Ex Parte Gandhi

Patent Trial and Appeal Board

Apr 21, 2014

10885376 (P.T.A.B. Apr. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ASIF D. GANDHI
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Appeal 2011-002422
Application 10/885,376
Technology Center 2600
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Before MICHAEL R. ZECHER, MICHAEL J. FITZPATRICK, and
RAMA G. ELLURU, Administrative Patent Judges.

ELLURU, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant seeks relief under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of Claims 1-29.1 App. Br. 5.2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
The Invention
The appealed claims are directed generally to wireless communication
systems. Spec. ¶ [0001]. According to the Specification, typical call
scenarios comprise a mobile unit, such as a cell phone, communicating with
a base station within a sector for transmitting communications. Id. ¶ [0002].
As the mobile unit travels between sectors, the respective base stations
handle communications for the mobile unit and, at times, a hand off between
the base stations occurs. Id. For example, with a soft hand off (i.e., one
without a break in communication with the mobile unit), as a mobile unit is
leaving a first sector and entering a second sector, the base stations for both
sectors will handle communications for that mobile unit simultaneously. Id.
¶ [0003]. The second sector will be part of the mobile unit’s “active set”
before the first sector drops off. Id. The Specification explains that
conventionally the determination as to which base stations are part of a
mobile unit’s active set is based upon the “forward link (i.e., signal
transmissions from the base station to the mobile unit).” Id. ¶ [0004]
(emphasis added). The present invention “addresses the need for utilizing a

1 Application No. 10/885,376 titled Method of Adding a Sector To Any
Active Set, was filed on July 6, 2004. App. Br. 1. The real party-in-interest
is identified as Lucent Technologies, Inc., part of Alcatel-Lucent USA. Id.
2 We refer to the Appeal Brief filed June 24, 2010 (“App. Br.”), the
Examiner’s Answer mailed September 1, 2010 (“Ans.”), and the Reply Brief
filed November 1, 2010 (“Reply Br.”).
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reverse link for determining an active set.” Id. ¶ [0006] (emphasis added).
Based on the Specification’s disclosure of a “forward link,” a reverse link is
a signal transmission from the mobile unit to the base station.
Claim 1, set forth below, is illustrative of the subject matter on appeal
and is reproduced below:
1. A method of communication with a mobile unit,
comprising:
determining whether to add a candidate sector, which is
not yet part of an active set for the mobile unit, to the active set
for the mobile unit based on a reverse link between the mobile
unit and the candidate sector independent of any request from
the mobile unit regarding adding the candidate sector.

The Examiner relies upon the following prior art:
Gilhousen US 6,157,668 Dec. 5, 2000
Adatrao US 6,978,139 B2 Dec. 20, 2005
Arazi US 7,107,057 B2 Sept.12, 2006

The Rejected Claims
1. Claims 1-5, 8, 11, 12, 16, 17, and 19-29 were rejected under
35 U.S.C. § 103(a) as unpatentable over Arazi and Gilhousen. Ans. 3-10,
13-15.
2. Claims 6, 7, 9, 10, 13-15, and 18 were rejected under 35 U.S.C.
§ 103(a) as unpatentable over Arazi, Gilhousen, and Adatrao. Ans. 10-13,
15.
The Issues Presented
1. Whether the Examiner provided an articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness of
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claims 1-5, 8, 11, 12, 16, 17, and 19-29 over the combination of Arazi and
Gilhousen?
2. Whether modifying Arazi with Gilhousen, which was articulated
by the Examiner in concluding that claims 1-5, 8, 11, 12, 16, 17, and 19-29
are obvious, alters Arazi’s principle of operation or otherwise renders Arazi
inoperable for its intended purpose?
3. Whether Arazi teaches away from modifying a mobile
communication system to include an active set, as required by claims 1-5, 8,
11, 12, 16, 17, and 19-29?

