Ex parte Menich et al.

Board of Patent Appeals and Interferences

Jan 10, 2002

08644465 (B.P.A.I. Jan. 10, 2002)

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for publication and is not binding precedent of the Board.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. 9
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BARRY J. MENICH,
JAMES P. ALDRICH, and SAMUEL D. FERNANDEZ
____________
Appeal No. 2000-0326
Application No. 08/644,465
____________
ON BRIEF
____________
Before KRASS, DIXON, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
The examiner rejected the appellants’ claims 1-16. They
appeal therefrom under 35 U.S.C. § 134(a). We reverse.
BACKGROUND
The invention at issue in this appeal relates to handoff
between spread-spectrum and non-spread-spectrum communication
systems. In a Code-Division, Multiple-Access (“CDMA”) spread-
spectrum communication system, base stations service a remote
Appeal No. 2000-0326 Page 2
Application No. 08/644,465
unit, i.e., a cellular subscriber. When the subscriber moves
to the periphery of the coverage area of its serving base
station, an increase in path losses between the serving base
station and the subscriber creates a situation in which an
adjacent base station can better serve the subscriber.
Consequently, service of the subscriber is handed off to the
adjacent station.
Service must sometimes be handed off between a CDMA base
station and a base station utilizing a communication system
protocol that is not spread spectrum, e.g., the Advanced
Mobile Phone Service (“AMPS”) protocol. Heretofore, service
to a subscriber was prematurely handed off to the AMPS base
station, thereby squandering the benefit of spread-spectrum
services.
In contrast, the appellants determine when to hand off
service from a CDMA base station to an AMPS base station by
comparing a subscriber's phase shift measurement to a
threshold and determining a reference CDMA base station from
an active set of CDMA base stations. Next, corrected phase
Appeal No. 2000-0326 Page 3
Application No. 08/644,465
shifts are calculated for each CDMA base station in the active
set. Service unit is handed off to an AMPS base station
underlying the CDMA coverage area having the smallest
corrected phase shift. Waiting until a threshold event is
received by the subscriber to hand off service allows the
subscriber to travel farther in the CDMA coverage area before
being handed off to the AMPS base station.
Claim 1, which is representative for present purposes,
follows:
1. A method for performing handoff in a spread-
spectrum communication system, the method comprising
the steps of:
measuring a time between a base station's
transmitted signal and a corresponding received
signal transmitted from a remote unit to produce a
measured phase shift;
comparing the measured phase shift to a
threshold to produce a comparison;
correcting the measured phase shift to produce a
corrected phase shift, wherein the step of
correcting comprises adjusting the measured phase
shift based on a time between a second base
station's transmitted signal and a corresponding
signal received at the second base station; and
handing off the remote unit based on the
corrected phase shift and the comparison.
Appeal No. 2000-0326 Page 4
Application No. 08/644,465
The prior art applied by the examiner in rejecting the
claims follows:
Tarallo et al. (“Tarallo”) 5,054,035 Oct. 1,
1991
Menich et al. (“Menich”) 5,313,489 May
17, 1994.
Claim 7 stands rejected under 35 U.S.C. § 102(b) as
anticipated by Tarallo. Claims 1-6 and 8-16 stand rejected
under 35 U.S.C. § 103(a) as obvious over Tarallo in view of
Menich.
OPINION
After considering the record, we are persuaded that the
examiner erred in rejecting claims 1-16. Accordingly, we
reverse.
Rather than reiterate the positions of the examiner or
appellants in toto, we address their main point of contention.
The examiner asserts, "Tarallo et al. recites . . . monitoring
the received signal transmitted from the remote station and
comparing the received signal with a threshold in order to
Appeal No. 2000-0326 Page 5
Application No. 08/644,465
determine a comparison which is defined as a quality measure
(which reads determining [sic] the distance between base
station received station) which may be used for hand-off (See
abstract, fig.2 and 3 and co1.2, line 63 to col.3, line 16)."
(Final Rejection at 3.) The appellants argue, "Tarallo et al.
and Menich et al. (alone or in combination) fail to teach or
otherwise suggest handoff based on a phase shift, where the
phase shift is based on a time between a base station's
transmitted signal and a corresponding received signal
transmitted from a remote unit. . . ." (Appeal Br. at 7-8.)
