set of information and the wireless access selection
information having the modified second relative priority of
selection between the wireless local area network and the cellular
radio access network.
Appeal 2020-002589
Application 14/890,143

3
REFERENCES
Name Patent or Application # Date
Sachs US 2011/0110300 A1 May 12, 2011
Westerberg US 2014/0247807 A1 Sept. 4, 2014

THE PENDING REJECTION2
Claims 49–67 and 69–73 stand rejected under 35 U.S.C. § 103 as
obvious over Sachs and Westerberg. Non-Final Act. 3–7.
ANALYSIS
We have reviewed the Examiner’s § 103 rejection in light of
Appellant’s arguments that the Examiner erred. In reaching this decision,
we have considered all evidence presented and all arguments Appellant
made. Appellant argues the rejection of all pending claims under 35 U.S.C.
§ 103 as a group based on independent claim 49. See Appeal Br. 12–17;
Reply Br. 4–10. Therefore, we select independent claim 49 as
representative. See 37 C.F.R. § 41.37(c)(1)(iv) (2018). Arguments
Appellant could have made, but chose not to make in the Briefs, are deemed
forfeited and waived. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds Sachs teaches or suggests nearly every element of
independent claim 49. Non-Final Act. 3–4. In particular, the Examiner
finds Sachs teaches maintaining the information regarding all relative
selection priorities, modifying the second relative priority such that it is cell-
specific without modifying the first relative priority, and performing assisted

2 The Examiner rejected the claims on the ground of nonstatutory double
patenting as being unpatentable over claims of U.S. 9,560,585 B2, but
withdrew this rejection in the Answer. Non-Final Act. 8–9; Ans. 3.
Accordingly, the rejection is not before us.
Appeal 2020-002589
Application 14/890,143

4
network selection by providing the UE with the relative priority information.
Non-Final Act. 3–4. The Examiner finds Sachs does not explicitly disclose
maintaining and modifying the relative priorities at the base station, but
Sachs discloses that its Access Network Discovery and Selection Function
(ANDSF)3 functionality can be in various components. Non-Final Act. 4
(citing Sachs ¶ 36, Fig. 4); see Sachs ¶ 36 (disclosing that the functionality
for selecting access networks “may be distributed between functional entities
on the network side, e.g. network components, and a user equipment” and
that the “final processing of the second access selection function is
implemented within a user equipment”).
The Examiner finds Westerberg explicitly discloses maintaining and
modifying the relative priorities at the base station. Non-Final Act. 4 (citing
Westerberg ¶ 67, Fig. 12 (step 5)). More specifically, the Examiner finds
Westerberg teaches base stations updating the policies used by UEs to
perform network selection and providing the updated policies to the UE.
Ans. 6 (citing Westerberg ¶ 67); see also Westerberg, Fig. 12 (depicting the
process of a UE detecting a new Wi-Fi access point (AP), the UE informing
a base station of the new AP, the base station deciding “to send new or
updated policy or other information to UE,” and, upon receiving the updated
policy, the UE acting on the received information “as part of its cell
(re-)selection process”). The Examiner determines it would have been
obvious to modify Sachs to include modifying the priority at the base station
(i.e., a functionality related to the ANDSF) because Sachs discloses that
ANDSF functionality can be distributed among various components such as

3 The ANDSF controls selection of cellular and non-cellular network access
selection. See, e.g., Sachs ¶ 10.
Appeal 2020-002589
Application 14/890,143

5
a base station and performing such functions at the base station was
“notoriously well known in the art and commonly used,” as taught by
Westerberg. Non-Final Act. 4.
Appellant first argues the combination of Sachs and Westerberg does
not teach or suggest “modifying, by the base station, the second relative
priority of selection . . . to be specific to a cell associated with the base
station” (the “disputed limitation”), as recited in representative claim 49.
Appeal Br. 12–14; Reply Br. 4–6. Appellant acknowledges that Sachs’s
ANDSF functionality may be implemented in hardware at a base station, but
Appellant argues Sachs’s ANDSF applies “operator policies” and, therefore,
“applies the same network selection rules consistently across the entire
network and not cell-specific selection rules that vary across different cells.”
Appeal Br. 13; Reply Br. 4–5.
Appellant further contends that Westerberg’s disclosure of a base
station modifying a cell candidate list by adding a UE-identified AP and
sending that list to the UE also fails to teach the disputed limitation. Appeal
Br. 13. Appellant then concludes, without further explanation in the Appeal
Brief, that a person of ordinary skill in the art would “readily appreciate that
modifying a user equipment’s candidate cell list to include a moving access
point is not tantamount to modifying the relative priority of selection
between a wireless local area network and a cellular radio access network
observed by the user equipment.” Appeal Br. 14; Reply Br. 6; see also
Reply Br. 6 (asserting Westerberg is silent on cell-specific relative selection
priority and a base station making cell-specific modifications). Appellant
asserts adding an AP “to a candidate cell list does not change the relative
priority of selection between a” WLAN and a cellular network. Reply Br. 6.
Appeal 2020-002589
Application 14/890,143

6
As noted above, the Examiner finds Westerberg teaches base stations
updating policies used by UEs to perform network selection and providing
the updated policies to the UE. Ans. 6 (citing Westerberg ¶ 67 (describing
Figure 12)). Paragraph 67 describes Westerberg’s Figure 12, which we
reproduce and further explain below:

