Ex Parte Meche

Board of Patent Appeals and Interferences

Apr 15, 2004

08933911 (B.P.A.I. Apr. 15, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte PAUL S. MECHE
____________
Appeal No. 2002-2000
Application No. 08/933,911
____________
ON BRIEF

Before THOMAS, FLEMING, and KRASS, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealed to the Board from the examiner’s final
rejection of claims 1-12.
Representative claim 9 is reproduced below:
9. A method for operating a wireless telecommunications system,
comprising the steps of:
providing a telephone number of a called party:
receiving said telephone number in a serving system;
determining if said telephone number is for a mobile station
potentially roaming in the serving system, without interrogating
another serving system;
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Application No. 08/933,911
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if yes, determining if said telephone number is stored in a
Visitor Location Register of the serving system; and
if yes, paging the mobile station in the serving system.
The following references are relied on by the examiner:
Reininghaus 5,898,922 Apr. 27, 1999
(§ 102(e) date Nov. 19, 1996
and PCT Pub. Date Nov. 30, 1995)
Lee WO 96/20574 Jul. 4, 1996
(PCT Patent Application)
Claims 1-12 stand rejected under 35 U.S.C. § 103. As evidence
of obviousness, the examiner relies upon Lee in view of
Reininghaus.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the brief and reply brief for
appellant’s positions and to the final rejection and answer for the
examiner’s positions.
OPINION
We reverse the examiner’s stated rejection and institute a new
rejection under the provisions of 37 CFR § 1.196(b).
There appears to be no dispute between appellant and the
examiner with respect to the teachings in Lee. On the other hand,
as appellant points out generally in the brief and reply brief, the
examiner’s position with respect to Reininghaus according to the
rejection set forth in the final rejection focuses upon a Mobile
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Application No. 08/933,911
3
Station (MS) moving from an area of Cell C1 of the local region MA1
into the Cell C2 of the local region MA2 as shown in the left
portion of the Figure 1 showing in Reininghaus. We agree with the
appellant’s basic urging in the brief that this interpretation of
the reference in this manner relates to a transition of a call
between cells of local regions within the HLR or home register
region. Thus, even if Lee and Reininghaus were properly
combineable within 35 U.S.C. § 103 according to the examiner’s
reasoning, the result would essentially read on the prior art and
the same “serving system” to the extent recited on the claims on
appeal. Since the claims require a caller to be considered to be
roaming in a particular serving system, the caller must be served
by a different serving system and have a different home register
HLR. Since, according to the examiner’s reasoning in the final
rejection, a common home register HLRA serves both cells C1 and C2,
the overall requirements of the claims on appeal cannot be met.
On the other hand, it appears to us that both the appellant
and the examiner do not considered the full teaching value of
Reininghaus as to the claims on appeal and its combinability with
Lee within 35 U.S.C. § 103. Therefore, we institute a new ground
of rejection of claims 1, 2, 4, 5 and 7-12 under 35 U.S.C. § 103 as
being obvious over Reininghaus in view of Lee. It may be
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Application No. 08/933,911
4
separately stated as well that the subject matter of claims 9-12
may be considered obvious over the teaching value of Reininghaus
alone.
Beginning with representative independent claim 9 on appeal,
this claim and claims 10-12 appear to read upon appellants second
embodiment disclosed in Figure 4. In the approach in this
embodiment, there’s no requirement of an identifier as in claims
1-8.
The discussion in the long paragraph in column 1 beginning at
line 21 through line 57 of Reininghaus appears to us to have been
consistent with the prior art alleged by appellant in the disclosed
invention. When a mobile station or user moves from a first mobile
radio station region into another mobile station region, it is
considered to be a roaming situation and the appropriate home
register information of the mobile station is transferred to the
new mobile radio region “when setting up a radio contact in the new
region” or, as stated otherwise, when a call is made by the user of
the mobile station in the new region. On the other hand, the focus
of the disclosure in Reinginghaus as set forth substantially in
column 2 is that before the user transfers the mobile station to a
new region, it is the user who transfers the home register
identifying data to the new home register in the new mobile radio
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Application No. 08/933,911
5
region. Alternatively, the user of the mobile station may wait
until actually in the destination mobile region to affect this
transfer. This is most aptly discussed at lines 25-56.
This is shown in Figure 1 by the transfer of a mobile station
MS from mobile radio system MFA to mobile radio system MFB. By
doing so, the user has identified the mobile station in the new
radio region as a roaming mobile radio station. The overall system
then operates “without interrogating another serving system” as
required by claims 9-12 in these words or corresponding words.
Stated differently, there is no need for mobile station MS in the
new region MFB to have the switching circuitry in that region
