Ex Parte Ashraf et al

Patent Trial and Appeal Board

Feb 18, 2014

11769063 (P.T.A.B. Feb. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SYED REAZ ASHRAF and BEHZAD DAVACHI MOTTAHED
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Appeal 2011-0099941
Application 11/769,063
Technology Center 2600
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Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT,
and JEAN R. HOMERE, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Lucent Technologies, Inc. (App. Br. 1).
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-10. (App. Br. 2). We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.
Appellants’ Invention
Appellants invented a method and system for facilitating a local call
between a visiting roaming subscriber (22) and another communication
device (54) without any assistance from the home location register (HLR-
32) of the roaming device (32). In particular, a visitor location register
(VLR-42) obtains a subscriber profile stored on the roaming device’s
memory (44) to place the call on behalf of the roaming device (22). (Fig. 1;
Spec. ¶¶ [00015]-[00017], [00022]).
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method of facilitating wireless communications, comprising the
steps of:
registering a visiting mobile subscriber in a visitor location register of
a visitor network;
using the visitor location register to access an indication of the visiting
mobile subscriber profile stored on a mobile station used by the visiting
mobile subscriber including an indication of any wireless communication
features available to the visiting mobile subscriber; and
locally setting up a call between another subscriber and the visiting
mobile subscriber at the visitor network by using the accessed visiting
mobile subscriber profile.
Prior Art Relied Upon
Ray (“Ericsson”) WO 99/59371 Nov. 18, 1999
Gonen US 2006/0205404 A1 Sep. 14, 2006
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Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1, 3-6, and 8-10 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Ericsson.
2. Claims 2 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Ericsson and Gonen.

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 3-8, and the Reply Brief, pages 1-7.

Dispositive Issue: Under 35 U.S.C. § 102, did the Examiner err in
finding Ericsson describes a VLR accessing on a visiting subscriber’s mobile
station the subscriber profile to set up a call locally between the visiting
mobile subscriber and the another subscriber, as recited in claim 1?

Appellants argue Ericsson does not describe the disputed limitations
emphasized above. (App. Br. 4-7, Reply Br. 1-7). In particular, Appellants
argue while Ericsson discloses using a special code dialed to route a call
between a landline and a roaming device, the special code is not stored on
the roaming device because it is provided by a caller from the landline to the
GMSC, which contacts the VLR associated with the target mobile station to
set the call in motion. (Reply Br. 2-3).
In response, the Examiner finds Ericsson’s disclosure of dialing a
special code to set up a call between the landline and the mobile device
describes that the dialed number is “at least inherently temporarily” stored
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on the mobile device, and thereby describes the disputed limitations.
(Ans. 9).
Based upon our review of the record before us, we find error with the
Examiner’s anticipation rejection regarding claim 1. In particular, because
Ericsson’s special code is provided by a caller from the landline to the
GSMC that sets up the call with the mobile device through a VLR associated
therewith, the special code never reaches the mobile device, let alone being
temporarily stored thereon. At best, the special code is temporarily stored
on the landline where it is dialed, and not the mobile device. Therefore,
notwithstanding the breadth of the mobile subscriber profile, Ericsson’s
disclosure of dialing a special code does not meet the disputed limitations
because storing the subscriber profile on the subscriber’s mobile station is
not described. Because Appellants have shown at least one error in the
Examiner’s rejection of claim 1, we need not reach the merits of Appellants’
other arguments.2
Because claims 2-4 also recite the disputed limitations as in those of
claim 1 discussed above, we find that Appellants have similarly shown error
in the Examiner’s rejections of those claims.
Regarding the rejections of claims 5-10, we note the claims do not
recite the disputed limitations as in those of claim 1 discussed above. In
particular, claim 5 recites a VLR configured to access a profile, as opposed

2 The Examiner notes that because Appellants’ Specification does not
provide support for “bypassing the HLR,” it is not enabling. (Ans.10-11).
However, the Examiner declines to make a lack of enablement rejection
because such feature is allegedly taught by the prior art of record.
(Examiner’s Response to Reply Brief).
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to the VLR actually accessing the profile as in claim 1.3 Because the scope
of claims 5-10 is not commensurate with Appellants’ arguments as
previously submitted for patentability of claim 1, those arguments are not
persuasive. It follows that Appellants have not shown error in the
Examiner’s rejections of claims 5-10.

3 The recitation “configured to” is nonfunctional claim language, which is
not entitled to any patentable weight. See Superior Indus., Inc. v. Masaba,
Inc., 2014 WL 163046 at *5 (Fed. Cir. Jan. 16, 2014) (Rader, C.J.,
concurring) (stating “[A] system claim generally covers what the system is,
not what the system does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909
F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157
. . . (1875) (‘The inventor of a machine is entitled to the benefit of all the
uses to which it can be put, no matter whether he had conceived the idea of
the use or not.’). Thus, it is usually improper to construe non-functional
claim terms in system claims in a way that makes infringement or validity
turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d
1075, 1091 (Fed. Cir. 2009)”).
At best, the claim language “configured to” is a statement of intended
use that merely indicates the capability or intent to perform the action of
receiving the acknowledgment. Our reviewing court has held that a
statement of intended use in an apparatus claim cannot distinguish over a
prior art apparatus that discloses all the recited structural limitations and is
capable of performing the recited function. See In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997). We also note that “[a]n intended use or
purpose usually will not limit the scope of the claim because such statements
usually do no more than define a context in which the invention operates.”
See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320
F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . .
appear in the claim’s preamble,” a statement of intended use or purpose can
appear elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir.
1987).
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DECISION
We reverse the Examiner’s rejections of claims 1-4. However, we
affirm the Examiner’s rejections of claims 5-10 as set forth above.
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).

AFFIRMED-IN-PART

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