Ex Parte Cadenas

Patent Trial and Appeal Board

Jan 16, 2018

11914456 (P.T.A.B. Jan. 16, 2018)

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.
11/914,456 06/19/2008 Alejandro Cadenas PATCE14433EP-US-PCT 7622
22917 7590 01/18/2018
MOTOROLA SOLUTIONS, INC.
IP Law Docketing
500 W. Monroe
43rd Floor
Chicago, IL 60661
EXAMINER
WOO, KUO-KONG
ART UNIT PAPER NUMBER
2628
NOTIFICATION DATE DELIVERY MODE
01/18/2018 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):
U S Adocketing @ motorolasolutions. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEJANDRO CADENAS
Appeal 2017-002666
Application 11/914,456
Technology Center 2600
Before LARRY J. HUME, JOYCE CRAIG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final Rejection of claims 1, 2, and 4—10, which are all of the claims
pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b)
We affirm.
1 According to Appellant, the real party in interest is Motorola Solutions,
Inc. Br. 3.
2 Claim 3 has been canceled.
Appeal 2017-002666
Application 11/914,456
INVENTION
Appellant’s claimed invention relates to a notification apparatus and
method for a cellular communication system. Abstract. Claim 1 reads as
follows with key disputed limitations shown in italics:
1. A notification apparatus for a cellular communication system, the
apparatus comprising:
means for detecting an unsuccessful incoming call setup from a
first remote terminal to a second remote terminal, wherein no
communication link can be established between the first remote
terminal and the second remote terminal;
means for determining a physical location of the second remote
terminal;
means for determining a physical location of at least a third
remote terminal;
means for evaluating a physical distance criterion for the third
remote terminal and the second remote terminal when no
communication link can be established between the first remote
terminal and the second remote terminal;
means for transmitting a notification message to the third
remote terminal in response to the physical distance criterion and in
response to detecting the unsuccessful call setup, the notification
message comprising information that the incoming call setup for the
first remote terminal is attempted.
REJECTIONS3
Claims 1, 2, 4, and 7—10 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as obvious over the combination of Alperovich et al. (US
3 In the Non-Final Action from which this appeal is taken, the Examiner
rejected claims 3, 5, and 6 under 35 U.S.C. § 112(b) or pre-AIA 35 U.S.C.
§112, second paragraph, as indefinite due to insufficient antecedent basis.
Non-Final Act. 4—5. The Examiner also rejected claim 3 under 35 U.S.C.
§ 112(d) or pre-AIA 35 U.S.C. § 112, fourth paragraph, for being of
improper dependent form (id. at 5) and under 35 U.S.C. § 103(a) for
2
Appeal 2017-002666
Application 11/914,456
5,978,673; issued Nov. 2, 1999) (“Alperovich”) and Chen et al. (US
2005/0096006 Al; published May 5, 2005) (“Chen”). Non-Final Act. 6—12.
Claims 5 and 6 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over the combination of Alperovich, Chen, and Silverman (US
6,363,248 Bl; issued Mar. 26, 2002). Non-Final Act. 12—15.
ANALYSIS
We have reviewed the rejections of claims 1, 2, and 4—10 in light of
Appellant’s arguments the Examiner erred. We have considered in this
decision only those arguments Appellant actually raised in the Briefs.
Contrary to Appellant’s statements in the Appeal Brief (Br. 6—7), any other
arguments Appellant could have made but chose not to make in the Briefs
are deemed waived. See 37 C.F.R. § 41.37(c)(l)(iv).
We agree with and adopt as our own the Examiner’s findings of facts
and conclusions as set forth in the Answer (Ans. 2-4) and in the Action
(Non-Final Act. 2—15) from which this appeal was taken. We provide the
following explanation for emphasis.
Appellant contends the Examiner erred in rejecting all of the pending
claims for obviousness because Alperovich does not teach or suggest
determining a physical location of both a second and third terminal, as the
claims require. Br. 5—6 (citing Alperovich col. 6:45—51). Appellant
acknowledges that Alperovich teaches or suggests determining a location of
a second terminal, but argues that Alperovich does not teach or suggest
determining the location of a third terminal. Id.
obviousness (id. at 6—10). Appellant has since canceled claim 3 and
amended claims 5 and 6 such that the Examiner’s § 112 rejections are moot.
See Amendment filed January 16, 2015, entered September 6, 2016.
3
Appeal 2017-002666
Application 11/914,456
We are not persuaded by Appellant’s arguments. The Examiner
found step 455 of Alperovich Figure 6 teaches or suggests determining a
physical location of at least a third remote terminal (“forward to numbers”),
as the claims require. Ans. 2—3 (citing Alperovich Fig. 6 (step 455), cols.
6:45—62, 7:42—46). We agree with the Examiner’s findings and ultimate
conclusion of obviousness. Appellant did not file a Reply Brief and thus has
not persuasively rebutted the Examiner’s findings in the Answer.
For these reasons, we are not persuaded the Examiner erred in finding
the combination of Alperovich and Chen teaches or suggests the disputed
limitations of claims 1, 2, 4, and 7—10, or in finding the combination of
Alperovich, Chen, and Silverman teaches or suggests the disputed
limitations of claims 5 and 6.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of independent claims 1 and 10, and the Examiner’s 35 U.S.C. § 103(a)
rejections of dependent claims 2 and 4—9, not argued separately.4 Br. 6.
DECISION
We affirm the Examiner’s decision to reject claims 1,2, and 4—10.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. §41.50(f).
AFFIRMED
4 When a dependent claim and the independent claim it incorporates are not
separately argued, precedent guides that absent some effort at distinction, the
claims rise or fall together. See In re Nielson, 816 F.2d 1567, 1569, 1572
(Fed. Cir. 1987) (dependent claims, not argued separately, fall with the
independent claims, even though the dependent claims were rejected based
on additional (or different) references.).
4