Ex Parte Sheynman et al

Board of Patent Appeals and Interferences

Jul 11, 2007

09795704 (B.P.A.I. Jul. 11, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ARNOLD SHEYNMAN and JATIN J. PATEL
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Appeal 2007-1415
Application 09/795,704
Technology Center 2600
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Decided: July 11, 2007
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Before ANITA PELLMAN GROSS, JEAN R. HOMERE, and JOHN A.
JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2007-1415
Application 09/795,704

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 4, 7, 10, 18, 20, 33, 34, and 36.1 Claims 2, 3, 8, 9, 11-
17, 19, 21-23, 25, 35, 37, and 38 have been indicated as containing
allowable subject matter (Answer 2) and claims 24, 26-32, and 39 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellants invented a mobile station communications system for
supporting packet data and circuit mode services in a cellular telephone
handset. Specifically, the system includes an interoperability entity that is
coupled to a packet stack, a circuit stack, and a router and operating mode
switch for communication therebetween.2 Claim 1 is illustrative:
1. A mobile station supporting packet and circuit modes of operation,
comprising:

an RF transceiver;

a router and operating mode switch coupled to the RF transceiver; a
packet stack coupled to the RF transceiver;

a circuit stack coupled to the router and operating mode switch,

the circuit stack coupled to the RF transceiver, the circuit stack
coupled to the packet stack;

1 Appellants did not appeal the Examiner’s rejection of claims 5 and 6. See
Br. 4 (appealing only the Examiner’s rejection of claims 1, 4, 7, 10, 18, 20,
33, 34, and 36). Accordingly, the rejection of claims 5 and 6 is not before
us.
2 See generally Specification 1:10-15 and 3:22-27.
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Application 09/795,704

an interoperability entity coupled to the router and operating mode
switch, the interoperability entity coupled with the packet stack and with the
circuit stack.

The Examiner relies on the following prior art references to show
unpatentability:
Rydbeck US 6,108,562 Aug. 22, 2000
Mazur US 6,438,115 B1 Aug. 20, 2002
(filed Mar. 8, 1999)

Claims 1, 4, 7, 10, 18, 20, 33, 34, and 36 stand rejected3 under 35
U.S.C. § 103(a) as unpatentable over Rydbeck in view of Mazur.
Rather than repeat the arguments of Appellants 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
Appellants. Arguments which Appellants 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
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

3 We note that the Examiner’s Answer does not expressly state the
Examiner’s grounds of rejection with particularity, but instead refers us to a
final office action from Feb. 2006 for “further details of the rejection”
(Answer 3). Such incorporations by reference, however, are improper under
current practice. See MPEP § 1207.02 (“An examiner's answer should not
refer, either directly or indirectly, to any prior Office action without fully
restating the point relied on in the answer.”).
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Application 09/795,704

obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(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, 148
USPQ 459, 467 (1966). Furthermore, “‘there must be 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.” KSR Int’l Co. v. Teleflex Inc., 127
S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441
F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
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, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Regarding independent claim 1, the Examiner's rejection essentially
finds that Rydbeck teaches a mobile phone with every claimed feature
except for a packet stack. The Examiner, however, cites Mazur as teaching
that it is well known to integrate both circuit and packet switching. In view
of this teaching, the Examiner concludes that it would have been obvious to
one of ordinary skill in the art at the time of the invention to include a packet
stack in Rydbeck’s system to include new communication protocols (Final
Rejection 2-3).
Appellants argue that Rydbeck does not disclose circuit and packet
stacks coupled to an RF transceiver as claimed. Appellants add that
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Rydbeck fails to disclose a router and operating mode switch coupled to the
RF transceiver as claimed. Appellants further argue that Rydbeck does not
disclose an interoperability entity that is (1) coupled to the router and
operating mode switch, and (2) coupled with the packet and circuit stacks as
claimed. In this regard, Appellants contend that controller 160 in Rydbeck
is not an interoperability entity, but rather only (1) detects the presence of
modules 120, (2) identifies the protocol supported by each module, and (3)
connects via switch 150 one module to man-machine interface 105 (Br. 5;
Reply Br. 2).
The Examiner argues that because each communications module (i.e.,
protocol stack) in Rydbeck contains functionality to facilitate
communication between the mobile phone and a particular communication
network, the stacks must be coupled to the RF transceiver in order to
communicate at all (Answer 4). The Examiner adds that Rydbeck’s
controller 160 fully meets an “interoperability entity” as claimed since it
“interoperates with the different network protocols” by selecting different
protocols (Answer 5).
Appellants also argue that the secondary reference, Mazur, teaches
away from combining circuit and packet technologies. According to
Appellants, Mazur teaches implementing packet switched technology
without circuit switched technology. In particular, Appellants contend that
Mazur introduces synchronization and frequency correction in a stand alone
packet communications system without needing to implement a circuit
switched system and its associated control channels (Br. 5). Appellants also
argue that Mazur is concerned with network architecture -- not handset
architecture (Br. 5-6).
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The Examiner responds that Mazur discusses integrating circuit and
packet switching services in cellular communication systems in the
Background section of the patent. The Examiner adds that since Rydbeck
specifically teaches that the subscriber can add communication modules as
new protocols are introduced, the skilled artisan would have had ample
reason to include a packet stack in Rydbeck’s system in light of Mazur
(Answer 5-6).
We will sustain the Examiner’s rejection of independent claim 1
essentially for the reasons stated by the Examiner. Rydbeck discloses a
mobile telephone 100 with multiple communication modules 120 that each
contain functionality for effectuating communication between the telephone
and a respective communication network 200 using the protocol of the
particular communication network (Rydbeck, col. 2, ll. 36-48; Fig. 1). That
is, each communication module has an associated communications protocol
that is compatible with a particular communication network 200. In
addition, the communication modules are easily connected and disconnected
from the converter 110. Such functionality enables the user to equip a
particular telephone to communicate with a variety of networks having
diverse protocols by merely connecting the appropriate modules (Rydbeck,
col. 3, ll. 5-12).
Controller 160 (1) detects the presence of each communication
module 120, and (2) identifies the particular protocol supported by each
respective module (Rydbeck, col. 3, ll. 14-35). Once the controller 160
knows which protocols are supported by the mobile telephone based on
which modules are attached to the converter, the controller determines which
networks are available in the telephone’s current location. Based on this
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determination, the controller then selects one communication network and
connects the man-machine interface 105 to the appropriate communication
module 120 supporting the protocol of the selected network 200 via interface
230 and switch 120 (Rydbeck, col. 3, ll. 36-47).
We agree with the Examiner that Rydbeck’s controller 160 fully
meets an “interoperability entity” giving the term its broadest reasonable
interpretation. In our view, the controller “interoperates” with multiple
modules that support diverse communications protocols by selecting and
connecting the appropriate module to effectuate communication with the
appropriate network.
Moreover, we find that Rydbeck’s controller 160 (i.e.,
“interoperability entity”) is “coupled to” not only to the respective modules
(stacks), but also the router and operating mode switch 150. To obtain the
protocol information, the controller 160 reads the memory 220 of the
appropriate module (Rydbeck, col. 3, ll. 29-34). Certainly, the controller
must be coupled to the modules to read their memories. Moreover, the
controller is coupled to switch 150 as shown in Fig. 1 and described in col.
2, ll. 40-44.
We also agree with the Examiner that there must be a transceiver in
Rydbeck’s mobile telephone to effectuate wireless communication to the
networks 200 -- a point Appellants apparently concede in the Reply Brief.4
Although the transceiver is not shown, it must be “coupled to” the modules
(stacks) and router and operating mode switch -- at least indirectly -- to

4 See Reply Br. 1 (“Applicants do not assert that Rydbeck fails to disclose a
transceiver per se as alleged by the Examiner.”). We also agree with the
Examiner on Page 4 of the Answer that the antenna on top of mobile phone
100 implies the presence of a transceiver.
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Application 09/795,704

