Ex Parte Joo et alDownload PDFBoard of Patent Appeals and InterferencesDec 13, 201011108260 (B.P.A.I. Dec. 13, 2010) Copy Citation 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 Copy with citationCopy as parenthetical citation