Ex Parte Bednasz

Board of Patent Appeals and Interferences

Mar 26, 2012

10829637 (B.P.A.I. Mar. 26, 2012)

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.
10/829,637 04/22/2004 Kenneth M. Bednasz 2002-060 7060
54472 7590 03/27/2012
COATS & BENNETT/SONY ERICSSON
1400 CRESCENT GREEN
SUITE 300
CARY, NC 27518
EXAMINER
CUMMING, WILLIAM D
ART UNIT PAPER NUMBER
2617
MAIL DATE DELIVERY MODE
03/27/2012 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 KENNETH M. BEDNASZ
____________________

Appeal 2009-013658
Application 10/829,637
Technology Center 2600
____________________

Before ERIC S. FRAHM, KRISTEN L. DROESCH, and KALYAN K.
DESHPANDE, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
1

Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-13 and 15-42. Claim 14 has been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM. We also enter new ground of rejection under 37 C.F.R.
§ 41.50(b).
Exemplary Claims
Exemplary independent claim 1 under appeal reads as follows:
1. A mobile terminal comprising:
a transceiver to transmit signals to and receive signals from a wireless
communications network;
a hands-free device to allow the user to place and receive calls in a
hands-free only mode; and
a controller operatively connected to the transceiver and the hands-
free device, and configured to:
determine whether a mobile terminal is proximate a hands-free
zone;
indicate to the user whether the mobile terminal is proximate
the hands-free zone based on a current location of the mobile
terminal;
determine a velocity of the mobile terminal;

1
We make reference throughout our Decision to the Appeal Brief (“App.
Br.”) filed December 14, 2006, and the Examiner‟s Answer (“Ans.”) mailed
May 17, 2007.
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activate the hands-free only mode to permit the user to place
and receive calls using the hands-free device if the velocity of the
mobile terminal is greater than a predetermined threshold while the
mobile terminal is proximate the hands-free zone; and
de-activate the hands-free only mode to permit the user to place
and receive calls without using the hands-free device if the velocity of
the mobile terminal is not greater than a predetermined threshold
while the mobile terminal is proximate the hands-free zone.
Exemplary claim 28 reads as follows:
28. The system of claim 22 wherein the controller activates the hand-
free only mode when the mobile terminal registers with the base station.
The Examiner’s Rejections
(1) The Examiner rejected claims 1-9, 14, 16, 19-23, 30, 31, 33, 34,
and 39-41 as being unpatentable under 35 U.S.C. § 103(a) over the
combination of Willner (US 2003/0032434 A1) and Furuta (JP 2002176678
A).
2
Ans. 3-28.
(2) The Examiner rejected claims 10 and 15 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Willner, Furuta, and
Lewis (US 2004/0033820 A1). Ans. 29-31.
(3) The Examiner rejected claims 17, 18, and 32 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Willner, Furuta, and
Ogino (US 6,941,145 B2). Ans. 31-36.

2
Throughout this decision, we refer to the official translation of Furuta
provided to the USPTO by Schreiber Translation, Inc. and made of record
February 2009 (PTO-09-2378).
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(4) The Examiner rejected claims 28, 29, 35, and 38 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Willner,
Furuta, and Hunzinger (US 2002/0086680 A1). Ans. 36-41.
3

(5) The Examiner rejected claims 36 and 37 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Willner, Furuta, and Joyce
(US 2003/008661 A1). Ans. 42-44.
(6) The Examiner rejected claims 11-13, 24-27, and 42 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Willner,
Furuta, and Official Notice. Ans. 45-54.

The Examiner’s Findings
In making all six obviousness rejections, supra, the Examiner relies
upon Willner as disclosing activation of a hands-free mode of a mobile
terminal based on location (Ans. 3-6), and relies upon Furuta as disclosing
activation of the hands-free mode based on velocity (Ans. 7-9). The
Examiner determines that it would have been obvious to combine the
location based feature of Willner with the velocity based feature of Furuta in
order “to assist the mobile user in obeying laws forbidding the mobile
terminal from operating while driving for safety purposes” (see Ans. 9).
With regard to claims 10 and 15, the Examiner further relies upon
Lewis as disclosing a standby mode that activates a hands-free mode when a
call is made (Ans. 29-30), and determines that it would have been obvious to

3
We note that the Examiner inadvertently lists claim 32 in the statement of
the rejection on page 36 of the Answer, but that claim 38 is actually
discussed on the merits in the body of the rejection (Ans. 40-41). This is
harmless error, and we consider claims 28, 29, 35, and 38 to be rejected
under 35 U.S.C. § 103(a) over the combination of Willner, Furuta, and
Hunzinger.
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modify the combination of Willner and Furuta with the standby mode of
Lewis in order “to reduce the power consumption of the wireless transmitter
in the mobile device” (Ans. 30).
With regard to claims 28 and 29, the Examiner further relies upon
Hunzinger as disclosing activating a hands-free mode when a mobile device
registers with a base station (Ans. 36-38), and determines that it would have
been obvious to modify the combination of Willner and Furuta with the
registration feature of Hunzinger in order “to enable the wireless
communication system to take particular actions based on the location of the
wireless device within the system” (Ans. 36 and 39).
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Appellant’s Contentions
4

