Ex Parte Joo et al

Board of Patent Appeals and Interferences

Dec 13, 2010

11108260 (B.P.A.I. Dec. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KI HYUN JOO, PETER S. RHA, CHOL SU KANG,
and SANG KYOON HYUN
____________________

Appeal 2009-006603
Application 11/108,2601
Technology Center 2400

____________________

Before JOHN C. MARTIN, KENNETH W. HAIRSTON,
and MARC S. HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is Cisco Technology, Inc.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006603
Application 11/108,260

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 21-41 and 46. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention relates to a system and a method for providing
an enterprise in-building or campus-wide IP based code division multiple
access (CDMA) wireless system (Abstract). In an effort to control ping-
ponging between the two systems, the system controls handoffs between an
enterprise CDMA communication system and macro systems external to the
enterprise system by denying handoffs of users on the enterprise premise
macro systems external to the enterprise system (Spec. 8:2-12). An
integrated wireless internet base station (WIBS) includes a base station
controller, a mobile switch controller, and an Ethernet interface module
which is connected to the internet and an existing networking infrastructure
within an office building or campus (Abstract). The WIBS is attached to a
plurality of antennas through different and identifiable delay elements for
the purpose of determining the serving antennas of mobile communication
units (Spec. 16: 13-29). The WIBS identifies the location of a mobile unit
requesting a handoff in order to determine the most efficient way to handle
the handoff requests (Spec. 15:1-8). Specifically, the WIBS includes
location determination logic that determines the location of the mobile unit
(Spec. 15:1-8). If the mobile unit is located within the premises of the
enterprise CDMA communication system, then any handoff request to any
external macro system is denied (Spec. 16:4-12).
2
Appeal 2009-006603
Application 11/108,260

Claim 21 is exemplary:
21. A wireless base station, comprising: a base station controller operable
to control communication between the wireless base station and a mobile
communication unit within a coverage area associated with the wireless base
station;
an antenna unit operable to receive wireless signals from the mobile
communication unit and to transmit wireless signals to the mobile
communication unit; and
user location identification logic operable to:
receive a handoff request from the mobile communication unit;
determine a location of the mobile communication unit;
decide whether the location of the mobile communication unit is
within a designated handoff area;
execute a handoff between a first network and a second network, if
the location of the mobile communication unit is within the designated
handoff area; and
deny the handoff request if the location of the mobile communication
unit is not within the designated handoff area.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gilhousen US 5,280,472 Jan. 18, 1994
Weaver, Jr. US 5,828,661 Oct. 27, 1998
Haartsen US 6,112,088 Aug. 29, 2000
Han US 6,714,785 B1 Mar. 30, 2004

Claims 21-28 stand rejected under 35 U.S.C. 101 as being directed to
non-statutory subject matter.
Claims 21-28 stand rejected under 35 U.S.C. 112, first paragraph, as
failing to comply with the written description requirement.
Claims 38, 42, and 46 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Han.
3
Appeal 2009-006603
Application 11/108,260

Claims 21 and 29-32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Weaver in view of Han.
Claims 22-25 and 33-34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Weaver in view of Han and Gilhousen.
Claims 26-28 and 35-37 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Weaver in view of Han and Haartsen.
Claim 39 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Han in view of Gilhousen.
Claim 40 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Han in view of Weaver.
Claim 41 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Han in view of Haartsen.

ISSUES
Appellants contend that the broadest reasonable interpretation of user
"location identification logic" would cover any appropriate combination of
hardware and/or software and not arbitrarily limit the scope of that element
to software program per se as found by the Examiner (App. Br. 17-18, Reply
Br. 2). Appellants assert that the Examiner fails to provide any evidence that
the description provided in the Specification for user “location identification
logic” would be insufficient to enable one skilled in the art to practice the
subject matter claimed (App. Br. 20; Reply Br. 4).
Appellants argue that Han fails to teach, either expressly or inherently,
“denying the handoff request if the location of the mobile communication
unit is not within the designated handoff area” as claimed (App. Br. 22).
Appellants assert that since Han requires that the mobile station be within
4
Appeal 2009-006603
Application 11/108,260

the designated handoff area and moving away from the base station in order
for the handoff to be denied, that Han does not disclose the claim limitation
at issue (Reply Br. 5-6).
Appellants argue further that the references do not disclose “wherein
an exit of a building associated with the in-building network is located
within the designated handoff area” (App. Br. 26). Finally, Appellants argue
that the references do not disclose “wherein the designated handoff area is
located on a ground floor of a multi-story building associated with the in-
building enterprise network” (App. Br. 27).
Appellants’ contentions present us with the following five issues:
1. Is claim 21 as a whole directed to non-statutory subject matter?
2. Is there sufficient disclosure with the Specification to enable one
skilled in the art to make the “user location identification logic”?
3. Do the references disclose a method of providing communication
service that includes “deciding whether the location of the mobile
communication unit is within a designated handoff area…and denying
handoff if the location of the mobile communication unit is not within the
designated handoff area”?
4. Do the references disclose a wireless base station having a
designated handoff area, “wherein an exit of a building associated with
the in-building network is located within the designated handoff area”?
5. Do the references disclose a wireless base station having a
designated handoff area, “wherein the designated handoff area is located
on a ground floor of a multi-story building associated with the in-
building enterprise network”?