Figure 12 of Westerberg depicts exemplary “signaling between a UE, an AP,
and a base station or ANDSF server for reporting a moving AP indication to
the base station or ANDSF server.” Westerberg ¶ 36.
Westerberg’s Figure 12 and paragraph 67 disclose a UE detecting a
mobile Wi-Fi AP and reporting the detection to the base station (or ANDSF
server). The base station then decides whether to send “new or updated
policy or other information to the UE.” Westerberg ¶ 67. Thus, even to the
Appeal 2020-002589
Application 14/890,143

7
extent Westerberg’s base station originally provided network-wide network
selection policies (i.e., policies that were not cell-specific), Westerberg
suggests that, in steps 5 and 6 of Figure 12, the base station updates and
provides to the UE an updated policy that includes the new Wi-Fi AP, such
that this updated policy is now cell-specific—i.e., nothing indicates that the
base station updates the network-wide policies merely because it receives a
neighbor cell report about a Wi-Fi AP from one UE.
Appellant’s assertion that “the Examiner conflates a Westerberg user
equipment performing a cell selection and/or handover to a base station
applying cell-specific modifications to a relative selection priority between a
wireless local area network and a cellular radio access network,” Reply Br. 5
(emphasis omitted), misinterprets the Examiner’s findings. The Examiner
does not find that the UE performing cell selection teaches a base station
modifying relative selection priority. Rather, the Examiner finds
Westerberg’s base station updates policies that aid in cell selection and
provide those updated policies to the UE to allow the UE to perform assisted
cell selection, similar to what is recited in representative claim 49, namely:
performing, by the base station, an assisted network selection by
at least providing, to a user equipment, at least a portion of the
set of information and the wireless access selection information
having the modified second relative priority of selection between
the wireless local area network and the cellular radio access
network.
Appeal Br. 21.
Although the Examiner addressed, and we in turn address, Appellant’s
contentions concerning the nature and use of data (the recited “second
relative priority of selection” (claim 49)), we note that the claim limitations
Appeal 2020-002589
Application 14/890,143

8
at issue, as well as Appellant’s arguments, attempt to distinguish the prior art
based on the nature of particular data and its intended use. See Ex parte
Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative), aff’d, 191 F.
App’x 959 (Fed. Cir. 2006); Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI
2005); In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). More specifically,
claim 49 merely recites maintaining, modifying, and providing information.
Appeal Br. 21. Although claim 49 recites “performing . . . an assisted
network selection,” this step recites further limitations defining what it
means to perform an assisted network selection, which requires only
“providing, to a user equipment, at least a portion of the set of information
. . . .” Appeal Br. 21. We need not give patentable weight to nature of data
and its intended use.
Next, Appellant asserts that there is no evidence to support a person of
ordinary skill in the art would have been capable of bridging the alleged gap
in Sachs and Westerberg’s combined teachings. Appeal Br. 14–15; Reply
Br. 7–8. Because we disagree with Appellant and, instead, we find that the
combination of Sachs and Westerberg teaches or suggests the disputed
limitation, this argument is unpersuasive.
Finally, Appellant asserts “Sachs teaches away cell-specific network
selection rules because Sachs’ [ANDSF] expressly provides the same
network selection rules to a user equipment regardless of the cell the user
equipment is camped on or connected to.” Appeal Br. 16 (emphases
omitted); see Reply Br. 8. Appellant further contends that Sachs does not
“encourage applying cell-specific selection rules instead of network-wide
selection rules” and that cell-specific selection rules conflict with Sachs’s
Appeal 2020-002589
Application 14/890,143

9
principle of operation using network-wide rules. Appeal Br. 16 (emphasis
added); Reply Br. 9.
An obviousness analysis “need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). “The test for obviousness is . . . what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Thus, Sachs
alone does not need to encourage cell-specific selection rules because the
rejection is based on the combined teachings of Sachs and Westerberg.
Moreover, Sachs does not discourage or discredit such rules. See In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.”). Rather, Sachs omits discussion of how it handles modifying
policies. Westerberg, however, discloses a base station modifying similar
policies, as already discussed above. See Westerberg ¶ 67. Both Sachs and
Westerberg disclose ANDSF functionality, which may be used to manage
the relative priority among cellular networks and between a WLAN and a
cellular network in order to assist a UE in selecting a network. See, e.g.,
Sachs ¶ 10; Westerberg ¶ 52. As such, nothing in Sachs indicates that an
ordinarily skilled artisan would have been discouraged from modifying
policies in a cell-specific manner, as taught by Westerberg, to better
customize the relative selection priority to a particular UE or cell in Sachs.
Appeal 2020-002589
Application 14/890,143

10
Thus, we are not persuaded the Examiner erred in finding the
combination of Sachs and Westerberg teaches or suggests the subject matter
recited in representative claim 49, including the disputed limitation. For the
foregoing reasons, we sustain the Examiner’s rejection of claim 49 under
35 U.S.C. § 103 as obvious over Sachs and Westerberg. Appellant argues
all claims as a group. See Appeal Br. 17 (“Independent claims 57 and 65
include the same or similar features as those set forth in claim 49. As such,
the rejections . . . of claims 57 and 65 should also be withdrawn. The
remaining claims depend . . . from one of the aforementioned independent
claims. As such, the rejection of those claims under 35 U.S.C. §103(a)
should also be withdrawn.”).
DECISION SUMMARY
Claims
Rejected 35 U.S.C. § References Affirmed Reversed
49–67, 69–73 103 Sachs, Westerberg 49–67, 69–73
TIME PERIOD FOR RESPONSE
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). See 37 C.F.R.
§§ 1.136(a)(1)(iv), 41.50(f).
AFFIRMED