Ex Parte Morton

Board of Patent Appeals and Interferences

Aug 28, 2012

11876019 (B.P.A.I. Aug. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PAUL MORTON
____________________

Appeal 2010-005574
Application 11/876,019
Technology Center 2600
____________________

Before LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
21-40. Claims 1-20 have been cancelled. We have jurisdiction under 35
U.S.C. § 6(b).
We Affirm.
Claim 21, reproduced below, is illustrative of the claimed subject
matter:
21. A vehicular communications device operable to facilitate
handoff of a communication of a wireless device between
extra-vehicular wireless networks, the vehicular
communications device comprising:

an intra-vehicular wireless network interface operable to
communicate with the wireless device via an intra-vehicular
wireless network;

an extra-vehicular wireless network interface operable to
communicate with a first extravehicular wireless network; and

processing circuitry coupled to the intra-vehicular
wireless network interface and to the extra-vehicular wireless
network interface and that is operable to route communications
of the wireless device between the intra-vehicular wireless
network interface and the extra-vehicular wireless network
interface;

wherein when a coverage area of the intra-vehicular
wireless network overlaps with a coverage area of a second
extra-vehicular wireless network, the processing circuitry is
operable to service handoff of the communication of the
wireless device between the second extra-vehicular wireless
network and the first extra-vehicular wireless network, the
communication supported by the intra-vehicular wireless
network.
(disputed limitations emphasized)
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REFERENCES
The prior art relied upon by the Examiner as evidence in support of
the rejection on appeal is:
Davis US 2003/0143987 Al Jul. 31, 2003
Loke1 US 6,728,528 B1 Apr. 27, 2004
Gallagher US 7,349,698 B2 Mar. 25, 2008
(filed May 12, 2005)

REJECTION
Claims 21-40 stand rejected under 35 U.S.C §103(a) as being
unpatentable over the combination of Davis and Gallagher.

Grouping of Claims
Based on Appellant’s arguments (App. Br. 9-13), we decide the
appeal on the basis of representative claim 21. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Contentions:
Appellant presents the following contentions:
Appellant does not agree with the Examiner’s interpretation of
Gallagher or the present claims. In Gallagher, a wireless device
is provided with the ability to communicate with both a
Bluetooth network (which reads on Appellant’s claimed “intra-
vehicular wireless network”) and a traditional GSM-based

1 The Loke reference was provided as extrinsic evidence by the Examiner in
support of the finding that “[i]t is well-known in the art of cellular
communication for cell phones to handoff from one cellular base station to
another cellular base station, even while in a vehicle (see e.g. Loke USPN
6,728,528, col. 1, background and related art). A handoff takes place when a
cellphone loses signal quality at a given serving base station while moving a
geographic area. The cellular service and the calls are ‘handed off’ to
another neighboring base station with better signal quality.” (Ans. 7).
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cellular network (which reads on one of Appellant’s claimed
“extra-vehicular wireless networks”) and calls initiated in one
or the other network can be handed off to the other network
seamlessly. (See, col. 6, lines 30-53 and col. 7, lines 4-52).
Gallagher does not teach or suggest that a handoff can be
performed between two “extra-vehicular wireless networks”
while communications of the wireless device are being routed
between “the intra-vehicular wireless network interface and the
extra-vehicular wireless network interface,” as claimed in the
present application.
With respect to the passage in Gallagher that the
Examiner continues to cite as teaching this feature (col. 12,
lines 1-12), Appellant notes that this cited passage merely
described how two SIM cards (i.e., one within an embedded
cell phone subsystem in a car and another within a normal cell
phone) can communicate so as to allow one of the SIM cards to
take on the “personality” of the other SIM card. This cited
passage has nothing to do with performing handoffs, nor does it
suggest any mechanism for performing a handoff while the two
SIM cards are communicating. In particular, the cited passage
does not teach or suggest that the two SIM cards could be
communicating with each other (for example, via an “intra-
vehicular wireless network”) while at the same time
communicating with a “first extra-vehicular wireless network.”
Moreover, the cited passage does not teach or suggest that the
two SIM cards (who are communicating with each other and
also communicating with a “first extra-vehicular wireless
network”) could somehow then perform a handoff between the
“first extra-vehicular wireless network” and a “second extra-
vehicular wireless network.”
(App. Br. 11-12, emphasis added).

