Ex Parte Froehlich et al

Patent Trial and Appeal Board

Apr 25, 2014

11230019 (P.T.A.B. Apr. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT WILLIAM FROEHLICH and
LISAN LIN
__________

Appeal 2011-011409
Application 11/230,019
Technology Center 2100
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
MICHAEL W. KIM, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Robert William Froehlich, et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1-4, 6-18, and 20-29. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).

Appeal 2011-011409
Application 11/230,019

2

SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A system for collecting and utilizing end user correlated
data records in a network, said network comprising a wireless
network and a packet data network, wherein said wireless
network and said packet data network are different networks,
said system comprising:
at least one probe in the wireless network;
at least one probe in the packet data network;
wherein the probes are operable to collect data records
containing information related to network activity on the
wireless network and the data network and user devices, said
activity pertaining to at least one of a request for or provision of
a data service that is hosted by said packet data network which
is desired by a given end user's wireless device that is
communicatively coupled to said wireless network;
a mediation device in communication with the probes,
the mediation device associating end user information with the
collected data records pertaining to the given end user, thereby
producing end user correlated data records; and
an intelligent application services device receiving the
end user correlated data records from the mediation device and

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Oct. 18, 2010) and Reply Brief (“Reply Br.,” filed May 12, 2011),
and the Examiner’s Answer (“Ans.,” mailed Mar. 14, 2011).
Appeal 2011-011409
Application 11/230,019

3
examining the end user correlated data records to determine if
there are correctable conditions in the network or user devices.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Reed

US 2003/0134648 A1 Jul. 17, 2003
The following rejection is before us for review:
1. Claims 1-4, 6-18, and 20-29 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Reed.

ISSUES
Did the Examiner err in rejecting the claims under § 102 as being
anticipated by Reed?
Specifically, does Reed describe, expressly or inherently, “said
network comprising a wireless network and a packet data network, wherein
said wireless network and said packet data network are different networks…
at least one probe in the wireless network; at least one probe in the packet
data network” (independent claim 1, emphasis added) and “data records
reflecting activity in a wireless network and an Internet Protocol (IP)
network” (independent claims 10 and 16)?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

Appeal 2011-011409
Application 11/230,019

4
ANALYSIS
There are three independent claims: system claim 1, method claim
10, and device claim 16.
In regards to claim 1 and the limitation at issue, the Examiner’s
position is:
As for said network comprising a wireless network and a
packet data network, wherein said wireless network and said
packet data network are different networks, the recitation has
not been given patentable weight because the recitation occurs
in the preamble. A preamble is generally not accorded any
patentable weight where it merely recites the purpose of a
process or the intended use of a structure, and in this case,
where the body of the claim does not depend on the preamble
for completeness but, instead, the process steps or structural
limitations are able to stand alone.
Ans. 11.
The Appellants disagree, arguing
While the limitation that the wireless network and the
packet data network are different networks is introduced in the
claim's preamble, the preamble should be given patentable
weight. “If the claim preamble, when read in the context of the
entire claim, recites limitations of the claim, or, if the claim
preamble is ‘necessary to give life, meaning, and vitality’ to the
claim, then the claim preamble should be construed as if in the
balance of the claim.” Pitney Bowes, Inc. v. Hewlett-Packard
Co., 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999), as cited by
M.P.E.P. §2111.02. The preamble of claim 1 is necessary to
give life, meaning, and vitality to the claim, and therefore it is
improper for the Examiner to ignore its patentable weight.
App. Br. 20.
The Appellants further argue that
in rejecting claim 1, the Examiner relies upon the wireless
network (108) of Reed as disclosing both the wireless network
Appeal 2011-011409
Application 11/230,019

5
and the packet data network of claim 1. In other words, the
Examiner ignores the expressly taught packet data network 156
of Reed, and instead reads Reed’s wireless network 108 as
being both the recited wireless network and the recited packet
data network of claim 1. The Examiner maintains this position
even though claim 1 has been amended to expressly recite that
the wireless network and packet data network are different
networks.
Reply Br. 4; emphasis original.
We agree with the Appellants. When structural limitations are present
in the preamble, they cannot be ignored. Notwithstanding that claim 1
recites a “packet data network” and a different “wireless” network in the
preamble of the claim, it is nevertheless necessary to treat it in order to make
a patentability determination. Cf. MPEP 2111.02 (I) (“Any terminology in
the preamble that limits the structure of the claimed invention must be
treated as a claim limitation.” [citations omitted]). Having not treated the
structural limitations set forth in the preamble of the claim, it follows that,
given no further explanation as to how a wireless network and a different
packet data network with probes in each network as claimed reads on Reed’s
wireless network, the Examiner has not made out a prima facie case of
anticipation in the first instance. Moreover, we note that both “wireless
network” and “packet data network” are recited in the body of independent
claim 1, and different claim terms are presumed to have differing claim
scopes. Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1563 (Fed. Cir.
1991) (two distinct claim elements should each be given full effect). We
reach the same result as to the rejection of claims 2-4, 6-9, 21, 25, and 26
that depend from claim 1.
Appeal 2011-011409
Application 11/230,019

