Ex Parte Amos

Board of Patent Appeals and Interferences

Mar 12, 2012

10600084 (B.P.A.I. Mar. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES A. AMOS
____________

Appeal 2010-001582
Application 10/600,084
Technology Center 2600
____________

Before JOHN A. JEFFERY, THOMAS S. HAHN, and
DENISE M. POTHIER, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-9, 14-19, and 39-43. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellant’s invention is a hybrid Voice-over-Internet-Protocol (VoIP)
telephone that can send and receive voice packets through either a base
station of a personal area network or an access point of a wireless local area
network, depending on the telephone’s connectivity to either network. See
Appeal 2010-001582
Application 10/600,084

2
generally Spec. 11:9-19, 15:9-16:2. Claim 1 is illustrative with key disputed
limitations emphasized:
1. A wireless voice over Internet Protocol telephone, comprising:
a wireless handset that comprises a wireless personal area network
transceiver configured to communicate with a wireless personal area
network, a wireless local area network transceiver configured to
communicate with a wireless local area network, and a selecting device for
selecting between the wireless personal area network transceiver and the
wireless local area network transceiver;
wherein the wireless handset is in voice communication with a
telephone controller, the telephone controller is configured to communicate
with a base station coupled to the wireless personal area network and an
access point coupled to the wireless local area network;
wherein the selecting device selects the wireless personal area
network transceiver for routing the voice communication through the
wireless personal area network when the wireless personal area network
transceiver detects a wireless personal area network connection, otherwise
the selecting device selects the wireless local area network transceiver;
wherein the selecting device is configured to send a signal to the
telephone controller via the wireless local area network transceiver to route
the voice communication for the wireless handset through the wireless local
area network responsive to the wireless personal area network transceiver
being unable to detect a wireless personal area network connection; and
wherein the selecting device is configured to send a signal to the
telephone controller via the personal area network transceiver to route the
voice communication for the wireless handset through the wireless personal
area network responsive to reestablishing a connection with the wireless
personal area network.

The Examiner relies on the following as evidence of unpatentability:
Leedom, Jr.
Awater
Bridgelall
Mohammed
US 2001/0036835 A1
US 2001/0010689 A1
US 2002/0085516 A1
US 2003/0119548 A1
Nov. 1, 2001
Aug. 2, 2001
July 4, 2002
June 26, 2003
(filed Apr. 2, 2002)
Appeal 2010-001582
Application 10/600,084

3
THE REJECTIONS
1. The Examiner rejected claim 391 under 35 U.S.C. § 112, ¶ 1 as
failing to comply with the written description requirement. Ans. 3-4.2
2. The Examiner rejected claims 1-9, 14-19, and 39-43 under
35 U.S.C. § 103(a) as unpatentable over Bridgelall, Awater, Mohammed,
and Leedom. Ans. 4-10.

THE WRITTEN DESCRIPTION REJECTION
The Examiner finds that Appellant did not have possession of the
invention recited in claim 39 at the time the application was filed because
Appellant’s original disclosure does not describe an access point and a base
station coupled to the same network. Ans. 3-4, 11-12.
Appellant argues that the Specification as filed discloses an access
point and a base station coupled to the same network because it describes
these devices as communicatively coupled to the same telephone controller,
wherein the links between the devices collectively comprise a network.
App. Br. 19-20; Reply Br. 2-4.
The issue before us, then, is as follows:

1 Although claims 40-43 depend from independent claim 39, the Examiner
nevertheless does not reject these dependent claims on this basis.
2 Throughout this opinion, we refer to (1) the Appeal Brief filed February
27, 2009 (revised April 29, 2009); (2) the Examiner’s Answer mailed
August 7, 2009; and (3) the Reply Brief filed September 1, 2009.
Appeal 2010-001582
Application 10/600,084

4
ISSUE
Does Appellant’s original Specification describe a “network”
sufficient to show Appellant possessed the invention recited in claim 39
when the application was filed?

FINDINGS OF FACT (FF)
1. The Specification describes a backbone 306 connected to the
Internet 318. The backbone can be any standard network, including a local
area network (LAN), wide area network (WAN), Ethernet, internet, intranet,
or a combination of networks. Incoming and outgoing data is transported
over the backbone. Spec. 14:22-15:3. A phone controller 302 is connected
to the backbone. Fig. 3. Incoming VoIP packets arrive at the phone
controller. Spec. 15:3-8.
2. The phone controller 302 routes VoIP packets over either a wired
LAN 308 to a base station 200, or over the backbone to an access point 304.
Spec. 15:9-11. The phone controller is connected to the base station via the
wired LAN, and to the backbone, which in turn is connected to the access
point. Fig. 3.

PRINCIPLES OF LAW
To satisfy the written description requirement, the disclosure must
reasonably convey to ordinarily skilled artisans that Appellant possessed the
claimed invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).