(1) Appellant contends (Br. 3-8) with regard to the first rejection,
supra, that the Examiner erred in rejecting claims 1-9, 14, 16, 19-23, 30, 31,
33, 34, and 39-41 under § 103(a) over the combination of Willner and Furuta
for numerous reasons, including:
(a) Willner never considers velocity and Furuta tracks velocity and not
location (Br. 5);
(b) neither Willner nor Furuta, “alone or in combination, teaches or
suggests a wireless communications device that activates a hands-free only
mode based on both the geographical location of a wireless device and on
the velocity of the device” (Br. 5);

4
Separate patentability is not argued for claims 2-9, 11-14, 15, 17-27, and
31-42 and no arguments are presented as to the Examiner‟s third, fifth, and
sixth rejections supra (see generally Br. 3-13).
Based on Appellant‟s failure to address the Examiner‟s prima facie
case of obviousness, Appellant has failed to show that the Examiner erred in
rejecting (i) claims 17, 18, and 32 under 35 U.S.C. § 103(a) over the
combination of Willner, Furuta, and Ogino; (ii) claims 36 and 37 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Willner,
Furuta, and Joyce; and (iii) claims 11-13, 24-27, and 42 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Willner,
Furuta, and Official Notice. We decide the appeal of claims 15, 35, and 38
on the same basis as claims 1 and 30 from which they depend.
Accordingly, we decide the appeal of claims 2-9, 11-14, 15, 17-27,
31-42 on the same basis as claims 1, 16, and 30 from which claims 2-9, 11-
15, 17-27, 31-33, and 34-42 respectively depend. Because Appellant
presents similar arguments as to claims 16 and 30 as are presented for claim
1, we select claim 1 as representative of the group of claims consisting of 1-
9, 11-27, and 30-42.
Summarizing, we decide the appeal based on claims 1, 10, 28, and 29.

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(c) the “alleged motivation to combine the references is not supported
by the references” (Br. 5), and “[t]he motivation proffered by the Examiner
falls far short of the legally sufficient motivation required by law” (Br. 7);
and
(d) “[w]hile both references related to a hands-free mode in a wireless
device; they accomplish their goals using different methods and for different
reasons. Willner uses an „absolute‟ geographical location-based method,
while Furuta teaches an „absolute‟ velocity-based method” (Br. 6).
(2) Appellant contends (Br. 8-10) with regard to the second rejection
supra, that the Examiner erred in rejecting claim 10 under § 103(a) over the
combination of Willner, Furuta, and Lewis because “Lewis teaches that one
or more functions of the transmitter are disabled when it enters standby
mode” and “is not operating to activate anything” (Br. 10). Thus, Lewis‟s
“teachings are meaningless with respect to location-based or velocity-based
methods of placing a mobile terminal into a hands-free only mode” (Br. 9).
(3) Appellant contends (Br. 11-14) with regard to the fourth rejection
supra, that the Examiner erred in rejecting claims 28 and 29 under § 103(a)
over the combination of Willner, Furuta, and Hunzinger because there is no
motivation to make the combination and the Examiner‟s rationale is
conclusory.
Issues on Appeal
Based on Appellant‟s arguments in the Brief (Br. 3-14), the following
issues are presented on appeal:
(1) Did the Examiner err in rejecting claims 1-9, 11-27, 30-42 as
being obvious, because (a) Willner and Furuta are not properly combinable,
and (b) the combination of Willner and Furuta fails to teach or suggest
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activating a hands-free mode of a mobile terminal based on location and
velocity, as recited in representative independent claim 1, and similarly
recited in independent claims 16 and 30?
(2) Did the Examiner err in rejecting claim 10 as being obvious,
because (a) Willner, Furuta, and Lewis are not properly combinable, and (b)
the combination of Willner, Furuta, and Lewis fails to teach or suggest the
limitations of claim 10?
(3) Did the Examiner err in rejecting claims 28 and 29 as being
obvious, because (a) Willner, Furuta, and Hunzinger are not properly
combinable, and (b) the combination of Willner, Furuta, and Hunzinger fails
to teach or suggest the limitations of claims 28 and 29?

