Telefonaktiebolaget L M Ericsson (publ)

Patent Trials and Appeals Board

Aug 31, 2020

2019003032 (P.T.A.B. Aug. 31, 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.
14/910,891 02/08/2016 Mattias Tan Bergström 1009-1675 / P41263 US2 3801
102721 7590 08/31/2020
Murphy, Bilak & Homiller/Ericsson
1255 Crescent Green
Suite 200
Cary, NC 27518
EXAMINER
CHANG, KAI J
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
08/31/2020 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):
official@mbhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTIAS TAN BERGSTRÖM and MAGNUS STATTIN
____________

Appeal 2019-003032
Application 14/910,891
Technology Center 2400
____________

Before JOHN A. EVANS, JOHN P. PINKERTON, and
MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21–40, which constitute all pending
claims. See Appeal Br. 6–11 and Final Act. 1–24.2 Claims 1–20 are
canceled. Response After Final Office Action 2 (filed June 13, 2018). We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as Telefonaktiebolaget LM
Ericsson (publ). Appeal Br. 2.
2 We refer to the Specification, filed Feb. 8, 2016 (“Spec.”); Final Office
Action, mailed Apr. 17, 2018 (“Final Act.”); Advisory Action, mailed July
11, 2018; Appeal Brief, filed Oct. 29, 2018 (“Appeal Br.”); Examiner’s
Answer, mailed Jan. 2, 2019 (“Ans.”); and the Reply Brief, filed Mar. 4,
2019 (“Reply Br.”).
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Introduction
Appellant describes the invention as relating to “maintenance of
parameters such as thresholds for inter Radio Access Technologies (RAT)
access selection.” Spec. 1:5–6. Appellant explains that “[w]ith current
solutions for WLAN/3GPP Radio interworking solutions it is not possible to
achieve per terminal thresholds for controlling the access selection and/or
traffic steering between 3GPP and WLAN for a terminal in idle mode, which
limits flexibility and creates ping-ponging problems” that reduce
performance. Id. at 7:34–8:5. Appellant therefore describes its invention as
providing methods “for how a terminal handles a dedicated signaled
threshold such that frequent updating of the threshold may be avoided and
hence highly loaded control channels are avoided.” Id. at 8:6–8.
Claims 21 and 31 are exemplary and reproduced here with bracketed
indicia added:
21. A method in a terminal for inter RAT access
selection, the terminal being capable to operate in one or more
Radio Access Technologies (RATs), the method comprising:
[a] receiving from a network node, one or more dedicated
parameters comprising one or more thresholds for inter-
RAT access selection;
[b] receiving, from the network node, one or more broadcasted
parameters comprising one or more thresholds for inter-
RAT access selection, wherein the one or more
broadcasted parameters at least partly correspond to the
respective one or more dedicated parameters; and
[c] acting for inter-RAT access selection according to any one
out of:
[1] one or more updated dedicated parameters, updated
based on changes to corresponding one or more
broadcast parameters; and
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[2] any one out of [i] the one or more received dedicated
parameters, [ii] updated dedicated parameters, or
[iii] corresponding broadcasted parameters, based
on whether one or more conditions are fulfilled or
not.
31. A terminal for inter-RAT access selection, the
terminal being capable to operate in one or more Radio Access
Technologies (RATs), wherein the terminal comprises:
[a] a transceiver configured to transmit and receive radio
signals, and
[b] a processing circuit configured to:
[1] receive from a network node, one or more dedicated
parameters comprising one or more thresholds for
inter-RAT access selection,
[2] receive from the network node, one or more
broadcasted parameters comprising one or more
thresholds for inter-RAT access selection, wherein
the one or more broadcasted parameters at least
partly correspond to the respective one or more
dedicated parameters; and
[3] act for inter-RAT access selection according to any
one out of:
[i] one or more updated dedicated parameters,
updated based on changes to corresponding
one or more broadcast parameters; and
[ii] any one out of [A] the one or more received
dedicated parameters, [B] updated dedicated
parameters, or [C] corresponding
broadcasted parameters, based on whether
one or more conditions are fulfilled or not.
Appeal Br. 12, 15 (Claims App.).
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Rejection and References
The Examiner rejected claims 21–40 under 35 U.S.C. § 103 as being
unpatentable over Jokinen et al. (US 2012/0122458 A1; publ. May 17, 2012)
(“Jokinen”), Chen et al. (US 2014/0106751 A1; publ. Apr. 17, 2014)
(“Chen”), and Jang (US 2014/0213277 A1; publ. July 31, 2014). Final Act.
3–25.
ANALYSIS
Claim 21 and its Dependent Claims
Appellant argues the Examiner errs in rejecting claim 21 under 35
U.S.C. § 103 for obviousness over Jokinen, Chen, and Jang. Appeal Br. 6–
11; Reply Br. 2–18. For the reasons stated below, Appellant’s arguments are
not persuasive.
An obviousness analysis involves two steps. “We first construe the
claim, a question of law, and second we compare the construed claim to the
prior art, a question of fact.” In re Hiok Nam Tay, 579 F. App’x 999, 1000
(Fed. Cir. 2014) (citing Key Pharm. v. Hercon Labs. Corp., 161 F.3d 709,
714 (Fed. Cir. 1998).3 “Claims in patent applications are given their
broadest reasonable construction in light of the claims themselves and the
specification as it would be interpreted by one of ordinary skill in the art.”
Hiok Nam Tay, 579 F. App’x at 1000 (citing Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005)).
Independent claim 21 recites a method for inter-RAT access selection,
the method including first and second alternative steps, the second

