Ex Parte Niemenmaa

Board of Patent Appeals and Interferences

May 13, 2008

10429947 (B.P.A.I. May. 13, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JARKO NIEMENMAA
____________

Appeal 2007-4435
Application 10/429,947
Technology Center 2600
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Decided: May 13, 2008
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Before MAHSHID D. SAADAT, JOHN A. JEFFERY, and CARLA M.
KRIVAK, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 2, 4-21, and 23. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

Appeal 2007-4435
Application 10/429,947

STATEMENT OF THE CASE
Appellant invented a method of locating user equipment that is able to
communicate over at least two channels. In one implementation, when the
user equipment is handed over to communicate on a different channel, the
determination of the location of the user equipment continues until the
handover is completed. Moreover, the system enables completion of such a
location determination despite an unsuccessful handover. Such a system is
more efficient since, among other things, it avoids the need to restart
location procedures when handovers are unsuccessful.1 Claim 1 is
illustrative:
1. A method of locating user equipment that is able to communicate
over at least a first and a second channel, the method comprising:

requesting a location of user equipment which is communicating on a
first channel;

initiating a determination of the location of the user equipment; and

handing over the user equipment to communicate on a second
channel,

wherein said determination of the location of the user equipment on
the first channel continues until said handing over has been completed, and

wherein when said handing over is unsuccessful the determination of
the location of the user equipment communicating on the first channel is
completed.

The Examiner relies on the following prior art references to show
unpatentability:

1 See generally Spec. ¶¶0015-0022; 0044.
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Zadeh US 6,047,182 Apr. 4, 2000
Fischer US 6,295,455 B1 Sep. 25, 2001
Vaara US 6,400,951 B1 Jun. 4, 2002

1. Claims 1, 2, 4-6, 10-12, 16, 17, 20, 21, and 23 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Fischer and Zadeh.
2. Claims 7-9, 13-15, 18, and 19 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Fischer, Zadeh, and Vaara.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

OPINION
The Obviousness Rejection Over Fischer and Zadeh
We first consider the Examiner’s rejection of claims 1, 2, 4-6, 10-12,
16, 17, 20, 21, and 23 under 35 U.S.C. § 103(a) as unpatentable over Fischer
and Zadeh. 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).
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Discussing the question of obviousness of a patent that claims a
combination of known elements, the Court in KSR Int’l v. Teleflex, Inc., 127
S. Ct. 1727 (2007) explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740. If the claimed subject matter cannot be fairly
characterized as involving the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
ready for the improvement, a holding of obviousness can be based on a
showing that “there was an apparent reason to combine the known elements
in the fashion claimed.” Id. at 1740-41. 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 1741 (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
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Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