5
Appeal 2009-006603
Application 11/108,260

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. The WIBS includes user location identification logic that
identifies mobile communications within the enterprise system. The
identification logic includes handoff call request logic which allows the base
station to optimize the control of mobile unit handoffs only within
designated handoff transition regions within the enterprise system (Spec.
15:1-8).
Han
2. Han discloses that a handoff request is generated by the mobile
station, when the pilot signal power received from the adjacent base station
to the mobile station is higher than a handoff threshold T_ADD. Upon
receipt of the handoff request message (step 811), the service base station
analyzes the received handoff request message in step 813. The handoff
request message includes the pilot signal power from the adjacent base
station, location flag, direction flag and displacement. In step 815, the
service base station further examines whether to process the handoff request
or not, depending on the pilot signal power from the adjacent base station
and the location flag. If it is determined at the base station that a handoff
should not be processed, the process continues to step 827 to cancel the
handoff process (Fig. 8; col. 8, ll. 43-65).
3. Han discloses, at step 815, that if it is determined at the base
station that a handoff request should be processed based upon the pilot
signal power and the location flag, the service base station continues to step
6
Appeal 2009-006603
Application 11/108,260

817 where it is determined if sufficient surplus channel exists and step 819
to determine the direction of the mobile station (Fig. 8; col. 8, l. 66-col. 9, l.
17).
Haartsen
4. Haartsen discloses mobile handover between a private radio
communications network connected to the public switch telephone network
and a public land mobile network also connected to the public switch
telephone network using a radio communications mobile terminal that
supports simultaneous communication connections between the two
uncoordinated networks (Abstract). A method is provided for mobile
assisted handover from a private radio communications network to an
overlaying public land mobile network without requiring call interruption
(col. 2, ll. 61-64). The private network may be an office private radio
network or residential network (col. 5 ll. 19-27).

PRINCIPLES OF LAW
Patentability
Under § 101, there are four categories of subject matter that are
eligible for patent protection: (1) processes; (2) machines; (3) manufactures;
and (4) compositions of matter. 35 U.S.C. § 101. But even if a claim fits
within one or more of the statutory categories, it may not be patent eligible.
In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009).
“[A] machine is a concrete thing, consisting of parts, or of certain
devices and combination of devices. This includes every mechanical device
or combination of mechanical powers and devices to perform some function
and produce a certain effect or result.” Ferguson, 558 F.3d at 1364 (quoting
7
Appeal 2009-006603
Application 11/108,260

In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007), reh’g denied en banc,
515 F.3d 1361 (Fed. Cir. 2008), and cert. denied, 129 S. Ct. 70 (2008)).
In ascertaining the scope of a claim, every claim limitation must be
considered. The Supreme Court has held that to make a determination for
patent protection under 35 U.S.C. § 101, “[the] claims must be considered as
a whole.” The Court found that it is inappropriate to dissect the claims into
discrete elements and then evaluate these elements in isolation. Diamond v.
Diehr, 450 U.S. 175, 187 (1981).

Enablement
Pursuant to 35 U.S.C. § 112, first paragraph, “[t]he test of enablement
is whether one reasonably skilled in the art could make or use the invention
from the disclosures in the patent coupled with information known in the art
without undue experimentation.” United States v. Telectronics, Inc., 857
F.2d 778, 785 (Fed. Cir. 1988).
Anticipation
Anticipation pursuant to 35 U.S.C § 102 is established when a single
prior art reference discloses expressly or under the principles of inherency
each and every limitation of the claimed invention. Atlas Powder Co. v.
IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d
1475, 1478-79 (Fed. Cir. 1994).
In an appeal from a rejection for anticipation, Appellants must explain
which limitations are not found in the reference. See Gechter v. Davidson,
116 F.3d 1454, 1460 (Fed. Cir. 1997) ("[W]e expect that the Board's
anticipation analysis be conducted on a limitation by limitation basis, with
specific fact findings for each contested limitation and satisfactory
8
Appeal 2009-006603
Application 11/108,260

explanations for such findings.")(emphasis added). See also In re Kahn, 441
F.3d 977, 985-86 (Fed. Cir. 2006).
Obviousness
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416.

