Yang, Tao

Patent Trials and Appeals Board

Jun 30, 2020

12866978 - (D) (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.
12/866,978 08/10/2010 Tao Yang LUTZ 201162US01 6325
48116 7590 06/30/2020
FAY SHARPE/NOKIA
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
EXAMINER
RANDHAWA, MANDISH K
ART UNIT PAPER NUMBER
2477
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):
Nokia.IPR@nokia.com
docketing@faysharpe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TAO YANG
____________________

Appeal 2019-002428
Application 12/866,978
Technology Center 2400
____________________

Before JOHN A. JEFFREY, ERIC S. FRAHM, and SCOTT E. BAIN,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1 and 3–16. Claim 2 has been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as Alcatel Lucent (Appeal Br. 1).
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INVENTION
Appellant’s invention “relates to the field of telecommunications, and
more particularly to inter radio access technology (inter-RAT) handover[s]
based on IP [Internet protocol] Packet forwarding in 3G LTE [Long Term
Evolution]” (Spec. 1:2–4). Inter-RAT handovers are required when user
equipment (e.g., a cellular phone) moves from one system to another (e.g.,
systems such as LTE, legacy 3G or Universal Mobile Telecommunications
Systems (UMTS) Terrestrial Radio Access Network (UTRAN)). LTE is an
IP only system, while UMTS supports “old voice” core network and data
core network. Claims 1 and 16 are illustrative of the invention and are
reproduced below, with emphases added to disputed portions of the claims.
1. A method for enabling inter-radio access technology
handover in a communication system comprising a first
network utilizing equipment of a first radio access technology
and a second network utilizing equipment of a second radio
access technology, when a user equipment moves from the first
network into the second network and a handover is to be made,
said method comprising:
processing, in the first radio access technology
equipment comprising a radio network controller (RNC) or an
evolved Node B (eNodeB) of the first network, protocol data
units (PDUs) in non-IP packet format and buffered in the RNC
or eNodeB of the first network into IP packets in response to a
handover confirmation (HOcfm) sent by the second network;
and
forwarding the processed IP packets from the first radio
access technology equipment of the first network to the second
radio access technology equipment of the second network if the
PDUs are buffered in the first network.

Appeal Br. 33, Claims Appendix.
16. A method for enabling inter-radio access technology
handover in a communication system comprising a first
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network utilizing equipment of a first radio access technology
and a second network utilizing equipment of a second radio
access technology, when a user equipment moves from the first
network into the second network and a handover is to be made,
said method comprising:
forwarding internet protocol (IP) packets from the first
radio access technology equipment of the first network to the
second radio access technology equipment of the second
network if the IP packets are buffered in the equipment of the
first radio access technology of the first network; and
retransmitting the IP packets after the user equipment is
switched to the second network.

Appeal Br. 37, Claims Appendix.

EXAMINER’S REJECTIONS2
(1) The Examiner rejected claim 16 under 35 U.S.C. § 102(e) as being
anticipated by Vesterinen et al. (US 2008/0188223 A1; published Aug. 7,
2008) (hereinafter, “Vesterinen”). Final Act. 2–3.
(2) The Examiner rejected claims 1, 5, 10, 11, and 13–15 under
35 U.S.C. § 103 as being unpatentable over Vesterinen, Blom et al. US
2008/0095362 A1; published April 24, 2008) (hereinafter, “Blom”), and
3GPP TS 36.300, Version 8.2.0 Release 8 (2007–09) (hereinafter, “3GPP”).
Final Act. 4–10.
(3) The Examiner rejected claims 3, 6, 7, and 9 under 35 U.S.C. § 103
as being unpatentable over Vesterinen and 3GPP. Final Act. 10–14.