3 Hiok Nam Tay involves anticipation, but, as stated in Key Pharm., the same
two-step analysis applies to obviousness as well. Key Pharm., 161 F.3d at
714.
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alternative step including three alternative sub-steps. Appeal Br. 12 (Claims
App.). Claim 21 recites, in relevant part:
[c] acting for inter-RAT access selection according to any one
out of:
[1] one or more updated dedicated parameters, updated
based on changes to corresponding one or more
broadcast parameters; and
[2] any one out of [i] the one or more received dedicated
parameters, [ii] updated dedicated parameters, or
[iii] corresponding broadcasted parameters, based
on whether one or more conditions are fulfilled or
not.
Id. (emphasis added).
Claim 21 does not require “acting for inter-RAT access selection
according to” all the alternative steps and sub-steps recited above. Rather,
method claim 21 requires an inter-RAT access selection according to “any
one out of ” alternative steps [1] and [2]. And for alternative step [2],
“acting for inter-RAT access selection” is performed according to “any one
out of” alternative sub-steps [i], [ii], or [iii], “based on whether one or more
conditions are fulfilled or not.” Because the claim “lists alternative species
or elements that can be selected as part of the claimed invention,” we
consider claim 21 to be a “Markush” claim. See Ex parte Markush, 1925
Dec. Comm’r Pat. 126, 127 (1924); Abbott Labs. v. Baxter Pharm. Prods.,
Inc., 334 F.3d 1274, 1280 (Fed. Cir. 2003). Although the format of claim 21
differs from that of a typical Markush grouping, which is often recited as an
element “selected from the group consisting of A, B, and C,” “[t]reatment of
claims reciting alternatives is not governed by the particular format used.”
MPEP § 2173.05(h)(I). “It is generally understood that . . . the members of
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the Markush group . . . are alternatively usable for the purposes of the
invention.” In re Driscoll, 562 F.2d 1245, 1249 (CCPA 1977).
Accordingly, we interpret claim 21 as requiring only one of
alternative steps [1] and [2] to practice the claimed invention. Likewise, if
alternative step [2] were selected, only one of alternative sub-steps [i], [ii],
or [iii] would be required. Thus, in accordance with our precedent, the
broadest reasonable construction of claim 21 encompasses a method in
which only steps [a], [b], and one of steps [c][1], [c][2][i], [c][2][ii], and
[c][2][iii] are performed. See, e.g., Ecolochem, Inc. v. S. California Edison
Co., 91 F.3d 169 (Fed. Cir. 1996) (“[I]f either alternative in the Markush
group of step three, i.e., employing a cation resin or a mixed bed resin, is
anticipated, the entire claim is anticipated.”). Here, we decline to adopt
Appellant’s proposed construction of 21[c][2] requiring “that ‘one or more
conditions’ dictate which of three sets of parameters are used by the mobile
terminal.” Reply Br. 3. Rather, under the broadest reasonable
interpretation, we interpret the phrase “based on whether one or more
conditions are fulfilled or not” of 21[c][2] as modifying whichever
alternative is selected: [c][2][i], [c][2][ii], or [c][2][iii]. This is consistent
with a plain reading of the claim language in view of Appellant’s
Specification, which describes—for each parameter alternative—“acting for
inter RAT access selection” “when one or more conditions are fulfilled,”
“not fulfilled,” or “no longer fulfilled.” Spec. 11:9–22.
Having construed the claim, we now compare it to the cited prior art
in view of Appellant’s arguments. Appellant contends, among other things,
that the Examiner’s rejection should be reversed because “the combination
of Jokinen, Chen and Jang does not disclose or suggest acting according to
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any one out of the three categories of parameters based on whether one or
more conditions are fulfilled or not.” Appeal Br. 6, see also id. at 6–9;
Reply Br. 6–16. In support of this contention, Appellant asserts that Jokinen
describes receiving dedicated parameters, but discloses “no conditions upon
which this action is based.” Appeal Br. 7. And while acknowledging that
“Jang . . . describes a network entity that may broadcast a control function
that enables an idle wireless device to reselect the primary RAT” as well as
“a common probability threshold value that is broadcasted and is the same
for all wireless devices,” Appellant asserts that “Jang does not disclose or
