Ex Parte Helaine et al

Board of Patent Appeals and Interferences

Sep 14, 2009

09918501 (B.P.A.I. Sep. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HUBERT HELAINE and FRANCE DERVAUX
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Appeal 2009-002241
Application 09/918,501
Technology Center 2600
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Decided: September 14, 2009
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Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT,
and CARLA M. KRIVAK, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-16, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
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Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Brief (filed January 15, 2008), the Answer (mailed
April 4, 2008), and the Reply Brief (filed June 4, 2008) for the respective
details. Only those arguments actually made by Appellants have been
considered in this decision. Arguments which Appellants could have made
but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellants’ Invention
Appellants’ invention relates to enabling a user who subscribes to
both a mobile telephone service and a landline telephone service to access
associated services in a transparent manner from the same handset or
terminal in the same way. (See generally Spec. 2:8-15).
Representative claim 1 is reproduced as follows:

1. An automatic network services management method comprising:
connecting a communication terminal of a first network to a private
base;
connecting said private base to a second network; and
a correspondence memory establishing a correspondence between
service codes of said first network and service codes of said second network.

The Examiner’s Rejection

The Examiner’s Answer cites the following prior art references:
Vanden Heuvel US 5,924,014 Jul. 13, 1999
Shah US 6,029,065 Feb. 22, 2000

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Buhrmann US 6,035,193 Mar. 7, 2000
Kamperschroer US 6,434,399 B1 Aug. 13, 2002
(filed Aug. 27, 1998)

Sipilä EP 0 748 136 A1 Dec. 11, 1996

Claims 1, 2, 9, and 12-16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Buhrmann in view of Shah.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buhrmann in view of Shah and Sipilä.
Claims 4, 6, and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buhrmann in view of Shah, Sipilä, and Kamperschroer.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buhrmann in view of Shah, Sipilä, Kamperschroer, and
Vanden Heuvel.
Claims 8, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buhrmann in view of Shah and Kamperschroer.1

ISSUE
The pivotal issue before us is whether Appellants have demonstrated
that the Examiner erred in determining the obviousness to the skilled artisan
of combining the feature code conversion teachings of Shah with the private
base communication network teachings of Buhrmann.

1 The Examiner’s statement of the grounds of rejection (Ans. 7-8) includes
dependent claim 9 in this rejection. This is an apparent inadvertent error,
which we treat as harmless, since claim 9, which is dependent on
independent claim 1, has been previously included in the Examiner’s
rejection based on the combination of Buhrmann and Shah.
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FINDINGS OF FACT
The record supports the following relevant findings of fact (FF) by a
preponderance of the evidence:
1. Buhrmann discloses (Fig. 1, col. 1, ll. 6-9 and col. 3, ll. 29-39)
the connection of first and second communication networks 9 and 14 with a
private base 20.
2. Buhrmann further discloses (col. 7, l. 57-col. 8, l. 10) a memory
for storing feature codes of the first and second communication networks.
3. Shah discloses (col. 3, ll. 35-53, col. 7, ll. 4-17 and 35-55)
discloses a correspondence memory which is utilized to convert user entered
codes to establish correspondence between the feature codes of a home
network and a visited network.

PRINCIPLES OF LAW
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) (stating that 35 U.S.C.
§ 103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). “[T]he examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting a prima facie

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case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). Furthermore,
“‘there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person
of ordinary skill in the art would employ.”

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Also, “‘[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.’” Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161
(Fed. Cir. 2007) (quoting KSR, 550 U.S. at 416). “One of the ways in which
a patent's subject matter can be proved obvious is by noting that there
existed at the time of invention a known problem for which there was an
obvious solution encompassed by the patent’s claims.” KSR, 550 U.S. at
419-20.

ANALYSIS
I. The obviousness rejection of claims 1, 2, 9, and 12-16 based on
the combination of Buhrmann and Shah.

