Ex Parte Muhonen

Board of Patent Appeals and Interferences

Jun 15, 2009

09836792 (B.P.A.I. Jun. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AHTI MUHONEN
____________

Appeal 2009-2202
Application 09/836,792
Technology Center 2600
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Decided:1 June 15, 2009
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Before MAHSHID D. SAADAT, MARC S. HOFF,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-2202
Application 09/836,792

Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Appellant’s invention relates to a mobile station having an adaptive
mode that allows certain of its functions be programmed for operation in a
variety of modes and systems (Spec. 2). According to Appellant, such
configuration leads to universal global operation for cellular telephones (id.).
Independent claim 1 is illustrative of the invention:
1. A mobile station, configured for use as a software radio
having the capability for universal adaptive use within independent,
globally dispersed cellular communication networks, comprising:

a transceiver for receiving data over a common system
parameter channel from a local one of said independent, globally
dispersed networks into which the mobile stations has traveled,
wherein said data is received directly without reliance on any local
area network or wireline system;

a first processor for compiling and storing network
characteristic data relating to said local one of said independent,
globally dispersed cellular communication networks, received over
said common system parameter channel, relating to operational
capabilities of said cellular networks;

a second processor for compiling and storing subscriber
identification data relating to operational capabilities of said mobile
station;

a third processor for combining said network characteristic data
and said subscriber identification data into an addressable matrix of
operational capabilities; wherein said third processor further generates
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an operational configuration based on said matrix and predetermined
criteria.

The Examiner relies on the following prior art references in rejecting
the claims:
van den Heuvel GB 2 294 844 A May 8, 1996
Henry US 5,603,084 Feb. 11, 1997
Bridges US 6,546,246 B1 Apr. 8, 2003
(effectively filed Mar. 6, 1998)
Sainton US RE38,787 E Aug. 30, 2005
(filed Sep. 8, 1999)

Claims 1, 2, and 5-10 stand rejected as being unpatentable under
35 U.S.C. § 103(a) over van den Heuvel in view of Bridges and Sainton.
Claims 3 and 4 stand rejected as being unpatentable under 35 U.S.C.
§ 103(a) over van den Heuvel, Bridges, and Sainton in view of Henry.2
Rather than repeat the arguments here, we make reference to the Brief
and the Answer3 for the respective positions of Appellant and the Examiner.

ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103 (a). Specifically, Appellant and
the Examiner disagree as to whether van den Heuvel, Bridges, and Sainton
disclose a transceiver that receives data over a common system parameter
channel globally dispersed networks without reliance on any local area
network or wireline system, as recited in claim 1 (Br. 9-12). Further,

2 The final rejection of the claims is repeated in pages 3-13 of the
Examiner’s answer.
3 We refer to the Appeal Brief filed Oct. 17, 2007 and the Examiner’s
Answer mailed Jan. 25, 2008.
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Appellant challenges the combination of the references as to whether it
would have been obvious to one of ordinary skill in the art to modify van
den Heuvel with the teachings of Bridges and Sainton (Br. 11). Therefore,
the issue turns on whether there is a legally sufficient justification for
combining the disclosures of van den Heuvel, Bridges, and Sainton and if so,
whether the combination of the applied references teaches the claimed
subject matter.

FINDINGS OF FACT
The following findings of fact (FF) are relevant to the issue involved
in the appeal.
Van den Heuvel
1. van den Heuvel relates to availability of other communication
systems within the common communication system coverage area to a
generic subscriber unit. (Abstract.)
2. As shown in Figure 1, in response a subscriber access request,
van den Heuvel’s common communication system 19 provides a list of
systems available for use in network 10 along with information on their
features and costs (van den Heuvel, 3:28-34).
3. van den Heuvel further describes the subscriber unit access to
the common communication unit as passive since the subscriber unit may
only monitor the information being transmitted by the common
communication system (van den Heuvel, 4:8-13).
Bridges
4. The roaming system disclosed in Bridges selects a preferred
wireless carrier from a list of preferred wireless carrier identities that is
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stored based on a national account assigned to a mobile station for a plurality
of market areas. (Abstract.)
5. Bridges provides for an intelligent roaming capability that
provides seamless integration without modifying the standards used by each
cellular service provider. (Col. 4, ll. 39-59.)
Sainton
6. Sainton relates to operating a network wireless service provider
for interacting with different wireless products within a given geographic
area by allowing the providers to use radio frequencies from other providers
within the same geographic region. (Abstract.)
7. The system disclosed by Sainton utilizes any one of the
wireless data services within a given geographic area according to manual
selection by the user or a preprogrammed routine for selecting information
based on varying criteria, such as cost, quality, availability, and security of
transmission. (Col. 16, ll. 32-58.)

