Ex Parte Cain

Board of Patent Appeals and Interferences

Aug 28, 2006

10400998 (B.P.A.I. Aug. 28, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte JOSEPH BIBB CAIN
_______________

Appeal No. 2006-1697
Application No. 10/400,998
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ON BRIEF
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Before KRASS, JERRY SMITH, and BARRY, Administrative Patent Judges.

JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s rejection of claims 1-22, which constitute all the claims pending in this
application.
The disclosed invention pertains to a wireless communication network with
multiple mobile nodes that each comprises a wireless transceiver, directional
antenna, omni-directional antenna, and a controller. The controller (1)
establishes an omni-directional communication link with another mobile node, (2)
determines a link quality value for the omni-directional link, and (3) establishes a
directional communication link if the link quality value for the omni-directional link
Appeal No. 2006-1697
Application No. 10/400,998

is greater than a quality threshold. Requiring nodes to have sufficient quality
values for the omni-directional link before establishing the directional link
provides a good indication that the directional link will also be of a desired quality.

Representative claim 1 is reproduced as follows:

1. A wireless communication network comprising:

a plurality of mobile nodes each comprising at least one wireless
transceiver, a directional antenna and an omni-directional antenna connected to
said at least one wireless transceiver, and a controller for controlling said at least
one wireless transceiver, said controller also for
establishing an omni-directional communication link with another mobile
node,
determining a link quality value for the omni-directional communication
link, and
establishing a directional communication link with said other mobile node if
the link quality value for the omni-directional communication link is greater than a
quality threshold.

The examiner relies on the following references:

Seiki 2002/0119808 Aug. 29, 2002

Mortensen
(European Application)
1 067 730 Jan. 10, 2001

Pritchett 5,767,807 Jun. 16, 1998

Ko et al. (Ko), Medium Access Control Protocols Using Directional Antennas in
Ad Hoc Networks, IEEE Infocom, p. 13-21, 2000.

Lott et al. (Lott), Medium Access and Radio Resource Management for Ad Hoc
Networks Based on UTRA TDD, ACM, Proc. of the 2d ACM Int’l Sym. on Mobile
Ad Hoc Networking Computing, MobiHOC 2001, p. 76-86, 2001.

The following rejections are on appeal before us:
1. Claims 1, 2, 10, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ko in view of Seiki.
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Application No. 10/400,998

2. Claims 3, 4, 11, 12, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ko in view of Seiki and further in view of
Mortensen.
3. Claims 5, 6, 13, 14, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ko in view of Seiki and further in view of
Lott.
4. Claims 7 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ko in view of Seiki, Lott, and further in view of Mortensen.
5. Claims 8, 9, and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ko in view of Seiki and further in view of Pritchett.
Rather than repeat the arguments of appellant or the examiner, we make
reference to the briefs and the answer for the respective details thereof.

OPINION
We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of obviousness relied upon by the
examiner as support for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellant's arguments set forth in
the briefs along with the examiner’s rationale in support of the rejections and
arguments in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before us, that the evidence
relied upon and the level of skill in the particular art would have suggested to one
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Application No. 10/400,998