effectuate communication at all. Significantly, the scope and breadth of the
limitation “coupled to” does not preclude an indirect coupling. For example,
two components in an electrical circuit are “coupled to” each other despite
the presence of an intervening component. In light of this interpretation, we
find Rydbeck’s components are at least indirectly coupled (and in some
instances directly coupled) in the manner claimed.
Given our agreement with the Examiner regarding the Rydbeck
reference, we are left with the question of whether the skilled artisan would
have reasonably included a packet stack in Rydbeck in view of the teachings
of Mazur. We answer this question in the affirmative.
As the Examiner indicates, Mazur discusses a trend in
telecommunications to focus more on wireless packet data communication
rather than circuit switched voice communication. Due to the tremendous
increase in internet users, packet switched communication is believed to
grow and ultimately surpass circuit switched voice communication. As a
result, cellular system manufacturers and operators are attempting to
integrate their circuit switched services with wireless packet switched
services (Mazur, col. 1, ll. 10-28).
Mazur notes that there are efforts to extend the current GSM cellular
communications system to accommodate packet communication in a system
known as General Packet Radio Services (GPRS). Essentially, GPRS is a
packet switched system that is designed to coexist with GSM and provide
the same coverage as GSM. Significantly, GPRS cannot exist by itself: it is
dependent upon a GSM circuit switched control channel (Mazur, col. 1, ll.
29-41; col. 1, l. 60 - col. 2, l. 8).
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Mazur further describes another circuit/packet integration
development that integrates a high throughput packet data system with the
TDMA/136 circuit switched mode (Mazur, col. 2, ll. 12-23). Mazur,
however, discusses the tradeoffs associated with this integration, including
the need to allocate substantial bandwidth for GPRS (Mazur, col. 2, ll. 23-
43).
The clear import of this discussion is that integrating cellular packet
switched systems with existing circuit switched systems is seen as a
potential solution to accommodate the tremendous growth of internet users.
In our view, the ordinarily skilled artisan would find ample reason from this
discussion alone to include a module supporting a packet switching protocol
(i.e., a packet stack) along with the modules that support circuit switching
protocols (circuit stacks). At a minimum, such a feature would allow the
mobile phone of Rydbeck to accommodate packet switched protocols in
addition to circuit switched protocols.
We acknowledge that Mazur discusses a problem of being able to run
a stand-alone GPRS system without having to implement a circuit switched
mode (Mazur, col. 2, ll. 9-11). We also recognize that Mazur discusses
introducing synchronization and frequency correction possibilities in a
GPRS system without having to implement a GSM circuit switched mode
and associated control channels as Appellants indicate (Mazur, col. 3, ll. 53-
57).
But these discussions essentially refer to a preferred embodiment of
Mazur. That Mazur may prefer to implement a stand-alone GPRS system
does not foreclose the skilled artisan from considering the reference’s other
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teachings clearly establishing that integrating packet and circuit modes of
operation is well known.
In any event, even with Mazur’s preferred embodiment, Mazur hardly
discards the idea of integrating packet and circuit switched modes as
Appellants seem to suggest. On the contrary, Mazur notes that if it is
possible to provide a GPRS system without a GSM circuit mode, it will also
be possible to introduce the GPRS system in other circuit switched system
environments. According to Mazur, migrating to a system with TDMA/136
as a circuit switched mode and GPRS as a packet switched mode will
become more straightforward (Mazur, col. 7, ll. 57-63). In our view, this
teaching only bolsters the Examiner’s position that combining packet and
circuit stacks in Rydbeck would have been within the level of the skilled
artisan.
We further note that Figure 8 of Mazur also strongly suggests
integrating packet and circuit switched modes. The figure illustrates a
GPRS system integrated with a TDMA/136 system according to different
embodiments of Mazur’s invention (Mazur, col. 4, ll. 59-61). As shown in
Figure 8, the upper portion corresponds to a TDMA/136 system part and the
lower portion corresponds to a GPRS system part. Significantly, the
accompanying discussion indicates that several of the functional nodes in the
TDMA/136 mode or system part can be co-located or integrated with the
functional nodes in the GPRS mode or system part (Mazur, col. 9, ll. 24-33).
But perhaps most significant is the depiction of a dual mode terminal
in Figure 8. As shown in the figure, the terminal has a wireless connection
with both the TDMA/136 and GPRS system parts. From this depiction
alone, the skilled artisan would readily understand that providing a single
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terminal capable of communicating in both packet and circuit switched
modes is, at the very least, desirable. Given the capability of Mazur’s dual-
mode wireless device, we find this teaching readily combinable with the
multi-network wireless device of Rydbeck.5
Furthermore, even if we assume, without deciding, that Mazur’s dual-
mode terminal in Figure 8 is not a “mobile station,” we find the teachings of
Mazur nonetheless readily applicable to a wide variety of mobile stations
that are capable of wireless communication, including cellular telephones.
On this record, we see no reason why integrating packet and circuit switched
modes as taught by Mazur would not be applicable to mobile stations as well
as fixed stations. In any event, Mazur expressly discusses cellular
communications systems as the Examiner indicates.6
For at least these reasons, we will sustain the Examiner’s rejection of
independent claim 1. Since Appellants have not separately argued the
patentability of dependent claims 4 and 7, these claims fall with independent
claim 1. See In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528
(Fed. Cir. 1987); see also 37 C.F.R. § 41.37(c)(1)(vii).
Likewise, we will sustain the Examiner's rejection of independent
claims 10, 20, 33, and 34 for similar reasons. Although Appellants argue the
claims separately, Appellants essentially reiterate the arguments made with
respect to the alleged deficiencies of Rydbeck and Mazur in connection with
claim 1 (Br. 6-10). Appellants have simply not persuasively rebutted the
Examiner’s findings regarding Rydbeck and Mazur, including the

5 We further note that Mazur’s dual-mode terminal in Figure 8 has an
antenna mounted on top of the structure similar to that shown in Figure 1 of
Rydbeck.
6 See, e.g., Mazur, col. 1, ll. 5-8; see also col. 10, l. 2 (preamble of claim 1).
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Examiner’s findings in the Final Rejection and Answer regarding an EGPRS
stack (claim 10), CDMA stack (claims 33 and 34), and the functionality of
the router and interoperability entity of Rydbeck previously discussed and its
collective capability to route messages between Rydbeck’s user interface
and circuit/packet technologies (claim 20). We find the Examiner has
reasonably established a prima facie case of obviousness with respect to
these claims which has not been persuasively rebutted.
The Examiner’s rejection of claims 10, 20, 33, and 34 is therefore
sustained. Likewise, we will sustain the Examiner’s rejection of claims 18
and 36 which fall with independent claims 10 and 33 respectively.

DECISION
We have sustained the Examiner's rejections with respect to all claims
on appeal. Therefore, the Examiner’s decision rejecting claims 1, 4, 7, 10,
18, 20, 33, 34, and 36 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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