ANALYSIS
Rejection of claims 21-28 under 35 U.S.C. § 101, as being directed to non-
statutory subject matter
We select claim 21 as representative of this group, pursuant to our
authority under 37 C.F.R. § 41.37(c)(1)(vii).
Representative claim 21 recites a “wireless base station, comprising:
… user location identification logic.”
We consider Appellants’ arguments to be persuasive to show
Examiner error. We do not agree with the Examiner’s finding that the
broadest reasonable interpretation of “user location identification logic” is
solely software per se and, as a result, that the claim to the wireless base
station in its entirety is directed to non-statutory subject matter (Ans. 3).
The issue turns on whether the claim as a whole is directed to non-
statutory subject matter.
Claim 21 is an apparatus claim that is directed to hardware, in general,
and a wireless base station, in particular. The wireless base station includes
a base station controller, an antenna unit, and user location identification
9
Appeal 2009-006603
Application 11/108,260

logic. The Specification discloses that the user location identification logic
is a component of the wireless base station that identifies mobile
communications within the enterprise system (FF 1). Specifically, the user
location identification logic includes handoff call request logic which allows
the base station to optimize the control of mobile unit handoffs only within
designated handoff transition regions within the enterprise system (FF 1).
We find that the Specification discloses that the “user location identification
logic” is a hardware component of the wireless base station (FF 1). We
further find that the wireless base station including the user location
identification logic is eligible for patent protection as subject matter within
the category of a “machine.”
It is inappropriate to dissect the claims into discrete elements and then
evaluate these elements in isolation. Diamond v. Diehr, 450 U.S. 175, 187
(1981). We find that the Examiner has focused solely, and inappropriately,
upon “user location identification logic” to the exclusion of other elements
of the claim including the base station controller and the antenna unit (Ans.
3-4 and 13-15).
We therefore find that the Examiner has not met his burden to
establish that claim 21 is directed to nonstatutory subject matter, since the
claim as a whole is directed to statutory subject matter. Thus, we will not
sustain the Examiner’s rejection of claims 21-28 under 35 U.S.C. § 101 as
being directed to nonstatutory subject matter.
Rejection of claims 21-28 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement
We select claim 21 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
10
Appeal 2009-006603
Application 11/108,260

Representative claim 21 recites “user location identification logic.”
We consider Appellants’ arguments to be persuasive to show
Examiner error. We do not agree with the Examiner’s finding that the
Specification does not disclose “user location identification logic” in such a
way as to enable one skilled in the art to which it pertains, or with which it is
most nearly connected, to make and/or use the invention (Ans. 4).
As noted supra, we agree with Appellants that the Specification does
provide adequate disclosure to support the claim limitation (App. Br. 20;
Reply Br. 4). The Specification discloses that the WIBS includes user
location identification logic that identifies mobile communications within
the enterprise system (FF 1). The identification logic includes handoff call
request logic which allows the base station to optimize the control of mobile
unit handoffs only within designated handoff transition regions within the
enterprise system (FF 1). We find that this recitation provides adequate
support for the claim limitation at issue.
Therefore, because Appellants’ arguments have persuaded us of error
in the Examiner’s rejection of claims 21-28 under 35 U.S.C. § 112, first
paragraph, we will not sustain the Examiner’s rejection.
Rejection of claims 38 and 46 under 35 U.S.C.
§ 102(e) as being anticipated by Han
We select claim 38 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Representative claim 38 recites “deciding whether the location of the
mobile communication unit is within a designated handoff area…and
denying handoff if the location of the mobile communication unit is not
within the designated handoff area.”
11
Appeal 2009-006603
Application 11/108,260

We do not consider Appellants’ arguments to be persuasive to show
Examiner error. Han discloses that a handoff request is generated by the
mobile station when the pilot signal power received from the adjacent base
station to the mobile station is higher than a handoff threshold T_ADD (FF
2). Upon receipt of the handoff request message (step 811), the service base
station analyzes the received handoff request message (FF 2). The handoff
request message includes the pilot signal power from the adjacent base
station, location flag, direction flag and displacement (FF 2). In step 815,
the service base station further examines whether to process the handoff
request or not, depending on the pilot signal power from the adjacent base
station and the location flag (FF 2). If it is determined at the base station
that a handoff should not be processed, the process continues to step 827 to
cancel the handoff process (FF 2).
Therefore, we find that Han discloses the “deciding whether the
location of the mobile communication unit is within a designated handoff
area…and denying handoff if the location of the mobile communication unit
is not within the designated handoff area.” As a result, we will sustain the
Examiner’s § 102 rejection of representative claim 38 and that of claim 46.
Rejection of claims 21 and 29-32 under 35 U.S.C. § 103(a) as being
unpatentable over Weaver in view of Han
We select claim 21 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Representative claim 21 recites “user location identification logic
operable to: …determine a location of the mobile communication unit …and
deny the handoff request if the location of the mobile communication unit is
not within the designated handoff area.”
12
Appeal 2009-006603
Application 11/108,260