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C.
§ 103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). “[T]he examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting a prima facie
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case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006); In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
Such a showing requires
‘some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness’ . . . [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Further, a rejection based on § 103 must rest upon a factual basis
rather than conjecture or speculation. “Where the legal conclusion [of
obviousness] is not supported by facts it cannot stand.” In re Warner, 379
F.2d 1011, 1017 (CCPA 1967). See also In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006).
ANALYSIS
Rejection over van den Heuvel, Bridges, and Sainton
With respect to the rejection of claims 1, 2, and 5-10, Appellant
argues that neither of the cited references encourages a person skilled in the
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art to pick the components of each reference to construct the claimed system
(Br. 9). Appellant particularly asserts that the diversity of the references
may be understood, for example, by van den Heuvel’s requirement for an
initial contact to receive information on available networks and their features
(id.), which relates to a local instead of a global system (Br. 10). Appellant
further argues that using a list of preferred service providers in Bridges and
borrowing of radio frequencies among wireless service providers of a
network within the same geographical region in Sainton also refer to a local,
instead of a global, system (Br. 11-12).
The Examiner relies on Sainton for teaching data reception by a
mobile device that travels within independent globally dispersed networks
(Ans. 13). The Examiner characterizes the claimed channel from a local one
of independent globally dispersed networks as the capability of operating
over a plurality of different radio channels disclosed by Sainton (Ans. 13-
14). Regarding the combinability of the references, the Examiner refers to
the same field of endeavor being shared by the references (Ans. 14). The
Examiner also points out that Bridges suggests obtaining the provider “with
which the home cellular service provider has the best roaming agreement”
while Sainton allows for adaptive selection of service providers based on the
user’s experience with specific providers (Ans. 15).
We disagree with the Examiner’s conclusion that the capability of
operating over different radio channels in Sainton is the same as operating
over globally dispersed networks without relying on any local area network.
In that regard, we find the Examiner’s reasoning to be based on speculation,
rather than supported by evidence. While Sainton interacts with different
wireless products (FF 6), those services are within a given geographical area
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(FF 6-7). We agree with the Examiner’s findings to the extent that Sainton
allows different radio frequencies to be used for accessing the offered
services (FF 6-7). However, as argued by Appellant (Br. 11-12), the
portions of Sainton relied on by the Examiner do not define the operating
area of the different frequencies as anything other than a local area. In other
words, the services are still provided by the local area network systems.
We also find that the Examiner’s discussion of the reasons to combine
the references (Ans. 14-15) falls short of the required articulated reasoning.
In that regard, the Examiner has not shown that, based on the teachings or
suggestions found in van den Heuvel, Bridges, or Sainton, the combination
of the references would have resulted in receiving data over a channel in a
globally dispersed system without relying on a local network. Although
Sainton provides for different frequencies, they are all within the same local
area (FF 6-7). Similarly, van den Heuvel provides a list of available systems
within a coverage area (FF 1-2) which may be accessed by the subscriber in
a passive way (FF 3). Bridges, on the other hand, uses roaming agreements
which rely on using local carriers for a seamless access (FF 4-5).
As noted by Appellant, picking the elements of local networks
discussed by the Examiner from each of the references does not result in the
claimed subject matter. Furthermore, the combination also lacks the
requisite analysis outlined in KSR to show predictable results or any solution
that a person of ordinary skill in the art would have pursued or even tried.
Thus, since the combination of the references does not teach or suggest all
the claimed requirements, and the Examiner’s conclusion that it would have
been obvious to the skilled artisan to combine the references is not supported
by ‘some articulated reasoning with some rational underpinning to support
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the legal conclusion of obviousness’ based on the teachings or suggestions
of van den Heuvel, Bridges, or Sainton, the 35 U.S.C. § 103(a) of claims 1,
2, and 5-10 over van den Heuvel, Bridges, and Sainton cannot be sustained.
Rejection over van den Heuvel, Bridges, Sainton, and Henry
With respect to the rejection of claims 3 and 4, we observe that the
Examiner has not identified any teachings in Henry to overcome the
deficiencies related to the features of base claim 1, in the combination of van
den Heuvel, Bridges, and Sainton discussed above. Therefore, we do not
sustain the 35 U.S.C. § 103 rejection of claims 3 and 4 over van den Heuvel,
Bridges, Sainton, and Henry.

CONCLUSION
On the record before us, we find that the Examiner fails to make a
prima facie case that the combination of van den Heuvel, Bridges, and
Sainton would have taught or suggested a transceiver that receives data over
a common system parameter channel globally dispersed networks without
reliance on any local area network or wireline system, as recited in claims 1
and 8. Therefore, in view of our analysis above, the 35 U.S.C. § 103 (a)
rejection of claims 1-10 cannot be sustained.

DECISION
The decision of the Examiner rejecting claims 1-10 is reversed.

REVERSED

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gvw

RALPH D. GELLING
PERMAN & GREEN, LLP
425 POST ROAD
FAIRFIELD, CT 06430
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