Ex Parte Goldman et al

Patent Trial and Appeal Board

Nov 13, 2014

12169147 (P.T.A.B. Nov. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/169,147 07/08/2008 Stuart O. Goldman LUTZ 2 00576 8754
48116 7590 11/13/2014
FAY SHARPE/LUCENT
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
EXAMINER
FANG, PAKEE
ART UNIT PAPER NUMBER
2642
MAIL DATE DELIVERY MODE
11/13/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STUART O. GOLDMAN, KEVIN HANNAN,
PAUL D. WOLFSON, RICHARD E. KROCK,
KARL F. RAUSCHER, and JAMES P. RUNYON
____________

Appeal 2012-005261
Application 12/169,147
Technology Center 2600
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-005261
Application 12/169,147
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STATEMENT OF THE CASE
The Examiner finally rejected claims 1–5, 7–11, and 13–22. Claims 6
and 12 were canceled. (App. Br. 3). Appellants appeal from the final
rejection under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
INVENTION
This invention relates to "automatic data capture when wireless
service disruption is detected." (Title). Claim 1, reproduced below, is
representative of the claimed subject matter:
1. In a wireless telecommunications network, a method for
capturing data regarding mobile stations served by the network,
said method comprising:
(a) monitoring a designated geographic area provided wireless
service by the telecommunications network to detect call
failures occurring in the monitored area;
(b) counting a number of failures detected via said monitoring
that occur within a designated timeframe;
(c) comparing the counted number of failures to a threshold
value;
(d) recognizing mobile stations located in or near the
monitored area during the designated timeframe based at least
in part on the mobile stations being registered for service from
the network; and
(e) in response to the counted number of failures exceeding the
threshold value, recording data regarding the mobile stations
recognized by the network as being located in or near the
monitored area during the designated timeframe.
(Contested limitations emphasized).
Appeal 2012-005261
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REJECTIONS
R1. Claims 1, 2, 4, 5, 7, 8, 10, 11, 13–17, and 19–22 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over the combined teachings and
suggestions of Schmitt (US Pat. No. 6,459,695 B1) and Kalev (US Pat. No.
6,275,703 B1).
1

R2. Claims 3 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings and suggestions of Schmitt,
Kalev, and Simonds (US Pub. No. 2004/0092253 A1).
R3. Claim 18 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings and suggestions of Schmitt,
Kalev, and Kim (US Pub. No. 2007/0103298 A1).

GROUPING OF CLAIMS
Based on Appellants' arguments, we decide the appeal of:
Rejection of claims: on the basis of representative claim:
R1. claims 1, 2, 4, 5, 7, 8, 10, 11, 13,
14, 16, 17, and 19–21
1
R1. claims 15 and 22 15
R2. claims 3 and 9 individually
R3. claim 18 individually
See 37 C.F.R. § 41.37(c)(1)(vii)(2004).
2

1
The heading in Answer 5 incorrectly includes canceled claim 6. (Ans. 5,
App. Br. 3).
2
Appellants filed a Notice of Appeal on Sept. 19, 2011. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex Parte
appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the
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Application 12/169,147
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ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We disagree with Appellants' contentions regarding the
Examiner's rejections of the claims. We adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons set forth by the Examiner in the Answer in
response to arguments made in Appellants' Appeal Brief. (Ans. 13–18). We
highlight and address specific findings and arguments below:
R1. CLAIM 1
A.
Claim 1, limitation (d) recites:
[D]) recognizing mobile stations located in or near the
monitored area during the designated timeframe based at least
in part on the mobile stations being registered for service from
the network[.]
Appellants contend:
As for the alleged Official Notice, the Answer merely
asserts it was common knowledge that "all mobile stations must
be registered with the BS/network in order to be monitored."
The Appellant respectfully disagrees that this allegation
supports this rejection. Even if the feature identified in the
Answer was common knowledge, this does not mean it was
common knowledge that all mobile stations registered with the
BS/network are monitored.
(Emphasis added; Reply Br. 4).

2004 version of the Board Rules last published in the 2011 edition of Title
37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to
the appeal. See also Manual of Patent Examining Procedure (MPEP) 8
th

ed., Rev. 8, July 2010.