With respect to the Examiner’s obviousness rejection of representative
independent claim 1 based on the combination of Buhrmann and Shah,
Appellants’ arguments in response assert a failure by the Examiner to
establish a prima facie case of obviousness since a proper basis for the
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Examiner’s proposed combination of references has not been established.2
Appellants’ arguments focus on the contention that a skilled artisan would
not combine Buhrmann and Shah as proposed by the Examiner. According
to Appellants (App. Br. 14-18; Reply Br. 8-10), Shah, which teaches
conversion between the feature codes of two public base stations, does not
remedy the deficiencies of Buhrmann, which lacks any disclosure of any
service code conversion between the feature codes of the two networks 9
and 14 connected to the private base station 20. In Appellants’ view (id.),
the public base stations disclosed by Shah have fundamental differences,
such as configuration, structure, operating frequencies, etc., than a private
base station such as that used by Buhrmann.
We do not find Appellants’ arguments to be persuasive of any error in
the Examiner’s stated position. We agree with the Examiner (Ans. 10 and
13) that Appellants have not shown how any of the alleged fundamental
differences between public base stations and private base stations affect the
functioning of the feature access codes of the networks connected to the
public and private base stations.
We also find to be without merit Appellants’ contention (App. Br. 18-
20; Reply Br. 5-7) that, even if combined as proposed by the Examiner, the
result achieved by the combination of Buhrmann and Shah would not arrive
at the claimed invention. It is apparent to us from the Examiner’s stated
position (Ans. 5 and 12) that the Examiner is not suggesting the bodily
incorporation of the public base station network architecture of Shah into the

2 Appellant argues rejected claims 1, 2, 9, and 12-16 together as a group.
See App. Br. 14-25. Accordingly, we select claim 1 as representative. See
37 C.F.R. § 41.37(c)(1)(vii).
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private base station network architecture of Buhrmann. Rather, it is Shah’s
teaching (col. 3, ll. 35-40 and col. 7, ll. 4-17 and 35-55) of utilizing a feature
code conversion correspondence memory between user network codes and
visited network codes, thereby avoiding a user’s need to memorize the
feature codes of different networks, that is relied upon as a rationale for the
proposed combination with Buhrmann’s private base communication
network. “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.” See In
re Keller, 642 F.2d 414, 425 (CCPA 1981) and In re Nievelt, 482 F.2d 965,
968 (CCPA 1973).
Lastly, we find, contrary to Appellants’ arguments (App. Br. 22-24;
Reply Br. 5), that the Examiner (Ans. 5, 12, and 15) has set forth an
articulated line of reasoning which establishes that the network feature code
conversion teachings of Shah would have served as an obvious enhancement
to the private base system communication network of Buhrmann. According
to the previously discussed KSR and Leapfrog standards, when a
combination of familiar elements according to methods known to the skilled
artisan achieves a predictable result, it is likely to be obvious.
For the above reasons, since it is our opinion that the Examiner has
established a prima facie case of obviousness which has not been overcome
by any convincing arguments from Appellants, the Examiner’s 35 U.S.C.
§ 103(a) rejection of representative independent claim 1, as well as claims 2,
9, and 12-16 not separately argued by Appellants, is sustained.

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II. The obviousness rejections of claims 3-8, 10, and 11 based on
the combination of Buhrmann and Shah with various secondary
references.

The Examiner’s obviousness rejections of claims 3-8, 10, and 11 is
sustained as well. Appellants (App. Br. 25-27) have made no separate
arguments for the patentability of claims 3-8, 10, and 11 but, instead, have
relied on the arguments asserted against representative claim 1, which
arguments we found to be unpersuasive as discussed supra.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have not shown that the Examiner erred in rejecting appealed
claims 1-16 for obviousness under 35 U.S.C. § 103.

DECISION
The Examiner’s 35 U.S.C. § 103 rejection of claims 1-16, all of the
appealed claims, is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

KIS

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