Independent Claim 1
The Examiner's rejection essentially finds that Fischer teaches a
method of locating user equipment with every claimed feature except for
completing the location determination when handing over is unsuccessful.
The Examiner cites Zadeh as teaching such a feature and concludes that the
claimed invention would have been obvious to one of ordinary skill in the art
at the time of the invention in view of these collective teachings (Ans. 3-10).
Appellant argues that the combination of Fischer and Zadeh is
improper and unmotivated hindsight reconstruction since the only basis for
combining these references is found in Appellant’s application, and not the
prior art. In this regard, Appellant emphasizes that the cited references are
non-analogous as they pertain to different kinds of handovers:
communication handovers in Fischer, and positioning handovers in Zadeh
(App. Br. 9-14; Reply Br. 3-6, 14-16).
Appellant further argues that even if it were proper to combine the
references, the combination would still not disclose or suggest the last
limitation of claim 1 calling for completing the location determination of the
user equipment when handing over is unsuccessful. According to Appellant,
Zadeh does not remedy the deficiencies of Fischer, and indeed teaches a
result contrary to that called for in the disputed limitation. That is, Appellant
emphasizes that Zadeh teaches that when a positioning handover is
unsuccessful, the location determination cannot be completed since such
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positioning handovers are absolutely essential in acquiring the requisite
positioning data from three separate base station transceivers that is needed
to determine the user equipment’s location (App. Br. 14-15; emphasis
added).
The Examiner contends that the term “completed” recited in the claim
merely means “having come to an end.” With this construction, the
Examiner argues that the limitation does not preclude Zadeh’s process
detailed in the flow chart of Figure 3B that “completes” the location
determination if the handover is unsuccessful. That is, the Examiner takes
the position that the steps shown on the left side of this flow chart
correspond to (1) an unsuccessful handover (i.e., the respective “no” prongs
of steps 350, 360, 370), and (2) “completing” the location determination
(i.e., no positioning data obtained (step 375)) (Ans. 18-19).
Appellant, however, disputes the Examiner’s interpretation of the term
“completed.” Appellant argues that ordinarily skilled artisans would instead
interpret the term “completed” in light of the Specification to mean “to make
whole or perfect,” “carry out successfully,” or to be “brought into a
perfected state.” (Reply Br. 10-12). With this construction, Appellant argues
that ordinarily skilled artisans would therefore interpret claim 1 to require
bringing the location determination to perfection even when the handing
over is unsuccessful. Put another way, Appellant contends that this
interpretation of claim 1 requires actually carrying out the location
determination when handing over is unsuccessful -- a determination that
ultimately results in a valid location estimate even under this unsuccessful
handover condition (Reply Br. 11).
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The issues before us, then, are (1) whether the Fischer and Zadeh
references would have been reasonably combinable, and (2) whether the
collective teachings of the references teach or suggest the disputed limitation
of claim 1, namely completing the location determination of the user
equipment when handing over is unsuccessful. For the following reasons,
we answer “yes” to both of these questions. However, the answer to the first
question is not dispositive to our decision since we find the Fischer reference
itself amply suggests all limitations of claim 1.
Fischer discloses a method for locating a mobile station (MS) 12 that
operates in a mobile telecommunications network. To this end, the MS’s
geographical location is determined via position measuring data that is
transmitted from the MS to various location measurement units (LMUs)
15a-k associated with base transceiver stations (BTSs) 14a-n (Fischer, col. 5,
l. 35 - col. 6, l. 26; col. 7, l. 39 - col. 8, l. 30; Figs. 1, 2).
Significantly, positioning data in Fischer can be transmitted during or
following a handover operation. For example, when MS 12 receives a
handover request before the transmission of the position measuring data has
been completed, MS 12 continues to transmit the position measuring data
over the previously used channel, until completed or the network releases it
(Fischer, col. 14, ll. 54-61).
In one implementation, a flag or indicator instructs MS 12 to perform
three distinct operations. These instructions and corresponding operations
are described in column 14, line 62 through column 15, line 5 of Fischer and
summarized below for clarity:
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Instruction Operation

“Continue”
Continue transmitting
positioning data over the
previously used channel
even though the call has
moved to a new channel

“Stop”
(1) Stop the transmission
of positioning data, and
(2) Perform the handover
as ordered

“Wait”
Postpone the handover
until such time as the
transmission of the
positioning data is
completed

Table 1: Summary of Instructions to MS for Handovers in Fischer

It is the third instruction (“Wait”) that is most relevant to the disputed
limitation of claim 1. As noted above, this instruction (1) postpones the
handover, and (2) completes the transmission of positioning data under this
condition.
In our view, a postponed handover is, at least temporarily,
“unsuccessful.” That is, until the handover actually occurs, the handover is
“unsuccessful” at least with respect to the successful completion of that
handover.
Even if we assume, without deciding, that the postponed handover in
Fischer would eventually be successfully executed after the transmission of
the positioning data is completed, the handover is nonetheless
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“unsuccessful” at least at the time when the transmission of the positioning
data is completed. Moreover, since completing the transmission of the
positioning data is essential in determining the MS’s location in Fischer, the
reference therefore would at least suggest to ordinarily skilled artisans that
such location determination could likewise be completed during this time
period (i.e., when the handover is postponed).
Therefore, we find that Fischer alone amply suggests all limitations of
claim 1 and the teachings of Zadeh merely cumulative to those of Fischer.
That said, however, we address several key issues regarding the Zadeh
reference and its combinability with Fischer.
First, we agree with Appellant’s construction (Reply Br. 10-11) of the
term “completed” with respect to the recited location determination as
requiring the location determination to be brought to perfection (as opposed
to simply bringing the process to an end or aborting the process). In
reaching this conclusion, however, we acknowledge that the Examiner must
interpret the term “completed” with its broadest reasonable interpretation
and not import limitations from the Specification into the claims.2
Nevertheless, given the term’s plain meaning interpreted in light of the
Specification, we find Appellant’s construction of “completed” more

