Ex Parte Sylvain

Board of Patent Appeals and Interferences

Feb 20, 2008

10409280 (B.P.A.I. Feb. 20, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte DANY SYLVAIN
_____________

Appeal 2007-3330
Application 10/409,280
Technology Center 2600
______________

Decided: February 20, 2008
_______________

Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and KEVIN F. TURNER,
Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 6(b) of the final rejection of
claims 1 through 30. We affirm-in-part.

INVENTION

The invention is directed to a method and system for routing an incoming
call to a mobile terminal through a public switched telephone network (PSTN) or a
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cellular network. See paragraph 0003 of Appellant’s Specification. Claim 1 is
representative of the invention and reproduced below:
1. A method comprising:
a) receiving information indicative of a mobile terminal being within
or outside of a zone in which wireless communications between the mobile
terminal and a terminal adapter are possible, the mobile terminal associated
with a first directory number for which telephony communication is
facilitated through a wireless network and a second directory number for
which telephony communication is facilitated through a public switched
telephone network, PSTN, via the terminal adapter;
b) determining whether the mobile terminal is within or outside of the
zone based on the information; and
c) instructing a telephony switch to route an incoming call for the
mobile terminal through the PSTN using the second directory number, and if
the mobile terminal is outside of the zone then forwarding the incoming call
to the mobile terminal through the wireless network using the first directory
number.

REFERENCES

Jarett US 5,911,120 Jun. 8, 1999
Foladare US 6,044,267 Mar. 28, 2000
Beamish US 6,694,143 B1 Feb. 17, 2004

REJECTIONS AT ISSUE
Claims 1, 2, 3, 6, 7, 9, 10, 13, 14, 16, 17, 20, 21, 23, 24, 27, 28, and 30 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by Jarett. The Examiner’s
rejection is set forth on pages 3 through 6 of the Answer.
Claims 4, 5, 8, 18, 19, and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jarett in view of Foladare. The Examiner’s rejection is set
forth on pages 6 through 8 of the Answer.
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Claims 11, 12, 15, 25, 26, and 29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jarett in view of Beamish. The Examiner’s rejection is set forth
on pages 8 and 9 of the Answer.
Throughout the opinion, we make reference to the Brief (received July 14,
2006), Reply Brief (received January 3, 2007), and the Answer (mailed November
1, 2006) for the respective details thereof.

ISSUES
Rejection under 35 U.S.C. § 102(b) based upon Jarett.
Appellant’s arguments on pages 7 through 9 of the Brief, directed to the
claims rejected under 35 U.S.C. § 102(b) as being anticipated by Jarett, address the
claims in four groups. Thus, in accordance with 37 C.F.R. § 41.37 (c)(1)(vii), we
treat the grouped claims as follows:
Group A: claims 1, 2, 3, 6, 7, and 9, with independent claim 1 as the
representative claim;
Group B: claims 10, 13, and 14, with claim 10 as the representative claim;
Group C: claims 16, 17, 20, 21, 23, and 30, with independent claim 16 as
the representative claim.
Group D: claims 24, 27, and 28, with claim 24 as the representative claim.
-Group A.
Appellant contends, on page 7 of the Brief, and pages 3 and 4 of the Reply
Brief, that the Examiner’s rejection of claim 1 is in error. Appellant argues that the
claims require that a call be routed through the PSTN first and if the mobile
terminal is not within the wireless adaptor’s zone of communications, forwarding
the call to the wireless network number. Appellant argues that Jarett always routes
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the call to the wireless network first and only if the call forwarding message is
present with the wireless network is the call forwarded to the PSTN.
In response, the Examiner states, on page 10 of the Answer:
The element c) of claim 1 merely recites two different ways of routing of a
call. Only one type of call routing is based on condition of the mobile
terminal i.e. if mobile terminal is outside of the zone then routing call by
forwarding it to the mobile terminal through the wireless network. Jarett
clearly discloses these two types of routing of calls.

