Ex Parte Svensson et al

Patent Trial and Appeal Board

Feb 6, 2014

11312674 (P.T.A.B. Feb. 6, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/312,674 12/20/2005 Sven Anders Svensson 4740-497 / P20428-US2 2844
24112 7590 02/06/2014
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
VIANA DI PRISCO, GERMAN
ART UNIT PAPER NUMBER
2642
MAIL DATE DELIVERY MODE
02/06/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SVEN ANDERS SVENSSON, MARTIN E. REICHELT,
SORIN-ARTHUR SURDILA, and GEORGE FOTI
____________

Appeal 2011-013084
Application 11/312,674
Technology Center 2600
____________

Before JOSEPH F. RUGGIERO, BRUCE R. WINSOR, and
DANIEL N. FISHMAN, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-21. Claims 22-24 are indicated to be directed to allowable subject
matter (Final Rej. 11). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The real party in interest identified by Appellants is Telefonaktiebolaget
LM Ericsson (publ). App. Br. 2.
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STATEMENT OF THE CASE
Appellants’ disclosure “relates generally to the field of
communication networks and in particular to a system and method for
handing off a call between circuit switched and packet data wireless
networks.” Spec. ¶ 0002. Claim 1, which is illustrative, reads as follows:
1. A method of hand off from a serving one of a packet data
or circuit switched wireless network to a target one of the
networks, for a hybrid mobile terminal capable of
communications through both networks and engaged in an
existing call through the serving wireless networks, comprising:
receiving a new call from the mobile terminal through the
target wireless network, the new call having a
predetermined called party identifier;
in response to the called party identifier, routing the new
call back to the mobile terminal through the
serving wireless network; and
connecting the existing call to the mobile terminal
through the target wireless network.

The Examiner relies on the following prior art in rejecting the claims:
Worsham US 2003/0003927 A1 Jan. 2, 2003
Heatley US 2003/0040298 A1 Feb. 27, 2003
Julka US 2004/0063431 A1 Apr. 1, 2004
Marsh US 2004/0266426 A1 Dec. 30, 2004
Dorenbosch US 2005/0282575 A1 Dec. 22, 2005
Wilhoite US 2006/0116127 A1 June 1, 2006
Belkin US 7,398,088 B2 July 8, 2008
Claims 1-4, 8, 9, 11, 12, and 21 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Belkin. Ans. 4-7.
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Claim 13 stands rejected under 35 U.S.C. § 102(e) as anticipated by
Dorenbosch. Ans. 7-8.
Claims 5, 6, and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Belkin and Marsh. Ans. 8-9.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Belkin, Marsh, and Julka. Ans. 9-10.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Dorenbosch and Marsh. Ans. 10.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Dorenbosch and Wilhoite. Ans. 10-11.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Dorenbosch, Wilhoite, and Marsh. Ans. 11-12.
Claims 17-19 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Dorenbosch, Wilhoite, Marsh, and Worsham. Ans. 12-13.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Dorenbosch and Heatley. Ans. 13.

ISSUES
The dispositive issues presented by Appellants’ contentions are as
follows:2
Does Belkin disclose “in response to the called party identifier,
routing the new call back to the mobile terminal through the serving wireless
network,” as recited in claim 1?

2 Appellants’ contentions raise additional issues. Because the identified
issues are dispositive of the Appeal before us, we do not reach the additional
issues.
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Does Belkin disclose “accepting a loop-back call through the serving
wireless network,” as recited in claim 8?
Does Belkin disclose “redirect[ing] a handoff loop-back call to the
mobile terminal that originated the call," as recited in claim 21?
Does Dorenbosch disclose “one fictitious subscriber profile having a
predetermined Mobile Directory Number (MDN) and identifying a call
directed to the predetermined MDN as a handoff loop-back call,” as recited
in claim 13?