Appeal 2010-001582
Application 10/600,084

5
ANALYSIS
The written description rejection in this appeal turns on the meaning
of the term “network.” A network is “[a] series of points connected by
communication channels,” or “[a] group of computers connected together to
facilitate the transfer of communication.”3 Thus, a network, in the broadest
reasonable sense, does not require any particular hardware or software, or
that the hardware or software be the same across the whole network.
Further, a network does not require a single physical medium to which all
the networked computers are connected. We find the Examiner’s rejection
problematic because it relies on too narrow a definition of a network in
finding that Appellant’s originally-filed Specification does not describe an
access point and base station coupled to the same network. See Ans. 3-4.
Based on the above construction, Appellant’s originally-filed
Specification describes a network to which an access point and a base station
are coupled. Particularly, the Specification describes a phone controller
communicatively coupled to both an access point and a base station via a
backbone and a wired LAN, respectively, for routing VoIP packets to either
the access point or base station. See FF 1-2. These respective links to the
phone controller collectively comprise a network. Moreover, the backbone
can be any standard network (FF 1), in which case the backbone and wired
LAN could operate according to the same protocol. But even if they
operated according to different physical layer protocols, the access point and
base station are nevertheless both capable of Internet Protocol (IP)
communications because they accept VoIP packets from the phone
controller. See FF 2. The access point and base station are therefore part of

3 DICTIONARY OF COMMUNICATIONS TECHNOLOGY (Wiley 3d ed. 1998).
Appeal 2010-001582
Application 10/600,084

6
the same IP “network.” Accordingly, regardless of whether there are
different physical links between the access point, base station, and telephone
controller, or whether there are intervening components between these
devices, they are nonetheless communicatively coupled to the same network.
We therefore find that Appellant’s originally-filed disclosure
reasonably conveys to ordinarily skilled artisans that Appellant possessed
the claimed “network.” Accordingly, we are persuaded that the Examiner
erred in rejecting claim 39 as failing to comply with the written description
requirement.

THE OBVIOUSNESS REJECTION
Regarding representative claim 1, the Examiner finds that Bridgelall
discloses every recited feature except for (1) selecting the wireless personal
area network transceiver for routing the voice communication through the
wireless personal area network when the wireless personal area network
transceiver detects a wireless personal area network connection, otherwise
selecting the wireless local area network transceiver, and (2) sending a
signal to the telephone controller via the personal area network transceiver to
route the voice communication through the wireless personal area network.
The Examiner cites Awater, Mohammed, and Leedom as teaching these
features in concluding that the claim would have been obvious. Ans. 4-7.
Appellant argues that Bridgelall’s wireless handset does not send
signals to route voice communications; rather, such signals originate within
the network. App. Br. 22. Moreover, Appellant argues Bridgelall does not
send a signal to a telephone controller via a wireless local area network
transceiver to route a voice communication through a wireless local area
Appeal 2010-001582
Application 10/600,084

7
network. App. Br. 22-23. That is, during a call transfer from the wireless
wide area network (WWAN) to the wireless local area network (WLAN) in
Bridgelall, the transfer is said to be initiated through communications with
the current transceiver—the WWAN transceiver—rather than the WLAN
transceiver that takes over the call. App. Br. 24. Appellant argues that
Bridgelall also does not send a signal to a telephone controller via a wireless
personal area network transceiver to route a voice communication through a
wireless personal area network because a call transfer to Bridgelall’s
WWAN is initiated through the WLAN, not through the WWAN
transceiver. Id. Appellant argues that the other cited prior art fails to cure
these deficiencies. Among other things, Appellant contends that
Mohammed fails to remedy Bridgelall with respect to these call transfer
features because (1) Mohammed includes a waiting period while making a
handoff from one network to the next, and (2) the network infrastructure,
rather than the wireless handset, performs the handoff. App. Br. 24-26.
The issues before us, then, are as follows:

ISSUES
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Bridgelall, Awater, Mohammed, and Leedom collectively would have
taught or suggested:
(1) a selecting device of a wireless handset that sends a signal to a
telephone controller via a wireless local area network transceiver to route a
voice communication through a wireless local area network responsive to a
wireless personal area network transceiver being unable to detect a wireless
personal area network connection?
Appeal 2010-001582
Application 10/600,084

8
(2) the selecting device sends a signal to the telephone controller via
the wireless personal area network transceiver to route a voice
communication through the wireless personal area network responsive to
reestablishing a connection with the wireless personal area network?
(3) Is the Examiner’s reason to combine the teachings of the cited
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

