Ex Parte Chater-Lea

Board of Patent Appeals and Interferences

Feb 22, 2010

10476353 (B.P.A.I. Feb. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID CHATER-LEA
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Appeal 2009-001115
Application 10/476,353
Technology Center 2600
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Decided: February 22, 2010
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Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and
THOMAS S. HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants invoke our review under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of all pending claims 1-7 and 9-23. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse, and we enter new grounds
of rejection under 37 C.F.R. § 41.50(b).

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STATEMENT OF THE CASE
Appellant claims a cellular communication system and method of
operation for a network of base stations communicating with mobile units.
The output power level of a base station is changed if the station becomes
isolated, i.e., the base station loses at least one link to other base stations
while still communicating with mobile units. (See generally Spec. 9:29-
10:20; 12:27-13:3; Figs. 3 and 4.)1 Claim 1, with disputed limitations
emphasized, is illustrative:

1. A method of operation for use in a radio communications system
comprising a cellular network of base stations and mobile units linked
to such base stations, the method comprising the following steps, with
respect to any base station operable to provide direct radio
communication with mobile units linked thereto:

(i) detecting that a base station has become isolated from the system,
wherein said isolated base station has lost at least one link to other
base stations but is still in radio communication with its mobile units
and,

(ii) changing an output power level of said isolated base station
relative to an output power level of one or more selected co-channel
base stations of neighboring cells of the cellular system whereby the
range of communications provided by said isolated base station is
changed to a different finite value relative to that provided by the said
co-channel base stations.

1 References are to Appellant’s Specification filed Oct. 29, 2003 rather than
to corresponding Patent Application Publication 2004/0235525 A1.
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The Examiner relies on the following published prior art references to
show unpatentability:

Bishop US 5,570,343 Oct. 29, 1996
Weaver US 5,584,049 Dec. 10, 1996
Furukawa US 6,539,226 B1 Mar. 25, 2003
Rautiola WO 93/07725 A1 Apr. 15, 1993

1. The Examiner rejected claims 1-7, 9-11, 21, and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Bishop and Rautiola (Ans. 3-8).
2. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Bishop, Rautiola, and Appellant’s Admitted Prior
Art (Ans. 8-9).
3. The Examiner rejected claims 13, 16, and 19 under 35 U.S.C. § 103(a)
as unpatentable over Bishop, Rautiola, and Furukawa (Ans. 9-11).
4. The Examiner rejected claims 14, 15, and 20 under 35 U.S.C. § 103(a)
as unpatentable over Bishop, Rautiola, Furukawa, and Weaver (Ans.
11-12).
5. The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Bishop, Rautiola, Furukawa, and Appellant’s
Admitted Prior Art (Ans. 12-13).
6. The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Bishop, Rautiola, Furukawa, Weaver, and
Appellant’s Admitted Prior Art (Ans. 13-14).

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7. The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as
unpatentable over Bishop, Rautiola, and Weaver (Ans. 14-15).
Rather than repeat the Appellant’s or the Examiner’s arguments, we
refer to the Appeal Brief filed June 20, 2007 and the Examiner’s Answer
mailed Oct. 22, 2007 for their respective details.
Appellant’s Arguments
Appellant groups claims 1-7, 9-11, 21, and 23, and argues
independent claim 1 (Br. 7-8) by asserting that “contrary to the Examiner’s
statement that Bishop teaches the limitation of ‘detecting that a base station
has become isolated from the system,’ such a limitation is not disclosed”
(id.).
Appellant groups all remaining appealed claims, and relies on their
dependencies from base independent claim 1 to argue their patentability
because “the Examiner’s statement that Bishop teaches the limitation of
‘detecting that a base station has become isolated from the system,’ is not
disclosed” (Br. 9).
ISSUE
Under §103(a), has Appellant shown the Examiner erred in finding
Bishop teaches or suggests detection of a base station becoming isolated
from a communication system as recited in claim 1?

FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence:
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1. Bishop discloses a multiple cell communications system having base
stations (BSs) servicing the cells that are interconnected to base
station controllers (BSCs) and an operations and maintenance center
(OMC) (col. 2, l. 66- col. 3, l. 15; Fig. 1).
2. When a base station fails to communicate with mobile units in its cell,
Bishop provides a mechanism to inform a BSC and OMC to direct
BSs in adjacent cells to increase transmitted power to provide service
to the mobile units within the affected cell (col. 3, l. 53-col. 4, l. 12;
col. 5, ll. 34-41).
3. Rautiola describes a radio channel allocation method for a
communications system as follows:
If there is a line failure in the transmission line between a
particular base station BS and the mobile exchange MX, the
mobile exchange MX is no longer able to control the operation of
the base station BS. This is referred to as a fallback state of the
base station BS. Each base station BS, however, is configured
such that it is able to independently switch calls and set up
connections locally between remote stations MS located within its
own cell C.

(6:4-13.)

4. Independent claim 23 covers a “base station for use in a cellular
communication system” (claim 23, l. 1).
5. The cellular communication system base station covered by claim 23
is solely defined as “being operable, upon detecting that it has become
isolated from the system or that a nearby co-channel base station has
become isolated from the system, to change its own operating power
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level relative to the output power level of at least one other base
station.”
6. The Specification discloses that each base station 12 typically
includes a digital controller 11 and program store 13 (storing software
and data) to control communications between mobile units 18, other
base stations, and a central switch 16 (4:20-24; Fig. 1).
7. The Specification further discloses that a base can internally sense that
it has become isolated by lack of network system controller or switch
signals so as to activate “an internal controller within the operating
control system of the base station . . . to generate automatically a
control signal which causes the operating power level to be changed,
i.e., either to be increased or decreased as appropriate” (10:10-15).