suggest a wireless device that receives dedicated parameters comprising one
or more thresholds for inter-RAT access selection.” Id. at 9 (emphasis
omitted) (citing Jang ¶ 65).
Appellant’s arguments do not persuade us of error because Jokinen in
view of Jang suggests limitations 21[c][2][i] and 21[c][2][iii], and Jang
alone also suggests limitation 21[c][2][iii]. As cited by the Examiner,
Jokinen discloses an inter-RAT, priority based cell reselection procedure in
which a “priority assigner 150 may be configured to signal priorities
associated with each RAT to the mobile terminal 10 to enable the mobile
terminal 10 to make cell reselections based on the provided priorities
associated with each RAT.” Jokinen ¶ 29. According to Jokinen, “[t]he
priority assignment could include both broadcast priorities (i.e. priority
provided to all mobile stations by means of broadcast signaling) or dedicated
priorities (i.e. individual priorities provided to one or more mobile stations
by means of dedicated signaling).” Id. These disclosures at least suggest
that in Jokinen’s priority-based cell reselection algorithm, cell reselection is
performed across multiple RATs (“acting for inter-RAT selection”) based on
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dedicated or broadcast priorities (“according to . . . the one or more received
dedicated parameters [or] corresponding broadcasted parameters”) that have
been provided to one or more mobile stations (“based on whether one or
more conditions are fulfilled or not.”). Jokinen’s cell reselection procedure
is “based on whether one or more conditions are fulfilled or not” because it
depends on the mobile station(s) having been provided the dedicated or
broadcast priorities that impact which cell is reselected.
As the Examiner finds, Jokinen further discloses the concept of
defining or setting parameters associated with threshold values to enable
priority based cell reselection (Jokinen ¶ 30), but does not explicitly disclose
that its dedicated or broadcast priorities “compris[e] one or more
thresholds,” as recited by claim 21. Nevertheless, as cited by the Examiner,
Jang discloses a broadcast message that includes a common probability
threshold and a control function that enables an idle wireless device to
activate an inter-RAT load-balancing functionality for controlling the
device’s reselection of the primary RAT. See Final Act. 16–17 (citing Jang
¶ 65). Jang therefore teaches the known technique of applying a threshold to
a parameter for use in an inter-RAT cell reselection procedure.
We also agree with the Examiner’s stated rationale, as supported by
Jang, for combining the cited teachings of Jokinen and Jang to arrive at
limitation 21[c][2][i] or 21[c][2][iii], and find it constitutes articulated
reasoning with rational underpinning:
[I]t would have been obvious . . . to incorporate the wireless
device receiving the threshold value as taught by Jang, to
improve the modified mobile terminal performing cell
reselection of Jokinen-Chen for the motivation of devising a
new approach to inter-RAT load balancing and congestion
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control, and preventing idle or active UEs in the secondary
RAT from attempting to reselect or switch to the primary RAT.
Final Act. 6 (citing Jang ¶ 22) (emphasis omitted).
Appellant argues that “[i]t would not have been obvious to modify
Jokinen to incorporate Jang’s common probability threshold, because Jang’s
probability threshold serves no purpose with respect to Jokinen’s priority
assignment.” Appeal Br. 10. But this argument casts the obviousness
analysis too narrowly as requiring the bodily incorporation or physical
combination of the cited embodiments of Jokinen and Jang, while ignoring
the knowledge of one of ordinary skill in the art, as well as the inferences
and creative steps he or she would employ. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418, 421 (2007).
Likewise, we are not persuaded by Appellant’s unsupported assertion
that “incorporating Jang’s randomly triggered reselection process into
Jokinen’s system would create a conflict with Jokinen’s priority-based
reselection process.” Appeal Br. 10. Lawyer’s arguments that amount to
mere conjecture or speculation unsupported by factual evidence are entitled
to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997).4
Moreover, Appellant does not present any persuasive evidence that
combining the cited teachings of Jokinen and Jang would have been
“uniquely challenging or difficult” to a person of ordinary skill, whom is “a