2 During patent examination, the pending claims must be “given their
broadest reasonable interpretation consistent with the specification.” In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); see also Phillips v. AWH
Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[A]lthough the
specification often describes very specific embodiments of the invention, we
have repeatedly warned against confining the claims to those
embodiments...[C]laims may embrace different subject matter than is
illustrated in the specific embodiments in the specification.”) (citations and
internal quotation marks omitted).
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naturally aligns with the disclosure and is therefore the most reasonable
construction on the record before us.3
Secondly, we disagree with Appellant that Zadeh’s positioning
handover is so different from Fischer’s communication handover such that
they are non-analogous. In our view, the teachings of Zadeh are reasonably
related to Fischer in that Zadeh, like Fischer, determines the geographic
location of a mobile station 200 on a mobile network including BTSs 210-
230 associated with the mobile station. See, e.g., Zadeh, col. 1, ll. 5-12;
Abstract; col. 4, ll. 18-31; Fig. 2.
While the target BTS distinguishes Zadeh’s “positioning” handover
from an “ordinary” handover for purposes of calculating timing advance
(TA) values, a positioning handover is nonetheless identical to an ordinary
asynchronous handover (Zadeh, col. 2, l. 64 - col. 5, l. 9; emphasis added).
Significantly, a positioning handover, like a communications handover,
involves changing channels. See Zadeh, Abstract, col. 3, ll. 19-38; see also
Fig. 3B.
Therefore, while we find the teachings of Zadeh to be reasonably
combinable with Fischer, these teachings nevertheless do not teach or
suggest completing the location determination when the handover is
unsuccessful. We agree with the Examiner that the “no” prongs of Steps
350, 360, and 370 in Figure 3B of Zadeh reasonably correspond to an

3 See Phillips, 415 F.3d at 1316 (“The construction that stays true to the
claim language and most naturally aligns with the patent’s description of the
invention will be, in the end, the correct construction.”) (citations omitted);
see also Free Motion Fitness, Inc. v. Cybex Int'l, Inc., 423 F.3d 1343, 1348
(Fed. Cir. 2005) (internal citations omitted) (noting that reliance on
dictionaries must accord with the intrinsic evidence: the claims,
specification, and the prosecution history).
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“unsuccessful” handover since the positioning handover is performed only if
a channel is allocated (i.e., Steps 355 and 365 are performed via the “yes”
prongs of Steps 350 and 360).
However, we agree with Appellant that Step 375 in Figure 3B of
Zadeh (no positioning data) does not reasonably teach or suggest
“completing” the location determination as this step simply falls short of
bringing the location determination to perfection. Simply put, under the
broadest reasonable interpretation of the term in light of the Specification,
the location determination process is not “complete” until a successful
determination is made. But in Zadeh, this process is actually aborted in Step
375 -- not completed -- when the handover is unsuccessful.
But even if Zadeh did teach successfully completing the location
determination process for unsuccessful handovers, the reference’s teachings
would still be cumulative to those of Fischer for the reasons previously
indicated. Therefore, since we find all limitations of independent claim 1
taught or suggested by the collective teachings of the cited prior art, we will
sustain the Examiner’s obviousness rejection of claim 1.4

Claim 2
We will also sustain the Examiner’s rejection of claim 2. The
Examiner refers to Columns 14 and 15 of Fischer as teaching the limitations
of this claim (Ans. 19), and we agree. Referring again to Table 1, supra, of