Thus, the issue before us with respect to the claims in group A, is whether the
scope of independent claim 1 includes that the call first be routed through the
PSTN and then to the wireless network if the mobile terminal is not within the
zone of communications of the wireless adaptor, and if not then forwarding the call
to the wireless network number, and whether Jarett teaches this limitation.
-Group B.
On page 8 of the Brief, Appellant contends that the rejection of dependent
claims 10, 13, and 14, is in error. Appellant argues that these claims recite that the
communication between the mobile device and the wireless adaptor is via a “local
wireless technology.” Appellant argues that Jarett teaches that the communication
between the mobile terminal and the cordless base station is by a low power
cellular protocol and not a “local wireless technology.”
Thus, the issue before us with respect to the claims in group B is whether
Jarett teaches communication between the mobile terminal and the cordless base
station using a local wireless technology as recited in claim 10.
-Group C.
On page 9 of the Brief, Appellant argues that the rejection of independent
claim 16 is in error. Appellant argues that claim 16 recites that the central
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processing unit receives information from data access customer premises
equipment. Appellant asserts that this is different than Jarett’s system in which the
call forwarding request to the cellular network is initiated by the base station using
the PSTN. Appellant states that the claimed invention routes the information
through the data access customer premises equipment which allows the PSTN line
to remain open and available for incoming or outgoing calls.
Thus, the issue before us with respect to the claims in group C is whether
Jarett teaches receiving information from data access customer premises equipment
as recited in claim 16.
-Group D.
On pages 9 and 10 of the Brief, Appellant argues that claims 24, 27, and 28
contain similar limitations as claims 10, 13, and 14. Thus, Appellant reasons that
the rejection of these claims is in error for the same reasons discussed with respect
to claims 10, 13, and 14.
Thus, the issue before us with respect to the claims in group D is the same as
with the claims of group B.
Rejection under 35 U.S.C. § 103(a) based upon Jarett in view of Foladare.
Appellant’s arguments on pages 11 and 12 of the Brief, directed to the
claims rejected under 35 U.S.C. § 103(a) as being unpatentable over Jarett in view
of Foladare, address the claims in two groups. Appellant has not addressed this
rejection in the Reply Brief. Thus, in accordance with 37 C.F.R. § 41.37 (c)(1)(vii)
we will treat the grouped claims as follows:
Group E: claims 4, 5, 18, and 19, with claim 18 as the representative claim;
Group F: claims 8 and 22, with claim 22 as the representative claim;

-Group E.
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Appellant contends that the Examiner’s rejection is in error as the Examiner
has not provided evidence that one would be motivated to combine the references.
Specifically, Appellant argues that the Examiner’s stated motivation to combine
the references, to ascertain if a wireless call can be delivered through a land line, is
not supported by the evidence of record. Appellant reasons that Jarett already is
capable of determining if the mobile terminal is in range of the base station and
therefore there is no need to combine the references.
Thus, Appellant’s contentions directed to the rejection of claims 4, 5, 18,
and 19, based upon Jarett in view of Foladare present us with the issue of whether
the Examiner erred in finding that one skilled in the art would apply the teachings
of Foladare to Jarett’s system.
-Group F.
Appellant contends that the Examiner’s rejection is in error as the Examiner
has not provided evidence that one would be motivated to combine the references.
Specifically, Appellant argues that the Examiner’s stated motivation to combine,
that one would communicate data by the ISDN communication line as it would
allow communication with the cellular network regardless of whether the PSTN
line is on-hook or off-hook, is not supported by evidence of record. Further,
Appellant argues that it is not understood how communication using ISDN meets
the limitation of receiving information by a packet network.
The Examiner responds, on page 14 of the Answer, by stating:
It is know[n] in the art that ISDN line connection provides a D channel (data
channel, 16 kb/s) along with two B channels (bearer channels, each 64 kb/s),
wherein D channel is used to transmit call signals and B channels are used to
transmit voice during normal call when the CCT (cordless/cellular terminal)
is off-hook. This same D channel also transmits data in the form of packets
that are processed by a packet handler at the switching office. Always
On/Dynamic ISDN (AO/DI) feature of ISDN uses this D channel bandwidth
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to provide a permanent virtual connection to transmit messages between two
end equipments connected by ISDN even when the user terminal is on-hook.
Thus, the home cordless base station (HBS, Fig. 2) would connect
permanently to the switching office in PSTN to communicate data messages
over ISDN D channel using SS7 protocol that uses data packets for
messages. Therefore, CCT (cordless/cellular terminal) does not have to be
off-hook to enable signaling. Further, Foladare teaches that the switch in the
PSTN uses ISDN datalink with appropriate protocol i.e. SS7 (data packet
messages) to query HBS as to whether CCT is within range of HBS
(Foladare, col. 10, 11. 5-11).

