Ex Parte Gerber et al

Board of Patent Appeals and Interferences

May 28, 2004

09283167 (B.P.A.I. May. 28, 2004)

1 Application for patent filed April 1, 1999.
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte EUGENE GERBER, MICHAEL JOSEPH MEYER and TED MOULOS
__________
Appeal No. 2002-1986
Application No. 09/283,1671
____________
ON BRIEF
____________
Before RUGGIERO, LEVY and SAADAT, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 1-21, which are all the claims pending in
this application.
We reverse.
BACKGROUND
Appellants’ invention is directed to a method and apparatus
for determining the service provider that should receive the
telephone call placed by a wireless caller based on a plurality
Appeal No. 2002-1986
Application No. 09/283,167
2
of call routing parameters. The method includes determining the
location of the wireless telephone set which is used to generate
call routing parameters to be placed in a list and transmitted to
a switching system (specification, page 3). The parameters are
read by the switching system until one parameter can be used to
determine the location of the service provider that services the
location of the wireless telephone set (id.). The call is then
extended to the selected service provider (id.).
Representative independent claim 1 is reproduced as follows:
1. A system for extending a telephone call from a wireless
telephone set that is served by a cellular communication system
to an automatically selected one of a plurality of location-based
service providers comprising:
means for determining a present location of said wireless
telephone set;
means responsive to determining said present location of
said wireless telephone set for generating a list that contains a
plurality of call routing parameters, each of which is determined
from said present location of said wireless telephone set and
wherein each of said plurality of call routing parameters is a
location identifier for said wireless telephone set; and
means for transmitting said list of said plurality of call
routing parameters to a switching system.
The Examiner relies on the following prior art references:
LaDue 5,845,203 Dec. 1, 1998
Kallioniemi et al. (Kallioniemi) 6,134,316 Oct. 17, 2000
(filed Oct. 18, 1996)
Appeal No. 2002-1986
Application No. 09/283,167
2 Method claims 16-21 are, directly or indirectly, dependent on system
claim 14. Although not an issue before us, we note that the system claim 14
cannot be further limited by a step of, for example, “identifying” or
“determining.” Therefore, the dependency of these claims should be corrected
(should probably be dependent upon method claim 15) such that the conflict in
their language is removed.
3
Claims 1-21 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kallioniemi in view of LaDue.2
We make reference to the answer (Paper No. 11, mailed March
26, 2002) for the Examiner’s reasoning in support of the
rejection, and to the brief (Paper No. 10, filed February 20,
2002) and the reply brief (Paper No. 12, filed May 24, 2002) for
Appellants’ arguments thereagainst.
OPINION
In rejecting the claims, the Examiner relies on Kallioniemi
for teaching the routing of calls through a telecommunications
system between a subscriber and a resource as the claimed system
for extending a telephone call from a wireless telephone to a
location-based service (answer, page 3). The Examiner recognizes
that Kallioniemi does not clearly teach the step of providing a
list comprising a plurality of location parameters to enable the
system to identify the present location of a roaming subscriber
(id.). However, referring to Figures 1B and 3 and column 7, line
64 to col. 8, line 38 and col. 11, lines 18-57, the Examiner
asserts that LaDue discloses the technique of providing call
Appeal No. 2002-1986
Application No. 09/283,167
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routing parameters with a routing table for identifying the
location of a wireless telephone user (answer, page 4). The
examiner then concludes that the combination would have been
obvious since locating roaming subscribers based on the routing
table with routing call parameters is desired (id.).
Appellants, although acknowledging that Kallioniemi relates
to both wireline and wireless networks (reply brief, page 2),
argue that the relied on section in Kallioniemi relates to
network routing prefix (NRP) and simply identifies the local
exchange that has been determined to serve the subscriber’s
telephone (reply brief, page 3). In particular, Appellants
assert that identifying the local exchange serving a subscriber
in Kallioniemi is different from the claimed use of the
subscriber’s location to generate a list of location parameters
(reply brief, page 3). Appellants further argue that LaDue
merely uses GPS data to locate a subscriber telephone, but fails
to teach or suggest the use of a number of subscriber location
parameters which define different aspects of the physical
location of the subscriber’s telephone (reply brief, page 4).
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
Appeal No. 2002-1986
Application No. 09/283,167
5
1955, 1956 (Fed. Cir. 1993). The conclusion that the claimed
subject matter is obvious must be supported by evidence, as shown
by some objective teaching in the prior art or by knowledge
generally available to one of ordinary skill in the art that
would have led that individual to combine the relevant teachings
of the references to arrive at the claimed invention. See In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
This evidence is required in order to establish a prima facie
case. In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-