of ordinary skill in the art the obviousness of the invention as set forth in the
claims on appeal. Accordingly, we affirm.
We first consider the rejection of claims 1, 2, 10, 17, and 18 under 35
U.S.C. § 103(a) as being unpatentable over Ko in view of Seiki. In rejecting
claims under 35 U.S.C. § 103, it is incumbent upon the examiner to establish a
factual basis to support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set forth in Graham v.
John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). The examiner
must articulate reasons for the examiner’s decision. In re Lee, 277 F.3d 1338,
1342, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). In particular, the examiner must
show that there is a teaching, motivation, or suggestion of a motivation to
combine references relied on as evidence of obviousness. Id. 277 F.3d at 1343,
61 USPQ2d at 1433-34. The examiner cannot simply reach conclusions based
on the examiner’s own understanding or experience - or on his or her
assessment of what would be basic knowledge or common sense. Rather, the
examiner must point to some concrete evidence in the record in support of these
findings. In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir.
2001). Thus the examiner must not only assure that the requisite findings are
made, based on evidence of record, but must also explain the reasoning by
which the findings are deemed to support the examiner’s conclusion. However, a
suggestion, teaching, or motivation to combine the relevant prior art teachings
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does not have to be found explicitly in the prior art, as the teaching, motivation, or
suggestion may be implicit from the prior art as a whole, rather than expressly
stated in the references. The test for an implicit showing is what the combined
teachings, knowledge of one of ordinary skill in the art, and the nature of the
problem to be solved as a whole would have suggested to those of ordinary skill
in the art. In re Kahn, 441 F.3d 977, 987-88, 78 USPQ2d 1329, 1336 (Fed. Cir.
2006) citing In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313 (Fed. Cir.
2000). See also In re Thrift, 298 F. 3d 1357, 1363, 63 USPQ2d 2002, 2008 (Fed.
Cir. 2002). These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that
burden is met, the burden then shifts to the applicant to overcome the prima facie
case with argument and/or evidence. Obviousness is then determined on the
basis of the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; 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). Only those arguments actually made by appellant have been considered
in this decision. Arguments which appellant could have made but chose not to
make in the briefs have not been considered and are deemed to be waived [see
37 CFR § 41.37(c)(1)(vii)(2004)].
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Regarding independent claims 1 and 17, the examiner's rejection
essentially finds that Ko teaches every claimed feature except for (1) determining
a link quality value for the omni-directional link, and (2) establishing a directional
link with the other mobile node if the link quality value is greater than a threshold
[answer, page 4]. The examiner cites Seiki as teaching such features and
concludes that it would have been obvious to one of ordinary skill in the art at the
time of the invention to modify Ko to use link quality to determine when to use
directional versus omni-directional antennas to ensure satisfactory antenna gain
[answer, pages 4 and 5].
Regarding independent claim 10, the examiner finds that although Seiki
teaches discontinuing the directional link if the link quality falls below a certain
threshold, neither Ko nor Seiki discloses that this threshold is lower than the first
threshold as claimed [answer, page 5]. The examiner, however, notes that it is
well known to add hysteresis by using a second threshold lower than a first
threshold to add stability and prevent thrashing about the threshold level. The
examiner then concludes that it would have been obvious to the skilled artisan at
the time of the invention to add hysteresis by adding a second lower threshold to
Seiki to add stability by avoiding thrashing between the directional and omni-
directional antennas when the link quality is near the threshold [id.].
Appellant argues that no proper motivation or suggestion exists to
combine the references in the manner proposed by the examiner since this
would change the principle of operation of Ko’s system and render Ko
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unsatisfactory for its intended purpose [brief, page 9]. Appellant notes that in Ko,
if node X experiences good quality of service (i.e., no blockage), then an omni-
directional Request-to-Send (RTS) is used (i.e., an omni-directional antenna is
preferred). But if node X experiences poor quality of service (i.e., a blockage
exists), then a directional RTS is used or none at all [brief, pages 13 and 14].
According to appellant, Ko’s preference for an omni-directional antenna is directly
contrary to Seiki who uses an omni-directional antenna when the quality of
service is poor, and a directional antenna when quality of service is good [id.;
reply brief, pages 4 and 5].
The examiner responds that Seiki uses the omni-directional antenna’s
signal strength to determine which antenna to use (i.e., directional or omni-
directional) [answer, page 11]. The examiner notes that applying Seiki’s
teachings to Ko, the directional antenna is not even considered unless the omni-
directional link quality is sufficient (i.e., signal strength is greater than a threshold)
to ensure satisfactory antenna gain [answer, page 11]. According to the
examiner, such a teaching is not contrary to Ko since it is reasonable to use
Seiki’s teaching to determine if the omni-directional antenna’s signal strength is
high enough to justify using the directional antenna [answer, page 13].
We will sustain the examiner’s obviousness rejection of independent
claims 1, 10, and 17. At the outset, we note that the secondary reference, Seiki,
discloses essentially all of the subject matter of claims 1 and 17 except for a
plurality of mobile nodes. We further note that the broadest reasonable
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Application No. 10/400,998

interpretation of the term “mobile node” as claimed does not preclude mobile,
user-operated, wireless communications devices such as cellular telephones.
Seiki in Fig. 4 discloses (1) establishing an omni-directional link with another
node (step S10); (2) determining a link quality value for the omni-directional link
(step S22); and (3) establishing a directional link with the other node if the link
quality value is greater than a quality threshold (step S30) [Seiki, Fig. 4, ¶ 0029-
0031].
Although Seiki does not disclose that the other node is mobile,
communication between mobile nodes using directional and omni-directional
antennas to establish a mobile network is amply taught by Ko. Furthermore,
although Seiki’s preferred embodiment is a cellular telephone, it is not so limited.
Rather, Seiki’s system is applicable to a wide variety of mobile wireless
communication devices generally [Seiki, ¶ 0046]. Compare Seiki, claim 1
(broadly reciting a “mobile communications device”) with claim 5 (narrowing the
“mobile communications device” to a cellular telephone device). In view of Ko, it
would have been obvious in our view for the skilled artisan to provide an
additional mobile node in the system of Seiki to establish a mobile network.
In short, the collective teachings of Seiki and Ko amply teach or suggest
all limitations claimed in independent claims 1 and 17. Even though we sustain
the examiner’s rejection for different reasons than those advanced by the
examiner, our position is still based upon the collective teachings of the
references and does not constitute a new ground of rejection. In re Bush, 296
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F.2d 491, 496, 131 USPQ 263, 266-67 (CCPA 1961); In re Boyer, 363 F.2d 455,
458 n.2, 150 USPQ 441, 444 n.2 (CCPA 1966).
Regarding independent claim 10, we agree with the examiner that it would
have been obvious to the skilled artisan at the time of the invention to add
hysteresis by adding a second lower threshold to Seiki essentially for the reasons
noted by the examiner. Additionally, appellant has not separately contested this
position apart from the arguments noted previously pertaining to independent
claims 1 and 17. Accordingly, we will sustain the examiner’s obviousness
rejection of independent claim 10 along with independent claims 1 and 17.
In addition, since appellant has not separately argued the patentability of
dependent claims 2-9, 11-16, and 18-22, these claims fall with independent
claims 1, 10, and 17. See In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525,
1528 (Fed. Cir. 1987). See also 37 CFR § 41.37(c)(vii). Moreover, we find that
the examiner has established at least a prima facie case of obviousness for
these claims on pages 4-10 of the answer that appellant has not persuasively
rebutted. The rejections of the dependent claims are therefore sustained.

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Application No. 10/400,998

In summary, we have sustained the examiner's rejection with respect to all
claims on appeal. Therefore, the decision of the examiner rejecting claims 1-22
is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a)(1)(iv).

AFFIRMED

ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )

JS/jaj/eld
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Application No. 10/400,998

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