Ex Parte 6151332 et al

Board of Patent Appeals and Interferences

Jun 29, 2011

90008990 (B.P.A.I. Jun. 29, 2011)

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.
90/008,990 04/15/2008 6151332 TAN-2-1400.01.RX 4743
24374 7590 06/29/2011
VOLPE AND KOENIG, P.C.
DEPT. ICC
UNITED PLAZA
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103
EXAMINER
LAROSE, COLIN M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/29/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Tantivy Communications, Inc.1,
Appellant and Patent Owner
____________

Appeal 2011-001274
Reexamination Control No. 90/008,990
Patent US 6,151,3322
Technology Center 3900
____________

Before JAMESON LEE, KARL D. EASTHOM, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge

DECISION ON APPEAL
Tantivy Communications, Inc. appeals under 35 U.S.C. §§ 134(b) and
306 from a final rejection of 5, 6, 9, 10, and 13-40. We have jurisdiction
under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.

1 Tantivy Communications, Inc. is the Patent Owner and the real party in
interest (Br. 4).
2 Issued November 21, 2000 to Thomas E. Gorsuch and Carlo Amalfitano
Appeal 2011-001274
Reexamination Control Nos. 90/008,990
United States Patent 6,151,332

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STATEMENT OF THE CASE3
This proceeding arose from a request for ex parte reexamination filed
on behalf of Patent Owner on January 15, 20084 of United States Patent
6,151,332 (the '332 Patent) issued to Thomas E. Gorsuch and Carlo
Amalfitano on November 21, 2000, based on U.S. Patent Application
08/992,759 filed December 17, 1997. The application for the '332 Patent
was asserted to rely on the benefits of provisional applications 60/050,277
and 60/050,338, both filed June 20, 1997. The '332 Patent was previously
involved in litigation, where those actions have since been dismissed (Br.
46).

CLAIMED INVENTION
Patentee’s invention relates to providing high speed data and voice
service over standard wireless connections via integration of ISDN protocols
and existing cellular signaling (Col. 2, ll. 14-18). A logical connection is
established using a higher layer protocol, and the network layer logical
connection is made through a wireless channel which provides a physical

3 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed June 10, 2010), and the Examiner’s Answer (“Ans.,” mailed August 2,
2010).
4 The filing date of the original Request for Reexamination was vacated in
the Decision mailed March 17, 2008, and a Replacement Request for
Reexamination was filed April 15, 2008, where the latter date is deemed to
be the filing date of the Request for Reexamination.
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layer connection between the portable computer node, whereby in response
to relatively low utilization of the wireless channel, the physical layer
channel is released while maintaining the appearance of a network layer
connection to the higher level protocols (Col. 2, ll. 19-30).
Claim 5, which we deem to be representative, reads as follows:
5. For use with a digital communication network having
a first digital communication path for coupling data
communication signals with a first wireless transceiver at a
first site, said first wireless transceiver being operative to
conduct wireless communications with a second wireless
transceiver at a second site, a method of controlling wireless
communication bandwidth comprising the steps of:
(a) in response to establishment of a communication
session between said first and second sites, controlling said
first wireless transceiver to appear to said first digital
communication path as though the bandwidth is continuously
available during said communication session for wireless
communications between said first and second transceivers,
irrespective of a need to transport data communication signals
between said first and second sites; and
(b) in the absence of said need to transport data
communication signals between said first and second sites,
making said bandwidth available for wireless communication
by another wireless transceiver of said digital communication
network.

PRIOR ART REJECTIONS
The prior art references relied upon by the Examiner in rejecting the
claims are:
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United States Patent 6,151,332

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Quick 5,673,259 Sep. 30, 1997
Chan 5,790,551 Aug. 4, 1998
Gardner 6,023,474 Feb. 8, 2000

Telecommunications Industry Assoc., Mobile Station-Base Station
Compatibility Standard for Dual-Mode Wideband Spread Spectrum Cellular
System TIA/EIA/IS-95-A657 (May 1995) (“IS-95-A”).
Telecommunications Industry Assoc., Packet Data Service Option Standard
for Wideband Spread Spectrum Systems TIA/EIA/IS-657 (Jul. 1996) (“IS-
657”).

The Examiner rejected claims on the following bases:
claims 5, 6, 9, 10, 13, 17-22, and 25-30 under 35 U.S.C. § 103(a) as
unpatentable over IS-657 and IS-95-A (Ans. 4-16);
claims 14-16 and 33-38 under 35 U.S.C. § 103(a) as unpatentable over
IS-657, IS-95-A, and Chan (Ans. 17-19);
claims 23 and 31 under 35 U.S.C. § 103(a) as unpatentable over IS-
657, IS-95-A, and Quick (Ans. 19-20);
claims 24 and 32 under 35 U.S.C. § 103(a) as unpatentable over IS-
657, IS-95-A, and Gardner (Ans. 20-21);
claim 39 under 35 U.S.C. § 103(a) as unpatentable over IS-657, IS-
95-A, Chan, and Quick (Ans. 21); and
claim 40 under 35 U.S.C. § 103(a) as unpatentable over IS-657, IS-
95-A, Chan, and Gardner (Ans. 22).
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United States Patent 6,151,332