The Examiner disagrees:
Davis discloses an intra-vehicular network and the first
extra-vehicular network including processing circuitry to route
communications between the two said networks.
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However, Davis does not disclose a second
extra-vehicular network and a handoff from the first extra-
vehicular network to the second extra-vehicular network.
Nevertheless, Gallagher discloses in col. 12, lines 1-12, a
Bluetooth capable phone inside a car, where the phone connects
to the cell phone subsystem (also Bluetooth capable) inside the
car and allows the subsystem to take on the personality of the
user’s cell phone via a standard Bluetooth protocol capability
called “SIM Access Profile”. Therefore, now when the phone
travels inside the vehicle, cellular phone calls will be routed
through the subsystem of the car that acts like the phone itself,
where a handoff, if needed, will take place as is done
conventionally.
While it is true that Gallagher does not explicitly disclose
two extra-vehicular wireless networks and handoff in the sense
of the claimed limitation, but he discloses a cell phone in a
vehicle taking on the personality of the cellphone. A person of
ordinary skill in the art of cellular communication would be
able to recognize such a cell phone and subsystem inside the
car would be able to perform normal cell phone functions,
including handoff, if needed. Further, the two SIMs will be
connected simultaneous to the handoff, otherwise, if the
Bluetooth connection is lost by cell phone moving out of range
of the car, there will be no “81M Access Profile” taking place.
Finally, it is noted that the appellant’s recited limitation
discloses “wherein when a coverage of the intra-vehicular
wireless network overlaps ... ” and “the processing circuitry is
operable to .. ”. Such limitations are broad and leaves the claim
open to interpretation. For example, what happens when there
is no overlap in coverage, would the limitation need to be
addressed? Note also that this last paragraph of the claim
recites, for the first time, the terms “handoff” and “second
extra-vehicular wireless network”, suggesting the lack of
structure supporting this handoff technique.
(Ans. 9-10, emphasis added).

In the Reply Brief (5), Appellant contends that the Examiner
has misinterpreted the teachings of Gallagher. Appellant reproduces
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specific portions of Gallagher (col. 11, ll. 51-68, and col. 12, ll. 1-12),
and concludes:
As described above, in Gallagher, the mobile device itself
can connect to or handoff between a licensed wireless network
and an unlicensed wireless network. However, Gallagher does
not teach or suggest that the mobile device would connect to a
vehicular communication device via an unlicensed network and
that the vehicular communication device would then connect to
a first licensed network to perform a handoff between the first
licensed network and another licensed network.
(Reply Br. 6, emphasis added).

ANALYSIS
Issue: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested
the following disputed limitations (labeled L1 and L2 for convenience and
with emphasis added):

[L1] processing circuitry . . . that is operable to route
communications of the wireless device between the intra-
vehicular wireless network interface and the extra-vehicular
wireless network interface;

[L2] wherein when a coverage area of the
intra-vehicular wireless network overlaps with a coverage area
of a second extra-vehicular wireless network, the processing
circuitry is operable to service handoff of the communication of
the wireless device between the second extra-vehicular wireless
network and the first extra-vehicular wireless network, the
communication supported by the intra-vehicular wireless
network,

within the meaning of representative claim 21?

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In reviewing the record, we find limitation L1 (i.e., “processing
circuitry . . . that is operable to route communications of the wireless device
between the intra-vehicular wireless network interface and the extra-
vehicular wireless network interface”) would have been taught or suggested
by Gallagher according to Appellant’s own admission: “in Gallagher, the
mobile device itself can connect to or handoff between a licensed wireless
network and an unlicensed wireless network.” (Reply Br. 6).2
Regarding limitation L2, as a matter of claim construction, we agree
with the Examiner’s broader interpretation regarding the recited “wherein”
clause3 and also regarding the liberal use of the qualifier “operable to” in the
claim. (Ans. 10). Our reviewing court guides that “[a]n intended use or

