Ex Parte Gray

Patent Trial and Appeal Board

Oct 17, 2012

10246957 (P.T.A.B. Oct. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILLIAM H. GRAY
____________________

Appeal 2010-006103
Application 10/246,957
Technology Center 2600
____________________

Before ERIC S. FRAHM, DAVID M. KOHUT and HUNG H. BUI,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1-6, 8-16 and 18-22.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Real Party in Interest is Hewlett-Packard Development Company. Appeal
Brief filed January 26, 2008 (“App. Br.”).
2 In Non-Final Office Action dated September 25, 2007, dependent claims 7
and 17 have been conditionally allowed by the Examiner if rewritten in
independent form including all limitations of respective base claims 1 and 10
and intervening claims 5-6 and 15-16. As such, claims 7 and 17 are not on
appeal.
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I. STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s claims are generally directed to a method and system of
providing bandwidth on demand to a Wide Area Network (WAN) user from
a Wireless Local Area Network (WLAN) access point so that the WAN user
can access a WLAN-based network to efficiently and quickly transmit,
receive, upload or download a video file or a large data file. See generally
Summary, Spec. ¶¶0008-0010.
Application FIG. 5, as reproduced below, is helpful in understanding
the invention.

FIG. 5 depicts a method of providing WLAN bandwidth on demand to
a WAN user from a WLAN access point (AP)

As shown in FIG. 5, a mobile device of a WAN user 52 is operable
over both a WAN-based network 10 (e.g., GSM, CDMA or 3G network) and
a high-speed WLAN-based network 20 (e.g., Internet). See Spec. ¶0026,
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¶0033 and ¶¶0041-0044. During communication, via the WAN-based
network 10, the user 52 is notified and provided (via mobile device 18) an
option to purchase sufficient WLAN bandwidth from a nearby WLAN
access point 24 of the WLAN-based network 20 to perform a bandwidth
intensive task, such as downloading e-mail attachment, sending email with
attachment, sending video email, browsing the Internet, downloading web
page or file from a web site and the like, using the high speed WLAN-based
network 20. See Spec. ¶0034.
Once that option is requested from WAN user 52, the service provider
determines the current position of WAN user 52 and searches for one or
more nearby WLAN access points 24 based on the WAN user's current
position. The service provider then selects WLAN access point 24 that is
nearest to WAN user 52 and transmits the requested attachment to WLAN-
enabled mobile device 18 associated with WAN user 52 from serving
WLAN access point 24 via its directional antenna 26. See Spec. ¶0034 and
¶¶0038-0039.
Claims on Appeal
Claims 1, 10 and 22 are independent. Claim 1 is representative and is
reproduced below with disputed limitations emphasized:

1. A method of providing bandwidth on demand to a
Wide Area Network (WAN) user from a Wireless Local Area
Network (WLAN) access point, the user having a mobile
appliance with WAN-WLAN capability, the method
comprising:

determining a current position of the mobile appliance;

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selecting a WLAN access point from a plurality of WLAN
access points that is accessible from the current position of said
mobile appliance;

determining the direction to said mobile appliance from
the selected access point to provide directional information; and

transmitting said directional information to the selected
access point;

wherein the directional information enables the selected
access point to point its directional antenna in the direction of
said mobile appliance.

Evidence Considered
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fukagawa U.S. 6,188,913 B1 Feb. 13, 2001
Kallio U.S. 2002/0147008 A1 Oct. 10, 2002
Blight U.S. 2002/0184418 A1 Dec. 5, 2002

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Examiner’s Rejections3
(1) Claims 1-3, 8-9 and 22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Blight in view of Fukagawa (Ans. 5);
(2) Claims 10-12 and 18-20 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Blight in view of Kallio and
Fukagawa (Ans. 6); and
(3) Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Blight in view of Kallio and Fukagawa (Ans. 2, 9).

