Ex Parte Zhao et al

Patent Trial and Appeal Board

Feb 11, 2015

11559018 (P.T.A.B. Feb. 11, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WEN ZHAO and ISABEL MAHE
____________

Appeal 2012-009255
Application 11/559,018
Technology Center 2600
____________

Before JEAN R. HOMERE, DANIEL N. FISHMAN, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 4–9, 12, 13, 16–19, and 22–29. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.1

1 Claim 19 recites a computer-readable storage medium. In the event of
further prosecution, we recommend the Examiner determine whether claim
19 and corresponding dependent claims encompass transitory media and
therefore, non-statutory subject matter. See Ex parte Mewherter, Appeal
No. 2012-007692 (PTAB May 08, 2013) (precedential-in-part).
Appeal 2012-009255
Application 11/559,018

2
STATEMENT OF THE CASE
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellants’
arguments. We concur with Appellants’ conclusion that the Examiner erred
in combining Bridgelall (US 2002/0085516 A1, pub. July 4, 2002) and
Quinn (US 2002/0137472 A1, pub. Sept. 26, 2002) to teach “the channel
control module to tum off power to a WWAN transceiver of the mobile
computing device,” as recited in claim 1.2
The Examiner relies on Bridgelall primarily. See Ans. 5–6. Because
Bridgelall does not teach the disputed claim limitation, the Examiner
modifies the Bridgelall system by incorporating Quinn’s teachings. See
Ans. 6, 11–12.
We agree with Appellants the Examiner’s proposed modification of
Bridgelall would result in a system that is unsatisfactory for Bridgelall’s
stated purpose of providing automatic and seamless roaming between the
WLAN and WWAN networks. See App. Br. 12–14. As pointed out by
Appellants, Bridgelall states its invention is directed toward:
automatic and seamless vertical roaming between a WLAN and
a WWAN by detecting second network availability for
switching over while maintaining an active voice or data
connection on the first network so that the existing connection
is maintained and the transition is continuous.
See App. Br. 12 (citing Bridgelall ¶ 10).
Further, as pointed out by Appellants, Bridgelall’s paragraphs 75 and
77 describe the switching process, which is opposite from the Examiner’s

2 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not need to address the additional
arguments.
Appeal 2012-009255
Application 11/559,018

3
proposed modification of disabling the transceiver in Bridgelall. See App.
Br. 12–13. Indeed, Bridgelall is entitled “Automatic And Seamless Vertical
Roaming Between Wireless Local Area Network (WLAN) And Wireless
Wide Area Network (WWAN) While Maintaining An Active Voice Or
Streaming Data Connection: Systems, Methods And Program Products.”
Bridgelall, Title. Contrary to the Examiner’s unsupported assertion (Ans. 6),
one skilled in the art would not have modified the Bridgelall system to
incorporate Quinn’s teachings of disabling the transceiver, because that
modification would have defeated the very purpose of Bridgelall—seamless
roaming between WLAN and WWAN.
Accordingly, we are constrained by the record to not sustain the
Examiner’s rejection of claim 1, and claims 4–9, 12, 13, 16–19, and 22–29
for similar reasons.3

DECISION
The Examiner’s decision rejecting claims 1, 4–9, 12, 13, 16–19, and
22–29 is reversed.

REVERSED

msc

3 If prosecution reopens, we recommend the Examiner review Quinn and
determine whether it is appropriate to rely on Quinn as the primary reference
to reject claim 1.