Thus, Appellant’s contentions directed to the rejection of claims 8 and 22
based upon Jarett in view of Foladare present us with the issue of whether the
Examiner erred in finding that one skilled in the art would apply the teachings of
Foladare to Jarett’s system, and whether using an ISDN data link meets the
claimed packet network.
Rejection under 35 U.S.C. § 103(a) based upon Jarett in view Beamish
Appellant’s arguments on pages 13 and 14 of the Brief, directed to the
claims rejected under 35 U.S.C. § 103(a) as being unpatentable over Jarett in view
of Beamish, address these claims in three groups.
Group G: claims 11 and 25, with claim 25 as the representative claim;
Group H: claims 12 and 26, with claim 26 as the representative claim;
Group I: claims 15 and 29, with claim 29 as the representative claim;

-Group G.
Appellant contends that the Examiner’s rejection is in error as the Examiner
has not provided evidence that one would be motivated to combine the references.
Specifically, Appellant argues that the Examiner’s stated motivation to combine, to
facilitate communication locally, is not supported by evidence of record.
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Appellant asserts that there is no reason Jarett could not communicate locally, as
such, there is no need for Jarett to look to Beamish.
Thus, Appellant’s contentions directed to the rejection of claims 11 and 25
based upon Jarett in view of Beamish present us with the issue of whether the
Examiner erred in finding that one skilled in the art would apply the teachings of
Beamish to Jarett’s system.
-Group H.
Appellant contends that the Examiner’s rejection is in error as the Examiner
has not provided evidence that one would be motivated to combine the references.
Specifically, Appellant argues that the Examiner’s stated motivation to combine, to
facilitate interoperability among manufacturers, is not supported by evidence of
record. Appellant asserts that Jarett does not mention wireless LAN so there is no
reason why interoperability would need to be facilitated.
Thus, Appellant’s contentions directed to the rejection of claims 12 and 26
based upon Jarett in view of Beamish present us with the issue of whether the
Examiner erred in finding that one skilled in the art would apply the teachings of
Beamish to Jarett’s system.
-Group I.
Appellant contends that the Examiner’s rejection is in error as the Examiner
has not provided evidence that one would be motivated to combine the references.
Specifically, Appellant argues that the Examiner’s stated motivation to combine, to
provide a short range wireless communications network that operates in globally
available frequency bands to solve limitations existing in communications, is
improper as, there is no evidence that Jarett suffers from any such limitations.
Thus, Appellant’s contentions directed to the rejection of claims 15 and 29
based upon Jarett in view of Beamish present us with the issue of whether the
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Examiner erred in finding that one skilled in the art would apply the teachings of
Beamish to Jarett’s system.

