Thomson Licensing

Patent Trials and Appeals Board

Sep 13, 2021

2020004390 (P.T.A.B. Sep. 13, 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.
15/975,239 05/09/2018 Takahito Yoshizawa PF090057 CONT 6853
12905 7590 09/13/2021
Jack Schwartz & Associates, PLLC
6165 Jericho Turnpike
Commack, NY 11725
EXAMINER
MASTRODONATO, MARGARET G
ART UNIT PAPER NUMBER
2641
NOTIFICATION DATE DELIVERY MODE
09/13/2021 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):
jack@jschwartzesq.com
pat.verlangieri@technicolor.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKAHITO YOSHIZAWA
Appeal 2020-004390
Application 15/975,239
Technology Center 2600
Before TERRY J. OWENS, MAHSHID D. SAADAT, and
BRIAN D. RANGE, Administrative Patent Judges.

RANGE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claim 7. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER2

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as INTERDIGITAL CE PATENT
HOLDINGS. Appeal Br. 3.
2 In this Decision, we refer to the Final Office Action dated July 11, 2019
(“Final Act.”), the Appeal Brief filed January 13, 2020 (“Appeal Br.”), and
the Examiner’s Answer dated February 12, 2020 (“Ans.”).
Appeal 2020-004390
Application 15/975,239
2
Appellant describes the invention as relating to femtocells and a
method in a femtocell for managing user equipment. Spec. 1:4–5. A
femtocell is a cellular base station with functionality similar to that of a
macrocell, but with a lower cell range. Id. at 1:21–24. The invention relates
to a system where user equipment (for example, a cellular device) acts as a
control device in a home network when the broadband connection is
disabled. Id. at 2:12–15. Claim 7 is the only independent claim on appeal,
and we reproduce it below while emphasizing language key to this appeal:
7. A method at a femtocell device comprising a first
interface for communicating to a cellular radio network and a second
interface for communicating to a broadband network, at least one
cellular device being connected to said femtocell device at said first
interface, said method comprising, when communication at said
femtocell device to said broadband network becomes inactive,
maintaining said connection with said at least one cellular
device, and
on reception of a mobile network call setup from said
cellular device, rejecting said call setup, redirecting the call to a
macrocell, notifying said cellular device of a reason for redirecting
the call and to reselect the macrocell,
wherein when communication at said femtocell device to said
broadband network is inactive, and if no cellular device is connected
to said femtocell device, deactivating said second interface.

Appeal Br. 11 (Claims App.) (emphasis added).

REJECTION AND REFERENCES
On appeal, the Examiner maintains the rejection of claim 7 under
35 U.S.C. § 103 as obvious over Bao et al., US 2009/0061873 A1, Mar. 5,
Appeal 2020-004390
Application 15/975,239
3
2009 (“Bao”) in view of Vakil et al., US 2010/0056184 A1, Mar. 4, 2010
(“Vakil”) and Vachhani, US 2010/0172288 A1, July 8, 2010.
OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
To resolve the issues before us on appeal, we focus on the Examiner’s
findings and determinations that relate to the error Appellant identifies. In
particular, the Examiner finds that Bao teaches “on reception of a mobile
network call setup from said cellular device, rejecting said call setup and
redirecting the call to a macrocell.” Final Act. 6 (citing Bao ¶ 56). In the
Answer, the Examiner finds that Bao “discloses a mobile device connecting
to the femtocell to transmit a call termination request, and the femtocell
rejecting/denying the attempt if resources are unavailable.” Ans. 4 (citing
Bao ¶¶ 51, 56).
Appellant argues that Bao only teaches femtocells redirecting calls to
the macro network after the femtocell “enables completion of call set up.”
Appeal Br. 7. Appellant’s argument persuades us that the Examiner has not
adequately explained how the cited art teaches or suggests claim 7’s
Appeal 2020-004390
Application 15/975,239
4
recitation “on reception of a mobile network call setup from said cellular
device, rejecting said call setup, redirecting the call to a macrocell.” Appeal
Br. 11 (Claims App.).
The Examiner relies only on Bao as teaching this recitation. Final Act.
6; Ans. 4. Bao, however, teaches that the femtocell provides set up prior to
transferring to the macro network. For example, Bao explains that a call
session is established before handoff as follows:
The method involves initiating establishment the requested call
session for the mobile station through the private femto cell, despite a
determination that the mobile station is not associated with the private
femto cell, i.e. is not designated to receive service through the private
femto cell. However, upon successful establishment of the requested
call session for the non-associated mobile station through the private
femto cell, the mobile station is automatically directed to initiate a
handoff of the call session from the private femto cell to a base station
of the macro wireless communication network, which effectively
forces the call session out of private femto cell coverage into macro
network coverage.
Bao ¶ 10; see also id. ¶¶ 11 (“[T]he [femto cell’s] switch will allow set-up of
a call session for a non-associated mobile station . . . but it will then . . .
initiate a handoff.”), 43 (“The exemplary solution . . . involves allowing
initial call set-up through the private femto IP-BTS and a subsequent hard
handoff of the call to a base station 15 of the [] macro network 13.”).
The portion of Bao cited by the Examiner teaches that the Bao system
will sometimes deny a call. Bao ¶ 51, 56. This denial, however, occurs “[i]f
no RF resources are available.” Id. ¶ 51. The Examiner does not explain
how, in the situation where no RF resources is available, Bao teaches that its
system nonetheless teaches directing the call to a macrocell. As such, the
Examiner has not adequately explained how Bao teaches a situation that
performs both of the steps of claim 7 now at issue: (1) call setup is rejected
Appeal 2020-004390
Application 15/975,239
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and (2) the call is redirected to a macrocell.
For the above reasons, we do not sustain the Examiner’s rejection.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7 103 Bao, Vakil, Vachhani 7

REVERSED