Ex Parte Mohammed

Board of Patent Appeals and Interferences

Aug 25, 2010

10115767 (B.P.A.I. Aug. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/115,767 04/02/2002 Jahangir Mohammed KNTO.P0006 3250
48947 7590 08/26/2010
ADELI & TOLLEN, LLP
11940 San Vicente Blvd., Suite 100
LOS ANGELES, CA 90049
EXAMINER
IQBAL, KHAWAR
ART UNIT PAPER NUMBER
2617
MAIL DATE DELIVERY MODE
08/26/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAHANGIR MOHAMMED
____________

Appeal 2009-004061
Application 10/115,767
Technology Center 2600
____________

Before JOHN C. MARTIN, JOSEPH F. RUGGIERO, and
THOMAS S. HAHN, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for 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 2009-004061
Application 10/115,767

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 2, and 5-12. We have jurisdiction under 35 U.S.C. §
6(b).
We reverse.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Appeal Brief (filed February 13, 2008), the Answer
(mailed May 16, 2008), and the Reply Brief (filed July 16, 2008) for the
respective details. Only those arguments actually made by Appellant have
been considered in this decision. Arguments which Appellant could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellant’s Invention
Appellant’s invention relates to the integration of a licensed wireless
system and an unlicensed wireless system. A communication session is
established with a subscriber device through the unlicensed wireless system
servicing an unlicensed wireless system service area. Upon receiving an
indication that the subscriber device is moving from the unlicensed wireless
system service area into a licensed wireless system service area, a request to
transition from the unlicensed wireless system to the licensed wireless
system is received at an unlicensed wireless system server from the
particular unlicensed wireless base station via the Internet. The request
triggers a command from the licensed wireless system to automatically
transition from the unlicensed wireless system to the licensed wireless
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system without disrupting the communication session. (See generally Spec.
¶¶ [0007]-[0008]).

Claim 1 is illustrative of the invention and reads as follows:
1. A method of integrating a licensed wireless system and an
unlicensed wireless system, said unlicensed wireless system comprising a
particular unlicensed wireless base station and an unlicensed wireless system
server connected via Internet, the method comprising:
establishing a communication session with a subscriber device using
the unlicensed wireless system servicing an unlicensed wireless system
service area, wherein said subscriber device communicates wirelessly with
said particular unlicensed wireless base station;
receiving an indication that said subscriber device is moving from said
unlicensed wireless system service area into a licensed wireless system
service area;
receiving at the unlicensed wireless system server a request to
transition from the unlicensed wireless system to the licensed wireless
system, said request going from the particular unlicensed wireless base
station to the unlicensed wireless system server via the Internet, said request
triggering a command from the licensed wireless system to transition from
the unlicensed wireless system to the licensed wireless system, wherein the
unlicensed wireless system server is communicatively coupled via the
Internet to multiple unlicensed wireless base stations that serve multiple
unlicensed wireless system service areas, in order to communicatively
couple the licensed wireless system to the unlicensed wireless base stations,
wherein the Internet is a worldwide network of networks;
initiating a transition from the unlicensed wireless system to the
licensed wireless system; and
without disrupting said communication session, automatically
transitioning said communication session from said unlicensed wireless
system to said licensed wireless system servicing said licensed wireless
system service area.

Appeal 2009-004061
Application 10/115,767

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The Examiner’s Rejections
The Examiner’s Answer relies on the following as evidence of
unpatentability:
Kallio US 2002/0147008 A1 Oct. 10, 2002
(filed Jan. 29, 2001)
Vikberg US 6,925,074 B1 Aug. 2, 2005
(filed Nov. 22, 2000)
Claims 1, 2, and 5-12, all of the appealed claims, stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Kallio in view of Vikberg. 2

ISSUE
The pivotal issue before us is whether the Examiner erred in
concluding that the combination of Kallio and Vikberg teaches all of the
claimed features. The issue specifically turns on whether the Examiner
erred in determining that Vikberg discloses that the home base station(s)
(HBS) 104 communicate with the home base station controller (HSBC) 105,
i.e., the unlicensed wireless system server, via the Internet.

ANALYSIS
Appellant’s arguments focus on the alleged deficiency of Vikberg in
disclosing the communicative coupling of the unlicensed wireless system
server to multiple unlicensed wireless base stations via the Internet, a feature
present in each of the independent claims 1 and 7. Both Appellant and the
Examiner agree that Kallio has no such teaching. In Appellant’s view, the
Vikberg reference, relied upon by the Examiner as teaching this feature, at

2 The Examiner (Ans. 18) has withdrawn the 35 U.S.C. § 112, second
paragraph, rejection of claims 1 and 7.
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Application 10/115,767

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best discloses an Internet connection between the HBSC 105, which the
Examiner likens to the claimed unlicensed wireless system server, and the
Internet through a connection to an edge router of fixed network 106 (Fig. 1;
col. 5, ll. 50-60). According to Appellant (App. Br. 6-7; Reply Br. 4-8),
however, the HBS 104 of Vikberg is connected to the HBSC 105 only
through an intranet port of fixed network 106, and not through an Internet
connection as claimed (col. 6, ll. 11-17).
We agree with Appellant. Although the Examiner directs attention
(Ans. 12-13) to the portion of Vikberg which discloses that the fixed
network 106 is “based on ADSL, Ethernet, LMDS, or the like,” the mere
fact that the cited technologies are those which can be used to communicate
with the Internet does not necessarily mean that an Internet connection is
established or that network 106 is “the Internet” as asserted by the Examiner
(col. 5, ll. 49-50). To the contrary, as argued by Appellant (App. Br. 7;
Reply Br. 6-7), two computers on a local area network (LAN) connected, for
example, through Ethernet communication technology, are not using the
Internet when they communicate with each other over the LAN, even if one
of the computers is connected to the Internet through an external connection.
Similarly, as argued by Appellant (Reply Br. 7) the use of Internet protocol
(IP) for communication by the fixed network 106 of Vikberg does not
necessarily mean that the fixed network 106 is “the Internet” or that there is
an Internet connection since IP is also used by non-Internet networks (col. 6,
l. 4-9).
In view of the foregoing, it is apparent to us that even assuming,
arguendo, that the Examiner provided a proper basis for combining the
disclosures of Kallio and Vikberg, the resulting combination would not
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Application 10/115,767

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satisfy the claimed features present in each of the appealed independent
claims 1 and 7. We, therefore, do not sustain the Examiner’s 35 U.S.C.
§ 103(a) rejection of independent claims 1, and 7, nor of claims 2, 5, 6, and
8-12 dependent thereon.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has shown the Examiner erred in rejecting claims 1, 2, and 5-12
for obviousness under 35 U.S.C. § 103(a).

DECISION
The Examiner’s 35 U.S.C. § 103(a) rejection of claims 1, 2, and 5-12,
all of the appealed claims, is reversed.

REVERSED

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