In deciding anticipation, “the first inquiry must be into
exactly what the claims define.” In re Wilder, 429 F2d 447,
450, 166 USPQ 545, 548 (CCPA 1970). Similarly, in deciding
obviousness, “[a]nalysis begins with a key legal question --
what is the invention claimed?” Panduit Corp. v. Dennison
Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed. Cir.
1987).
Appeal No. 2000-0326 Page 6
Application No. 08/644,465
Here, independent claim 1 specifies in pertinent part the
following limitations: "measuring a time between a base
station's transmitted signal and a corresponding received
signal transmitted from a remote unit to produce a measured
phase shift; comparing the measured phase shift to a threshold
to produce a comparison. . . ." Similarly, independent claim
7 specifies in pertinent part the following limitations:
"measuring a time, between a base station's transmitted signal
and a corresponding received signal transmitted from a remote
unit to produce a measured phase shift; comparing the phase
shift to a threshold to produce a comparison. . . .” Also
similarly, independent claim 11 specifies in pertinent part
the following limitations: “measuring a plurality of times
between the plurality of base station's transmitted signals
and corresponding received signals transmitted from a remote
unit to produce a plurality of phase shift measurements; . . .
comparing the plurality of phase shift measurements to a
plurality of thresholds to produce a comparison. . . .”
Further similarly, independent claim 14 specifies in pertinent
part the following limitations: “means for measuring an
uncorrected phase shift of a remote unit to produce a measured
Appeal No. 2000-0326 Page 7
Application No. 08/644,465
phase shift, wherein the uncorrected phase shift is based on a
time between a base station's transmitted signal and a
corresponding signal received at the base station; means,
coupled to means for measuring, for comparing the measured
phase shift to a threshold to produce a comparison. . . .”
Accordingly, independent claims 1, 7, 11, and 14 require inter
alia determining a phase shift by measuring a time between a
base station's transmission of a signal and the base station’s
reception of a corresponding signal from a remote unit and
comparing the determined phase shift to a threshold.
Starting with the anticipation rejection of claim 7,
“having ascertained exactly what subject matter is being
claimed, the next inquiry must be into whether such subject
matter is novel.” Wilder, 429 F2d at 450, 166 USPQ at 548.
“A claim is anticipated only if each and every element as set
forth in the claim is found, either expressly or inherently
described, in a single prior art reference.” Verdegaal Bros.,
Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053
(Fed. Cir. 1987) (citing Structural Rubber Prods. Co. v. Park
Appeal No. 2000-0326 Page 8
Application No. 08/644,465
Rubber Co., 749 F.2d 707, 715, 223 USPQ 1264, 1270 (Fed. Cir.
1984); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548,
220 USPQ 193, 198 (Fed. Cir. 1983); Kalman v. Kimberly-Clark
Corp., 713 F.2d 760, 771, 218 USPQ 781, 789 (Fed. Cir. 1983)).
“For each rejection under 35 U.S.C. 102 or 103 ..., the
examiner shall compare at least one of the rejected claims
feature by feature with the prior art relied on in the
rejection. The comparison shall align the language of the
claim side-by-side with a reference to the specific page, line
number, drawing reference number, and quotation from the prior
art. . . .” M.P.E.P. § 1208 (8th ed., Aug. 2001)(emphasis
added).
Here, the examiner fails to show, or even allege, that
Tarallo determines a phase shift, let alone measures a time
between base station's transmission of a signal and the base
station’s reception of a corresponding signal from a remote
unit, and compares the phase shift to a threshold. Rather
than comparing the language of the claims with the reference,
he merely asserts that Tarallo determines a quality measure by
Appeal No. 2000-0326 Page 9
Application No. 08/644,465
comparing a signal received from a remote station with a
threshold as aforementioned. We will not “resort to
speculation,” In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
178 (CCPA 1967), as to where the claimed limitations might be
found in Tarallo.