2 Throughout this Decision we refer to the Appeal Brief filed June 5, 2018
(“Appeal Br.”); Reply Brief filed January 28, 2019 (Reply Br.); Final Office
Action mailed April 5, 2018 (“Final Act.”); and the Examiner’s Answer
mailed November 29, 2018 (“Ans.”).
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(4) The Examiner rejected claims 4 and 12 under 35 U.S.C. § 103 as
being unpatentable over Vesterinen, Blom, 3GPP, and Appellant’s Admitted
Prior Art (see Spec. 2:27–3:5) (hereinafter, “AAPA”). Final Act. 14–15.
(5) The Examiner rejected claim 8 under 35 U.S.C. § 103 as being
unpatentable over Vesterinen, 3GPP, and AAPA. Final Act. 15–16.
Appellant’s Contentions
(1) Appellant contends that the Examiner erred in rejecting claim 16
under 35 U.S.C. § 102(e) over Vesterinen because, inter alia, Vesterinen
fails to disclose radio access equipment of another technology as recited in
claim 16 (see Appeal Br. 16–17; Reply Br. 3). More specifically, Appellant
contends Vesterinen’s mobility management entity/user plane entity
(MME/UPE) is not radio access equipment (see Appeal Br. 16; Reply Br. 3),
such as a radio network controller (RNC), an evolved node B (eNodeB) (see
Appeal Br. 10, 11).
(2) Appellant also contends that the Examiner erred in rejecting
claims 1 and 3–15 under 35 U.S.C. § 103 over the various applied
combinations relying on Vesterinen as a base reference fail to disclose
processing protocol data units (PDUs) in non-IP packet format in radio
access technology equipment (claim 1, 10) or user equipment (claims 3, 6)
as claimed.
Issues on Appeal
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 10–
32) and the Reply Br. (Reply Br. 3–13), the following principal issues are
presented on appeal:
(1) Has Appellant shown the Examiner erred in rejecting claim 16 as
being anticipated by Vesterinen, because Vesterinen fails to disclose
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forwarding IP packets from network utilizing equipment of a first radio
access technology to another radio access technology, as recited in
independent claim 16?
(2) Did the Examiner err in rejecting claims 1 and 3–15 as being
obvious over various applied combinations of references, all based on
Vesterinen, because paragraphs 3–7 of Vesterinen fail to teach or suggest
processing protocol data units (PDUs) in non-IP packet format, as recited in
each of independent claims 1, 3, 6, and 10?

ANALYSIS
Issue (1): Anticipation Rejection of Claim 16 Over Vesterinen
We have reviewed the Examiner’s rejection (Final Act. 2–3) in light
of Appellant’s arguments in the Appeal Brief (Appeal Br. 13–17) and the
Reply Brief (Reply Br. 3) that the Examiner has erred, and the Examiner’s
response to Appellants’ arguments in the Appeal Brief found at pages 2–5 of
the Answer. We disagree with Appellant’s arguments and conclusions.
With respect to representative independent claim 16, we adopt as our own
(1) the findings and reasons set forth by the Examiner in the Answer (Ans.
2–3), and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief (Ans. 2–5). We concur
with the findings and conclusion as to anticipation reached by the Examiner,
and we provide the following for emphasis.
Appellant’s arguments (see Appeal Br. 16) that sub-paragraph 8 of
paragraph 91 of Vesterinen impliedly means that packets are buffered in the
user equipment and not in radio access equipment of another technology as
recited in claim 16, are not persuasive inasmuch as the Examiner does not
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rely on sub-paragraph 8, but instead relies on sub-paragraphs 3, 5, 10, and 11
(see Final Act. 3; Ans. 5).
Appellant also contends that “cited sub-paragraph 5 [found in
paragraph 91 of Vesterinen] discusses the target UTRAN preparation to
receive buffered data from the MME/UPE (not from radio
access equipment) of the source network,” and “cited sub-paragraph 10
discusses the eNB of Vesterinen sending a command to the MME/UPE of
Vesterinen, telling that separate and different device to forward data
buffered in the MME/UPE to the target UTRAN” (Appeal Br. 16)
(emphases omitted). As a result, Appellant contends that “[t]his does not
disclose or suggest and may even teach away from the eNB forwarding
buffered data to the UTRAN” (Appeal Br. 16) (emphasis omitted).
However, we agree with the Examiner (see Ans. 4) that claim 16 does
not require that the “first network utilizing equipment of a first radio access
technology” (claim 16) be any particular equipment (e.g., RNC, node B,
eNode B, access gateway, user equipment, MME, UPE). In claim
construction, “the name of the game is the claim.” In re Hiniker Co., 150
F.3d 1362, 1369 (Fed. Cir. 1998) (quoting Giles Sutherland Rich, Extent of
Protection and Interpretation of Claims -- American Perspectives, 21 Int'l
Rev. Indus. Prop. & Copyright L. 497, 499 (1990)).
In addition, and as a result, we agree with the Examiner that the “first
network utilizing equipment of a first radio access technology” recited in
claim 16 encompasses the MME/UPE disclosed by Vesterinen (see
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Vesterinen Fig. 3; ¶ 91). Under the broadest reasonable interpretation,3 the
recited “equipment” can be any device used to communicate with radio
access technology of a first type and forward IP packets to the second radio
access technology equipment. We also note Appellant has not cited to a
definition of “equipment” in the Specification that would preclude the
Examiner’s broader reading.4 In any event, Vesterinen discloses a mobility
management entity/user plane entity that operates in the manner required by
claim 16. The arguments presented by Appellant (Appeal Br. 17–25; Reply
Br. 3) based on paragraph 91 of Vesterinen do not suffice to rebut the
Examiner’s detailed factual findings based on numerous other portions of
Vesterinen which more positively disclose the subject matter set forth in
claim 16.
Finally, we note that buffering the IP packets “in the equipment of the
first radio access technology of the first network” is a conditional limitation,
and as such, the recited condition need not be satisfied to meet the claim.
See Ex Parte Schulhauser, 2016 WL 6277792 (PTAB Apr. 28, 2016)