ANALYSIS
35 U.S.C. § 103(a): Rejection of Claim 1-5, 8, 11, 12, 16, 17, and 19-29
Appellant’s principal argument is that the Arazi cordless handsets do
not use an “active set or anything corresponding to it.” App. Br. 4 (emphasis
omitted). Appellant argues that, because Arazi does not teach an active set,
“there would be no benefit to adding some kind of determination whether to
add a candidate sector to an active set for a mobile unit to the Arazi
reference.” Id. at 5.
Appellant’s argument that the Examiner has not provided a sufficient
reason to combine Arazi and Gilhousen is not persuasive. See KSR Int'l Co.
v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (rejecting rigid inquiry into
motivation to combine references). The relevant inquiry is whether the
Examiner provided “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR, 550
U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))
(internal quotation marks omitted). The Examiner states that Arazi and
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Gilhousen are combinable because both disclose “handoff situations where a
mobile unit is moving from an area covered by one transceiver to an area
covered by another transceiver.” Ans. 14 (citing Arazi 29:30-37, 39-41;
Gilhousen 10:65-67). We understand the Examiner to contend that
modifying Arazi with Gilhousen’s disclosure of adding an active set is a
combination of familiar elements according to known methods that yields
nothing more than predictable results. See KSR, 550 U.S. at 416. As such,
we determine that the Examiner has articulated reasoning with some rational
underpinning to support the combination of Arazi and Gilhousen.
As the Examiner correctly states (Ans. 13-14), “[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981). The Examiner finds that Arazi teaches:
determining whether to add a candidate Base Station #2, which
is not yet actively communicating with the mobile unit, to active
communication with the mobile unit based on a reverse link
between the mobile unit and the candidate Base Station #2,
independent of any request from the mobile unit regarding
adding the candidate Base Station #2.
Ans. 14 (citing Arazi 29:30-46). The Examiner further finds that Arazi’s
“Base Station #2” reads on the claimed “candidate sector” because Base
Station #2 is a potential transceiver for active communication with the
mobile unit within the area the transceiver covers. Id. As the Examiner
states, Arazi’s determination is independent of any request from the mobile
unit. Id. Arazi teaches that its determination is based on an “ECHO”
response received at Base Station #2 that the mobile unit transmits to Base
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Station #1 in response to instructions from Base Station #1. Arazi 10:30-46.
In addition, the Examiner find that Gilhousen teaches “determining whether
to add a candidate sector, which is not yet part of the active set for the
mobile unit, to the active set for the mobile unit.” Ans. 15 (citing Gilhousen
10:65-11:14). We discern no error in the Examiner’s findings.
Appellant argues that “[a]dding an active set would change the
principle of operation of the Arazi reference from one in which a handset
does not actively participate in a handoff to one in which the handset uses
active set information for purposes of actively participating in a handoff.”
App. Br. 5. Similarly, Appellant contends that the proposed modification
would interfere with the ability of Arazi to “achieve its intended result of
accomplishing a handoff for a handset without requiring any active
participation by that handset.” Id. at 6-7. In support of the argument that the
modified mobile communications system would include a handset that
participates in the handoff, Appellant refers to Gilhousen. App. Br. 6 (citing
Gilhousen 2:8-10). Specifically, Appellant refers to Gilhousen’s teaching
that “[t]he mobile unit monitors the pilot signal strength of the base stations
[i.e., forward link] of the Active Set, the Candidate Set, and the Neighbor
Set.” Gilhousen 2:8-10. Appellant contends that Arazi “does not have any
active set, pilot signals that the handsets could monitor nor any participation
by a handset in a handoff procedure.” App. Br. 6. Appellant’s argument is
misplaced.
In its handoff operation, Gilhousen teaches the use of both a forward
link (Gilhousen 2:8-10), whereby the mobile unit monitors the signals from
the base station, and a reverse link (id. at 6:15-17), whereby the base station
monitors the signals from the mobile unit. Id. at 3:38-41. Gilhousen
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explains that the use of the reverse link may continue with or without the
transmission of the forward link. Id. at 6:53-56. Importantly, the Examiner
refers to Gilhousen solely for its teaching that “an active set can be
associated with a mobile unit and that the determination can be determining
whether to add a candidate sector, which is not yet part of the active set for
the mobile unit, to the active set for the mobile unit.” Ans. 15 (citing
Gilhousen 10:65-11:14) (emphasis omitted). Thus, in the proposed modified
mobile communication system, the handoff between sectors occurs based
upon signals from the mobile unit received by the base station (i.e., reverse
link), as taught by Arazi and Gilhousen, and does not include a request for a
handoff by the mobile unit. Appellant, therefore, has not shown that the
modified system would change Arazi’s principle of operation or otherwise
render it inoperable for its intended purpose.
Appellant’s argument that Arazi “teaches away” from the proposed
combination also is not persuasive. App. Br. 6-7. According to Appellant,
“[t]he whole point to having an active set on a mobile [unit] is to allow it to
participate in a handoff operation.” App. Br. 5. Appellant argues that Arazi
teaches away from having an active set because Arazi teaches that its
handsets do not actively participate in the handoff operation. App. Br. 4-5
(citing Arazi 25:25-27). Appellant’s argument is unavailing, however,
because, as discussed above, in the modified mobile communication system,
the mobile unit does not participate in the handoff operation. Further, Arazi
expresses a preference that handsets are not equipped or enabled to support a
handoff (Arazi 16:39-41), as noted by Appellant (App. Br. 4). That
preference, however, does not necessarily discourage or dissuade an
ordinary skilled artisan from modifying a handset in a mobile
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communication system from participating in a handoff. See In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994) (“A reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.”). It
simply indicates that equipping or enabling Arazi’s handsets to support a
handoff has both advantages and disadvantages.
In sum, we determine Appellant has failed to persuade us of error in
the Examiner’s rejection of claims 1-5, 8, 11, 12, 16, 17, and 19-29.
Accordingly, we sustain the rejection of claims 1-5, 8, 11, 12, 16, 17, and
19-29.

35 U.S.C. § 103(a): Rejection of Claims 6, 7, 9, 10, 13-15, and 18
Appellant asserts the same arguments made above with respect to
claims 6, 7, 9, 10, 13-15, and 18. App. Br. 7. Thus, for the reasons
discussed above, we determine that the Examiner did not error in rejecting
claims 6, 7, 9, 10, 13-15, and 18. Accordingly, we sustain the rejection of
these claims.

DECISION
We affirm the Examiner’s rejection of:
Claims 1-5, 8, 11, 12, 16, 17, and 19-29 under 35 U.S.C. § 103(a) as
unpatentable over Arazi and Gilhousen; and
Claims 6, 7, 9, 10, 13-15, and 18 under 35 U.S.C. § 103(a) as
unpatentable over Arazi, Gilhousen, and Adatrao.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a).

AFFIRMED

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