Because there is no showing that Tarallo determines a
phase shift by measuring a time between base station's
transmission of a signal and the base station’s reception of a
corresponding signal from a remote unit and compares the
determined phase shift to a threshold, we are not persuaded
that the reference discloses the limitations of "measuring a
time, between a base station's transmitted signal and a
corresponding received signal transmitted from a remote unit
to produce a measured phase shift; comparing the phase shift
to a threshold to produce a comparison. . . .” Therefore, we
reverse the rejection of claim 7.
Turning to the obviousness rejection of claims 1-6 and 8-
16, the next inquiry is whether the subject matter is obvious.
“In rejecting claims under 35 U.S.C. Section 103, the examiner
Appeal No. 2000-0326 Page 10
Application No. 08/644,465
bears the initial burden of presenting a prima facie case of
obviousness.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993)(citing In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)). "’A prima
facie case of obviousness is established when the teachings
from the prior art itself would appear to have suggested the
claimed subject matter to a person of ordinary skill in the
art.’" In re Bell, 991 F.2d 781, 782, 26 USPQ2d 1529, 1531
(Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051,
189 USPQ 143, 147 (CCPA 1976)).
Here, the examiner fails to show that Menich, the
secondary reference, cures the defect of Tarallo. Menich
discloses that “[w]hen mobile station 125 moves beyond the
boundary of DS CDMA cell 100 into an AMPS cell, for example
cell 106, DS CDMA base-station 130 detects the need for
handoff by employing the results of the pilot measurements
supplied by mobile station 125.” Col. 4, ll. 24-29. The
examiner does not show that the reference’s pilot measurements
represent a phase shift, let alone a measurement of a time
Appeal No. 2000-0326 Page 11
Application No. 08/644,465
between base station's transmission of a signal and the base
station’s reception of a corresponding signal from a remote
unit, and compares the phase shift to a threshold.
Furthermore, although Menich’s “receiver hardware [is]
employed to demodulate the transmitted narrowband signal and
determine a signal quality value or signal strength indication
(SSI) of the signal,” col. 5, ll. 20-23, the examiner shows no
evidence to support his allegation that “determining a quality
value . . . reads on [determining a] phase shift. . . .”
(Final Rejection at 3.)
Because there is no showing that Tarallo or Menich
determines a phase shift by measuring a time between base
station's transmission of a signal and the base station’s
reception of a corresponding signal from a remote unit and
compares the determined phase shift to a threshold, we are not
persuaded that the teachings from the applied prior art would
have suggested the limitations of "measuring a time between a
base station's transmitted signal and a corresponding received
signal transmitted from a remote unit to produce a measured
phase shift; comparing the measured phase shift to a threshold
Appeal No. 2000-0326 Page 12
Application No. 08/644,465
to produce a comparison;" "measuring a time, between a base
station's transmitted signal and a corresponding received
signal transmitted from a remote unit to produce a measured
phase shift; comparing the phase shift to a threshold to
produce a comparison;” “measuring a plurality of times between
the plurality of base station's transmitted signals and
corresponding received signals transmitted from a remote unit
to produce a plurality of phase shift measurements; . . .
comparing the plurality of phase shift measurements to a
plurality of thresholds to produce a comparison” or “means for
measuring an uncorrected phase shift of a remote unit to
produce a measured phase shift, wherein the uncorrected phase
shift is based on a time between a base station's transmitted
signal and a corresponding signal received at the base
station; means, coupled to means for measuring, for comparing
the measured phase shift to a threshold to produce a
comparison. . . .” Therefore, we reverse the rejection of
rejection of independent claims 1, 11, and 14 and of claims 2-
6, claims 12 and 13, and claims 15 and 16, which respectively
depend from the independent claims. We also reverse the
Appeal No. 2000-0326 Page 13
Application No. 08/644,465
rejection of claims 8-10, which depend from independent
claim 7.
CONCLUSION
In summary, the rejection of claim 7 under § 102(b) is
reversed. The rejection of claims 1-6 and 8-16 under §
103(a) is also reversed.
Appeal No. 2000-0326 Page 14
Application No. 08/644,465
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 2000-0326 Page 15
Application No. 08/644,465
R. LOUIS BREEDEN
INTELLECTUAL PROPERTY DEPARTMENT
5401 NORTH BEACH STREET/MSE230
FORT WORTH, TX 76137