88 (Fed. Cir. 1984); In re Cofer, 354 F.2d 664, 668, 148 USPQ
268, 271-72 (CCPA 1966).
With respect to the claimed feature of generating a list
that contains a plurality of call routing parameters based on the
present location of the wireless telephone, we agree with
Appellants that neither reference discloses or suggests such
feature. LaDue, in portions relied on by the Examiner, is merely
concerned with the location parameter of the server that serves
the user (col. 8, lines 23 and 24) or with routing parameters
used for sending a message packet to the appropriate link (col.
11, lines 18-21 and 29-33). In sending the packets, although
LaDue relies on GPS information related to the subscriber’s
location, the Examiner has pointed to no teaching or suggestion
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Application No. 09/283,167
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for determining call routing parameters from the location
information of the wireless telephone.
We also agree with Appellants’ characterization (reply
brief, page 2) of the Network Routing prefix (NRP) of Kallioniemi
and find that the NRP merely locates the base station or the
server associated with the subscriber’s telephone (col. 17, lines
20-22 and lines 32-37). We further note that the disclosed
routing parameter does not relate to the location of the
subscriber and merely defines the server location as stated in
col. 3, lines 20-36:
The subscriber location server has a changeable mapping of
subscriber numbers and exchange identifiers. Subscriber directory
numbers are not used for routing calls through the domain.
Rather, the node identifier (NI) in the form of the Network
Routing Prefix (NRP) is used to route calls to a terminating
locating exchange.
A change of connection (e.g., relocation) of a called
subscriber from a first exchange to a second exchange involves a
remapping, in a database of the subscriber location server, of
the subscriber number from an exchange identifier of the first
exchange to an exchange identifier of the second exchange. ...
The present invention is easily implemented and also provides
efficient and effective way e.g., of temporarily rerouting calls
for a subscriber to a different exchange.
[Emphasis added.]
Therefore, only the location identifier of the exchange or
server, and not of the wireless telephone, is of interest to
Kallioniemi, which is used to reroute incoming calls to a
subscriber when the subscriber moves.
Appeal No. 2002-1986
Application No. 09/283,167
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We also are mindful of the Examiner’s struggle to relate the
claimed “call routing parameters” to the teachings of LaDue
(answer, page 4) and later to Kallioniemi (answer, pages 9 & 10).
The Examiner further changes the gist of the rejection by stating
that Kallioniemi does not identify the “present location” and by
relying on LaDue for specifying the use of GPS location of the
subscriber (answer, the sentence connecting pages 11 and 12).
In order to justify the combination of Kallioniemi and LaDue, the
Examiner additionally relies on the fact that both references are
in the same field of endeavor (answer, page 10) and relate to
wireless communications and determining the location of the user
(answer, page 12).
As discussed above, Kallioniemi is concerned with the
location of the server whereas LaDue uses the GPS location of a
subscriber to route message packets from one cellular system to
the one serving the user. Therefore, neither reference teach or
suggest the claimed feature of “generating a list that contains a
plurality of call routing parameters, each of which is determined
from said present location of said wireless telephone set.”
Furthermore, we cannot agree with the Examiner that being in
the same field of endeavor and the fact that the references could
have been combined is sufficient to support the combination.
Appeal No. 2002-1986
Application No. 09/283,167
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While the relocated subscriber in Kallioniemi may be capable of
being modified to use the GPS location of the subscriber in LaDue
(although the list of call routing parameters is still missing),
there must be a suggestion or motivation in the references to do
so. See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984) (“The mere fact that the prior art could be so
modified would not have made the modification obvious unless the
prior art suggested the desirability of the modification.”). We
see no such suggestion. The location of the servers in
Kallioniemi are known and do not require to be identified by
their GPS location while the “location parameter” of LaDue also
relates only to the server system serving the current user and is
not required to be determined from the present location of the
wireless telephone.
Thus, not only there is no reason or suggestion for
combining various teachings from these references, as set forth
by the Examiner, we also find that the combination would not have
taught all the recited features of the claimed invention.
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Application No. 09/283,167
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Accordingly, we do not sustain the 35 U.S.C. § 103 rejection of
claims 1-21 over Kallioniemi and LaDue.
CONCLUSION
In view of the foregoing, the decision of the Examiner to
reject claims 1-21 under 35 U.S.C. § 103 is reversed.
REVERSED
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
STUART S. LEVY )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/ki
Appeal No. 2002-1986
Application No. 09/283,167
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