4 Although we sustain the Examiner’s obviousness rejection based on the
teachings of Fischer alone, we may nonetheless rely on fewer references
than the Examiner in affirming a multiple-reference rejection under 35
U.S.C. § 103. In re Bush, 296 F.2d 491, 496 (CCPA 1961); In re Boyer, 363
F.2d 455, 458 n.2 (CCPA 1966).
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this opinion which summarizes the instructions described in this passage
from Fischer, we find the second instruction (“Stop”) most relevant to this
claim. As Fischer indicates, this instruction (1) stops the transmission of
positioning data, and (2) performs the handover as ordered (Fischer, col. 15,
ll. 1-3).
Step (1) above, in our view, reasonably corresponds to aborting the
location determination as claimed. Likewise, Step (2) reasonably
corresponds to completing the handover. While the order of these disclosed
steps is inverted with respect to the steps recited in claim 2, the claim merely
recites that “when…handing over is completed then the determination of the
location of the user equipment is aborted” (emphasis added). To the extent
that the terms “when” and “then” in claim 2 require that the recited steps be
performed sequentially in the recited order or substantially simultaneously,
we nonetheless see no patentable distinction in the execution of the
corresponding steps of Fischer’s “Stop” instruction which does not preclude
a substantially simultaneous execution of these steps.5
Appellant’s arguments with respect to Zadeh (App. Br. 16; Reply Br.
16-17) are unavailing and, in any event, are not germane to the Examiner’s
reliance on Fischer with respect to the limitations of this claim. Since we
find that Fischer reasonably teaches or suggests the limitations of claim 2,
we will sustain the Examiner’s obviousness rejection of that claim.

5 With respect to the “Stop” instruction, Fischer does not say that the
transmission of positioning data is stopped and then the handover is
performed. See Fischer, col. 15, ll. 1-3. Rather, Fischer merely states that
the instruction “‘stop’[s] the transmission of positioning data and perform[s]
the handover as ordered” (Id.) -- a sequence which does not preclude
substantially simultaneous operations.
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Claim 4
Although Appellant nominally argues the rejection of claim 4
separately, Appellant does not argue with sufficient particularity the
limitations of the claim. Nor does Appellant provide any analysis or
explanation as to why these particular limitations are patentable over the
cited prior art, apart from merely asserting that the claim recites “additional
features” not disclosed or suggested by the cited prior art (App. Br. 17).
Such an argument, however, falls well short of persuasively rebutting the
Examiner’s prima facie case of obviousness, and we will therefore sustain
the rejection of claim 4 for the same reasons discussed above with respect to
claims 1 and 2.

Claim 5
We will also sustain the Examiner’s rejection of claim 5. Appellant
argues that the Examiner’s proffered motivation to combine Zadeh with
Fischer to arrive at the claimed invention (i.e., to provide a more efficient
and fault tolerant system) is not supported by substantial evidence (App. Br.
17). We are unpersuaded by this argument since, as we noted previously,
we find the teachings of Zadeh reasonably combinable with those of Fischer.
Our discussion in that regard with respect to claim 1 applies equally here and
we therefore incorporate that discussion here by reference.
Furthermore, the fact that the prior art does not explicitly state the
Examiner’s stated reason to combine the references is hardly dispositive.
Indeed, the reason to combine references need not be expressly stated in the
references, but “can take account of the inferences and creative steps that a
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person of ordinary skill in the art would employ.” KSR, 127 S. Ct. at 1741
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
For the foregoing reasons, we find Appellant has not persuasively
rebutted the Examiner’s prima facie case of obviousness of claim 5 based on
the collective teachings of the references (Ans. 6) -- a position that we find
reasonable. The Examiner’s rejection is therefore sustained.

Claims 6, 10-12, 16, 17, and 20
Although Appellant nominally argues the rejection of claims 6, 10-12,
16, 17, and 20 separately, Appellant does not argue with particularity the
limitations of these claims. Nor does Appellant provide any analysis or
explanation as to why these particular limitations are patentable over the
cited prior art, apart from merely asserting that the claims recite subject
matter not disclosed or suggested by the cited prior art (App. Br. 18-20).
Such an argument, however, falls well short of persuasively rebutting the
Examiner’s prima facie case of obviousness, and we will therefore sustain
the rejection of these claims for the same reasons discussed above.
Regarding claim 17, we add that we are also unpersuaded by
Appellant’s argument regarding the combinability of Zadeh and Fischer for
the reasons previously discussed.

