Ex Parte Lagno et al

Board of Patent Appeals and Interferences

Apr 20, 2009

10675067 (B.P.A.I. Apr. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BARBARA JEAN LAGNO,
CONSTANTINE N. K. OSIAKWAN, GREGORY JOHN STURGIS,
MARIAN JERZY ZARNOWSKI, and ADONNY WILLIAM RAPHAEL
____________

Appeal 2009-1030
Application 10/675,067
Technology Center 2600
____________

Decided:1 April 20, 2009
____________

Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY,
and KARL D. EASTHOM, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 10/675,067

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-39, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Brief filed August 22, 2007(revised, October 2,
2007) and Answer mailed October 31, 2007 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 Brief 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 determining the ability of one or more
wireless terminals in a network to communicate with a specific wireless
terminal, such as an access point, with a particular level of service. The
determination is based upon measurements of the electromagnetic signals
transmitted by the wireless terminals in the network. The network informs
the wireless terminal in need of communicating with the wireless terminal
access point as to where to expect performance at the particular level of
service required. (See generally Spec. ¶¶ [0010]-[0012]).

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Claim 1 is illustrative of the invention and reads as follows:

1. A method comprising:
determining that a first wireless terminal at a location can
communicate with a second wireless terminal with a level of service; and
transmitting to a third wireless terminal an indication that said third
wireless terminal should be able to communicate with said second wireless
terminal with said level of service at said location.

The Examiner’s Rejections

The Examiner’s Answer cites the following references:
Crosbie US 2002/0035699 A1 Mar. 21, 2002
Reddy US 2004/0147254 A1 Jul. 29, 2004
(filed Sep. 29, 2003)
Lagno 2 US 2005/0070303 A1 Mar. 31, 2005
(filed Sep. 30, 2003)

Claims 1, 2, 6, 8-12, 16, 18-21, 25-27, 30-35, and 39 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Crosbie in view of the
admitted prior art (Appellants’ published Lagno application).
Claims 3-5, 7, 13-15, 17, 22-24, 28, 29, and 36-38 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Crosbie in view of the
admitted prior art, and further in view of Reddy.

2 The Lagno reference is the published application corresponding to the
present application which is the subject of this appeal, Serial No.
10/675,067.
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Application 10/675,067

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ISSUES
Under 35 U.S.C. § 103(a), with respect to appealed claims 1-39,
would one of ordinary skill in the art at the time of the invention have found
it obvious to combine Crosbie with the admitted prior art and additionally
with Reddy to render the claimed invention unpatentable?

The pivotal issues before us are whether Appellants have
demonstrated that the Examiner erred in
(i) interpreting the disclosure of the admitted prior art as teaching the
transmission of an indication to a wireless terminal that it “should be able”
to communicate with other wireless terminals at a level of service associated
with a location; and
(ii) determining the obviousness to the skilled artisan of combining
the wireless terminal communication teachings of Crosbie and the admitted
prior art, as well as the further addition of the wireless terminal “hot spot”
map display teachings of Reddy.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. Crosbie discloses (¶ [0016]) determining if a first wireless
terminal at a location can communicate with a second wireless terminal at a
level of service based on the load levels of a first local area network
compared with other local area networks.
2. Crosbie also discloses (¶¶ [0016] and [0035]) that a server
directs a user of a wireless terminal to move to another area to provide a
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better level of service if the service within the existing area is affected by
congestion.
3. The admitted prior art (published Lagno application) discloses
(¶ [0009] and Figure 2) that a second wireless terminal 201-1 can
communicate with a first wireless terminal 101-4 with a level of service
associated with the area location 102 in which both the first and second
wireless terminals are located.
4. The admitted prior art (¶ [0011]) also describes the situation in
which a third wireless terminal 201-2, located outside area location 102, is
informed that the level of service is inadequate at that location and the user
should move elsewhere.
5. Reddy discloses (Fig. 3 and ¶ [0044]) a wireless network in
which a determination is made that a wireless terminal 404 which is located
in a hot spot communication zone 403 can communicate with wireless
terminal 406.
6. Further disclosed by Reddy (¶¶ [0045]-[0049] is the
transmission of a map display wireless terminal 402 which indicates to the
wireless terminal 402 that, if it moves into hot spot communication zone
403, it can establish communication with wireless terminal 406 at the level
of service associated with the hot spot communication zone 403.
7. Reddy also provides (¶¶ [0050]-[0051]) for a quality of service
rating for the various hot spot communication zones based on dynamic
quality of service information including the threshold level determination of
received signals.