ANALYSIS
Claim Construction
As an initial matter, we construe the terms “call” and “loop-back
call,” as used in Appellants’ claims. Claim construction is an issue of law
that we review de novo. See Cordis Corp. v. Boston Scientific Corp., 561
F.3d 1319, 1331 (Fed. Cir. 2009). We give the claim terms the broadest
reasonable meaning in ordinary usage as understood by one of ordinary skill
in the art in light of the written description contained in the Specification. In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). However, we do not
import limitations from the written description that are not a part of the
claims. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed.
Cir. 2004). “[We] may [] rely on dictionary definitions when construing
claim terms, so long as the dictionary definition does not contradict any
definition found in or ascertained by a reading of the patent documents.”
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 n.6 (Fed. Cir.
1996).
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Although Appellants’ Specification does not define “call,” the
meaning of “call” as used in the Specification is exemplified by the
following paragraph:
One way to establish a call path through the target
wireless network is for the corresponding functionality in the
mobile terminal to place a call through the target wireless
network to its functionality corresponding to the serving
network. The existing call may subsequently be connected to
the newly established call path. That is, the packet data side of
the hybrid mobile terminal places a call to the circuit switched
side of the same hybrid mobile terminal, or vice versa. Such a
call is referred to herein as a loop-back call.
Spec. ¶ 0024.
A relevant technical dictionary provides the following definition:
call . . . Two parties or two machines are on a phone line
speaking to each other. . . . This definition by Bellcore (now
Telcordia Technologies) of a call: An arrangement providing
for a relation between two or more simultaneously present users
for the purpose of exchanging information. The ATM Forum's
definition: A call is an association between two or more users
or between a user and a network entity that is established by the
use of network capabilities. This association may have zero or
more connections. Here are some more formal definitions:
1. In communications, any demand to set up a
connection.
2. A unit of traffic measurement.
3. The actions performed by a call originator.
4. The operations required to establish, maintain, and
release a connection.
5. To use a connection between two stations.
6. The action of bringing a computer program, a routine,
or a subroutine into effect, usually by specifying the
entry conditions and the entry point.
NEWTON'S TELECOM DICTIONARY 248 (27th ed. 2013) (emphases added).
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We conclude that one of ordinary skill in the art, reading the claim in
light of Appellants’ Specification, would have understood a “call” to be a
connection between two or more simultaneously present entities that
establishes a path over which information may be communicated. This
interpretation is consistent with both the Appellants’ Specification (see, e.g.,
Spec. ¶ 0024) and the technical dictionary definition, and is the broadest
reasonable interpretation.
In view of Appellants express definition of “loop-back call” (Spec.
¶ 0024) we conclude that the broadest reasonable interpretation is a call, as
that term is construed above, from the packet data side of a hybrid mobile
terminal to the circuit switched side of the same hybrid mobile terminal, or
vice versa.
Claim 1
It is unclear from the Examiner’s findings (Ans. 4-5) and explanations
(Ans. 14-15) exactly how the Examiner maps the “new call” recited in claim
1 to Belkin’s disclosure. We note that the recited “existing call” to be
handed off is mapped to Belkin’s ongoing communication 120, 122 (Ans. 4-
5 (citing Belkin, Abstract)) and thus cannot disclose the recited “new call.”
As we understand the Examiner’s mapping, the Examiner maps the “new
call” to a handover signal 302 initiated by moving WCU (Wireless
Communication Unit) 102 through cellular network 108 to MM (Mobility
Manager) 116 and connect signal 202 from MM 116 to WCU 102. See
Belkin, Figs. 8-9; col. 4, ll. 7-8; col. 6, ll. 41-44, 45-47, 49-50; col. 7, ll. 19-
50; col. 13, ll. 34-39; col. 14, ll. 14-20.
Appellants contend that the cited passages of Belkin do not disclose a
new call that is “receiv[ed] . . . from the mobile terminal through the target
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wireless network . . . [and] rout[ed] . . . back to the mobile terminal through
the serving wireless network,” as recited in claim 1. See App. Br. 8-13;
Reply Br. 1-3. We agree with Appellants.
A signal path may be a “call” in accordance with the broadest
reasonable interpretation of a “call.” However, the passages of Belkin cited
by the Examiner, read separately and together, do not disclose a connection
from the mobile terminal (Belkin’s WCU 102) to itself that establishes a
path through the target wireless network (e.g., Belkin’s Cellular WAN
(Wide Area Network) 108) and the serving wireless network (e.g., Belkin’s
WLAN/LAN (Wireless Local Area Network/Local Area Network) 106) over
which information may be communicated. At most, Belkin discloses a call –
handover signal 302 – between WCU 102 and MM 116 and a separate call –
connect signal 202 – between MM 116 and WCU 102. See Belkin, Figs. 8-
9. The information communicated over Belkin’s connection signal 202,
although responsive to handover signal 302, is not the same information
communicated by handover signal 302.
We are constrained by the record before us to find that Appellants
