Ex Parte Grooms

Board of Patent Appeals and Interferences

Sep 14, 2009

10231891 (B.P.A.I. Sep. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PAUL C. GROOMS
Appeal 2009-004741
Application 10/231,891
Technology Center 2100
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Decided: September 14, 2009
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Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
JEAN R. HOMERE and THU A. DANG, Administrative Patent Judges.

MACDONALD, Vice Chief Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-004741
Application 10/231,891

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Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 1-22. We have jurisdiction under 35 U.S.C.
§ 6(b) (2008).
We affirm.

STATEMENT OF THE CASE
According to Appellant, the invention relates to a system and method
of managing call quality and network performance in a wireless
communications network.1

Exemplary Claim
1. A graphical user interface for displaying status reports based
on call performance data of a wireless cellular telecommunications
system in which telephone calls are communicated between mobile
wireless cellular telephone subscriber terminals and base stations,
comprising:
a first selector for selecting a status report;
a second selector for selecting at least one field class; and
a window for displaying the selected status report sorted by the
selected field class, the status report reflecting information relating to
performance problems in handling individual telephone calls within
the wireless telecommunications system.

Prior Art
The Examiner relies on the following prior art references to show
unpatentability:
Capps 5,666,502 Sep. 09, 1997
Defosse 2002/0016829 A1 Feb. 07, 2002
Gudjonsson 6,564,261 B1 May 13, 2003
Devine 6,631,402 B1 Oct. 07, 2003

1 Spec. [01].
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Tafoya 6,952,805 B1 Oct. 04, 2005
Rappaport 6,971,063 B1 Nov. 29, 2005

Examiner's Rejections
1. The Examiner rejected claims 1, 3, 4, 7-9, 14, 15, 17, 19, and
22 under 35 U.S.C. § 103(a) as unpatentable over Rappaport and Devine.
2. The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Rappaport, Devine, and Tafoya.
3. The Examiner rejected claims 5 and 6 under 35 U.S.C. § 103(a)
as unpatentable over Rappaport, Devine, and Capps.
4. The Examiner rejected claims 10-12 and 20 under 35 U.S.C. §
103(a) as unpatentable over Rappaport, Devine, and Defosse.2
5. The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Rappaport, Devine, and Gudjonsson.
6. The Examiner rejected claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Rappaport, Devine, and Tafoya.
7. The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Rappaport, Devine, and Capps.

The Rejection Over Rappaport and Devine
Claims 1, 3, 4, 7-9, 14, 15, 17, 19, and 22
Appellant's Arguments and Contentions
Appellant contends that "neither Rappaport nor Devine nor any other
reference of record discloses or suggests the claim limitations relating to the

2 Though omitted from the heading, claim 21 was rejected by the Examiner
for the same reasons as set forth for claim 12 as it was similar in scope and
to claim 12 and dependent upon claim 20. (Final Rejection 9; Ans. 11).
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generation and display via a graphical user interface of customized cellular
telephone system call performance status reports." (App. Br. 6) (emphasis
omitted). Further, Appellant argues "[n]either Rappaport nor Devine
describes anything relating to reporting information relating to performance
problems detected in the course of handling individual telephone calls within
a wireless telecommunications system, i.e., how well a cellular network is
handling phone calls." (App. Br. 6) (emphasis omitted).
Appellant contends "Rappaport describes a system that facilitates
measuring communications performance parameters and running
simulations and predictions in a large wireless (or part-wired, part wireless)
local area network (LAN) or similar computer data network" (id.). Further,
Appellant argues that "[t]here are no 'telephone calls' to speak of in a
wireless LAN." (Id.).
Appellant also contends that the Examiner relies on column 16, lines
25-55, to support the assertion that "'Rappaport [teaches] wireless
communication terminal call performance.'" (Reply Br. 2). However,
Appellant argues that "[t]he referenced cellular phones in the Examiner-cited
passage are used as communication devices in combination with the
handheld computer 102 to report the performance (throughput, latency,
delay, error rate, etc.) of the wireless LAN itself." (Reply Br. 2) (emphasis
omitted).
With regard to Devine, Appellant argues "the Examiner appears to
cite Devine for its disclosure of certain customizable Web-based status
reports for customers of telecommunications service providers." (App. Br.
7) (emphasis omitted). Further, Appellant contends "[n]owhere does Devine
describe or suggest displaying a report relating to call-handling problems in
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a cellular telephone network, in which a selected report is sorted by a
selected field class." (Id.). Appellant argues, "[i]n summary, neither
reference relates to reporting how well calls are being handled in a cellular
telephone network, let alone generating reports through a user interface
having the above-described two selectors." (Id.).
Examiner's Findings and Conclusions
The Examiner found (1) "Devine brings the support of customizable
telephone status reports into the analogous art of Rappaport which teaches
teaching wireless communication terminal call performance" and (2) "[t]he
combination of these two references teaches a status report reflecting
information relating to performance problems in handling individual
telephone calls" (see Ans. 15-16). The Examiner also found that "[i]t seems
that the Appellant has argued against the references individually, [but] one
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references." (Id. at 15).

ISSUE
The issue before us is whether the recitation of "the status report
reflecting information relating to performance problems in handling
individual telephone calls within the wireless telecommunications system"
constitutes functional descriptive material.