contact the home register HLRA because the identifying information
of the mobile station ms has been made resident in the home
register HLRB. Once that transfer from home register has been
effected, the use of the visitor location register VLR in the new
system MFB functions normally and in accordance with the
requirements of these claims.
The fact that the user performs these various control
information transfers of information is discussed in detail at
various points of the discussion beginning at column 8 though
column 10. Note also the particular discussion of control commands
in the paragraph bridging columns 9 and 10. The manner in which
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these commands may be implemented obviously would have been
effected according to the use of the prefix according to Lee. The
function of this prefix is to identify a foreign mobile subscriber
within a local network, which is the same effective function
achieved by the teaching value of Reininghaus. Obviously, within
35 U.S.C. § 103, since the actual coding is not discussed in
Reininghaus, the manner in which the functionality of the transfer
of the control information from one home register HLRA to a new
home register HLRB in different mobile radio regions would have
been effected in Reininghaus by the use of the prefixing approach
taught in Lee. In this manner, the claimed identifier of claims 1,
2, 4, 5, 7 and 8 would have been obvious in light of the collective
teachings and suggestions of both references. The teaching value
of both references is considered consistent when it is taught in
the paragraph bridging column 8 and 9 that mobile radio regions MFA
and MFB in Reininghaus may be countries or continents, which is
consistent with the examples of Australian and Germany given in
Lee.
The prefixes in Lee are shown in Figures 8, 9, 10A and 10B,
with the new prefix identifier shown in Figures 9 of Lee. Thus,
the subject matter in dependent claims 2 and 5 would have been
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Application No. 08/933,911
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obvious in view of the straight forward teachings of Lee in
combination with Reininghaus.
On the other hand, the recitation in dependents claims 3 and 6
requires the entering of the telephone number of the called mobile
station followed by the identifier character. There is no teaching
or suggestion explicit as to such appending function in Lee and
Reininghaus. The examiner’s view expressed at the bottom of page 4
of the final rejection that the examiner considers the order of
entry to be obvious because it is not critical to the invention and
that it would have been obvious in order to provide the user
convenience of entering the numbers, is not, in our view, based on
substantial evidence before us. The examiner, however, is free to
provide additional evidence of obviousness by the use of pertinent
teachings or suggestions from additional prior art to meet the
features of these dependent claims.
Lastly, we turn to the futures of independent claims 7 and its
dependent claim 8. Claim 7 requires, in addition to the use of the
paging function when the mobile station is correctly identifiable
within the new serving system, when it is not correctly
identifiable within the new serving system, performing completing
the call using conventional calling completion techniques or
sending a message to the mobile station indicating the telephone
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number is not one that is associated with the valid roaming mobile
station as set forth at the end of claim 7. At least with respect
to the first option, the teaching at column 8, lines 50-52 and the
discussion in the paragraph bridging columns 8 and 9 of Reininghaus
indicate that it was known in the art to complete a call using
conventional call completion techniques in addition to the prior
art teaching already discussed earlier with respect to column 1 of
Reininghaus. As to dependent claim 8, it clearly would have been
obvious to the artisan and is well know in the telephonic art that
if a particular called telephone number is determined not to be
within a given call region, the call itself is or may be
terminated.
In summary, we have reversed the examiner’s stated rejection
of claims 1-12 under 35 U.S.C. § 103. On the other hand, we have
instituted a new rejection of claims 1, 2, 4, 5 and 7-12 under 37
U.S.C. § 103 as being obvious over the teachings of Reininghaus in
view of Lee and, as to claims 9-12, separate reliance upon
Reininghaus alone.
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b). 37 CFR § 1.196(b) provides that, “[a] new
ground of rejection shall not be considered final for purposes of
judicial review.”
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Application No. 08/933,911
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37 CFR § 1.196.(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection
to avoid termination of proceedings (§ 1.197(c)) as to the rejected
claims:
(1) Submit an appropriate amendment of the claims so rejected
or a showing of facts relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event
the application will be remanded to the examiner....
(2) Request that the application be reheard under § 1.197(b)
by the Board of Patent Appeal and Interferences upon the same
record....
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
REVERSED;(196b)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ERROL A. KRASS )
Administrative Patent Judge )
JDT/lp
Appeal No. 2002-2000
Application No. 08/933,911
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