Claim 21
We will also sustain the Examiner’s rejection of claim 21 essentially
for the reasons previously indicated with respect to claim 2. Our previous
discussion with respect to claim 2 applies equally here and we therefore
incorporate that discussion by reference. Furthermore, Appellant’s
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arguments regarding the Examiner’s purported reliance on a speculative
power failure to allegedly teach certain features of claim 21 (App. Br. 21)
are likewise unpersuasive since the Examiner’s position regarding claim 21
(Ans. 21) relies solely on the same passage from Fischer as that relied upon
for claim 2. The Examiner’s rejection of claim 21 is therefore sustained.

Claim 23
Likewise, we will also sustain the Examiner’s rejection of claim 23
essentially for the reasons previously indicated with respect to claim 2.
While we find the Examiner’s hypothetical power failure would ostensibly
cause a resulting abortion of the location determination (Ans. 10)
problematic essentially for the reasons indicated by Appellant,6 we
nonetheless find all limitations of claim 23 amply suggested by the cited
prior art references for the reasons previously discussed. Accordingly, we
will sustain the Examiner’s rejection of claim 23.

The Obviousness Rejection Over Fischer, Zadeh, and Vaara
Regarding claims 7-9, 13-15, 18, and 19, the Examiner adds the
disclosure of Vaara for teaching controlling the first and second channels by
corresponding types of controllers and concludes such a limitation would
have been obvious to ordinarily skilled artisans (Ans. 10-16).
Appellant does not dispute the Examiner’s specific factual findings
with respect to the disclosure of Vaara, but rather argues that the

6 Although this argument was presented in connection with claim 21 (App.
Br. 21), it actually applies to the Examiner’s stated position with respect to
claim 23 (Ans. 10).
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combination of references is unmotivated, is based on impermissible
hindsight reconstruction and that the Examiner failed to provide any
evidence to support the alleged motivation to combine Vaara with the cited
prior art (App. Br. 22-23). Appellant also argues that the addition of Vaara
does not cure the previously-noted deficiencies of Fischer and Zadeh with
respect to the recited limitations (App. Br. 23-28).
We will sustain the Examiner’s rejection of claims 7-9, 13-15, 18, and
19. First, we note that the Examiner’s factual findings with respect to the
disclosure of Vaara (Ans. 10-16) are undisputed. Second, on the record
before us, we find that ordinarily skilled artisans would have ample reason to
combine the Vaara reference with the other references. Not only does Vaara
pertain to a handover and call setup method in a mobile communications
system (Vaara, Abstract), controlling different channels via respective
controllers (e.g., base station controllers and mobile switching center as in
Figure 1) would provide, among other things, diversity and redundancy in
transmission. We see no reason why such a feature would not be applicable
to the mobile communication system of Fischer and Zadeh, particularly
since those references likewise utilize base station controllers and mobile
switching centers. For the foregoing reasons, we find no error in the
Examiner’s combining Vaara with Fischer and Zadeh.
Regarding Appellant’s arguments with respect to the subject matter of
claims 7-9, 13-15, 18, and 19 (App. Br. 23-28), our previous discussion
regarding claims 1, 12, and 20 applies equally here and we therefore,
incorporate that discussion by reference. For the reasons previously
discussed, we are not persuaded by Appellant’s arguments. Accordingly,
since Appellant has not persuasively rebutted the Examiner’s prima facie
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case of obviousness for claims 7-9, 13-15, 18, and 19, the Examiner’s
rejection of those claims is therefore sustained.

DECISION
We have sustained the Examiner's rejections with respect to all claims
on appeal. Therefore, the Examiner’s decision rejecting claims 1, 2, 4-21,
and 23 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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AFFIRMED

eld

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