FINDINGS OF FACT
1. Appellant’s Specification states that the data access customer premise
equipment “may be a cable modem, DSL modem, ISDN modem, or like
communication terminal that provides access to the data network 16 via
the corresponding cable network, DSL network, or IDSN forming the
data access network.” Para 0018.
2. Appellant’s Specification identifies that the mobile terminal
communicates with the terminal adaptor wirelessly using technology
such as analog and digital cordless technologies, 802.11 wireless local
area network technologies, and Bluetooth technology. Para 0014.
Further, this communication is identified as having a limited range. Para
0018.
3. Jarett teaches a wireless communication system where the same mobile
station communicates with a cellular network and the PSTN through a
local cellular base station. The mobile station has a number that is
associated with the cellular network. When the mobile station is within
range of the cellular base station, the mobile terminal de-registers with
the cellular network and registers with the local cellular base station. The
local cellular base station, upon having the mobile unit register with it,
communicates with the cellular network, requesting that calls to the
mobile unit’s number be forward to the number, on the PSTN, associated
with the local cellular base unit. Thus, when the mobile unit is within
range of the local cellular base station, calls to the mobile station’s
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number will be forwarded to the PSTN number and the local cellular base
station will connect the call to the mobile unit. Abstract.
4. Jarett teaches that the communication between the local cellular base
station and the mobile unit can be by either analog or digital cellular
protocol (TDMA). Col. 6, ll. 56-61, col. 8, ll. 44-55.
5. The base station may also use other protocols such as the 1.9GHz
standard. Jarett, col. 12, l. 65- col. 13, l. 3.
6. Jarett teaches that the cellular base station sends a call forwarding
message to the cellular network by establishing a modem link (data link)
with the cellular network. Col. 27, ll. 1-25.
7. Foladare teaches a method of routing a call to a cordless/cellular phone
(having a cellular number MIN) over a land line (which has a land line
telephone number) via a base station, if the cellular phone is in range of
the base station or routing the call over the cellular network if it is not in
range. Abstract.
8. Foladare teaches several embodiments for call routing. In one
embodiment, where a call (from another cell phone over the cellular
network), made to either the mobile unit telephone number or land line
telephone number, is received and if there is no indication that the
receiving cordless/cellular phone is in use (i.e. do not need to give busy
signal), the call is first routed to the land line number (LL#). If the
cordless/cellular phone does not respond to the base station, the base
station forwards the call to the cellular network. Col. 8, l. 54 - col. 9, l. 8.
Thus, whether the cordless/cellular phone is in range of the base station is
determined based upon whether the cordless/cellular phone responds to
the base station.
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9. In another embodiment, Foladare teaches that when a call received at
either the mobile unit number or the land line number, the cellular
network attempts to contact the cordless/cellular phone, and if the
cellular network does not receive a response, the call is routed to the base
station connected to the land line. Col. 11, ll. 12-30.
10. Foladare teaches that the base station communicates information
concerning the availability of the cordless/cellular phone to the cellular
network using an ISDN link. This allows communication regardless of
whether the cordless phone is on or off the hook. Col. 6. ll. 1-10.
11. Foladare teaches that IS-41 or SS7 protocol may be used to
communicate over the ISDN connection. Col. 6, ll. 9-10.
12. The Examiner finds, on page 14 of the Answer, that SS7 protocol
involves data packet messages. Appellant has not contested this finding.
13. Beamish teaches that wireless communications systems, such as cell
phones, can communicate in a local area network using a variety of
communications standards, such as 802.15 and 802.11 (WLAN)
standards and Bluetooth local network standard. Col. 2, ll. 2-12.
PRINCIPLES OF LAW
Office personnel must rely on Appellant’s disclosure to properly determine
the meaning of the terms used in the claims. Markman v. Westview Instruments,
Inc., 52 F.3d 967, 980 (Fed. Cir. 1995). “[I]nterpreting what is meant by a word in
a claim ‘is not to be confused with adding an extraneous limitation appearing in the
specification, which is improper.’” In re Cruciferous Sprout Litigation, 301 F.3d
1343, 1348, (emphasis in original) (citing Intervet Am., Inc. v. Kee-Vet Labs., Inc.,
887 F.2d 1050, 1053 (Fed. Cir. 1989)).
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On the issue of obviousness, the Supreme Court has recently stated that
“[t]he obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc., 127 S.
Ct. 1727, 1741 (2007). Further, the Court stated “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. at 1739.
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. . . . [A] court must ask whether the improvement is
more than the predictable use of prior art elements according to their
established functions.

