Ex Parte Snider et alDownload PDFPatent Trial and Appeal BoardMar 30, 201612512586 (P.T.A.B. Mar. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/512,586 0713012009 64588 7590 04/01/2016 Continental Automotive Systems, Inc, Patents & Licenses 21440 W Lake Cook Road Floor 7 Deer Park, IL 60010 FIRST NAMED INVENTOR James Snider 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2011P60531US 6000 EXAMINER RAMPURIA, SHARAD K ART UNIT PAPER NUMBER 2646 NOTIFICATION DATE DELIVERY MODE 04/01/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): patentsus@continental-corporation.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES SNIDER and CHIA-CHING CHEN Appeal2014-006073 Application 12/512,586 Technology Center 2600 Before ST. JOHN COURTENAY III, DAVID M. KOHUT, and MONICA S. ULLAGADDI, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection, mailed June 11, 2012, of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal2014-006073 Application 12/512,586 Invention The claimed invention on appeal is directed to: "transceivers that operate compatibly with a handover-based wireless communications system." (Spec. i-f 1.) Representative Claim 1. A method comprising: at a handover-based communications system end-user transceiver: automatically determining at least one of a received signal strength metric as corresponds to a presently-utilized base station and a received signal strength metric as corresponds to a presently un-utilized base station to provide at least one received signal strength value; determining whether to purposefully alter the at least one received signal strength value; upon determining to purposefhlly alter the at least one received signal strength value, automatically altering the at least one received signal strength value to provide at least one altered signal strength value; transmitting the at least one altered signal strength value in order to influence a handover decision in favor of handing over the handover-based communications system end-user transceiver from the presently-utilized base station to the presently un-utilized base station; [L 1] wherein communications provided by the presently- utilized base station and communications provided by the presently un-utilized base station use the same communications scheme. (Emphasis added regarding the contested limitation, labeled as "LI".) 2 Appeal2014-006073 Application 12/512,586 Rejections A. Claims 1, 3-10, and 12-19 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Chang et al. (US 2007 /0032237 Al; published February 8, 2007), and Thorson et al. (US 2007/0275722 Al; published November 29, 2007). B. Claims 2 and 11 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Chang, Thorson, and Nishiyama (US 2004/0087334 Al; published May 6, 2004). Grouping of Claims Based on Appellants' arguments, we decide the appeal of all claims rejected under rejection A on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). We address rejection B of claims 2 and 11, infra. ISSUE Issue: Under§ 103, did the Examiner err by finding the cited combination of Chang and Thorson would have taught or suggested the contested limitation L 1: "wherein communications provided by the presently-utilized base station and communications provided by the presently un-utilized base station use the same communications scheme[,]" within the meaning of representative claim 1? (Emphasis added.) 3 Appeal2014-006073 Application 12/512,586 Contentions Although not specifically addressing a particular claim, Appellants focus their first argument on the Chang and Thorson references, asserting these references "teach away" from the "same communications scheme" recited in the last line of contested limitation LI. (App. Br. 4--5): In paragraph [0031], Chang simply states that the prior art hand off method "cannot support ... hand off ... between heterogeneous communication system (sic)." According to Chang, the prior art hand off method works just fine, as long as it is used with homogeneous communications systems. Stated another way, a person of ordinary skill in the art would not be led by Chang to alter or change the hand off methodology used with homogenous communications systems. See also App. Br. 5: when Thorsen is considered in its entirety, it discloses a method and apparatus by which older and less sensitive "legacy" radios used in a cellular system can be placed on equal footing with newer and more sensitive radios and vice versa. 1 Appellants additionally urge "the claims require a mobile station to falsely report base station signal strengths .... " (App. Br. 6, emphasis added): The plain language of the Applicant[s'] claims is clear. Paraphrased, the claims require a mobile station to falsely report base station signal strengths in order to "influence" a 1 We find Appellants do not directly address why Thorsen purportedly "teaches away" from the claimed invention. Instead, Appellants generally describe the teachings of Thorsen, and then refer to the Examiner's citation to Thorsen's paragraphs 34--35, and assert: "neither of them [i-fi-f 34--35] teaches or suggests that a mobile station can, or should, falsely report base station signal strengths." (App. Br. 5). We address this argument infra. 4 Appeal2014-006073 Application 12/512,586 base station/cell site handover, which will be effectuated by a network, but in response to the false signal strength report received from the mobile device. Finally, Appellants assert that a person of ordinary skill would not have considered the claims obvious in view of the cited references (App. Br. 7-8): A person of ordinary skill in the cellular communications art would not consider falsifying reported base station signal strengths to "influence" a hand over decision because doing so requires more processing by a cell phone, and, significantly, doing so would almost certainly conflict with at least some existing industry standards. It therefore stands to reason that a person of ordinary skill in the art would not consider the Applicant[ s '] claims to be obvious in view of Chang and Thors[ o Jn. (Eemphasis added). The Examiner disagrees (Ans. 3). The Examiner finds contested limitation L 1 is taught or suggested by the Chang reference: Thus, [as] is evident[], based on broadest reasonable interpretation (as stated in MPEP § 2111 [R5]), the [E]xaminer consider[ s] as the explanations above are directed to handoff methods intended for [the] same communication scheme, that positively, [is] disclosed by CHANG. ANALYSIS We have considered all of Appellants' arguments and any evidence presented. We disagree with Appellants' arguments, and we adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Answer in response to Appellants' arguments. (Ans. 2--4.) However, we highlight and address specific findings and arguments for emphasis in our analysis below. 