PRINCIPLES OF LAW
An Examiner, in rejecting claims under 35 U.S.C. § 103, must
establish a factual basis to support a legal conclusion of obviousness. See In
re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). The required factual
determinations are set forth in Graham v. John Deere Co., 383 U.S. 1, 17
(1966) (explaining that 35 U.S.C. § 103 requires determinations of the (1)
scope and content of prior art; (2) differences between the prior art and
claims at issue; and (3) level of ordinary skill in the art). In addition to
factual support, the Supreme Court has explained that an obviousness
rejection must be based on “‘some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.’” KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
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ANALYSIS
Claims 1-7, 9-11, and 21
All of claims 2-7, 9-11, and 21 directly or indirectly depend from
independent claim 1, which claim Appellant separately argues. Method
claim 1 covers “detecting that a base station has become isolated from the
system [i.e., a cellular network of base stations and mobile units linked to
such base stations], wherein said isolated base station has lost at least one
link to other base stations but is still in radio communication with its mobile
units.”
After reviewing the cited Bishop and Rautiola references, we find the
evidence of record supporting Appellant’s position that these references do
not teach or suggest the claim 1 recited “detecting that a base station has
become isolated from the system.”
The Examiner relies on Bishop for disclosing “a method of operation
for use in a radio communications system [cellular communication system
(10), see fig. 1]” (Ans. 4). Bishop, we concur, does describe a method of
operation for a multiple cell communications system having base stations
(BSs) servicing the cells that are interconnected to base station controllers
(BSCs) and an operations and maintenance center (OMC) (FF 1).
Appellant acknowledges that “[t]he Examiner correctly admits that the
Bishop reference does not teach ‘wherein said isolated base station has lost
at least one link to other base stations but is still in radio communication
with its mobile units’” (Br. 7; see Ans. 4). To address this deficiency, the
Examiner turns to Rautiola and finds a communications system described
that has “a fallback state; wherein [when] there is line failure in the
transmission line between a particular base station BS and the mobile
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exchange MX, (i.e., the failure of communication like [sic: link]), but each
base station is configured to switch calls and set up connections locally
between remote stations MS (i.e., mobile units) located within its own cell C
. . .” (Ans. 17; see FF 3).
Relying on findings from Bishop and Rautiola, the Examiner (i)
asserts “Bishop teaches the claimed limitations ‘detecting that a base station
has become isolated from the system;’” and (ii) reasons that “the
combination of Bishop and Rautiola teaches the Applicant’s fallback
procedure; wherein said isolated base station has lost at least one link to
another base station[] but is ‘still in radio communication with it’s [sic]
mobile units[’]” (Ans. 17). We are not persuaded by this assertion and
reasoning.
We concur with Appellant that Bishop “describes fault detection of a
failed base station so that coverage by other base stations compensates for
the failed base station” (Br. 8; FF 2). Specifically we find Bishop teaches
increasing adjacent base station transmitted power to replace a base station
that fails to communicate with mobile units in its cell (FF 2). We also find
that Rautiola teaches that when there is a transmission line failure between a
base station and a mobile exchange the affected base station maintains
communications with mobile stations in its cell (FF 3). As such, there is
supporting evidence for the Examiner’s position that Bishop fails to teach a
base station as being isolated because of having a failed communication link
with other base stations while simultaneously maintaining communications
with mobile units in its cell. However, the Examiner’s position is not
supported by evidence of record or articulated reasoning for combining
Bishop and Rautiola to teach or suggest a base station becoming isolated
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because of a failed communication link with other base stations while
simultaneously maintaining communications with mobile units in its cell.
For the foregoing reasons, we agree with Appellant’s arguments that
the Examiner erred in finding that Bishop and Rautiola teach or suggest at
least the disputed limitations recited in claim 1. Therefore, the rejection of
claim 1 cannot be sustained, nor can the rejection be sustained for the
grouped claims 2-7, 9-11, and 21 that depend from claim 1.
Claims 12-20 and 22
Claims 12-20 and 22 stand rejected under § 103(a) as unpatentable
over Bishop and Rautiola in combination with other cited prior art (Ans. 8-
14). All of these claims dependent from base independent claim 1.
Appellant asserts the same arguments raised for claim 1 as reasons for
the patentability of these claims. We find no evidence in the record that the
other prior art cited for rejecting these claims cures the Bishop and Rautiola
deficiencies addressed supra.
Appellant for the reasons addressed supra has persuaded us of error
with respect to Bishop and Rautiola teaching or suggesting all limitations
recited in base independent claim 1. Therefore, the rejections of claims 12-
20 and 22 that incorporate the claim 1 limitations cannot be sustained.
Claim 23
For reasons expressed infra, claim 23 is indefinite. Therefore, the
prior art rejection must fall, pro forma, because it necessarily is based on
speculative assumption as to the meaning of the claim. See In re Steele, 305
F.2d 859, 862-63 (CCPA 1962). Our decision in this regard is based solely
on the indefiniteness of the claimed subject matter and does not reflect on
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the adequacy of the prior art evidence applied in support of the rejection of
claim 23.
New Grounds of Rejection under 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter new grounds of rejection for
claim 23. Claim 23 is rejected under 35 U.S.C. § 112, first paragraph, as an
improper single means claim or as purely functional. Claim 23 is also
rejected under 35 U.S.C. § 112, second paragraph as being indefinite.
35 U.S.C. § 112, First Paragraph
Independent claim 23 is rejected under 35 U.S.C. § 112, first
paragraph, as an improper single means claim, or, alternatively, as purely
functional.
Although claim 23 does not contain the word “means,” the claim
is interpreted as having a means-plus-function limitation under 35 U.S.C. §
112, sixth paragraph. The claim recites a “base station for use in a cellular
communication system” (FF 4) that is configured as solely “being operable,
upon detecting that it has become isolated from the system or that a nearby
co-channel base station has become isolated from the system, to change its
own operating power level relative to the output power level of at least one
other base station” (FF 5). Other than the broadly recited cellular
communication system base station and co-channel base station, this claim
fails to recite any other structure to perform the recited function of being
operable to detect isolation from the system and changing base station
operating power level. (See FF 4-5). Claim 23’s functional limitation is not
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modified by sufficient structure, material, or acts for achieving the specified
function, and, accordingly, as authorized under § 112, sixth paragraph, is
considered a means-plus-function limitation.
As such, the means-plus-function limitation in claim 23 must be
construed by “look[ing] to the specification and interpret[ing] that language
in light of the corresponding structure, material, or acts described therein,
and equivalents thereof, to the extent the specification provides such
disclosure.” In re Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994)
(en banc). However, the interpreted “means” (i.e., a means for detecting
isolation from the system to change base station operating power), in effect,
renders claim 23 a single means claim that is improper under 35 U.S.C. §
112, first paragraph. Consequently, claim 23 covers every conceivable
means for achieving the desired result (i.e., detecting isolation from the
system to change base station operating power). The Specification,
however, discloses only those means known to Appellant (see FF 6-7) and
does not enable everything within the scope of the single means claim. See
In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983); see also Ex parte Miyazaki,
89 USPQ2d 1207, 1217 (BPAI 2008) (precedential) (noting the "Halliburton
case remains viable for claims having purely functional claim language
which is unlimited either by (1) the application of 35 U.S.C. § 112, sixth
paragraph, or (2) the additional recitation of structure"2 (emphasis in
original)). Consequently, independent claim 23 constitutes an improper
single means claim.

