Ex parte Brederveld et al.

Board of Patent Appeals and Interferences

Sep 28, 2000

08065328 (B.P.A.I. Sep. 28, 2000)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LOEKE BREDERVELD, WILHELMUS J. M. DIEPSTRATEN,
JOHANNES P. N. HAAGH, HENDRIK MOELARD,
and JAN HOOGENDOORN
____________
Appeal No. 1997-1378
Application No. 08/065,328
____________
ON BRIEF
____________
Before THOMAS, RUGGIERO, and BARRY, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 1-19, all of the claims pending in the present
application.
The claimed invention relates to a method of operating a
local area network (LAN) that includes a wireless mobile
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2
station and a plurality of base stations, the base stations
having coverage areas referred to as communication cells.
More particularly, a handover procedure is provided for
transferring communication between one of the base stations
and another as the mobile station leaves the coverage area of
one cell and enters another. The mobile station monitors the
quality of beacon messages transmitted from a first base
station and, on determination of unacceptable quality, enters
a search mode in which the quality of beacon messages from
other base stations is determined.
Claim 1 is illustrative of the invention and reads as
follows:
Claim 1. A method of operating a wireless local area network
system having a plurality of base stations and a mobile
station, comprising the steps of:
transmitting beacon messages from the base stations at
regular intervals, each beacon message including an
identification of the respective base station transmitting
that message;
operating the mobile station in a normal mode wherein
beacon messages from a first base station only are monitored;
determining a communications quality value for the beacon
messages from the first base station;
determining if the communications quality value becomes
unacceptable, and if so, changing the operating mode of the
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3
mobile station to a search operating mode wherein beacon
messages received from any of the base stations are monitored;
selecting one of the base stations which provide an
acceptable communications quality value for monitored beacon
messages; and
changing the operating mode of the mobile station to the
normal operating mode wherein beacon messages from the slected
[sic., selected] base station only are monitored.
The Examiner relies on the following prior art:
Imaseki 3,913,017 Oct. 14,
1975
Furuya 5,101,503 Mar. 31,
1992
Natarajan 5,212,806
May 18, 1993
(Filed Oct. 29, 1990)
Stengel (published PCT WO 92/14309 Aug. 20,
1992
International Application)
Claims 1-19 stand finally rejected under 35 U.S.C. § 103.
As evidence of obviousness, the Examiner offers Natarajan in
view of Imaseki with respect to claims 1-3, 9-13, and 19,
adding Furuya to the basic combination with respect to claims
4, 5, 14, and 15, and adding Stengel to the basic combination
with respect to claims 6-8 and 16-18.
Appeal No. 1997-1378
Application No. 08/065,328
The original Appeal Brief was filed June 5, 1995. In1
response to the Examiner’s Answer dated September 5, 1995, a
Reply Brief was filed October 11, 1995. The Examiner entered
the Reply Brief and submitted a Supplemental Examiner’s Answer
entitled “Response to Reply Brief” on February 4, 1997.
4
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Briefs and Answer for the1
respective details.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the Examiner and the
evidence of obviousness relied upon by the Examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration in reaching our decision, Appellants’ arguments
set forth in the Briefs along with the Examiner’s rationale in
support of the rejection and arguments in rebuttal set forth
in the Examiner’s Answers.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
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5
the particular art would have suggested to one of ordinary
skill in the art the invention as set forth in claims 1-3, 6,
7, 9-13, 16, 17, and 19. We reach the opposite conclusion
with respect to claims 4, 5, 8, 14, 15, and 18. Accordingly,
we affirm-in-part.
Appellants have indicated (Brief, page 7) that, for the
purposes of this appeal, the claims will stand or fall
together in the following groups: Group I (claims 1-3, 9-13,
and 19), Group II (claims 4, 5, 14, and 15), Group III (claims
6 and 16), Group IV (claims 7 and 17), and Group V (claims 8
and 18). Consistent with this indication, Appellants have
made no separate arguments with respect to any of the claims
within each group. Accordingly, we will consider the claims
separately only to the extent that separate arguments are of
record in this appeal. Any dependent claim not argued
separately will stand or fall with its base claim.
As a general proposition in an appeal involving a
rejection under 35 U.S.C. § 103, an Examiner is under a burden
to make out a prima facie case of obviousness. If that burden
is met, the burden of going forward then shifts to Appellants
to overcome the prima facie case with argument and/or
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6
evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the
arguments. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992); In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Arguments which Appellants could have made but elected not to
make in the Briefs have not been considered in this decision
(note 37 CFR § 1.192).
