Ex Parte Lazaridis

Patent Trial and Appeal Board

Feb 22, 2016

13616767 (P.T.A.B. Feb. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/616,767 09/14/2012
89107 7590 02/24/2016
Borden Ladner Gervais LLP (Vancouver/BB)
1200 Waterfront Centre
200 Burrard Street, P.O. Box 48600
Vancouver, BC V7X 1 T2
CANADA
FIRST NAMED INVENTOR
MIHAL LAZARIDIS
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
53074-46C2 8510
EXAMINER
DOAN,KIETM
ART UNIT PAPER NUMBER
2641
NOTIFICATION DATE DELIVERY MODE
02/24/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
IPMailVancouver@blg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIHAL LAZARIDIS
Appeal2014-003069
Application 13/616,767
Technology Center 2600
Before ST. JOHN COURTENAY III, DAVID M. KOHUT and
KAMRAN JIVANI, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 31-50, which are all the claims pending in the
application. However, the Examiner expressly withdrew the rejection of
dependent claims 33, 41 and 47 in the Advisory Action, mailed May 31
2013. Therefore, claims 33, 41, and 47 are not before us on appeal. See 37
C.F.R. 41.39(a)(l). Claims 1-30 are cancelled. Therefore, we review the
Examiner's rejections of claims 31, 32, 34--40, 42--46 and 48-50. (Advisory
Action, mailed May 31, 2013). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2014-003069
Application 13/616,767
Invention
The claimed invention on appeal is directed to "a method and system
for automatically instructing a network operations center in a mobile
communications system to redirect communications for a mobile device."
(Spec. ii 1 ).
Illustrative Claim
31. A method of triggering redirecting of communications
for a mobile device, the method comprising:
the mobile device detecting connection of the
mobile device to a host;
[L 1] in response to determining that the mobile
device is unable to connect wirelessly to a network operations
centre, the mobile device causing the host to automatically
transmit a command to the network operations centre to
redirect calls for the mobile device to an alternate
communications endpoint.
(Emphasis added regarding the contested limitation, labeled as "LI").
Rejections
A. Claims 31, 34, 39, 42, 45, and 48 1 are rejected under 35 U.S.C.
§ 102(e) as being anticipated by Link, II et al. (US 2003/0181202
Al; published September 25, 2003).
1 The rejection of claim 48 appears to be incorrectly identified by
typographical error as claim 3 8 on page 8 of the Final Office Action, mailed
March 22, 2013. Therefore, for purposes of this appeal, we consider the
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B. Claims 32, 40, and 46 are rejected under 35 U.S.C. § 103(a) as
being obvious over the combined teachings of Link, II et al. and
Croft et al. (US 6,078,826; issued June 20, 2000).
C. Claims 35-38, 43, 44, 49, and 50 are rejected under 35 U.S.C.
§ 103(a) as being obvious over the combined teachings of Link, II
et al. and Moran et al. (US 2004/0157638 Al; published August
12, 2004).
Contentions
Regarding the anticipation rejection of claim 31, Appellant contests
limitation L 1. (App. Br. 7). Appellant particularly contends, inter alia:
Notably, Link is not dealing with the scenario in which call
forwarding is required because there is no wireless network
connection, but is instead dealing with the problem of trying to
reduce the number of calls received on a wireless unit in order
to avoid the associated "air-time" charges (see, for example, the
Background section of Link). To take the position that the
wireless unit in Link is unable to wirelessly connect to the
network when it is in the ATP (and powered on) would be
reading a teaching into Link that is simply not there.
In summary:
(i) Link initiates call forwarding in response to the wireless
unit in Link being placed in the ATP device (not in
response to determining that the wireless unit is unable to
connect wirelessly to a network operations centre). See,
for example, paragraphs [0011] and [0048] of Link.
(ii) The ATP device then powers down the wireless unit in
Link after call forwarding is initiated. Therefore, the
powering down is not initiating the call forwarding, but
Examiner's detailed statement of rejection addressing "claims 34 and 38"
(Final Act. 8, i-f 1) to have been intended to reject claims 34 and 48 under
§ 102 rejection A, because claims 34 and 48 recite commensurate limitations.
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(Id.)
instead the opposite is happening. See, for example,
paragraph [0036] of Link.
(iii) When the mobile telephone in Link is in the ATP device
and not powered down, there is no suggestion in Link
that the ATP device is somehow unable to connect to the
wireless network. To take the position that the wireless
unit in Link is unable to connect to the network when it is
in the ATP and powered on would be reading a teaching
into Link that is simply not there. Instead, passages in
Link such as the Abstract ("The automatic telephone
service forwarding device may forward the telephone
service by causing the wireless telephone to transmit a
forwarding message to a telephone redirection device on
an overhead data channel associated with a wireless
communications network") disclose the opposite.
The Examiner disagrees, and adopts a broader claim interpretation:
Appellant's argument in claim 31 is that the mobile device in
Link cannot in response to determining that said mobile device
is unable to connect wirelessly to a network operations center,
the mobile device causing said host to automatically transmit a
first command to the network operations center to redirect calls
for said mobile device to an alternate communications endpoint.
The examiner respectfully disagrees for several reasons.
Firstly, the examiner must give each claim its broadest,
reasonable interpretation.
a) The examiner notes that the claim language does not
define[] that the forwarding need to be done before or after the
mobile device unable to connect wireless to the network
(Ans. 2).
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Application 13/616,767
ISSUE
Issue: Under § 102, did the Examiner err by finding the cited prior art
expressly or inherently discloses the contested limitation of:
[L 1] in response to determining that the mobile device is unable to