have persuaded us of error in the rejection of claim 1 as anticipated by
Belkin. Accordingly, we do not sustain the rejection of (1) claim 1 as
anticipated by Belkin; (2) claims 2-4, which depend, directly or indirectly,
from claim 1, as anticipated by Belkin; (3) claims 5 and 6, which depend,
directly or in directly from claim 1, as unpatentable over Belkin and Marsh;
and (4) claim 7, which depends indirectly from claim 1, as unpatentable over
Belkin, Marsh and Julka.
Claim 8
Appellants contend as follows:
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[F]or the same reasons as stated for claim 1, the WAN Connect
signal [202] in Belkin does not route the handoff call back to
the mobile terminal. . . .
[W]hen the wireless communication unit in Belkin receives a
WAN Connect signal, the wireless communication unit is not
accepting a loop-back call. Rather, it is receiving a signal
directing it to switch its bearer path [120] to the handoff call.
App. Br. 14. As discussed above, we construe a loop-back call to be a
connection from the packet data side of a hybrid mobile terminal to the
circuit switched side of the same hybrid mobile terminal, or vice versa, over
which information may be communicated. The Examiner has not
demonstrated that Belkin discloses such a connection.
For substantially the same reasons as discussed for claim 1, we are
constrained by the record before us to find Appellants have persuaded us of
error in the rejection of claim 8 as anticipated by Belkin. Accordingly, we
do not sustain the rejection of (1) claim 8 as anticipated by Belkin; (2)
claims 9, 11, and 12, which depend from claim 8, as anticipated by Belkin;
and (3) claim 10, which depends indirectly from claim 8, as unpatentable
over Belkin and Marsh.
Claim 21
Appellants contend “[f]or the same reasons as stated for claim 1,
Belkin does not disclose . . . ‘redirecting a handoff loop-back call to the
mobile terminal that originated the call’ as recited in claim 21.” App. Br.
16. We agree with Appellants.
For substantially the same seasons as discussed above regarding
claims 1 and 8, we are constrained by the record before us to find Appellants
have persuaded us of error in the rejection of claim 21 as anticipated by
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Belkin. Accordingly, we do not sustain the rejection of claim 21 as
anticipated by Belkin.
Claim 13
Appellants contend as follows:
Dorenbosch does not disclose a fictitious subscriber profile that
includes a predetermined MDN and the predetermined MDN is
used to identify calls directed to the MDN as a handoff loop-
back call. The examiner equates to the handoff number stored
in the Home Location Register of Dorenbosch to the claimed
fictitious subscriber profile. The handoff number in
Dorenbosch identifies a call as a handoff call. In Dorenbosch,
the call to the handoff number will not be routed back as is
done to a handoff loopback call in claim 13. The handoff
number in Dorenbosch is not used to identify a call as a
loopback call as required by claim 13.
Reply Br. 5.
We agree with Appellants. “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. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “These
elements must be arranged as in the claim under review, but this is not an
‘ipsissimis verbis’ test”. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990)
(emphasis added) (citations omitted). “The identical invention must be
shown in as complete detail as is contained in the . . . claim.” Richardson v.
Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).
The Examiner is correct that Dorenbosch’s “handover number”
(Dorenbosch, ¶ 0023) discloses a “fictitious subscriber profile having a
predetermined Mobile Directory Number.” See Ans. 8, 18. The Examiner is
also correct that Dorenbosch discloses a loop-back call (Dorenbosch,
¶¶ 0044, 0072) wherein Dorenbosch’s communication unit (CU) places a
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call to itself. Ans. 17-18; accord App. Br. 17. The Examiner is further
correct that Dorenbosch’s loop-back call is re-routed with the aid of a
“network node,” i.e., Dorenbosch’s network controller 500 (Dorenbosch, ¶
0044).
However, Dorenbosch’s “handover number” is only utilized during a
normal handover and does not identify that the handover call is a handoff
loop-back call. As argued by Appellants, Dorenbosch’s loop-back call is “a
backup method used when a handoff of an ongoing call fails.” App. Br. 17;
see Dorenbosch, ¶ 0044. Further, Dorenbosch’s loop-back call is
established by the CU calling itself directly, rather than by way of the
handover number. App. Br. 17; see Dorenbosch, ¶ 0072. Accordingly,
although the Examiner may have shown that Dorenbosch discloses all of the
elements of claim 13, the elements are not “arranged as in the claim under
review,” Bond, 910 F.2d at 832.
Accordingly, we do not sustain the rejection of (1) claim 13 as
anticipated by Dorenbosch; (2) claim 14, which depends from claim 13 as
unpatentable over Dorenbosch and Marsh; (3) claim 15, which depends from
claim 13, as unpatentable over Dorenbosch and Wilhoite; (4) claim 16,
which depends, indirectly from claim 13, as unpatentable over Dorenbosch,
Wilhoite, and Marsh; (5) claims 17-19, which depend indirectly from claim
13, as unpatentable over Dorenbosch, Wilhoite, Marsh, and Worsham; and
(6) claim 20, which depends from claim 13, as unpatentable over
Dorenbosch and Heatley.
CONCLUSION
We have considered the appeal as presented to us. On the record
before us, we are constrained to reverse the rejection of claims 1-21.
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DECISION
The decision of the Examiner to reject claims 1-21 is reversed.

REVERSED

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