4 Arguments of counsel cannot take the place of factually supported
objective evidence. In re Huang, 100 F.3d 135, 139−40 (Fed. Cir. 1996).
Attorney argument is not evidence, In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974), nor can it take the place of evidence lacking in the record.
Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); see also In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
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person of ordinary creativity, not an automaton.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007); KSR, 550 U.S. at
421. Nor does Appellant show that the proposed combination would require
anything more than “the mere application of a known technique to a piece of
prior art ready for the improvement.” KSR, 550 U.S. at 416–17.
In addition, we note that the cited disclosures of Jang alone also
suggest limitation 21[c][2][iii]. In particular, Jang discloses a broadcast
message that includes a common probability threshold and a control function
(“corresponding broadcasted parameters” “comprising one or more
thresholds”) that enables an idle wireless device to activate an inter-RAT
load-balancing functionality for controlling the device’s reselection of the
primary RAT (“acting for inter-RAT selection according to”). Jang ¶ 65.
Jang furthers discloses that “[t]he network entity may allow only those idle
wireless devices to reselect the primary RAT that pass a probability test” by
“generat[ing] an individual device-specific random value that is equal to or
greater than the common probability threshold value.” Id. Therefore, Jang’s
inter-RAT selection procedure is based on whether the broadcast message’s
threshold is met or exceeded (“based on whether one or more conditions are
fulfilled or not”). Jang’s broadcast messages also “at least partly
correspond” to Jokinen’s dedicated priorities because, for example, they
both relate to and impact inter-RAT access selection. This is consistent with
the Specification, which describes both “one or more dedicated parameters
relating to inter RAT access selection” and “one or more broadcasted
parameters relating to inter RAT access selection.” Spec. 5:34–6:1.
Because the Examiner has shown that Jokinen and Jang suggest the
disputed claim language, we need not address whether Chen does as well,
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nor any arguments Appellant advances for other alternative steps or sub-
steps. That we rely on fewer than all of the references the Examiner applied
does not, in and of itself, change the thrust of the Examiner’s rejection. See,
e.g., In re Bush, 296 F.2d 491, 495–96 (CCPA 1961); In re Boyer, 363 F.2d
455, 458 n.2 (CCPA 1966). In view of the foregoing, Appellant’s remaining
arguments for claim 21, including those asserting deficiencies in the Chen
reference (see, e.g., Appeal Br. 8–10; Reply Br. 7, 11–14, 16, 17) as part of
the proposed combination, are not persuasive of Examiner error.
Accordingly, we sustain the Examiner’s § 103 rejection of
independent claim 21. We likewise sustain the § 103 rejection of dependent
claims 22–30, for which Appellant offers no substantive separate arguments.
Independent Claim 31 and its Dependent Claims
Independent claim 31 recites a terminal for inter-RAT access selection
including a processor circuit configured to perform steps commensurate with
those recited in independent claim 21. Appeal Br. 15 (Claims App.). Claim
31 recites, in relevant part:
[b] a processing circuit configured to:
. . .
[3] act for inter-RAT access selection according to any
one out of:
[i] one or more updated dedicated parameters,
updated based on changes to corresponding
one or more broadcast parameters; and
[ii] any one out of [A] the one or more received
dedicated parameters, [B] updated dedicated
parameters, or [C] corresponding
broadcasted parameters, based on whether
one or more conditions are fulfilled or not.
Id..
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Here, unlike method claim 21, which is written in a manner that does
not require all of the steps to be performed, we interpret claim 31’s processor
“configured to” as meaning a processor “programmed to” or “designed to”
perform each of its recited alternative functions should any particular
alternative be selected. See, e.g., Nevro Corp. v. Bos. Sci. Corp., 955 F.3d
35, 42 (Fed. Cir. 2020) (construing “configured to” to mean “programmed
to”); Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349
(Fed. Cir. 2012) (interchangeably using the terms “configured to” and
“designed to”).5 Our construction of apparatus claim 31 differs from that of
method claim 21 because the recited structure (that is, processing circuit
configured to perform the recited functions should they be selected) is
present in the apparatus regardless of whether a particular alternative is
selected and that function is actually performed.
We acknowledge that, in at least one instance, the Federal Circuit has
treated an apparatus claim reciting a Markush group as “disclosed by the
prior art if one alternative in the Markush group is in the prior art.”
Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir.
2009). But that claim was directed to “a dialysate-delivery system . . .
comprising at least one unit selected from the group consisting of (i) a
dialysate-preparation unit, (ii) a dialysate-circulation unit, (iii) an

