Shaheen, Kamel M.

Patent Trials and Appeals Board

Jan 14, 2020

12346258 - (D) (P.T.A.B. Jan. 14, 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.
12/346,258 12/30/2008 Kamel M. Shaheen IDC-2002P00386US02 9167
24374 7590 01/14/2020
VOLPE AND KOENIG, P.C.
DEPT. ICC
30 SOUTH 17TH STREET -18TH FLOOR
PHILADELPHIA, PA 19103
EXAMINER
COONEY, ADAM A
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
01/14/2020 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):
eoffice@volpe-koenig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAMEL M. SHAHEEN
Appeal 2017-009818
Application 12/346,258
Technology Center 2400
Before JOHN A. EVANS, MATTHEW J. McNEILL, and SCOTT E. BAIN,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 15–26, which constitute all claims pending in the
application. Claims 1–14 have been canceled. An oral hearing was held
October 8, 2019. 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 InterDigital
Technology Corporation. Appeal Br. 3.
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BACKGROUND
The Claimed Invention
Appellant’s claimed invention relates to wireless data
communications, and specifically, to transferring Internet protocol (“IP”)
traffic between two different terminals operating under “different technology
standards” with “different IP addresses.” Spec. ¶¶ 4–5. Claims 15 and 21
are independent. Claim 15 is illustrative of the invention and the subject
matter of the appeal, and reads as follows (with disputed limitations
emphasized):
15. A method for use in a source user equipment (UE), the
method comprising:
establishing a communication sess10n via a first network
of a first radio access technology (RAT) via a first base station
(BS);
obtaining connection information via the first network,
wherein the connection information is associated with a target
UE, and wherein the target UE is connected to a second
network of a second RAT via a second BS;
generating an inter UE transfer (IUT) request for an IUT
of the communication session from the source UE to the target
UE based on the connection information;
transmitting the IUT request;
transferring the communication session from the source
UE to the target UE.
Appeal Br. 11 (claims appendix) (emphases added).
References
The references relied upon by the Examiner are:
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Name Reference Date
Eschbach et al.
(“Eschbach”)
US 2003/0088765 A1 Pub. May 8, 2003
Grilli et al. (“Grilli”) US 2002/0093922 A1 Pub. July 18, 2002
Patel US 2005/0153697 A1 Pub. July 14, 2005
The Rejections on Appeal
Claims 15–19 and 21–25 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Eschbach and Grilli. Final Act. 5–8.
Claims 20 and 26 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Eschbach, Grilli, and Patel. Final Act. 9.
DISCUSSION
We have reviewed the Examiner’s rejections in light of the arguments
raised in the briefs. On the record before us, we cannot sustain the
Examiner’s rejections.
Rejection of Claims 15–19 and 21–25
Appellant argues the Examiner erred in finding Eschbach and Grilli
teach or suggest transferring a communication session between “source user
equipment (UE)” and “target UE” wherein target UE is “connected to a
second [i.e., different] network of a second RAT,” as recited in claim 15.
Appeal Br. 5–7 (emphasis added). Specifically, Appellant argues that
although Eschbach teaches a transfer among two UEs, it does so within the
same RAT, and that Grilli teaches only a handoff for a single device moving
between base stations. Id. 6–8. Appellant further argues that, to the extent
the references, when combined, include multiple devices in multiple RATs,
respectively, the Examiner has not provided a sufficient rationale for
combining the references. Id.; Reply Br. 8–9. For the reasons set forth
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below, we are persuaded by Appellant’s argument that the Examiner erred in
combining the references.
As the Examiner finds, Eschbach teaches “examples of transfer . . . in
two different networks,” but the Examiner does not find (and we do not
discern) any teaching of doing so across different RATs. Ans. 8–9 (citing
Eschbach ¶¶ 10, 25, 29, 33, 47, 54, 75). As the Examiner further finds,
Grilli teaches “handoff procedures in two different RATs via base stations
for a mobile station,” e.g., a “handoff between the two different RAT
networks.” Ans. 9 (citing Grilli ¶¶ 3–5). As to the combination, the
Examiner explains that the desire for “system scalability and improvement”
would have motivated one of ordinary skill to combine Eschbach with Grilli.
Id.
The Examiner does not explain, however, why a person of ordinary
skill would look to Grilli, which relates to cell handoffs as a single device
moves between base stations (towers) and different RATs, to improve or
scale the system of Eschbach, which relates to “inter-device (SID)” transfer
of IP communications. Grilli ¶¶ 3–7; Eschbach ¶¶ 10, 25, 47 (emphasis
added). Although Eschbach and Grilli both relate generally to
communications coordination, we find that the particular problems they
address are fundamentally different, and they solve those problems in
different ways. The Examiner has not rationally explained how Grilli’s cell-
to-cell “inter-RAT handoff” would have commended itself to an inventor’s
attention in considering Eschbach’s problem of transferring IP sessions
within a single RAT, or vice versa. Innovention Toys LLC v. MGA
Entertainment Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011); see id. at 1322–23
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(finding no error in combining references that share the “same purpose,”
“goal,” or “objective”); Grilli ¶¶ 5–6.
System scalability or improvement may, if sufficiently supported in
the record, provide ample rationale for combining references. Here,
however, without further explanation we find the Examiner’s statement is
conclusory. Obviousness rejections “cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Accordingly, we are persuaded the Examiner erred in rejecting claim
15. For the same reasons, we are persuaded of error regarding claims 16–19
and 21–25, argued as a group with claim 15. We, therefore, do not sustain
the rejection of claims 15–19 and 21–25.
Rejection of Claims 20 and 26
Claims 20 and 26 depend from claims 15 and 21, respectively. For
the same reasons as discussed above regarding claims 15 and 21, we are
persuaded the Examiner erred in rejecting dependent claims 20 and 26.
Accordingly, we do not sustain the rejection of these claims.
SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
15–19, 21–
25
103 Eschbach, Grilli 15–19, 21–
25
20, 26 103 Eschbach, Grilli,
Patel
20, 26
Overall
Outcome
15–26
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DECISION
We reverse the Examiner’s decision rejecting claims 15–26.
REVERSED