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Application 12/169,147
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Appellants' contention is unpersuasive because it is not commensurate
in scope with limitation (d). Specifically, the claim recites: (d) “recognizing
mobile stations . . . based at least in part on the mobile stations being
registered . . . ,” not recognizing all mobile stations registered with the
network, as Appellants contend. (Id.). We agree with the Examiner that
Schmitt's monitoring/recording ("recognizing") of wireless terminals during
a time period in an area including the wireless terminals being registered
would have taught or suggested limitation [d]. (Ans. 6, 13; Official Notice;
Schmitt col. 2, l. 65 to col. 3, l. 6). Moreover, we find Schmitt's claims 1
and 4 (col. 4) additionally teach or suggest the contested limitation in
support of the Examiner's taking of Official Notice.
Appellants further contend: “Even if the Kalev mobile stations
associated with handovers are registered for service, there would be [] many
other mobile stations in other states (e.g., inactive, call origination, call
connected, call termination) that are registered for service and recognized
under the language of element (d).” (Reply Br. 5).
Appellants' contention is unpersuasive because it is not commensurate
with the scope of limitation (d). Specifically, claim 1 limitation (d) does not
recite or otherwise require recognizing or monitoring mobile stations in
other states (e.g., inactive, call origination, call connected, call termination).
For these reasons, on this record, we are not persuaded the Examiner erred.
B.
Claim 1 recites in pertinent part (emphasis added):
[(D)] recognizing mobile stations located in or near the
monitored area during the designated timeframe based at least
in part on the mobile stations being registered for service from
the network; and
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(e) in response to the counted number of failures exceeding the
threshold value, recording data regarding the mobile stations
recognized by the network as being located in or near the
monitored area during the designated timeframe.
Appellants contend: "when step 308 determines the approximate
location of 'each wireless station' when the call was dropped, it means that
only the locations of wireless stations that experienced dropped calls are
determined." (Reply Br. 6).
Appellants' contention is unpersuasive because it is not commensurate
in scope with limitation (e). Specifically, limitations (d) and (e) do not
require recording data regarding the mobile stations that did not drop calls.
We find limitation (e): "recording data regarding the mobile stations
recognized by the network . . . " would have been taught, or at least
suggested, by Schmitt's recording data regarding the mobile stations
recognized by the network that experienced dropped calls. (See Ans. 14–
15).
For these reasons, on this record, we are not persuaded the Examiner
erred. Accordingly, we sustain rejection R1 of representative claim 1, and
the grouped claims rejected under rejection R1 which fall therewith. (See
Grouping of Claims, supra).

R1. CLAIM 15
Dependent claim 15 recites:
15. The method of claim 13 wherein the mobile stations
recognized in (d) and for which data is recorded in (e) include
mobile stations that were registered for wireless service, but not
engaged in calls during the designated timeframe.
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Appellants contend: “the very act of attempting a call puts a mobile
station in an active state in which the mobile station is engaged in a call.”
(Reply Br. 8).
Appellants' contention is unpersuasive because it is not commensurate
in scope with the claim. Specifically, claim 15 does not recite: engaged in
calls includes mobile stations in an active state attempting a call. Nor do
Appellants cite a definition of "engaged in calls" in the Specification that
would support a more narrow interpretation.
3
We find the Schmitt's
attempted calls would have taught or suggested the broadest reasonable
interpretation of "not engaged in calls" (claim 15), because Schmitt's
attempted calls did not establish calls. (See Ans. 18).
For these reasons, on this record, we are not persuaded the Examiner
erred. Accordingly, we sustain rejection R1 of representative claim 15, and
grouped claim 22 rejected under rejection R1 that falls therewith. (See
Grouping of Claims, supra).
R2. AND R3.
Regarding the rejections R2 and R3 of the remaining claims,
Appellants urge these claims are patentable by virtue of their dependency
from base claims 1, 7, and 16. (App. Br. 22). However, we find no

3
Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
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deficiencies regarding the rejection of the base claims for the reasons
discussed above. Therefore, we sustain the Examiner's rejections R2 and R3
of the remaining claims on appeal.

DECISION
We affirm the Examiner's rejections of claims 1–5, 7–11, and 13–22
under § 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).

AFFIRMED

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