Ex Parte Snider et al

Patent Trial and Appeal Board

Mar 30, 2016

12512586 (P.T.A.B. Mar. 30, 2016)

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".)
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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.)
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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.
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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.
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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
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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
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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)).
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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
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