5 See also CLS Bank Int’l v. Alice Corp., 717 F.3d 1269, 1309 (Fed. Cir.
2013), aff’d, 573 U.S. 208 (2014) (“The computer is configured
(programmed) to perform the ‘receive,’ ‘electronically adjust,’ and
‘generate’ functions.”); Riverbed Tech., Inc. v. Silver Peak Sys., Inc., No.
C.A. 11-484-RGA, 2013 WL 3830416, at *2 (D. Del. July 23, 2013)
(construing “‘[c]onfigured’ . . . as ‘designed or programmed to perform a
function’”).

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ultrafiltrate-removal unit, and (iv) a dialysate-monitoring unit.” Id. at 1297.
From a plain reading of the claim language, it is clear that the claimed
system in Fresenius requires only one of the four recited units. By contrast,
as discussed above, each of the alternative steps recited in claim 31 is a
specifically-recited software functionality that a processing circuit must be
configured (designed or programmed) to perform.
We therefore interpret claim 31 as requiring, in order to practice the
claimed invention, that the “processing circuit [be] configured” to perform
all limitations of steps [a], [b][1], [b][2], and each of alternative steps
[b][3][i] and [b][3][ii] (including alternative sub-steps [A], [B], and [C]).
Having construed the claim, we now compare it to the cited prior art
in view of Appellant’s arguments. The Examiner rejects claim 31 under 35
U.S.C. § 103 for obviousness over the combination of Jokinen, Chen, and
Jang. Final Act 14–17. The Examiner finds, among other things, that Chen
teaches limitation [b][3][i] of claim 31, which recites “a processing circuit
configured to: . . . act for inter-RAT access selection according to . . . : one
or more updated dedicated parameters, updated based on changes to
corresponding one or more broadcast parameters.” Final Act. 15–16 (citing
Chen ¶¶ 41–45, 49, 50, 52, 53).
Chen relates generally to communications apparatuses and methods
for providing cells belonging to different RATs an autonomous fast return
(AFR) to a preferred RAT. Chen ¶ 8. Chen describes an inter-RAT
switching procedure that includes a plurality of phases. Id. ¶¶ 26–31.
During phases 1 and 2 of the procedure, a processor of a communications
apparatus may camp on and switch between first and second cells of first
and second RATs, respectively. Id. ¶¶ 26–27, 52–53, Figs. 2, 4. Here, the
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processor may also collect cell selection or reselection parameters of one or
more frequencies of the first RAT in an AFR list that may include the
frequencies’ radio frequency carrier numbers, cell selection or reselection
parameters, and the source cells of the parameters. Id. ¶¶ 26, 28, 46, Fig. 3.
In phase 3, the processor may connect with a peer communications
apparatus via the second cell. Chen ¶ 29. The processor may also obtain
cell selection or reselection parameters of one or more frequencies of the
first RAT from dedicated messages (with measurement information)
received from the second cell and collect the parameters in the AFR list. Id.
In addition, the processor may measure one or more frequencies of the first
RAT according to the content in the AFR list when the connection exists.
Id. ¶ 30. As cited by the Examiner, the measurement procedure or collecting
of cell selection or reselection parameters in the AFR list may be performed
based on criteria including the following:
Criterion 2: The processor 130 may refer to a bit or a flag which
is broadcasted or dedicatedly transmitted to the
communications apparatus 100 by the network. For example,
the corresponding procedure may be executed when the
network indicates a permission in the system information
message or a dedicated message (e.g.,
RRCConnectionReconfiguration or RRC CONNECTION
RELEASE).
. . . Criterion 3: The processor 130 may check if the PLMN of
the first RAT is in a white list or a black list. The lists may be
either updated by the processor 130 according to historical
information or configured by the user, the manufacturer, or the
network operator. For example, the procedure may be executed
if the PLMN is in the white list, and the procedure may not be
executed if the PLMN is in the black list.
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. . . .
. . . Criterion 5: The processor 130 may check a measurement
configuration set by the network.
Id. ¶¶ 42–43, 45.
Chen also describes that when the number of entries in the AFR list
exceeds a predetermined threshold, the processor may prioritize the
frequencies in the AFR list according to the source cell, such that
frequencies received from a current or most recent cell may be assigned a
higher priority than frequencies received from a previous serving cell. Id.
¶ 49. In addition, the processor may prioritize frequencies in the AFR list
with cell selection or reselection parameters received from the network. Id.
¶ 50.
In the Answer, the Examiner explains that
[t]he communication apparatus receives the broadcasted cell
selection/reselection parameter, where the processor of the
communication apparatus checks if the RAT is in a white list or
black list from the received parameter, and then performs the
act of switching to second RAT. The white list or black list are
parameters that are broadcasted, and are parameters dedicated
to be used for determining the switching of the RAT (i.e.
inter-RAT access selection). The white list or black list is
measured for changes, and is updated to prioritize the
frequencies used in the AFR list when the threshold is exceeded
(i.e. “changes to corresponding broadcast parameter” . . .).
Ans. 8–9.
Appellant contends that the Examiner’s findings and explanation for
limitation [b][3][i] of claim 31 are defective. Reply Br. 13–14.6 In