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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
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)).

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ANALYSIS
I. THE REJECTION OF CLAIMS 1, 2, 6, 8-12, 16, 18-21, 25-27,
30-35, AND 39 BASED ON THE COMBINATION OF
CROSBIE AND THE ADMITTED PRIOR ART.

Claims 1, 2, 6, 8, 26, 27, 30, and 31
With respect to the Examiner’s obviousness rejection of independent
method claim 1, and its apparatus counterpart independent claim 26, based
on the combination of Crosbie and the admitted prior art, Appellants’
arguments in response assert a failure by the Examiner to establish a prima
facie case of obviousness since all of the claimed limitations are not taught
or suggested by the applied prior art references. Appellants’ arguments (Br.
14) initially focus on the alleged deficiency of the admitted prior art in
disclosing the transmission of an indication to a third wireless terminal that
such wireless terminal should be able to communicate with a second
wireless terminal with a level of service at the location of a first wireless
terminal.
We do not find Appellants’ arguments to be persuasive in convincing
us of any error in the Examiner’s stated position. As also alluded to by the
Examiner, we find Appellants’ arguments to be merely general unsupported
allegations that the applied prior art does not disclose the claimed invention
with no specific arguments as to how the Examiner may have erred in the
stated rejection. In particular, we find nothing in the language of claims 1
and 26 which requires, as generally alleged by Appellants, that an indication
be transmitted to the third wireless terminal that it should move to a specific
location in order to establish communication with a second wireless terminal
at a particular level of service. Rather, claims 1 and 26 only require that an
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indication be transmitted to the third wireless terminal that it “should be
able” to communicate with the second wireless terminal at a level of service
associated with the second wireless terminal. We find no error in the
Examiner’s determination that the admitted prior art discloses this claimed
feature.
As set forth by the Examiner (Ans. 4 and 13-15), the admitted prior
art in Lagno (FF 3) discloses that a second wireless terminal 201-1 can
communicate with a first wireless terminal 101-4 with a level of service
associated with the area location 102 in which both the first and second
wireless terminals are located. As further noted by the Examiner, the
admitted prior art in Lango (FF 4) describes the situation in which a third
wireless terminal 201-2, located outside area location 102, is informed that
the level of service is inadequate at that location and the user should move
elsewhere. We agree with the Examiner’s determination that, from the
admitted prior art disclosure in Lagno, a skilled artisan would recognize that
the user of the third wireless terminal 201-2 is being informed that, by
moving elsewhere, the user “should be able” to communicate with the
second wireless terminal at the level of service associated with the area
location 102 occupied by the second wireless terminal.
We further find to be unpersuasive Appellants’ contention (Br. 15)
that the Examiner has failed to provide any reasoning to support the
proposed combination of Crosbie with the prior art. We find, Appellants’
arguments to the contrary notwithstanding, that the Examiner has provided
an articulated line of reasoning (Ans. 4, 15, and 16) for the proposed
combination with a rational underpinning to support the legal conclusion of
obviousness in accordance with the KSR standard mentioned above.
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We further find, although Appellants contend otherwise, that Crosbie,
as well as the previously discussed admitted prior art, are both directed to
environments in which users of wireless terminals are directed to move to
other locations in order to improve the level of communication service. For
example, Crosbie discloses (FF 1) that a server directs a user of a wireless
terminal to move to another area to provide a better level of service if the
service within the existing area is affected by congestion. Similarly, Crosbie
also discloses (FF 2) that a server will reassign a wireless terminal to another
base station access point if the level of service is affected by a user moving
out of the range of a first base station access point.
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 independent claims 1 and 26, as well as dependent
claims 2, 6, 8, 27, 30, and 31 not separately argued by Appellants, is
sustained.