With respect to representative independent claim 1 from
the claims of Group I, the Examiner, as the basis for the
obviousness rejection, proposes to modify the wireless
communication system disclosure of Natarajan. In the
Examiner’s view (Answer, pages 3 and 4), the skilled artisan
would have found it obvious to increase reliability in
Natarajan by adding a communication quality determining
feature to initiate a base station search mode as taught by
Imaseki.
In response, Appellants assert (Brief, pages 11 and 12)
that the Examiner has failed to provide proper motivation for
Appeal No. 1997-1378
Application No. 08/065,328
Similar recitations appear in claims 9 and 19, the other2
independent claims on appeal.
7
the proposed combination of Natarajan and Imaseki to establish
a prima facie case of obviousness. After considering the
arguments of record, we initially agree with Appellants that,
since Natarajan has an existing signal quality determination
feature in place, the need for such a feature as taught by
Imaseki is obviated.
On further review and analysis of the language of
representative claim 1, however, we find Imaseki’s selective
channel communication teachings to be cumulative to that of
Natarajan. Further, it is our view that the Figure 5
illustration and accompanying description in Natarajan
discloses all of the recited method steps of representative
claim 1. We note that the relevant portion of claim 1, to
which Appellants’
arguments are particularly directed, recites:2
determining if the communications quality value
becomes unacceptable, and if so, changing the
operating mode of the mobile station to a search
operating mode wherein beacon messages received
from any of the base stations are monitored; ...
Appeal No. 1997-1378
Application No. 08/065,328
In the footnote at the bottom of page 4 of the Reply3
Brief, Appellants admit that Natarajan provides a
communication quality determination feature by monitoring
acceptable signal levels.
The Board may rely on one reference alone in an4
obviousness rationale without designating it as a new ground
of rejection. In re Bush, 296 F.2d 491, 496, 131 USPQ 263,
8
It is our finding that the illustrated flow chart of
Natarajan’s Figure 5 clearly describes such feature. After a
determination that signal quality in a normal operating mode
(block A, column 9, line 28) is not acceptable, a search mode
illustrated in the left branch of the Figure 5 flow chart is
initiated to monitor signals from potential base station
“owners” of the mobile unit. 3
A disclosure that anticipates under 35 U.S.C. § 102 also
renders the claim unpatentable under 35 U.S.C. § 103, for
"anticipation is the epitome of obviousness." Jones v. Hardy,
727 F.2d 1524, 1529, 220 USPQ 1021, 1025 (Fed. Cir. 1984).
See also In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569,
571 (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402, 181 USPQ
641, 644 (CCPA 1974). Thus, we sustain the Examiner’s
rejection of representative claim 1, and claims 2, 3, 9-13,
and 19 which fall with claim 1, under 35 U.S.C. § 103. 4
Appeal No. 1997-1378
Application No. 08/065,328
266-67 (CCPA 1961); In re Boyer, 363 F.2d 455, 458, n.2, 150
USPQ 441, 444, n.2 (CCPA 1966).
As discussed supra, it is our finding that the teachings5
of Natarajan and Imaseki are cumulative to each other.
9
Turning to a consideration of dependent claims 6, 7, 16,
and 17 which are directed to the use of a background noise
factor in determining signal quality, we sustain the
obviousness rejection of these claims as well. In the
Examiner’s analysis (Answer, page 5), the skilled artisan
having been motivated by a desire to increase the accuracy of
signal, quality determination in the combined system of
Natarajan and Imaseki , would have found it obvious to utilize5
a background noise factor in determining signal quality as
taught by Stengel. In our view, the Examiner’s line of
reasoning is reasonable enough to establish a prima facie case
of obviousness so as to shift the burden to Appellants to come
forward with arguments and/or evidence to rebut the prima
facie case.
Appellants’ initial argument in response (Brief, page 17)
contends that, contrary to the Examiner’s assertion, Stengel
does not disclose all of the recited limitations of the
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10
claimed signal quality determination feature. After careful
review of the Stengel reference, however, we are in agreement
with the Examiner’s position as stated in the Answer. In our
view, the passages cited by the Examiner from page 5 of
Stengel related to the noise/RSSI analysis system disclose
Appellants’ background noise factor as claimed.