3 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
4 Any special meaning assigned to a term “must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention.” Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) (“A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.”) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1316, (Fed. Cir.
2005)).
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(precedential) citing Appier a Corp. v. Illumina, Inc., 375 F. App’x 12, 21
(Fed. Cir. 2010) (unpublished) (affirming a district court’s interpretation of a
method claim as including a step that need not be practiced if the condition
for practicing the step is not met); Cyber settle, Inc. v. Nat’l Arbitration
Forum, Inc., 243 F. App’x 603, 607 (Fed. Cir. 2007) (unpublished) (“It is of
course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be
performed.”).
In view of the foregoing, Appellant has not shown the Examiner’s
anticipation rejection to be in error, and we sustain the rejection of
independent claim 16 as being anticipated by Vesterinen.

Issue (2): Obviousness Rejections Based Upon Vesterinen
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s rejection of all of the remaining disputed claims under 35 U.S.C.
§ 103.
Appellant presents several arguments asserting the Examiner’s
rejection of independent claims 1, 3, 6, and 10 based upon Vesterinen is in
error (see Appeal Br. 10–13, 17–28; Reply Br. 3–11). The dispositive issue
presented by these arguments is did the Examiner err in finding paragraphs
3–7 of Vesterinen, and thus the combinations of references teaches or
suggests processing protocol data units (PDUs) in non-IP packet format, as
recited in each of independent claims 1, 3, 6, and 10.
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The Examiner, in rejecting independent claims 1, 3, 6, and 10, finds
that Vesterinen teaches protocol data units (PDUs) in non-IP packet format
in paragraphs 4 and 6 (Final Act. 4). The Examiner further finds that
paragraphs 4 and 6 describe compressed and ciphered packets that meet the
disputed limitation (see Final Act. 4; Ans. 6–9).
Although paragraph 4 of Vesterinen describes that “[t]he UPE
performs user plane ciphering (or encryption) and IP (internet protocol)
header compression functions for user downlink data” (Vesterinen ¶ 4), and
paragraph 6 of Vesterinen describes “user data are ciphered and possibly
also header compressed over a S1-u interface (user plane interface between
an eNB and an aGW (access gateway) (MME/UPE)” (Vesterinen ¶ 6),
Vesterinen is silent as to processing protocol data units (PDUs) in non-IP
packet format as required by each of the claims 1, 3, 6, and 10. Specifically,
performing IP header compression functions as described by Vesterinen
neither teaches nor suggests processing PDUs in non-IP format as claimed.
Compression of an IP header is different than compression of the IP data in
the body of a packet.
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of independent claims 1, 3, 6, and 9. Although we concur with the
Examiner’s finding that Vesterinen’s paragraphs 6 and 7 teach or suggest
buffering data in an RNC or eNode B (claims 1, 10) or user equipment
(claims 3, 6) (see Final Act. 6–7; Ans. 7), we do not find Vesterinen teaches
or suggests processing PDUs in non-IP format as recited in claims 1, 3, 6,
and 10.
In addition, though Blom may suggest transferring functionality from
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a user plane entity to an eNB (see Blom ¶ 3), there is no teaching or
suggestion in either Vesterinen or Blom to transfer the specific function
recited in claims 1 and 10 of processing PDUs in non-IP packet format and
buffering them into IP packets in response to a handover confirmation sent
by another network. As a result, Appellant’s contentions that the Examiner ,
in modifying Vesterinen with Blom, has (i) made a conclusory assertion
regarding design choice as a motivation for making the suggested
combination (see Appeal Br. 19–20, 24); and (ii) used impermissible
hindsight to make the necessary changes in Vesterinen’s handover method
(see Appeal Br. 20, 24); are persuasive.
Accordingly, we do not sustain the Examiner’s rejection of
independent clams 1, 3, 6, and 10 or dependent claims 4, 5, 7–9, and 11–15
based upon Vesterinen in combination with the various other prior art
references.

CONCLUSIONS
(1) Appellant has not adequately shown the Examiner erred in
rejecting claim 16 as being anticipated under 35 U.S.C. § 102(e) by
Vesterinen.
(2) The Examiner erred in rejecting claims 1 and 3–15 as being
unpatentable under 35 U.S.C. § 103 over Vesterinen in view of the other
applied prior art references.
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Therefore, we affirm the Examiner anticipation rejection of claim 16,
and we reverse the Examiner’s obviousness rejections of claims 1 and 3–15
under 35 U.S.C. § 103.

Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
16 102(e) Vesterinen 16
1, 5, 10, 11,
13–15
103 Vesterinen, Blom,
3GPP
1, 5, 10,
11, 13–15
3, 6, 7, 9 103 Vesterinen, 3GPP 3, 6, 7, 9
4, 12 103 Vesterinen, Blom,
3GPP, AAPA
4, 12
8 103 Vesterinen, 3GPP,
AAPA
8
Overall
Outcome
16 1, 3–15

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED IN PART