2 Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946).
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Alternatively, even if claim 23 could somehow be construed as not
containing means-plus-function limitations, it would still be unpatentable
under § 112, first paragraph, as purely functional. See Miyazaki, 89
USPQ2d at 1217 (“[A]ny claim that includes purely functional claim
language, and which is not subject to the limited construction under 35
U.S.C. § 112, sixth paragraph, fails to meet the requirements of 35 U.S.C. §
112, first paragraph . . . and thus is unpatentable.”). As noted above, the
Specification only discloses the means known to Appellant and does not
enable every way of performing the scope of the function of detecting
isolation from a communication network system to change base station
operating power as covered by claim 23. Therefore, the claim fails to satisfy
35 U.S.C. § 112, first paragraph for lack of an enabling disclosure
commensurate with the scope of the claim.
Thus, claim 23 is rejected under 35 U.S.C. § 112, first paragraph.
35 U.S.C. § 112, Second Paragraph
Claim 23 is also indefinite under 35 U.S.C. § 112, second
paragraph. The test for definiteness under 35 U.S.C. § 112, second
paragraph is whether “those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
(citations omitted). In the context of a means-plus-function limitation, if one
skilled in the art would be able to identify the structure, material, or acts for
performing the claimed function, then the requirements of 35 U.S.C. § 112,
second paragraph are satisfied. See Atmel Corp. v. Info. Storage Devices,
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Inc., 198 F.3d 1374, 1381 (Fed. Cir. 1999); see also ln re Dossel, 115 F.3d
942, 946-47 (Fed. Cir. 1997). If there is insufficient disclosure of the
structure, material, or acts for performing the claimed function, however, a
rejection under 35 U.S.C. § 112, second paragraph is appropriate. See
Donaldson, 16 F.3d at 1195; Biomedino, LLC v. Waters Tech. Corp., 490
F.3d 946, 952 (Fed. Cir. 2007).
In the present case, a digital base station internal controller is
disclosed as corresponding structure for the function recited in claim 23 of
detecting isolation from a communication network system to change base
station operating power (FF 6-7). As explained above, such disclosure is
necessarily insufficient as to all structures or acts capable of performing the
recited function. Thus, the Specification does not provide adequate
corresponding structure or acts or limit the scope of the claim to
corresponding structure or acts that perform the function as required by §
112, sixth paragraph. Also, even if claim 23 is construed as not containing
means-plus-function limitations, but merely functional recitations, without
more, then it could not distinctly claim an apparatus invention. Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990)
(“[A]pparatus claims cover what a device is, not what a device does.”).
Because we cannot determine the metes and bounds of claim 23, the
claim is indefinite.

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CONCLUSIONS
(1) Appellant has shown the Examiner erred in finding under §103(a)
that Bishop teaches or suggests detection of a base station becoming isolated
from a communication system as recited in claim 1.
(2) We have entered new grounds of rejection for claim 23 under
§ 112, first paragraph or, alternatively, under § 112, second paragraph.
ORDER
We reverse the Examiner's rejection of claims 1-7 and 9-22.
We have, however, entered new grounds of rejection under 37 C.F.R.
§ 41.50(b) for claim 23 under 35 U.S.C. § 112, first and second paragraphs.
This decision contains new grounds 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 Appellant, 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. . . .

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(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).
REVERSED - 37 C.F.R. § 41.50(b)

KIS

MOTOROLA, INC.
1303 EAST ALGONQUIN ROAD
IL01/3RD
SCHAUMBURG, IL 60196