5 Appeal2014-006073 Application 12/512,586 Regarding Appellants' initial argument that the references "teach away" from the claimed invention, we note contested "wherein" clause limitation L 1 recites the "same communication scheme" is used by "the presently-utilized base station" and "the presently-un-utilized base station." Although not specifically defined in the Specification, we conclude the plain meaning of the adjective "same" has limiting effect. The Examiner cites to Chang (Fig. 1, Final Office Act. (3) and Fig. 5, step 505, Ans. (2)) to support the finding the base stations in Chang use the same communication scheme in determining whether to perform a handoff. In reference to the prior art embodiment depicted in Figure 1, Chang (i-f 25) describes a homogeneous environment in which the base stations use the same communication scheme. However, Chang (i-f 25) further explains: However, the current communication system, as described above, will evolve into the heterogeneous communication system in which at least two different communication schemes coexist, rather than single( one) communication system using one communication scheme. (Emphasis added.) Figure 5 of Chang, similar to Figure 1 (step 102) of the Appellants' invention, illustrates a decision at block 505 where a determination is made whether signal strength compensation is needed. The determination in Chang (Fig. 5) depends on whether the selected base station uses the same communication scheme and only proceeds with signal strength compensation in the case where the base station uses a different communication scheme. See Chang (i-f95): [0095] In step 505, the handoff controller determines whether to compensate the signal strengths according to the selection of the BS for which the signal strength is to be 6 Appeal2014-006073 Application 12/512,586 compensated. If it is determined that there is no need to compensate the signal strengths because there is no selected BS for which the signal strength is to be compensated, the handoff controller proceeds to step 515. In this case, all BSs for determining whether to perform handoffuse the same communication scheme. (Emphasis added). Cf with Chang (i-f3 6): According to the present invention, there is provided a method for performing handoff in a communication system including a serving base station (BS) in communication with a mobile station (MS), at least one neighbor BS using a communication scheme different from a communication scheme of the serving BS, and the MS capable of communicating with the neighbor BS. The method includes compensating signal strength of at least one of the serving BS and the neighbor BS, received at the MS, such that a handoff decision is possible, and determining whether to perform a handoff of the MS, using the compensated signal strength. (Emphasis added). We find Appellants' arguments (App. Br. 4--5) regarding "teaching away" unavailing, because at least one embodiment in Chang (i-f95) determines there is no need to compensate the signal strengths in the case where all the base stations use the "same communication scheme." Moreover, the "mere disclosure of alternative designs does not teach away." In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (citations omitted). A teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Even assuming arguendo (without deciding) that Appellants have established at least some indicia of "teaching away" in the references from 7 Appeal2014-006073 Application 12/512,586 the claimed invention, we note this is only one underlying factor to be considered in our obviousness analysis. We find any such purported evidence of "teaching away" (as asserted by Appellants), is outweighed by the additional factors discussed below. Regarding Appellants' additional arguments describing the purported differences between the prior art and the claimed invention, it is noted that Appellants initially refer to the plain language of the claims. However, Appellants then proceed to paraphrase the claims, referring to requiring a mobile station to "falsely report base station signal strengths" in support of the handover decision. See App. Br. 6: The plain language of the Applicant's claims is clear. Paraphrased, the claims require a mobile station to falsely report base station signal strengths in order to "influence" a base station/cell site handover, which will be effectuated by a network, but in response to the false signal strength report received from the mobile device. (Emphasis added). It is noted that the feature upon which Appellants rely (i.e., to "falsely report base station signal strengths" (id.)), is not recited in the rejected claims. Although the claims are interpreted in light of the Specification, we decline Appellants' invitation to read limitations from the Specification into the claims. 2 Appellants' final argument, as noted above, relates to a person of 2 This court has repeatedly "cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification." Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346-47 (Fed. Cir. 2015) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002)). 8 Appeal2014-006073 Application 12/512,586 ordinary skill in the art (App. Br. 7-8). Appellants offer a conclusory statement that it "stands to reason that a person of ordinary skill in the art" would not consider the claims to be obvious, but provide no evidence in support. Therefore, by a preponderance of the evidence, and for the reasons discussed above, we are not persuaded the Examiner erred. Accordingly, we sustain Rejection A of representative claim 1. Claims 3-10 and 12-19 (also rejected under Rejection A, but not argued separately) fall with claim 1. See Grouping of Claims, supra. Rejection B of claims 2 and 11 under §103 Appellants advance no separate arguments for claims 2 and 11, which are rejected under Rejection B. Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(l)(iv). Therefore, we sustain Rejection B of dependent claims 2 and 11. Conclusion For the reasons discussed above, and by a preponderance of the evidence, we are not persuaded the Examiner erred. DECISION We affirm the Examiner's rejections of claims 1-19 under§ 103. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±). AFFIRMED 9 Copy with citationCopy as parenthetical citation