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ISSUES
We detail the arguments raised by Appellant and the responses of the
Examiner below, and do not repeat the respective positions of Appellant and
the Examiner here. We have considered in this decision only those
arguments that Appellant actually raised in the Briefs. Arguments which
Appellant could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
The issues arising from the respective positions of Appellant and the
Examiner, which we consider herein, are:
(i) Would it have been obvious to have combined the teachings
of IS-657 and IS-95-A to teach or suggest the subject matter
of independent claims 5 and 10?
(ii) Would it have been obvious to have combined the teachings
of IS-657, IS-95-A, and Chan to teach or suggest the subject
matter of independent claim 16?
(iii) Would it have been obvious to have combined the teachings
of IS-657, IS-95-A, and Quick to teach or suggest the subject
matter of claims 23 and 31?
(iv) Would it have been obvious to have combined the teachings
of IS-657, IS-95-A, and Gardner to teach or suggest the
subject matter of claims 24 and 32?

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FINDINGS OF FACT
1. The Specification of the '432 Patent details the provision of a high
speed data and voice service over standard wireless connections
via integration of ISDN protocols and existing cellular signaling.
A logical connection is established using a higher layer protocol,
and the network layer logical connection is made through a
wireless channel which provides a physical layer connection
between the portable computer node, whereby in response to
relatively low utilization of the wireless channel, the physical layer
channel is released while maintaining the appearance of a network
layer connection to the higher level protocols (Col. 2, ll. 14-30).
2. IS-657 discloses a standard which defines requirements for support
of packet data transmission capability on TIA/EIA/IS-95-A
wideband spread spectrum systems using traffic channels therein
(p. 1-1).
3. IS-657 details that a system implementing the standard allocates
bandwidth on an “as-needed” basis, based on the connection states
(p. 1-7). These states include a “Connected State” where the
packet data service option is connected and the mobile station can
transfer packet data, a “Dormant/Idle State” where the mobile
station is not a on traffic channel and cannot transfer packet data,
and a “Dormant/Traffic State” where communication occurs
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through the traffic channel but the packet data service option has
been disconnected (p. 1-8).
4. IS-657 details that transitions between states can include a release
of bandwidth, such as between the Connected State and the
Dormant/Idle State (Fig. 1.4.4.2-1; pp. 2-14 – 2-18).
5. IS-95-A discloses a compatibility standard for cellular mobile
telecommunications systems, having mobile stations and a base
station, where those stations assign and release traffic channels
using IS-95 signaling (p. 1, sections 6.6 and 7.7).
6. Chan is directed to the transmission of packetized data in a cellular
communication system using dynamic channel assignment using a
data control channel in addition to a data traffic channel (col. 1, ll.
56-60).
7. Quick is directed to a random access communications channel for
data services where a priority list for mobile stations is maintained
and may use a mobile subscriber’s priority level to determine
priority order (col. 23, ll. 36-48).
8. Gardner is directed to a broadband telecommunications system
interface which discloses that ISDN bearer channels and a
signaling channel can be combined at selected rates (col. 1, ll. 27-
41).

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PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).