Claims 9-12, 16, 18-21, 25, 32-35, and 39
The Examiner’s obviousness rejection of independent claims 9, 18,
and 32, as well as the rejection of dependent claims 10-12, 16, 19-21, 25, 33-
35, and 39 not separately argued, is sustained as well. The language of
independent claims 9, 18, and 32 differs slightly from previously discussed
independent claims 1 and 26 in that they include a limitation directed to the
transmission of an indication that a wireless terminal should be able to
communicate if a received electromagnetic signal exceeds a threshold.
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As with the previous arguments with respect to independent claims 1
and 26, Appellants generally allege (Br. 15-17) that the combination of
Crosbie and the admitted prior art does not teach or suggest the claimed
invention, but have not argued with any particularity how and where the
Examiner erred in the stated rejection. We refer to our previous discussion
with respect to Crosbie and, in particular, the admitted prior art in Lagno, in
which we found no error in the Examiner’s determination (Ans. 5, 7, 10, and
17-19) that the admitted prior art discloses that an indication is provided to a
wireless terminal user that the user “should be able” to communicate if they
move elsewhere than their present location. We agree with the Examiner
(Ans. 5, 7, 10, and 17-19) that a skilled artisan would recognize from this
disclosure that, in order for communication to be effected, the level of
service characteristic associated with a received signal would necessarily
have to be above a threshold level.

II. THE REJECTION OF CLAIMS 3-5, 7, 13-15, 17, 22-24, 28,
29, AND 36-38 BASED ON THE COMBINATION OF
CROSBIE, THE ADMITTED PRIOR ART, AND REDDY.

This rejection is sustained as well. In addressing the requirements of
the rejected claims, which are ultimately dependent on the previously
discussed independent claims 1, 9, 18, 26, and 32, the Examiner has applied
the communication “hot spot” map display teachings of Reddy to the
combined teachings of Crosbie and the admitted prior art. Appellants have
made no separate arguments for the patentability of these claims, but instead
have relied upon the previously asserted arguments made with respect to the
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rejection of claims 1, 9, 18, 26, and 32 based on Crosbie and the admitted
prior art, which arguments we found to be unpersuasive as discussed supra.
We also make the observation that our review of Reddy reveals that
Reddy discloses (FF 5) a wireless network in which a determination is made
that a first wireless terminal 404 which is located in a hot spot
communication zone 403 can communicate with a second wireless terminal
406. Further disclosed by Reddy (FF 6) is the transmission of a map display
to third wireless terminal 402 which indicates to the third wireless terminal
402 that, if it moves into hot spot communication zone 403, it “should be
able” to communicate with second wireless terminal 406 at the level of
service associated with the hot spot communication zone 403. Reddy also
provides (FF 7) for a quality of service rating for the various hot spot
communication zones based on dynamic quality of service information
including the threshold level determination of received signals.
With the above discussion in mind, it is apparent that, although the
Examiner has relied upon Crosbie and the admitted prior art for the
teachings of providing indications to a wireless terminal that it should move
to a different location to communicate with a level of service associated with
a threshold level determination of received signals, such teachings are
cumulative to what is already disclosed by Reddy. Accordingly, in view of
the above analysis of the disclosure of the Reddy reference, we find that,
contrary to Appellants’ arguments that Reddy does not make up for the
deficiencies of Crosbie and the admitted prior art in disclosing the features
of independent claims 1, 9, 18, 26, and 32, all of the requirements of those
claims are in fact present in the disclosure of Reddy. Further, we find that
the teachings of Crosbie and the admitted prior art supplement Reddy’s
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teachings to establish the Examiner’s prima facie case for the claims being
obvious over the combination of those references.

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 1-39 for obviousness under 35 U.S.C. § 103.

DECISION
The Examiner’s 35 U.S.C. § 103 rejection of claims 1-39, 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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