connect wirelessly to a network operations centre, the mobile device
causing the host to automatically transmit a command to the network
operations centre to redirect calls for the mobile device to an alternate
communications endpoint[,]
within the meaning of claim 31? (Emphasis added).
ANALYSIS
"[A ]lthough a method claim necessarily recites the steps of the
method in a particular order, as a general rule the claim is not limited to
performance of the steps in the order recited, unless the claim explicitly or
implicitly requires a specific order. "Baldwin Graphic Sys., Inc. v. Siebert,
Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008).
Here; the Examiner adopts a broad interpretation of contested
1imitation Ll~ and concludes the claim language "does not define[] that the
forwarding need to be done before or after the mobile device [is] unable to
connect wireless to the network." (Ans. 2).
The Examiner is correct that claim 1 is silent regarding the literal
temporal terms "before" or "after." (Id.). To the extent Appellant may be
advancing a "teaching away" argument by urging that Link discloses the
"opposite" of what is claimed (App. Br. 7), such argument is misplaced,
because "[t]eaching away is irrelevant to anticipation." Seachange
International, Inc., v. C-Cor, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005).
However, under a broad but reasonable interpretation, we agree with
Appellant that the plain language of method claim 1 explicitly requires a
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Application 13/616,767
specific order. (See App. Br. 7). See Baldwin Graphic, 512 F.3d at 1345.
We conclude the recited step or act of "determining that the mobile device is
unable to connect wirelessly to a network operations centre [Brit. Sp.]" is a
predicate condition that must be satisfied before the corresponding step or
act of "transmit[ ting] a command to the network operations centre to redirect
calls for the mobile device to an alternate communications endpoint" occurs
"in response to" the predicate condition. (Claim 1 ). We note independent
computer-readable medium claim 45 recites contested limitation LI
verbatim.
System (apparatus) claim 39 recites alternative, but similar language,
specifying the predicate condition: "in the event that the mobile device is
unable to communicate wirelessly with the network operations centre, [then]
"caus[ing] the host to automatically transmit a command to a network
operations centre to redirect communications for the mobile device to an
alternate communications endpoint .... "
We broadly but reasonably construe the "processor configured to"
language of claim 39 as requiring structure (i.e., a hardware processor)
configured by appropriate programming (implementing an algorithm) to
perform the conditional function if the predicate event (condition) occurs.
(Claim 39, emphasis added). See Typhoon Touch Techs., Inc. v. Dell, Inc.,
659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor
Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir.
2008)).
Here, the Examiner has not shown a corresponding structure in Link
(a processor) configured by appropriate programming to perform the recited
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function if the predicate event (condition) is satisfied, as required by the
language of independent claim 39.
Given our construction, we find the call redirection triggering event in
Link (i-f 48) is the detection of the presence of the wireless unit in the socket
of the "ATP device" (automatic telephone service forwarding device, i135):
"the ATP device 100 detects the presence of the wireless unit 110 in the
socket 112 as a triggering event that causes the A TF device 100 to
automatically forward telephone service for the wireless unit 110." (Link,
i1 48 (emphasis added), as pointed to by Appellant, App. Br. 7). See also
Link (i-f 51): "the ATP device 100 interprets the detection of the touch-pin
contact 220 becoming in communication with the touch-pin contact 210 as a
triggering event that causes the ATF device 100 to automatically implement
call forwarding for the wireless telephone 110." (Emphasis added). See
also Link, Figure 2.
Power down of the wireless unit is described in Link (i-f 52):
"The A TF device 100 then causes the wireless unit 110 to transmit the SMS
forwarding message to the host MTSO on the overhead data channel
implemented by the host wireless network. The ATF device 100 then causes
the wireless unit 110 to power down."
Given this evidence, we find Link discloses the mobile (wireless)
device becomes unable to communicate with the network (because it is
powered down), after the call forwarding feature becomes operational.
Therefore, we agree with Appellant that, in Link, "the powering down is not
initiating the call forwarding, but instead the opposite is happening." (App.
Br. 7).
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Accordingly, we are persuaded that Link does not expressly or
inherently disclose, under § 102, the temporal sequence and chain of
causation required by contested conditional limitation L 1, if the recited
predicate condition is satisfied (i.e., when the mobile device (wireless unit in
Link) is unable to connect or communicate wirelessly to a network
operations centre (host telephone network in Link) because it is powered
down, see Link, i-f 52).
For the aforementioned reasons, on this record, and by a
preponderance of the evidence, we find Appellant's arguments persuasive.
(App. Br. 7). Therefore, we reverse the Examiner's anticipation rejection A
of each independent claim on appeal (claims 31, 39, and 45). Because we
have reversed anticipation rejection A of each independent claim, we also
reverse anticipation rejection A of dependent claims 34, 42, and 48.
Regarding § 103 rejections B and C, because the Examiner has not
shown the cited secondary references overcome the aforementioned
deficiency regarding the anticipation rejection of the base claims over Link,
we also reverse the rejections of the remaining dependent claims that were
rejected under §103.
DECISION
We reverse the Examiner's rejections of claims 31, 32, 34--40, 42--46
and 48-50.
REVERSED
ELD
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