Ex Parte Doumi et al

Patent Trial and Appeal Board

Sep 23, 2014

11611903 (P.T.A.B. Sep. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TEWFIK DOUMI, HANAN M. NOVOTNY, and
ANISH SANKALIA
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Appeal 2012-004924
Application 11/611,903
Technology Center 2600
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Before CARLA M. KRIVAK, JOHNNY A. KUMAR, and
LINZY T. McCARTNEY, Administrative Patent Judges.

McCARTNEY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) the Examiner’s final
rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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Application 11/611,903

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STATEMENT OF THE CASE
Appellants’ invention “relates to wireless communications by
members of public service agencies.” (Spec. ¶ 1.) Claim 1 illustrates the
claimed invention:
1. A device for facilitating wireless communications on
behalf of at least one public service agency, comprising
a database portion including information regarding how
at least one wireless communication network element is to
operate on behalf of a user from the at least one public service
agency;
a communication portion configured to interface with at
the at least one wireless communication network element to
provide information from the database portion to the at least
one wireless communication network element for controlling
how the at least one wireless communication network element
operates to provide wireless communications for the user
according to the provided information, the at least one wireless
communication network element operating responsive to the
information provided by the communication portion differently
than the at least one wireless communication network element
operates to provide wireless communications for a user outside
of the at least one public service agency; and
a control portion configured to allow the at least one
public service agency to configure information in the database
portion corresponding to the users from the at least one public
service agency.

REJECTIONS
Claims 1, 6–8, 11, and 16–18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Blackberry, Blackberry for Public Safety Organizations
(2004) and Yiu (US 2007/0226225 A1; Sept. 27, 2007).
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Claims 2, 3, 12 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Blackberry, Yiu, and Blumberg (US 2004/0110515 A1;
June 10, 2004).
Claims 4 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Blackberry, Yiu, and Dawidowsky (US 2003/0043765
A1; Mar. 6, 2003).
Claims 5 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Blackberry, Yiu, and Peng (US 6,959,436 B2; Oct. 25,
2005).
Claims 9 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Blackberry, Yiu, and Serdy (US 5,990,886; Nov. 23,
1999).
Claims 10 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Blackberry, Yiu, and Christian (US 6,892,233 B1; May
10, 2005).
ISSUES
(1) Does the combination of Blackberry and Yiu teach or suggest “at
least one wireless communication network element operating responsive to
the information provided by the communication portion differently than the
. . . element operates to provide wireless communications for a user outside
of the at least one public service agency” as recited in claim 1?
(2) Are the Examiner’s proposed prior art combinations for claims 4
and 14, 5 and 15, and 10 and 20 improper?
(3) Does the combination of Blackberry, Yiu, and Serdy teach or
suggest “wherein at least two of the public service agencies are responsible
for services in geographically distinct areas and wherein the database portion
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includes information regarding wireless communication access privileges for
a user from one of the two public service agencies when the user is within
the area of the other of the two public service agencies” as recited in claims
9 and 19?
ANALYSIS
Claim 1
The Examiner found Blackberry taught “a device for facilitating
wireless communications on behalf of at least one public service agency” but
did not disclose “at least one wireless communication network element
operating responsive to the information provided by the communication
portion differently than the . . . element operates to provide wireless
communications for a user outside of the at least one public service agency.”
(See Ans. 4–5, 18.) The Examiner found Yiu remedied this deficiency, as
Yiu disclosed a “mobile collaboration and communication system” that
included a controller that could “specify[] different levels of access and
authorization.” (Id. at 18 (citing Yiu ¶ 57); see also id. at 6.)
Appellants contend Yiu does not teach or suggest a network element
that operates differently depending on the user. (App. Br. 6.) Appellants
contend Yiu’s modules perform “the same function or operation for all
users,” namely “granting a permitted level of access.” (Id. at 5–6.)
Accordingly, Yiu teaches “[t]here is only one mode of operation,” and Yiu’s
“controller does not use a different mode of operation.” (Reply Br. 1–2.)
We agree with the Examiner. The limitation at issue does not recite
“different mode[s] of operation,” and Appellants have not offered persuasive
evidence or argument the limitation should be construed to include this
language. Rather, the limitation merely requires a wireless communication
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element “operat[e] . . . differently” for certain users. As found by the
Examiner, Yiu’s controller “operat[es] . . . differently” for certain users in
the sense that the controller specifies different levels of access and
authorization for users. This comports with Appellants’ written description,
which explains “each agency that has management control over one of the
[radio access network elements] may . . . . specify whether its individual
subscribers are to be provided with . . . access . . . .” (Spec. ¶ 33 (emphasis
added); see also id. ¶¶ 16, 23, 25.) We therefore sustain the rejection of
claim 1. Because Appellants have not presented separate substantive
patentability arguments for claims 2, 3, 6–8, 11–13, and 16–18 we also
sustain the rejection of these claims.
Claims 4, 5, 10, 14, 15, and 20
The Examiner conceded the combination of Blackberry and Yiu did
not teach all of the limitations recited in claims 4 and 14, 5 and 15, and 10
and 20 but found Dawidowsky, Peng, and Christian, respectively, taught the
missing limitations. (See Ans. 13–15, 17–18.) Appellants contend even if
Dawidowsky, Peng, and Christian teach the limitations at issue, there is no
reason to combine these references with Blackberry and Yiu in the proposed
manner. (See App. Br. 7–10.) Appellants contend the Examiner relied on
improper hindsight to form the proposed combinations. (See id. at 7–10.)
Regarding claims 4 and 14 and 5 and 15, Appellants contend there is no
reason to combine the references in the claimed manner because “no benefit
flow[s] from the . . . . combination[s],” as there is no relationship between
the added limitations and how Yiu determines whether to grant a particular
level of access. (Id. at 8–9.)
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We agree with the Examiner. Contrary to Appellants’ arguments, the
Examiner found each cited reference provided motivation for combining the
reference with Blackberry and Yiu in the proposed manner, (see Ans. 14, 16,
18), and Appellants have not offered a persuasive challenge to these
findings. Although the Examiner’s reasoning differs from Appellants’
proffered rationale, Appellants’ proffered rationale does not control the
obviousness analysis. Cf. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007) (“In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls.”).
Claims 9 and 19
Claim 9 recites “wherein at least two of the public service agencies
are responsible for services in geographically distinct areas and wherein the
database portion includes information regarding wireless communication
access privileges for a user from one of the two public service agencies
when the user is within the area of the other of the two public service
agencies.” Claim 19 recites a similar limitation. The Examiner admitted the
Blackberry-Yiu combination did not disclose this limitation but found Serdy
did. (See Ans. 16.) Appellants contend Serdy neither teaches nor suggests
this limitation. (App. Br. 9.)
We agree with Appellants. The cited portion of Serdy discloses
“databases include geographical information for the individual recipients, so
that [a] web server can query [a] database to obtain a list of recipients within
geographical boundaries defined by a graphical area selector.” (Serdy, col.
6, ll. 3–6.) It is not readily apparent why the cited language teaches or
suggests the limitation at issue, and the Examiner has not explained why the
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citation teaches or suggests the limitation. Accordingly, we will not sustain
the rejection of claims 9 and 19.

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DECISION
For the reasons discussed above, we affirm the rejections of claim 1–
8, 10–18, and 20. We reverse the rejection of claims 9 and 19.
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-IN-PART

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