6 Because we find this contention persuasive, we do not discuss all issues
raised by Appellant. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423
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particular, Appellant asserts that “there is no significant connection between
that threshold and Chen’s white list or black list at all,” and the Examiner’s
Answer’s “attempt to connect Chen’s threshold to Chen’s white or black list
is not supported by anything actually taught by Chen.” Reply Br. 13.
Appellant explains that “[t]hese lists are mentioned only in Chen’s
paragraph 0043, which says that these are consulted by the mobile terminal
to determine whether to perform a re-select procedure at all,” and “[i]t is
simply false that Chen teaches that these lists are ‘measured for changes’ or
‘updated to prioritize the frequencies used in the AFR list when the
threshold is exceeded.’” Id. (citing Chen ¶ 43).
We agree with Appellant. Although Chen teaches the use of an
updated white or black list for inter-RAT access selection, as well as
prioritizing frequencies in an AFR list based on exceeding a threshold, we
find no nexus between these teachings that would satisfy the disputed
limitation as recited. Nor do we find any evidence that the black or white
list parameters (or any other parameters in Chen) are dedicated parameters
that are updated “based on changes to one or more corresponding broadcast
parameters.” For example, while Chen further teaches a bit or flag that is
broadcasted or dedicatedly transmitted, we find no evidence of inter-RAT
selection according to bits or flags that have been updated “based on”
changes to any corresponding broadcast parameters.
Thus, the Examiner therefore does not show that Chen teaches or
suggests “a processing circuit configured to: . . . act for inter-RAT access

(Fed. Cir. 1984) (finding an administrative agency is at liberty to reach a
decision based on “a single dispositive issue”).

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selection according to . . . : one or more updated dedicated parameters,
updated based on changes to corresponding one or more broadcast
parameters” as recited in claim 31. Nor has the Examiner presented another
finding or an obviousness rationale that cures the deficiency discussed
above. Although the Examiner also cites paragraph 30 of Jokinen for
showing that “the mobile terminal performs the act for the inter-RAT access
selection based on condition of the priorities provided by the received
dedicated signaling” (see, e.g., Final Act. 18 (emphasis omitted)), we are not
convinced that this teaches or suggests updating the priorities “based on
changes to corresponding one or more broadcast parameters.”
Accordingly, we decline to sustain the § 103 rejection of claim 31.
We likewise decline to sustain the § 103 rejection of its dependent claims
32–40, because the Examiner makes no findings for these claims that cures
the deficiency discussed for the rejection of claim 31. See Final Act. 17–24.
CONCLUSION
We affirm the Examiner’s 35 U.S.C. § 103 rejection of claims 21–30.
We reverse the Examiner’s 35 U.S.C. § 103 rejection of claims 31–40.
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).

Appeal 2019-003032
Application 14/910,891

18
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–40 103 Jokinen, Chen,
Jang
21–30 31–40

AFFIRMED IN PART