Id. at 1740. “One of the ways in which a patent’s subject matter can be proved
obvious is by noting that there existed at the time of the invention a known
problem for which there was an obvious solution encompassed by the patent’s
claims.” Id. at 1742.

ANALYSIS
Rejection under 35 U.S.C. § 102(b) based upon Jarett.
- Claim Groups A and B.
Appellant’s arguments have persuaded us that the Examiner erred in
rejecting independent claim 1. Claim 1 recites “instructing a telephony switch to
route an incoming call for the mobile terminal through the PSTN using the second
directory number, and if the mobile terminal is outside of the zone then forwarding
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the incoming call to the mobile terminal through the wireless network using the
first directory number.” While we concur with the Examiner that claim 1 does not
explicitly recite that the call is first routed to the PSTN, the limitation of
forwarding the call to the first number if the mobile terminal is outside the zone,
implies that the call was first routed to the second number (PSTN number). The
Examiner did not find, nor do we find that Jarett routes a call to the number
associated with the base station (on the PSTN) and then forwards the call to the
mobile unit’s number on the cellular network. Rather, Jarett teaches that the base
station sends a message that calls to the mobile unit’s number on the cellular
network are to be forwarded to the number of the base station on the PSTN. Fact
3. Thus, we do not find that Jarett teaches all of the limitations of independent
claim 1. Claims 2, 3, 6, 7, 9, 10, 13, and 14 all depend upon claim 1, accordingly
we reverse the rejection of these claims under 35 U.S.C. § 102(b)for the same
reasons.
- Claim Group C.
Initially, we note that the scope of claim 16 is different from claim 1 as
claim 16 does not recite the limitation of forwarding the call from the PSTN
number to the mobile terminal’s number on the wireless network.
Appellant’s arguments have not persuaded us that the Examiner erred in
rejecting independent claim 16 as we find that Jarett teaches receiving information
from data access customer premises equipment as recited in claim 16. Claim 16
recites “a central processing unit associated with the communication interface and
adapted to: i) receive information from data access customer premises equipment,
the information indicative of a mobile terminal being within or outside of a zone in
which wireless communications between the mobile terminal and a terminal
adapter are possible.” We find no limitation which requires the PSTN line to
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remain open and available. Thus, Appellant’s argument that the claimed system
differs from Jarett’s system which requires use of the PSTN line to communicate
the call forwarding data is not persuasive. Further, Appellant’s Specification
identifies that the data access customer premise equipment is a modem that
communicates over a network. Fact 1. We find that Jarett teaches that the network
call forwarding request is sent by the cellular base station, to the cellular network,
using a modem connection. Fact 6. Thus, we are similarly not persuaded by
Appellant’s arguments that Jarett’s modem does not meet the claimed customer
premise equipment.
For the forgoing reasons, we affirm the Examiner’s rejection under 35
U.S.C. § 102(b) of the claims in group C, claims 16, 17, 20, 21, 23 and 30.
-Claim Group D.
Appellant’s arguments have not persuaded us that the Examiner erred in
rejecting independent claim 24 as we find that Jarett teaches communication
between the mobile terminal and the cordless base station using a local wireless
technology as recited in claim 24. Claim 24 is dependent upon claim 16 and
further recites “wherein the mobile terminal and the terminal adapter communicate
via a local wireless technology.” The Examiner interprets the term “local wireless
technology” broadly and finds it includes the local communication analog or
digital cellular link between the base station and the mobile unit taught by Jarett.
We concur with the Examiner’s claim interpretation and findings. We note that
while Appellant’s Specification discusses several communication standards that
are local wireless technology, we do not consider these to be limiting, but rather
examples of such technology. Further, Appellant’s Specification provides no
definition which defines “local wireless technology” thus, we find no distinction
between the claimed local wireless technology from the local analog and digital
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communication cellular technology (TDMA) between mobile unit and cellular base
station taught in Jarett. Fact 4. We note that Jarett teaches that the communication
with the base station has a limited range (i.e. communication is limited to a local
area). Fact 3. Further, we note that Jarett also contemplates use of other
communication protocols, such as the 1.9 GHz standard which is also local
wireless communication protocol. Fact 5. Thus, Appellant’s arguments have not
persuaded us of error in the Examiner’s rejection of claims 24, 27, and 28 under 35
U.S.C. § 102(b) based upon Jarett.
Rejection under 35 U.S.C. § 103(a) based upon Jarett in view of Foladare.
-Claim Group E.
Appellant’s arguments have not persuaded us of error in the Examiner’s
rejection of claims 4, 5, 18, and 19. Initially, we acknowledge that claims 4 and 5
are dependent upon claim 1 and as discussed supra, Jarett does not teach all of the
limitations of Claim 1. However, as discussed infra, we find that Foladare teaches
the features deficient in the rejection of claim 1.
Appellant’s arguments have not persuaded us that the Examiner erred in
finding that one skilled in the art would apply the teachings of Foladare to Jarett’s
system. Appellant’s argument, that the motivation is not supported by evidence
from Jarett and Foladare is not persuasive. The Supreme Court has stated that
obviousness cannot be confined to the concept of motivation. Rather, we must
look to see if the claim is a combination of familiar elements. KSR Int’l Co. v.
Teleflex Inc. at 1739. Further, the Examiner has established, and Appellant has not
contested that, Foladare teaches that it was known in the art to determine whether
the mobile terminal is in the range of the receiver by querying the mobile terminal
when the call is received. Fact 8. In combination with Jarett’s system this merely
provides another method for determining whether the mobile terminal is in
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communication range, with the predicable result of determining at the moment the
call is received, whether communication is possible. Thus, we consider the
combination to have been obvious as it is nothing more than the combination of
familiar elements that yields predictable results. As, Appellant’s arguments have
not persuaded us that the Examiner erred, we affirm the Examiner’s rejection of
claims 4, 5, 18, and 19.
-Claim Group F.
Appellant’s arguments have not persuaded us of error in the Examiner’s
rejection of claims 8 and 22. We acknowledge that claim 8 is dependent upon
claim 1 and as discussed supra, Jarett does not teach all of the limitations of Claim
1. However, as discussed infra, we find that Foladare teaches the features deficient
in the rejection of claim 1.
Appellant’s arguments have not persuaded us that the Examiner erred in
finding that one skilled in the art would apply the teachings of Foladare to Jarett’s
system. Appellant’s argument that the motivation is not supported by evidence
from Jarett and Foladare is not persuasive. As discussed supra, the Supreme Court
has stated that obviousness cannot be confined to the concept of motivation.
Further, we note that Foladare does teach that the advantage of using ISDN is that
the data communication can occur regardless of whether the line is on or off the
hook. Fact 10. Representative claim 22 recites “wherein the information is
received from the terminal adaptor via a packet network.” Appellant has not
contested the Examiner’s findings that the SS7 protocol, which Foladare teaches is
used in the ISDN communication, sends data as a packet. Fact 12. Thus,
Appellant has not persuaded us that the Examiner erred in rejecting claims 8 and
22 under 35 U.S.C. § 103(a).

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Rejection under 35 U.S.C. § 103(a) based upon Jarett in view Beamish
-Claim Groups G, H, and I.
Initially, we note that claims 11, 12, and 15 are dependent upon claim 1. As
discussed supra, Jarett does not teach all of the limitations of Claim 1.
Accordingly, we reverse the Examiner’s rejection of claims 11, 12, and 15.
However, Appellant’s arguments have not persuaded us of error in the Examiner’s
rejection of claims 25, 26, and 29. Appellant’s arguments that the motivation is not
supported by evidence from Jarett and Beamish are not persuasive. As discussed
supra, the Supreme Court has stated that obviousness cannot be confined to the
concept of motivation. The Examiner has established, and Appellant has not
contested that Beamish teaches that it was known in the art that cell phones also
communicate in local area networks using a variety of communication protocols.
Fact 13. These protocols include the 802.11 WLAN and Bluetooth protocols
broadly recited in claim 25 and specifically recited in claims 26 and 29. In
combination with Jarett’s system this merely provides an alternative
communication protocol which is available on many cellular phones and yields the
predicable result of providing local communication. Thus, we consider the
combination to have been obvious as it is nothing more than the combination of
familiar elements that yields predictable results. Thus, Appellant’s arguments have
not persuaded us that the Examiner erred in rejecting claim 25, 26, and 29.
New Rejection of claims 1, 2, 3, 6, 7, and 9.
As discussed supra, we reverse the Examiner’s rejection of claims 1, 2, 3, 6,
7, and 9 as we do not find that Jarett routes a call to the number associated with the
base station (on the PSTN) and then forwards the call to the mobile unit’s number
on the cellular network. However, we find that Foladare teaches an embodiment
where a call is routed to the number associated with the base station (on the PSTN)
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and then if the mobile unit is not in the base station’s zone of coverage, the call is
forwarded to the mobile unit’s number on the cellular network. Fact 8. Thus, we
find that Foladare resolves the argued deficiency of the rejection of independent
claim 1. We consider applying Foladare’s teaching that the first phone number the
call is routed to as the PSTN number to be a known technique for routing calls.
Instituting this technique into Jarett’s system represents nothing more than a
combination of known techniques which when combined yield the predictable
result of first sending the call to the base station and then forwarding it to the
cellular network. As Appellant has not asserted that any of the other limitations of
claims 1, 2, 3, 6, 7, 9, 10, 13, and 14 define over Jarett, we adopt the Examiner’s
findings regarding the uncontested limitations of these claims and reject these
claims under 35 U.S.C. § 103(a), as unpatentable over Jarett in view of Foladare.1
We designate this as a new rejection under 37 C.F.R. § 41.50(b). Further, we now
reject claims 11, 12, and 25 under 35 U.S.C. § 103(a) as unpatentable over Jarett in
view of Foladare, and Beamish applying the same reasoning applied to our
affirmance of claims 25, 26 and 29.

DECISION

The Examiner’s decision to reject claims 16, 17, 20, 21, 23, 24, 27, 28 and
30 under 35 U.S.C. § 102(b) and claims 4, 5, 8, 18, 19, 22, 25, 26 and 29 under 35
U.S.C. § 103(a) is affirmed. However, the Examiner’s decision to reject claims 1,

1 We note that Foladare may anticipate, the limitations of claim 1, however, as we
are relying upon the uncontested findings of the Examiner regarding Jarett, we
reject the claims under 35 U.S.C. § 103(a).
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Appeal 2007-3330
Application 10/409,280

2, 3, 6, 7, 9, 10, 13 and 14 under 35 U.S.C. § 102(b) and claims 11, 12, and 15
under 35 U.S.C. § 103(a) is reversed.
The decision of the Examiner is affirmed-in-part. Additionally, we enter a
new rejection of claims 1, 2, 3, 6, 7, and 9 through 15 under 35 U.S.C. § 103(a).
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
"[a]ppellant may file a single request for rehearing within two months from the
date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more claims,
this decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off.
Gaz. Pat. Office 21 (September 7, 2004)). 37 C.F.R. § 41.50(b) provides "[a] new
ground of rejection pursuant to this paragraph shall not be considered final for
judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .

Should the Appellant elect to prosecute further before the Examiner pursuant
to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under
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Appeal 2007-3330
Application 10/409,280

35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of
the affirmance is deferred until conclusion of the prosecution before the Examiner
unless, as a mere incident to the limited prosecution, the affirmed rejection is
overcome.
If the Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this case
should be returned to the Board of Patent Appeals and Interferences for final action
on the affirmed rejection, including any timely request for rehearing thereof.

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).
AFFIRMED-IN-PART; 37 C.F.R. 41.50(b)

tdl

WITHROW & TERRANOVA, P.L.L.C.
100 REGENCY FOREST DRIVE
SUITE 160
CARY NC 27518

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