ANALYSIS
We have reviewed the Examiner‟s rejections in light of Appellant‟s
contentions in the Appeal Brief (Br. 3-14) that the Examiner has erred.
We disagree with all of Appellant‟s contentions in the Appeal Brief
and those specifically addressed above, except for Appellant‟s contention
(3)(b) above directed to the registration and hand-off activation limitations
recited in claims 28 and 29, and its inherent disclosure in Hunzinger. We
agree with Appellant that the Examiner improperly relied upon Hunzinger as
disclosing activating/triggering the hands-free mode upon hand-off or
registration as recited in claims 28 and 29 (Br. 11-14).
Hunzinger discloses triggering “reminders or actions” based on a
wireless terminal‟s location (¶ [0002]), as well as “detect[ing] when the
terminal has handed-off to another base-station” (¶ [0024]). We agree with
the Examiner (Ans. 37) that when a mobile station hands-off to another base
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station, the mobile station must register with the base station to which it is
being transferred. However, Hunzinger is silent as to activating a hands-free
mode upon hand-off or registration (see ¶¶ [0002] and [0024]). The
limitations recited in claims 28 and 29 of activating the hands-free mode
“when the mobile terminal registers with the base station” (claim 28) and
“upon hand-off of the mobile terminal to the base station” (claim 29), are
suggested by Hunzinger. One of ordinary skill in the art at the time of
Appellant‟s disclosed invention would have understood that the controller of
Willner and Furuta that activates a hands-free mode could be modified to
trigger/activate the hands-free mode based on the actions detected in
Hunzinger of registering or handing-off to another base station. As such, we
find that modifying the combination of Willner and Furuta with Hunzinger‟s
triggering, registration, and hand-off features teaches or suggests the
limitations of claims 28 and 29 of activating the hands-free mode upon
registration with, and/or hand-off to, a base station.
To the extent that we have relied upon disclosures of Hunzinger not
relied on by the Examiner, or an obviousness rationale not relied on by the
Examiner, as teaching or suggesting the activation of the hands-free mode
when the mobile terminal registers with, or is handed-off to, the base station
as set forth in claims 28 and 29, we designate our affirmance of the
Examiner‟s rejection of claims 28 and 29 as a new ground of rejection.
We disagree with Appellant‟s conclusions with regard to claims 1-13
15-27, and 30-42. We adopt as our own (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken, and (2)
the reasons set forth by the Examiner in the Examiner‟s Answer in response
to Appellant‟s Appeal Brief (see Ans. 3-36 and 39-57). We concur with the
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conclusions of obviousness reached by the Examiner, and address certain
findings and arguments for emphasis as follows.
The Examiner has provided a factual basis and articulated reasoning
with a rational underpinning to support the conclusion of obviousness with
regard to claims 1 and 10 (see Ans. 3-9, 29-30 and 54-57). See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). With regard to claim 1, we
agree with the Examiner that it would have been obvious to combine the
location based feature of Willner with the velocity based feature of Furuta in
order “to assist the mobile user in obeying laws forbidding the mobile
terminal from operating while driving for safety purposes” (Ans. 9; see also
Ans. 57). With regard to claim 10, we also agree with the Examiner that it
would have been obvious to modify the combination of Willner and Furuta
with the standby mode of Lewis in order “to reduce the power consumption
of the wireless transmitter in the mobile device” (Ans. 30).
We note that each reference cited by the Examiner must be read, not
in isolation, but for what it fairly teaches in combination with the prior art as
a whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(one cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references). In the instant
case, Appellant admits (i) that “[b]oth Willner and Furuta disclose
controllers that may place a wireless device in a hands-free mode” (Br. 4),
(ii) “both references relate to a hands-free mode in a wireless device” (Br.
6), (iii) Willner teaches determining a hands-free mode based solely on
location (Br. 5), and (iv) Furuta teaches determining a hands-free mode
solely based on velocity (Br. 5). Therefore, Appellant‟s argument that
“neither reference ever hints at the method of the other” (Br. 6), is
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unpersuasive since the combined teachings and suggestions of Willner and
Furuta meet the limitations of claim 1.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-9, 11-27, 30-42
as being obvious, because (a) Willner and Furuta are properly combinable,
and (b) the combination of Willner and Furuta teaches or suggests activating
a hands-free mode of a mobile terminal based on location and velocity, as
recited in representative independent claim 1, and similarly recited in
independent claims 16 and 30.
(2) The Examiner did not err in rejecting claim 10 as being obvious,
because (a) Willner, Furuta, and Lewis are properly combinable, and (b) the
combination of Willner, Furuta, and Lewis teaches or suggests the
limitations of claim 10.
(3) The Examiner did not err in rejecting claims 28 and 29 as being
obvious, because (a) Willner, Furuta, and Hunzinger are properly
combinable, and (b) the combination of Willner, Furuta, and Hunzinger
teaches or suggests the limitations of claims 28 and 29.

ORDER
The Examiner‟s rejections of claims 1-13 and 15-42 are affirmed.
To the extent that we have relied upon disclosures of Hunzinger not
relied on by the Examiner, or an obviousness rationale not relied on by the
Examiner, as teaching or suggesting the activation of the hands-free mode
when the mobile terminal registers with, or is handed-off to, the base station
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as set forth in claims 28 and 29, we also enter new grounds of rejection
under 37 C.F.R. § 41.50(b) for claims 28 and 29.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims
so rejected or new evidence relating
to the claims so rejected, or both, and
have the matter reconsidered by the
examiner, in which event the
proceeding will be remanded to the
examiner. . . .

(2) Request rehearing. Request that
the proceeding be reheard under
§ 41.52 by the Board upon the same
record. . . .

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;
37 C.F.R. § 41.50(b)

ELD