PRINCIPLES OF LAW
Non-Functional Descriptive Material
Non-functional descriptive material refers to data content that does
not exhibit a functional interrelationship with the substrate and does not
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affect the way the computing processes are performed. See MPEP
§ 2106.01. In a precedential decision, an expanded Board panel held that
elements that do not affect the claimed process are non-functional material
and are merely descriptive. See Ex parte Nehls, 88 USPQ2d 1883, 1887
(BPAI 2008) (precedential).
The Examiner need not give patentable weight to descriptive material
absent a new and unobvious functional relationship between the descriptive
material and the substrate. See In re Lowry, 32 F.3d 1579, 1582-1583 (Fed.
Cir. 1994); In re Ngai, 367 F.3d 1336, 1338-39 (Fed. Cir. 2004). See also Ex
parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (nonprecedential
informative) (nonfunctional descriptive material cannot render nonobvious
an invention that would have otherwise been obvious), aff'd, 191 Fed.Appx.
959 (Fed. Cir. 2006). The claim preamble must be read in the context of the
entire claim. The determination of whether preamble recitations are
structural limitations or mere statements of purpose or use "can be resolved
only on review of the entirety of the [record] to gain an understanding of
what the inventors actually invented and intended to encompass by the
claim." Corning Glass Works, 868 F.2d 1251, 1257 (Fed. Cir. 1989). If the
body of a claim fully and intrinsically sets forth all of the limitations of the
claimed invention, … and the preamble merely states, for example, the
purpose or intended use of the invention, rather than any distinct definition
of any of the claimed invention's limitations, then the preamble is not
considered a limitation and is of no significance to claim construction.
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999). See also Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) ("where a
patentee defines a structurally complete invention in the claim body and uses
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the preamble only to state a purpose or intended use for the invention, the
preamble is not a claim limitation"); Kropa v. Robie, 187 F.2d 150, 152,
(preamble is not a limitation where claim is directed to a product and the
preamble merely recites a property inherent in an old product defined by the
remainder of the claim); STX, LLC v. Brine Inc., 211 F.3d 588, 591 (Fed.
Cir. 2000) (holding that the preamble phrase "which provides improved
playing and handling characteristics" in a claim drawn to a head for a
lacrosse stick was not a claim limitation).
Obviousness
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). If the Examiner’s burden
is met, the burden then shifts to the Appellant to overcome the prima facie
case with argument and/or evidence. Obviousness is then determined on the
basis of the evidence as a whole and the relative persuasiveness of the
arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

FINDING OF FACT
1. We find Rappaport discloses that "[s]ome examples for other potential
hardware platforms would be cellular phones" (Rappaport, col. 6, ll. 33-35).

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ANALYSIS
Claim Construction
Exemplary claim 1 recites "a window for displaying the selected
status report sorted by the selected field class, the status report reflecting
information relating to performance problems in handling individual
telephone calls within the wireless telecommunications system" (App. Br.
12, Claims App’x).
Appellant argues, "[i]n summary, neither reference relates to reporting
how well calls are being handled in a cellular telephone network, let alone
generating reports through a user interface having the above-described two
selectors." (App. Br. 7).
We find that the nature of the information, which is reflected in the
status report, (i.e., information relating to performance problems in handling
individual telephone calls within the wireless telecommunications system)
does not alter the functioning of the "window" component that it modifies.
We find that the information reflected on the "status report" constitutes non-
functional descriptive material and is not accorded patentable weight.
Accordingly, the recited "information relating to performance problems in
handling individual telephone calls within the wireless telecommunications
system" of exemplary claim 1 does not distinguish over prior art that
otherwise teaches the subject matter of claim 1.
Further, we find that that Appellant's reference to a "user interface"
and "two selectors" merely points out what a claim recites. Pursuant to 37
C.F.R. §41.37(c)(vii), "[a] statement which merely points out what a claim
recites will not be considered an argument for separate patentability of a
claim."
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Accordingly, Appellant has not persuaded us of error in the
Examiner’s conclusion of obviousness with respect to independent claim 1.
(See App. Br. 5). Appellant argues claims 1, 3, 4, 7-9, 14, 15, 17, 19, and 22
as a group. Thus for the reasons discussed above with respect to claim 1, we
sustain the Examiner's rejection of claims 1, 3, 4, 7-9, 14, 15, 17, 19, and 22.
Appellant separately argues the rejections of (1) claim 2; (2) claims 5
and 6; (3) claims 10-12 and 20; (4) claim 13; (5) claim 16; and (6) claim 18.
However, Appellant, in response to the rejections does not present any new
arguments. (See App. Br. 8-10). Thus, for the reasons discussed above with
regard to exemplary claim 1, Appellant has not persuaded us of error in the
Examiner’s conclusion of obviousness with respect to (1) claim 2; (2) claims
5 and 6; (3) claims 10-12 and 20; (4) claim 13; (5) claim 16; and (6) claim
18. Accordingly, the Examiner's rejection of (1) claim 2; (2) claims 5 and 6;
(3) claims 10-12 and 20; (4) claim 13; (5) claim 16; and (6) claim 18 is
sustained.
DECISION
We affirm the Examiner's rejections with respect to claims 1-22.

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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