6
In regards to claims 10 and 16 and the limitation at issue, the
Examiner’s position is:
With respect to “creating data records reflecting activity
in the wireless network and IP network for a data service that is
hosted by said IP network which is desired by an end user’s
wireless device that is communicatively coupled to said
wireless network”, Reed discloses this in paragraphs 283 (as
discussed above) and 978. In paragraph 978 Reed discusses
“Logs can be created and appended as a wireless device 104
roams a local wireless device network 100 or a remote wireless
device 1900 network. Using TCP/IP and ATM connections,
servers for discreet wireless device networks 100 can
communicate together and allow seamless network
interoperability. This allows the tracking logs to record the
location of wireless devices 104 on a plurality of wireless
device networks 100 having had a request generated from any
network connected to the deemed wide-area network. Internet
3202 Protocol 6 and 7 should allow this to become even more
practical”.
Ans. 13-14.
The Appellants disagree, arguing that:
Reed fails to disclose at least the above-emphasized
limitations [reflecting activity in the wireless network and IP
network for a data service that is hosted by said IP network
which is desired by an end user's wireless device that is
communicatively coupled to said wireless network”] of claim
10. For instance, Reed does not disclose creating data records
reflecting activity in a wireless network and IP network for a
data service that is hosted by the IP network which is desired by
an end user's wireless device that is communicatively coupled
to the wireless network.

The Final Office Action cites to paragraphs 0283 and
0978 of Reed as disclosing the above limitations. However, as
discussed below, the cited portions of Reed merely disclose use
of the Internet to exchange information between monitoring
Appeal 2011-011409
Application 11/230,019

7
servers, and does not teach that the Internet hosts a data service
for an end user's wireless device or that a data record is created
reflecting activity in the Internet.

Reed discloses that its WNTS system (2800) may be
implemented on a central master server (2900), see e.g., Figures
28-29 and paragraphs 0476-0482 of Reed. As shown in Figure
29, the central master server 2900 may connect to the Internet,
and Reed discloses (e.g., in its paragraph 0978) that various
ones of such central master servers 2900 that may be
implemented for monitoring different wireless networks 108
may communicate with each other (e.g., using TCP/IP and
ATM connections).

The above-mentioned communication over the Internet
between the servers in Reed appears to allow the exchange of
information pertaining to their respective monitored wireless
networks 108 (e.g., information about locations where calls in
the respective wireless network were dropped). This exchange
of information over the Internet in Reed is between the
monitoring servers 2900, and is not hosting or providing a data
service to a user’s wireless device.

While Reed makes mention of the Internet, it does not
teach all limitations as recited in claim 10. For instance, Reed
does not teach creating a data record that reflects activity in the
wireless network and the IP network (e.g., the Internet that is
used for exchanging information between the servers 2900) for
a data service that is hosted by the IP network which is desired
by an end user's wireless device. Further, because Reed does
not disclose creating such data records, it does not further
disclose correlating the data records with end user information,
or determining whether a correctable condition exists in the
network based on the end user correlated data records.
App. Br. 24-25; emphasis original.
We have carefully reviewed Reed. We agree with the Appellants.
Albeit Reed discloses having an end user’s wireless device access logs on its
Appeal 2011-011409
Application 11/230,019

8
own locations using the Internet [see at least [0916]], Reed does not
expressly or inherently describe data records “reflecting activity in the IP
network.” Paragraph [0283] discloses “record data on faults and problems
these wireless device incur relevant to their latitude/longitude” and
paragraph [0978] discloses “[l]ogs can be created and appended.” In neither
disclosure is there an expressly or inherent description of “creating data
records reflecting activity in the wireless network and IP network for a data
service that is hosted by said IP network which is desired by an end user's
wireless device that is communicatively coupled to said wireless network”
as claimed.
Accordingly, the rejection of claims 10 and 16 and claims 11-15, 17,
18, 20, 22-24, and 27-29 that depend therefrom is not sustained.

CONCLUSIONS
The rejection of claims 1-4, 6-18, and 20-29 under 35 U.S.C. § 102(b)
as being anticipated by Reed is reversed.

DECISION
The decision of the Examiner to reject claims 1-4, 6-18, and 20-29 is
reversed.

REVERSED

mls