II. ISSUES
The dispositive issues before us are whether Appellant has shown that
the Examiner erred in rejecting:
(1) Claims 1-3, 8-9 and 22 as being unpatentable under 35 U.S.C.
§103(a) in view of teachings of Blight and Fukagawa (Ans. 5);

3 Claims 4-6 and 21, which depends on base claim 1, and claims 14-16,
which depends on base claim 1, stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Blight, Kallio, Fukagawa and other prior art
references. See Non-Final Office Action dated on September 25, 2007.
However, Appellant presents no arguments against the rejections of
dependent claims 4-6, 14-16 and 21 (see Ans. 3). As such, the final
rejections of claims 4-6, 14-16 and 21 are affirmed, and any dispute
regarding these rejections is deemed waived. See Ex Parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (citing In re Oetiker, 977 F.2d. 1443,
1445) (explaining that the BPAI reviews the appealed rejections for error
based upon the issues identified by an Appellant, and in light of the
arguments and evidence produced thereon). See also Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that a ground of rejection is
waived when an Appellant fails to contest the rejection and that the Board is
free to affirm such an uncontested rejection without considering the merits).
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(2) Claims 10-12 and 18-20 as being unpatentable under
35 U.S.C. § 103(a) in view of teachings of Blight, Kallio and Fukagawa
(Ans. 6); and
(3) Claim 13 as being unpatentable under 35 U.S.C. § 103(a) in
view of teachings of Blight, Kallio and Fukagawa (Ans. 2, 9).

III. ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief (App.
Br. 5-8) that the Examiner has erred, the Examiner’s rejections and the
Examiner’s responses to Appellant’s arguments (Ans. 3-7). However, we
are not persuaded by the Appellant’s arguments and conclusions. We adopt
as our own (1) the findings and reasons set forth by the Examiner in the non-
final Office Action mailed September 25, 2007, and (2) the detailed findings
and responses set forth by the Examiner in the Examiner’s Answer in
response to each of the arguments raised by Appellant in the Appeal Brief.
We concur with the conclusions reached by the Examiner and further
emphasize the following:

§103 Rejection of Claims 1-3, 8-9 and 22 in view of teachings of Blight
and Fukagawa