We do not consider Appellants’ arguments to be persuasive to show
Examiner error. As noted supra, we affirmed the rejection of claim 38
which includes that claim limitation of “deciding whether the location of the
mobile communication unit is within a designated handoff area…and
denying handoff if the location of the mobile communication unit is not
within the designated handoff area.” This limitation of claim 38 is similar in
scope to the claim limitation of claim 21.
Therefore, we find that the Examiner has established the prima facie
obviousness of the claims, because the combination of Weaver and Han
discloses “user location identification logic operable to: …determine a
location of the mobile communication unit …and deny the handoff request if
the location of the mobile communication unit is not within the designated
handoff area.” We therefore affirm the Examiner’s rejection of
representative claim 21 and that of claims 29-32 under 35 U.S.C. § 103, for
the same reasons expressed with respect to the rejection of claims 38 and 46,
supra.
Rejection of claims 22-25, 33, and 34 under 35 U.S.C. § 103(a) as being
unpatentable over Weaver in view of Han and Gilhousen
We affirmed supra the rejection of parent claims 21 and 29 from
which claims 22-25, 33, and 34 respectively depend. Appellants present no
separate argument for the patentability of dependent claim 10 other than the
fact that the claims depend from respective claims 21 and 29. We therefore
affirm the rejection of claims 22-25, 33, and 34, under 35 U.S.C. § 103 as
being unpatentable over Weaver in view of Han and Gilhousen for the same
reasons expressed with respect to claims 21 and 29.
13
Appeal 2009-006603
Application 11/108,260

Rejection of claims 26-28 and 35-37 under 35 U.S.C. § 103(a) as being
unpatentable over Weaver in view of Han and Haartsen
Claim 26 recites “wherein the first network comprises a private
network and the second network comprises a public network.” Claim 35
recites a claim limitation similar in scope.
Claim 27 recites “wherein an exit of a building associated with the in-
building network is located within the designated handoff area.” Claim 36
recites a claim limitation similar in scope.
Claim 28 recites “wherein the designated handoff area is located on a
ground floor of a multi-story building associated with the in-building
enterprise network.” Claim 37 recites a claim limitation similar in scope.
We do not consider Appellants’ arguments to be persuasive to show
Examiner error. Haartsen discloses mobile handover between a private radio
communications network and a public land mobile network using a radio
communications mobile terminal that supports simultaneous communication
connections between the two uncoordinated networks (FF 4). Haartsen
discloses that the private network may be an office private radio network or
residential network (FF 4). Han discloses that the service base station makes
a determination as to whether to deny the handoff request by analyzing the
pilot signal power from the adjacent base station and the location flag (FF
2). We find that since the power and the location metrics used to determine
the designated handoff area may be adjusted, the designated handoff area
may be anywhere in the building, including the ground floor or at an exit.
Therefore, we find that the Examiner has established the prima facie
obviousness of the claims, because the combination of Weaver, Han, and
Haartsen discloses or suggests “wherein an exit of a building associated with
the in-building network is located within the designated handoff area” and
14
Appeal 2009-006603
Application 11/108,260

“wherein the designated handoff area is located on a ground floor of a multi-
story building associated with the in-building enterprise network.” We
therefore affirm the Examiner’s rejection of representative claim 26-28 and
35-37 under 35 U.S.C. § 103.
Rejection of claims 39-41 under 35 U.S.C. § 103(a)
We affirm supra the rejection of parent claim 38 under 35 U.S.C.
§102 as anticipated by Han. Appellants present no separate argument for the
patentability of dependent claims 39-41 other than that fact that they depend
from claim 38. We therefore affirm the rejection of claims 39-41 under 35
U.S.C. § 103, for the same reasons expressed with respect to claim 38.

CONCLUSIONS
Claim 21 as a whole is not directed to non-statutory subject matter.
There is sufficient disclosure with the Specification to enable one
skilled in the art to make the “user location identification logic.”
The references disclose a method of providing communication service
that includes “deciding whether the location of the mobile communication
unit is within a designated handoff area…and denying handoff if the location
of the mobile communication unit is not within the designated handoff area.”
The references disclose a wireless base station having a designated
handoff area, “wherein an exit of a building associated with the in-building
network is located within the designated handoff area.”
The references disclose a wireless base station having a designated
handoff area, “wherein the designated handoff area is located on a ground
floor of a multi-story building associated with the in-building enterprise
network.”
15
Appeal 2009-006603
Application 11/108,260

ORDER
The Examiner’s rejection of claims 21-41 and 46 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

ELD

BAKER BOTTS L.L.P.
2001 ROSS AVENUE
SUITE 600
DALLAS, TX 75201-2980
16