Conversant Wireless Licensing S.à r.l.

Patent Trials and Appeals Board

May 28, 2021

2020000023 (P.T.A.B. May. 28, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/083,138 03/28/2016 Tatikonda SIVAKUMAR 53038-US-CON 6586
100809 7590 05/28/2021
Conversant Wireless Licensing Ltd.
5830 Granite Parkway #100-247
Suite 247
Plano, TX 75024
EXAMINER
BIBBEE, CHAYCE R
ART UNIT PAPER NUMBER
2624
NOTIFICATION DATE DELIVERY MODE
05/28/2021 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):
ipadmin-core@conversant-wireless.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TATIKONDA SIVAKUMAR
Appeal 2020-000023
Application 15/083,138
Technology Center 2600

Before RICHARD M. LEBOVITZ, JOHN R. KENNY, and
DAVID J. CUTITTA II, Administrative Patent Judges.

CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4, 6–8, 11, 13–15, 18, 20, all of the
pending claims.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies Conversant Wireless Licensing S.à r.l., as the real party
in interest. Appeal Brief filed April 12, 2019 (“Appeal Br.”) at 1.
2 Claims 2, 3, 5, 9, 10, 12, 16, 17, and 19 are cancelled. Appeal Br. 1, 2.
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CLAIMED SUBJECT MATTER
Summary
Appellant’s claimed subject matter relates to “a mobile
communications device [(UE 100)] with the ability to access a local phone
directory to obtain contact information related to a particular location,” upon
authentication of the device. Spec.¶ 6.3 The obtained information “would
include access information and codes necessary to allow operation of the UE
100 as an internal communication device within the local network. In effect
the UE 100 would become a fully functioning local phone in the local
network for the duration of a visit.” Id. ¶ 43.
Illustrative Claim
Claims 1, 8, and 15 are independent. Claim 1, reproduced below with
certain dispositive limitations at issue italicized, illustrates the claimed
subject matter:
1. A method comprising:
using a mobile communication device, establishing a local
link for communications with a local network server in a local
network upon said mobile communication device being in a
proximity of said local network;
then authenticating the mobile communication device with
the local network server over the local link;
upon authenticating said mobile communication device
with the local network server, accessing the local network server

3 In addition to the above-noted Appeal Brief, throughout this Decision we
refer to: (1) Appellant’s Specification filed March 28, 2016 (“Spec.”);
(2) the Final Office Action (“Final Act.”) mailed July 13, 2018; (3) the
Examiner’s Answer (“Ans.”) mailed July 29, 2019; and (4) the Reply Brief
filed September 30, 2019 (“Reply Br.”).
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by the mobile communication device over the local link to
download, from said local network server, data and codes that
enable the mobile communication device to operate as an
internal phone of said local network; and
operating the mobile communication device as an internal
communication device for communications in the local network
over the local link.
Appeal Br. 11, 15, 16 (Claims App.).
REFERENCES AND REJECTIONS
The Examiner rejects claims 1, 6–8, 13–15, and 20 under pre-AIA 35
U.S.C. § 102(e) as anticipated by Mock et al. (US 2008/0147685A1,
published June 19, 2008) (“Mock”). Final Act. 3–5.
The Examiner rejects claims 4, 11, and 18 under pre-AIA 35 U.S.C.
§ 103(a) as obvious over the combined teachings of Mock and Knauerhase
et al. (US 2004/0203746 A1, issued Oct. 14, 2004) (“Knauerhase”). Id. at
5–7.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Anticipation Rejection of Claim 1
The Examiner finds that Mock discloses all of the limitations of
independent claim 1. Final Act. 3–4; Ans. 7–9. In particular, the Examiner
finds Mock discloses “that in a ‘transmit’ mode the portable communication
device transmits signals through the wireless communication system 100,”
which includes local area network access point 108” and “Mock discloses
that the directory terminal 104 is coupled to the LAN 108, thus enabling the
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mobile communications device to operate as an internal phone of said local
network.” Ans. 9.
Mock generally relates to sharing contact information including
telephone numbers between a directory terminal, such as in a shopping mall,
and a portable communication device. Mock ¶ 1.
Figure 1 of Mock is reproduced below.

Figure 1 of Mock depicts a schematic of “wireless communication
system 100 includ[ing] at least one or more portable communication devices
102 (one shown) and a directory terminal 104.” Mock ¶ 25. According to
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Mock, the “wireless communication system 100 connects the portable
communication device 102 to other wireless communication devices and/or
to other networks, including wide area networks 114, such as the Internet, a
public switched telephone network (PSTN) 116, and the like, via at least one
base station 120.” Id. Mock further explains that “directory terminal 104 is
preferably accessible to a local server 106 and/or a local communication
device 110 (e.g., a telephone or personal computer) via a local area network
(LAN) access point 108” and that terminal 104 may also “place telephone
calls through a wired land line” 122. Id.
Appellant argues that Mock fails to “disclose that its portable
communication device operate[s] as an internal communication device in a
local network including the directory terminal, much less over a local link as
claimed.” Appeal Br. 6. According to Appellant, Mock “instead discloses
that any communication initiated by its portable device to a contact provided
by the directory terminal is carried out over the wireless communication
system in the same manner as other cellular phone calls (i.e., to numbers not
provided by the directory terminal) placed by the device.” Id. (citing Mock
¶ 42).
We agree with Appellant that the Examiner has not adequately shown
that Mock’s portable communication device 102 operates, either by direct
connection or via terminal 104, as an internal phone in LAN 108. Rather,
Mock describes that device 102 simply obtains contact information from
directory 104 and then makes cellular telephone calls by using base station
120 to access the public switched telephone network 116. Mock ¶ 42. As
Appellant further points out, “to the extent that Mock et al. discloses making
a call via LAN 108, that call is made from directory terminal 104 by way of
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a telephone, or microphone and speaker, present at the directory terminal
104 itself,” rather than via device 102. Reply 4.
We, therefore, find persuasive Appellant’s argument that Mock fails
to disclose that “communications from its portable communication device
102 are or can be made over a local link established with the alleged server
(i.e., the directory terminal), or otherwise as an internal communication
device in the local network.” Id. Accordingly, on this record, the Examiner
has not shown that Mock discloses “accessing the local network server by
the mobile communication device over the local link to download, from said
local network server, data and codes that enable the mobile communication
device to operate as an internal phone of said local network,” as recited in
claim 1. Because we agree with at least one of the dispositive arguments
advanced by Appellant for claim 1, we need not reach the merits of
Appellant’s other arguments.
We do not sustain the Examiner’s anticipation rejection of claim 1.
We further do not sustain the anticipation rejection of independent claims 8
and 15 and dependent claims 6, 7, 13, 14, and 20 for similar reasons.
Obviousness Rejection of Claims 4, 11, and 18
With respect to the obviousness rejection of dependent claims 4, 11,
and 18, the Examiner does not rely on Knauerhase to cure the noted
deficiency in the anticipation rejection. Accordingly, we do not sustain the
obviousness rejections of these claims for the reasons set forth above.
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DECISION SUMMARY
In summary:

REVERSED

Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 6–8,
13–15, 20
102(e) Mock 1, 6–8,
13–15, 20
4, 11, 18 103(a) Mock,
Knauerhase
4, 11, 18
Overall
Outcome
1, 4, 6–8,
11, 13–15,
18, 20