With respect to independent claims 1 and 22, Appellant provides
several arguments for patentability. First, Appellant argues that Blight “is
not concerned with the problem of finding a wireless local area network”
and “with increasing bandwidth” and that Blight does not teach or suggest
“the claimed features for enabling communication between a user and a
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WLAN” and “a method of switching from a lower bandwidth WAN to a
higher bandwidth WLAN.” App. Br. 6, 9.
After reviewing the language of independent claims 1 and 22 in light
of Appellant’s arguments, however, we find that such arguments are not
based on limitations that appear in the claim and, as such, are not
commensurate with the scope of the claim. It is axiomatic that, in
proceedings before the PTO, claims in an application are to be given their
broadest reasonable interpretation consistent with the specification, and that
claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Sneed, 710 F.2d 1544,
1548 (Fed. Cir. 1983). Moreover, limitations are not to be read into the
claims from the specification. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
Furthermore, unclaimed features cannot impart patentability to claims. In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998); In re Self, 671 F.2d
1344, 1348 (CCPA 1982).
While we do not necessarily disagree with Appellant that the mobile
communication system of Blight performs differently than the system
disclosed by Appellant, it is the claimed invention that is before us on
appeal. In our view, to whatever extent Appellant is relying on the specific
details of the disclosed system including “finding a wireless local area
network,” “enabling communication between a user and a WLAN” and
“switching from a lower bandwidth WAN to a higher bandwidth WLAN”,
such features are not set forth in the language of the appealed claims. In our
opinion, Appellant’s arguments improperly attempt to narrow the scope of
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the claim by implicitly adding disclosed limitations which have no basis in
the claim. See In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
Second, Appellant contends that “Blight does not teach or suggest
using the current location of a mobile device to determine the location of an
accessible WLAN access point. Just the opposite, Blight uses the locations
of access points to determine the location of a mobile device.” App. Br. 9
(emphasis added). However, we are not persuaded by Appellant’s
contention. For example, independent claim 1 simply requires, inter alia: a
step of “determining a current position of the mobile appliance,” and a step
of “selecting a WLAN access point from a plurality of WLAN access points
that is accessible from the current position of said mobile appliance.”
We note that claim 1 does not set forth who or what is performing the
method or any of the steps of the method. Additionally, we note unless the
steps of a method actually recite an order in which the step must be
performed, the steps are not ordinarily construed to require one. Interactive
Gift Express, Inc. v. CompuServe, Inc., 256 F.3d 1323, 1342 (Fed. Cir.
2001). See also Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369-71
(Fed. Cir. 2003) (district court erred in claim construction by reading a step
order from the written description into the claims).
With the above discussion in mind, we are of the view that the
Examiner has reasonably interpreted the disclosure of Blight as describing
selection of a WLAN access point accessible from the current position of a
mobile device and determination of the current position of the mobile
device. In particular, we agree with the Examiner’s finding that Blight
discloses “discovering access point [sic] that are accessible from the current
position and establishing a connection with the nearby access points.” Ans.
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10. See Blight ¶0035; also see FIG. 2 and ¶0142 (where each of the network
access points is configured to detect which wireless mobile devices are
within range, and mobile device users may access refined location
information) Ans. 10-11.
Third, Appellant contends that Fukagawa does not teach or suggest
the differences between independent claim 1 and Blight, because a base
station of Fukagawa must first receive an incoming signal from a mobile
station before estimating a direction and adaptively shaping its radiation
pattern. App. Br. 7.
However, we do not agree with Appellant. The Examiner's rejection
is not based upon a bodily incorporation of Fukagawa's directional antenna
array provided at a base station into Blight's system. See In re Keller, 642
F.2d 413, 425 (CCPA 1981)(citations omitted) (“The 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 those references would have suggested to
those of ordinary skill in the art.”); In re Nievelt, 482 F.2d 965, 968 (CCPA
1973) (“Combining the teachings of references does not involve an ability to
combine their specific structures.”).
In particular, we agree with the Examiner's finding that Fukagawa
discloses the transmission of directional information to the selected access
point and determining the direction of the mobile device with respect to the
antenna. See col. 2, ll. 21-31 of Fukagawa; Ans. 11. We note that Appellant
has not asserted that the proposed modification of Blight and Fukagawa
would have been beyond the capabilities of a person of ordinary skill in the
art. Absent such an assertion, we “take account of the inferences and
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creative steps that a person of ordinary skill in the art would employ,” and
find a person of ordinary skill in the art would overcome those difficulties
within their level of skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007); see also id. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”).
Fourth, Appellant argues that Blight does not teach or suggest
"transmitting said directional information to the selected access point" and
that "the directional information enables the selected access point to point its
directional antenna in the direction of the mobile appliance" as recited in
independent claims 1 and 22. However, Appellant's arguments are not
persuasive since the Examiner cites Fukagawa for suggesting these features,
as discussed supra.
In view of the above discussions, since Appellant has not shown that
the Examiner erred in concluding that all of the claimed limitations are
present in the disclosure of Blight and Fukagawa, the Examiner’s
obviousness rejection of independent claims 1 and 22, as well as dependent
claims 2-3, 8-9 not separately argued by Appellant, is sustained.

§103 Rejection of Claims 10-12 and 18-20 in view of teachings of Blight,
Kallio and Fukagawa

With respect to independent claim 10, Appellant contends that:
None of these cited documents teaches or suggests a
method for finding a wireless local area network user so the
WAN user can access a wireless local area network. In Blight
and Kallio's systems, the wireless local area network doesn’t
find the user. In those systems, the user finds the wireless local
area network.
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App. Br. 11-12.
We do not agree with Appellant. As correctly noted by the Examiner,
and undisputed by Appellant, Kallio discloses:
[A] mobile appliance having dual WAN-WLAN
capability (see par. abstract); a Wide Area Network (WAN) ...
having a plurality of cell sites (see fig. 1, item 110; par. 0026);
a Mobile Switching Center (MSC; see fig. 1, item 120),
connected to said WAN network, for determining a current
position of said mobile appliance; a mobile appliance
associated with said WAN user and in communication with a
serving cell site and said MSC ... (see fig. 1 items 110, 150,
120; par. 0026, 0029).
Ans. 7.

FIG. 1 of Kallio4 is reproduced below.

FIG. 1 depicts a seamless network mobility architecture for providing
seamless mobility between a GSM network and a WLAN network

4 “[W]here a rejection is predicated on two references each containing
pertinent disclosure which has been pointed out to the applicant, we deem it
to be of no significance, but merely a matter of exposition, that the rejection
is stated to be on A in view of B instead of on B in view of A, or to term one
reference primary and the other secondary.” In re Bush, 296 F.2d 491, 496
(CCPA 1961).
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As shown in FIG. 1, a mobile device 150 operates in both a WAN
network 100 and a WLAN network 200. Mobile switching center (MSC)
120 included in the WAN network 100 updates a current position of the
mobile 150. See Kallio ¶0035. Wireless mobile center (WMC) 210 serves
as a WLAN access point to provide seamless mobility for the mobile device
150 between the WAN network 100 and the WLAN network 200.
Appellant also argues that the Examiner's modified system of Blight,
Kallio and Fukagawa does not include all features of base claim 10,
including:
[A]t least one position location server, connected to said
WAN network and said WLAN network, for receiving the
current position of said mobile appliance from said MSC over
said WAN network, and selecting a WLAN access point from
said plurality of WLAN access points that is accessible from
and nearest to the current position of said mobile appliance to
provide a serving WLAN access point; and
wherein said serving WLAN access point is operable to
establish a communication link with said mobile appliance and
to provide a bandwidth on said WLAN network to said WAN
user, thereby enabling said WAN user to access and utilize said
WLAN network for performing a task.

App. Br. 12-13 (emphasis added).
However, the Examiner's arguments are not persuasive. Claim terms
must be given their “broadest reasonable interpretation” consistent with the
specification. In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). Given its
"broadest reasonable interpretation" consistent with the specification, the
limitation "position location server, connected to said WAN network and
said WLAN network, for receiving the current position of said mobile
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appliance from said MSC over said WAN network, and selecting a WLAN
access point from said plurality of WLAN access points that is accessible
from and nearest to the current position of said mobile appliance to provide a
serving WLAN access point" as recited in independent claim 10
encompasses "the MSC/HLR 120" as shown in FIG. 1 and described in
¶0025 of Kallio.
Likewise, the limitation "wherein said serving WLAN access point is
operable to establish a communication link with said mobile appliance and
to provide a bandwidth on said WLAN network to said WAN user, thereby
enabling said WAN user to access and utilize said WLAN network for
performing a task" as recited in independent claim 10 encompasses "the
WMC 210" which serves as a WLAN access point, as shown in FIG. 1 and
described in ¶0029-¶0030 of Kallio to provide seamless mobility for the
mobile device 150 between the WAN network 100 and the WLAN network
200. This is because, once a communication link is established between the
WMC 210 serving as the WLAN access point and the mobile device 150,
albeit in an IDLE state or an ACTIVE state, the WAN user is able to access
and utilize the WLAN network to perform a task.
In view of these reasons, we will sustain the Examiner’s obviousness
rejection of claims 10-12 and 18-20 for the same reasons discussed.

§103 Rejection of Dependent Claim 13 in view of teachings of Blight
and Kallio

Appellant presents no separate arguments for patentability of
dependent claim 13. App. Br. 1 and 4. As such, claim 13 falls with
independent claim 1. See 37 C.F.R. § 41.37 (c)(1)(vii).
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IV. CONCLUSION
On the record before us, we conclude that Appellant has not
demonstrated that the Examiner’s obviousness rejections of claims 1-6, 8-16
and 18-22 contain error.

V. DECISION
As such, we affirm the Examiner’s decisions to reject claims 1-6, 8-16
and 18-22 under 35 U.S.C. § 103(a).

AFFIRMED

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