Appellants’ further argument that Stengel is deficient
since there is no disclosure of representation of background
noise as a portion of a base station transmitted beacon
message is equally unpersuasive. Stengel has been cited by
the Examiner for the limited purpose of providing a teaching
of utilizing background noise factors in determination of
signal quality. This reference is used in combination with
Natarajan which clearly describes analysis of beacon messages
transmitted from base stations. One cannot show
nonobviousness by attacking references individually where the
rejections are based on combinations of references. In re
Keller, 642 F. 2d 413, 208 USPQ 871 (CCPA 1981); In re Merck &
Co., Inc., 800 F. 2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Therefore, the Examiner’s 35 U.S.C. § 103 rejection of
dependent claims 6, 7, 16, and 17 is sustained.
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Application No. 08/065,328
11
We next consider dependent claims 4, 5, 14, and 15 and
note that, while we found Appellants’ arguments to be
unpersuasive with respect to claims 1-3, 6, 7, 9-13, 16, 17,
and 19 discussed supra, we reach the opposite conclusion with
respect to claims 4, 5, 14, and 15. These claims are directed
to the provision of a second threshold value comparison during
the search mode following the first threshold value comparison
which initiates the search mode feature. To address this
feature, the Examiner relies on Furuya which discloses a
cordless telephone system in which different carrier sensing
threshold values are utilized to prevent interference between
stations. As disclosed, for example, at column 1, lines 23-35
of Furuya, a lower threshold value is utilized during system
startup with the threshold values being increased during
widespread use of the system when the number of stations and
communication traffic has increased.
In response, Appellants assert (Brief, page 15) that the
Examiner has failed to set forth a prima facie case of
obviousness since proper motivation for one of ordinary skill
to make the Examiner’s proposed combination has not been
established. Upon careful review of the applied prior art, we
Appeal No. 1997-1378
Application No. 08/065,328
12
are in agreement with Appellants’ stated position in the
Brief. The mere fact that the prior art may be modified in
the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F. 2d
1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992). In the
present instance, we fail to see how Furuya’s system which is
designed to assure an empty channel of communication in a
cordless telephone system would have relevance to the
operation of the cell handover features of the prior art
wireless LAN network of Natarajan or the channel connection
system of Imaseki. None of the problems sought to be overcome
by Furuya would be expected to exist in the communication
systems of Natarajan or Imaseki. Further, the Examiner has
provided no indication as to how and in what manner the
disclosures of Natarajan and/or Imaseki would be modified with
the addition of Furuyama to arrive at the claimed invention.
In our view, the only reason on the record for the skilled
artisan to modify Natarajan or Imaseki in the manner suggested
by the Examiner would be through impermissible hindsight
reconstruction of Appellants’ invention.
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We further find Appellants arguments to be convincing
with respect to dependent claims 8 and 18. These claims
provide a more detailed recitation of the background noise
factor in determining signal quality discussed supra with
respect to the Examiner’s addition of Stengel to address the
features of claims 6, 7, 16, and 17. In particular, claims 8
and 18 include a specific recitation of the determination of
the maximum value of the background noise level of the mobile
station and the base station in the received beacon message.
We agree with Appellants that, contrary to the Examiner’s
assertion, the total noise power determined by Stengel does
not meet the specific requirements of the claimed maximum
value determination.
Since, for all of the reasons discussed above, we are of
the opinion that the prior art applied by the Examiner does
not support the obviousness rejection, we do not sustain the
35 U.S.C. § 103 of dependent claims 4, 5, 8, 14, 15, and 18.
In conclusion, we have sustained the Examiner’s 35 U.S.C.
§ 103 rejection of claims 1-3, 6, 7, 9-13, 16, 17, and 19, but
have not sustained the 35 U.S.C. § 103 rejection of claims 4,
Appeal No. 1997-1378
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14
5, 8, 14, 15, and 18. Accordingly, the decision of the
Examiner rejecting claims 1-19 is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
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Administrative Patent Judge )
lp
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DOCKET ADMINISTRATOR
LUCENT TECHNOLOGIES INC.
600 MOUNTAIN AVENUE (ROOM 3C-512)
P.O. BOX 636
MURRAY HILL, NJ 07974-0636
Leticia
Appeal No. 1997-1378
Application No. 08/065,328
APJ RUGGIERO
APJ BARRY
APJ THOMAS
DECISION: AFFIRMED-IN-PART
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: September 19, 2001
Draft Final
3 MEM. CONF. Y N
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PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT