Ex Parte Tiihonen et al

Board of Patent Appeals and Interferences

May 30, 2012

10827649 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JUHA TIIHONEN and TOMMI PARKKARI
____________

Appeal 2009-015269
Application 10/827,649
Technology Center 2600
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Before KRISTEN L. DROESCH, DAVID M. KOHUT and
BRYAN F. MOORE, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2009-015269
Application 10/827,649

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STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 42-48.1 We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE.
BACKGROUND
Appellants disclosed invention relates to a mobile switching center
(MSC) that switches telephone calls in a time division multiplex access
(TDMA) wireless communications network architecture. A communications
controller in the MSC is adapted to control communications between the
MSC and at least one base station controller. An interworking function
(IWF) in the MSC is adapted to transfer information between the MSC and
another network other than the wireless communications network. A
compact data services unit (CDSU) causes the MSC to automatically detect
the subchannels of the telephone call dropped whenever a downgrade
procedure occurs during a data call switched through the MSC. Abs.; Spec.
6-7.
Claim 42 is illustrative and is reproduced below (disputed limitations
in italics):
42. A tangible medium storing a software program
which, when read and executed by a mobile switching center,
causes the mobile switching center to implement a method of
automatically detecting changes in sub-channel usage over an
interface between the mobile switching center and a wireless
communications network, said method comprising the steps of:
automatically detecting, whenever a downgrade or
upgrade procedure occurs during a data call switched through
said mobile switching center, the subchannels of the telephone

1 Claims 1-30 have been cancelled. Claims 31-41 have been allowed.
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Application 10/827,649

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call dropped in the downgrade procedure or added in the
upgrade procedure; and
initiating a subchannel finding procedure whenever a
downgrade or upgrade procedure occurs during a data call
switched through said mobile switching center.

Claims 42-48 stand rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement.
ISSUE
Did the Examiner err in finding that the “tangible medium” was not
described in the Specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventors had possession of the claimed
invention at the time of the application?
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Appeal Brief presented in response to the Final Office
Action. We agree with Appellants’ conclusions and highlight and address
specific findings and arguments for emphasis as follows.
As pointed out by Appellants, the Specification at page 13, lines 1-2
discloses: “[t]his method is preferably implemented directly in the software
of the MSC/IWF, such as a Compact Data Services Unit (CDSU).” Although
the Specification does not provide in haec verba support for the claimed
subject matter, the disclosure reasonably conveys to one with ordinary skill
in the art at the time of the application that the inventors had possession of
the claimed tangible medium storing the software program. See Purdue
Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000); Ariad
Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010 (en
banc). In other words, since the Specification discloses the method is
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implemented directly in the software of the MSC/IWF, the Specification
sufficiently demonstrates that the inventors had possession of the MSC/IWF
as the tangible medium storing the software program.
DECISION
We REVERSE the rejection of claims 42-48 under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement.
REVERSED

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