ANALYSIS
(i) Obviousness over IS-657 and IS-95-A
Independent claims 5 and 10
Appellant argues that the combination of IS-657 and IS-95-A fails to
disclose that in the absence of the need to transport data communication
signals, bandwidth is made available to another wireless transceiver in the
network, as provided in independent claims 5 and10 (Br. 21). The Examiner
finds that IS-657 and IS-95-A renders obvious all of the elements of
independent claims 5 and 10 (Ans. 23-26). We agree with the Examiner.
The Examiner finds that IS-657 details that when the mobile station
moves from “Connected State” to “Dormant/Idle State,” a “release” occurs,
releasing the previously occupied bandwidth, and when the mobile station
goes idle, this is equivalent to the need to transport data communication
signals being absent (Ans. 24). We concur and find that the transition from
the “Connected State” to “Dormant/Idle State” in IS-657 involves a
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“release,” which would be a release of bandwidth (FF 4). We also concur
that an idle state in IS-657 would be a state where there would be no need to
transport data communication signals between the first and second sites.
The Examiner continues that upon release, “[i]ntuitively, such
bandwidth is then available for other system needs, such as by other mobile
stations or the like in need of bandwidth for data communications,” and
discusses the bandwidth allocation process disclosed in IS-657 (Ans. 24-25;
FF 3). Claims 5 and 10 do not specify that bandwidth not in use be allocated
to another transceiver, which makes sense, perhaps, because there might not
be another transceiver ready to make use thereof at the time it is no longer in
use. Instead, the claims make the bandwidth “available” when there is no
need to transmit signals. Thus, the claim requires that bandwidth be “freed
up,” but does not require reallocation of that bandwidth. While IS-657 does
not explicitly recite that the released bandwidth is to be used for the benefit
of other transceivers, the general processes of allocation in IS-657 imply that
it could be used by other transceivers, among other processes. (See FF 3).
As such, we fail to see how IS-657 and IS-95-A does not teach or suggest
the disputed limitation of claims 5 and 10. Thus, we do not find Appellant’s
argument to be compelling.
Dependent claims 6, 9, 13, 17-22, and 25-30
Appellant does not raise any separate arguments with respect to the
above-cited dependent claims. Thus, we find no error in their rejection.
(ii) Obviousness over IS-657, IS-95-A, and Chan
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Claims 14-16 and 33-38
Appellant argues that claim 16 is directed to procedures during a
communication session, but that Chan’s processes, relied upon by the
Examiner, occur during an access attempt (Br. 27). Appellant argues that
claim 16 recites, in part, that the “use of a data traffic channel and a control
channel associated with a packet data communication session” (id.). The
Examiner finds that every aspect of Chan’s system is “associated with” a
data packet session (Ans. 26). We agree with the Examiner.
Appellant’s argument would have us accept that Chan’s use of the
channels occurs only during access and not during the communication
session, but we agree with the Examiner that claim 16 only recites
“associated with.” Perhaps if claim 16, as well as claims 14 and 15, recited
other language, Appellant’s argument would have greater currency. As
claim 16 only requires that the channel be associated with the session, we do
not see how they could not be associated, given that they are used in the
proper functioning of the cellular communication system. Thus, we do not
find Appellant’s argument to be compelling.
(iii) Obviousness over IS-657, S-95-A, and Quick
Claims 23 and 31
Appellant argues that Quick is directed to providing access via a
Random Access Channel (RACH) and not during a “packet data
communication session,” as required by claims 23 and 31 (Br. 29-30).
Appellant argues that combining elements of a RACH procedure with the
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IS-657 and IS-95-A systems to generate procedures to be used during a
packet data communication session would not have been obvious (Br. 30).
The Examiner finds this argument to unpersuasive since neither claim 23 nor
31 recites “any limitations relating to a ‘packet data communication
session’” (Ans. 27). We generally agree with the Examiner.
Claims 23 and 31 recite that the customer’s class of service data are
stored in storage associated with a controller and Quick details that a mobile
subscriber’s priority level may be used to determine priority order on a
priority list for mobile stations (FF 7). We do not find that class of service
levels and their use are particular only to systems having random access
channels, but do find that saving and utilizing a class of service in the
systems of IS-657 and IS-95-A would have been obvious in view of Quick,
as the Examiner found (Ans. 20). Thus, we do not find Appellant’s
argument to be compelling.
(iv) Obviousness over IS-657, IS-95-A, and Gardner
Claims 24 and 32
Appellant argues that Gardner fails to teach any limitations of
independent claims 5 and 10 (Br. 31). Given that the instant rejection is
applied to dependent claims 24 and 32, we find no error in this. In addition,
Appellant argues that the system and signaling described in Gardner are
incompatible with the systems described in IS-657 and IS-95-A (id.). The
Examiner finds that Gardner was applied only to show the conventional
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nature of combining bearer channels in the prior art (Ans. 27-28). We agree
with the Examiner.
The Examiner raises the issue that the systems need not necessarily be
“compatible” for one of ordinary skill in the art to have had a reasonable
expectation of success in adapting the systems of IS-657 and IS-95-A to
utilize bearer channels (Ans. 28), and we agree. As discussed similarly
above, we do not find the usage of bearer channels to be particular to
systems like Gardner, and agree that the combination of bearer channels in
CDMA systems would have been obvious. Thus, we do not find Appellant’s
argument to be compelling.
(v) Obviousness over IS-657, IS-95-A, Chan, and Quick or Gardner
Claims 39 and 40
With respect to the separate rejections of claims 39 and 40, Appellant
argues that those rejections are improper for the same reasons discussed with
respect to the prior rejections (Br. 31-32). As we find no error in the
rejections discussed supra, we likewise find no error in the rejections of
claims 39 and 40.

CONCLUSIONS
We conclude that the Examiner did not error in finding: (i) claims 5,
6, 9, 10, 13, 17-22, and 25-30 unpatentable over IS-657 and IS-95-A; (ii)
claims 14-16 and 33 over IS-657, IS-95-A, and Chan; (iii) claims 23 and 31
unpatentable over IS-657, IS-95-A, and Quick; (iv) claims 24 and 32
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unpatentable over IS-657, IS-95-A, and Gardner; (v) claim 39 unpatentable
over IS-657, IS-95-A, Chan, and Quick; and (vi) claim 40 unpatentable over
IS-657, IS-95-A, Chan, and Gardner.

DECISION
We affirm the Examiner’s decision to reject claims 5, 6, 9, 10, and 13-
40.

AFFIRMED

ack

VOLPE AND KOENIG, P.C.
DEPT. ICC
UNITED PLAZA
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103