2 “Valid prior art may be created by the admissions of the parties. . . . [A]
statement by an applicant during prosecution identifying certain matter not
the work of the inventor as ‘prior art’ is an admission that the matter is prior
art.” Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed.
Cir. 2003) (citations omitted); see also Constant v. Advanced
Micro-Devices Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a
patent that something is in the prior art is binding on the applicant and
patentee for determinations of anticipation and obviousness.”).
3 See MPEP § 2111.04 regarding “wherein” clauses: (underline added)
Claim scope is not limited by claim
language that suggests or makes optional but does
not require steps to be performed, or by claim
language that does not limit a claim to a particular
structure. However, examples of claim language,
although not exhaustive, that may raise a question
as to the limiting effect of the language in a claim
are:(A) “adapted to” or “adapted for” clauses; (B)
“wherein” clauses; and (C) “whereby” clauses.

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purpose usually will not limit the scope of the claim because such statements
usually do no more than define a context in which the invention operates.”
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed.Cir. 2003). Although “[s]uch statements often . . . appear
in the claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed.Cir. 1987), a
statement of intended use or purpose can appear elsewhere in a claim. Id.
This reasoning is applicable here. Thus, we conclude that Appellant’s
representative claim 21 does not positively recite that the disputed functional
limitations are actually performed. Nor is it clear, as pointed out by the
Examiner (Ans. 10), where the limitations added by amendment have
written description support in the Specification. Although Appellant points
to paragraphs [0015] and [0018] for support (App. Br. 6), we find no clear
support for the added “wherein” clause. 4 We also observe that
representative claim 21 is silent regarding the argued limitation of “while
communications of the wireless device are being routed between …”:
Gallagher does not teach or suggest that a handoff can be
performed between two “extra-vehicular wireless networks”
while communications of the wireless device are being routed
between “the intra-vehicular wireless network interface and the

4 “[I]t is ‘not a question of whether one skilled in the art might be able
to construct the patentee's device from the teachings of the disclosure....
Rather, it is a question whether the application necessarily discloses that
particular device’ . . . . A description which renders obvious the invention
for which an earlier filing date is sought is not sufficient.” Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (quoting
Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)). See also Ariad
Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir.
2010) (“[W]e have repeatedly stated that actual ‘possession’ or reduction to
practice outside of the specification is not enough. Rather, . . . it is the
specification itself that must demonstrate possession.”).

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extra-vehicular wireless network interface,” as claimed in the
present application.
(App. Br. 11, emphasis added).
Thus, Appellant’s arguments are not commensurate with the broader scope
of claim 21. (Id.).
Assuming arguendo that the disputed limitations L1 and L2 should be
accorded weight, the evidence supports the Examiner’s finding that “[a]
person of ordinary skill in the art of cellular communication would be able
to recognize such a cell phone and subsystem inside the car would be able to
perform normal cell phone functions, including handoff, if needed.” (Ans. 9,
emphasis added). Gallagher provides a clear teaching of such conventional
handoffs from one cell tower to another: “[c]onventional licensed voice and
data networks 104 include protocols to permit seamless handoffs from one
recognized BSC 124 [Base Station Controller] to another BSC (not shown).”
(Col. 6, l. 67 – col. 7, l. 3; Fig. 1A). We need not consider the extrinsic
Loke reference provided by the Examiner to decide this appeal. See n.1.
Thus, on this record, we find the weight of the evidence supports the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness regarding limitation L2:
Therefore, now when the [Bluetooth capable] phone travels
inside the vehicle, cellular phone calls will be routed through
the subsystem of the car that acts like the phone itself, where a
handoff, if needed, will take place as is done conventionally.
(Ans. 9, emphasis added; relying on Gallagher, col. 12, ll. 1-12).
For these reasons, we are not persuaded of Examiner error.
Accordingly, we sustain the Examiner’s obviousness rejection of
representative claim 21. Claims 22-40 (not argued separately) fall therewith.
See 37 C.F.R. § 41.37(c)(1)(vii).
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DECISION
We affirm the Examiner’s rejection under § 103(a) of claims 21-40.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).
ORDER
AFFIRMED

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