ADDITIONAL FINDINGS OF FACT
3. Bridgelall discloses a seamless vertical roaming (SVR) process
wherein the decision to roam from a WWAN to a WLAN is based on the
availability of a WLAN and the user’s preference. Bridgelall ¶ 0065. A
dual mode radio 1201 comprises a WWAN section “A” and a WLAN
section “B” and is initially connected to a party “C” through a WWAN
network 1205. The WWAN network is connected to a WLAN network
1215, which includes a gateway and access point. Bridgelall ¶ 0068; Fig.
12. The SVR process begins when an explicit call transfer (ECT) command
is issued to the WWAN network to initiate a transfer to the WLAN gateway.
Bridgelall ¶ 0069; Fig 12. The WWAN checks whether the WLAN gateway
connected to radio B is answering the call. Radio B verifies the call is from
radio A and signals to the WLAN gateway to accept the call. The WWAN
in turn receives confirmation that the WLAN gateway accepted the call.
Radio A disconnects, and the call continues between radio B and party C.
Bridgelall ¶¶ 0070-74.
4. Bridgelall also discloses an SVR process for roaming from a
WLAN to a WWAN, based on the availability of a WWAN. Bridgelall ¶
Appeal 2010-001582
Application 10/600,084

9
0075; Fig. 13. A dual mode radio 1301 requests that the WLAN gateway
1315 send an ECT command to WWAN network 1305. Bridgelall ¶ 0078;
Fig. 13. The WWAN network checks whether radio A is answering the call,
and if so, receives confirmation that radio A accepted the call. The WLAN
gateway then transfers the call and drops the connection. The call continues
between radio A and party C. Bridgelall ¶¶ 0079-83.
5. Mohammed discloses a seamless transition for a subscriber device
12 from a licensed wireless network, such as a cellular network 14, to an
unlicensed wireless network that includes base station 18. Mohammed ¶
0055; Fig. 1. When the subscriber device determines it is within range of
base station 18, it registers with the base station. Mohammed ¶ 0057. The
base station transmits a subscriber device present signal to a system server
24, which notes that the subscriber device is within the service area of the
base station. Mohammed ¶ 0058. The system server contacts the cellular
network to initiate a call to the base station and the base station begins
transmitting to the subscriber device over the unlicensed wireless network.
Mohammed ¶ 0059. The base station sends a handoff command to the
subscriber device which causes the device to process information with its
unlicensed wireless circuitry, and to turn off its licensed wireless circuitry.
Mohammed ¶¶ 0061-62.

Appeal 2010-001582
Application 10/600,084

10
ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 1 which recites, in pertinent
part,
wherein the selecting device is configured to send a signal to the
telephone controller via the wireless local area network transceiver to
route the voice communication for the wireless handset through the
wireless local area network responsive the wireless personal area
network transceiver being unable to detect a wireless personal area
network connection,

and “wherein the selecting device is configured to send a signal to the
telephone controller via the personal area network transceiver to route the
voice communication for the wireless handset through the wireless personal
area network responsive to reestablishing a connection with the wireless
personal area network.”
We agree with the Examiner that Bridgelall’s wireless handset
initiates a call transfer from either of the WWAN or WLAN to the other
network. See Ans. 14. In the case of roaming from the WWAN to the
WLAN, Bridgelall issues an ECT command to the WWAN network to
initiate a transfer. FF 3. In the opposite case, Bridgelall’s dual mode radio
requests the WLAN to send an ECT command to the WWAN. FF 4.
Moreover, Bridgelall’s Figures 12 and 13 show that the “Dual-Mode Radio
sub-system requests roaming” in both cases. Accordingly, it is Bridgelall’s
wireless handset that initiates call transfers, regardless of whether other
components in the system perform some transfer processes. See Ans. 13-14.
Thus, Bridgelall discloses a wireless handset comprising a selecting device
that sends a signal to route a voice communication, as claimed.
Appeal 2010-001582
Application 10/600,084

11
The Examiner, however, acknowledges that Bridgelall does not
disclose initiating the call transfer to a new network via the transceiver for
the old network. Ans. 15. But we agree with the Examiner that Mohammed
teaches this feature. Mohammed’s seamless transition process begins with
the subscriber device registering with the base station of a new network. See
FF 5. The base station of this new network then commences routing the call
from the old network through signalling with a system server. See id.
Appellant’s argument that Mohammed’s handoff includes a waiting
period (App. Br. 24) is not persuasive, as claim 1 does not preclude any time
delay or overlap between service on the old network and new network.
Further, Appellant’s argument that Mohammed’s subscriber device does not
perform the handoff (App. Br. 25) is also without merit. First, claim 1 does
not require the wireless handset perform an entire handoff process to a new
network, rather it only requires the handset to initiate a transfer by sending
“a signal . . . to route the voice communication.” Second, although
Mohammed’s subscriber device sends the claimed signal when it registers
with the base station (see Ans. 16), the Examiner nonetheless relies on
Bridgelall for this signalling feature, as discussed above. Therefore, in view
of Mohammed, it would have been obvious to an ordinarily skilled artisan to
transfer a call from the WWAN to the WLAN in Bridgelall by signalling via
the WLAN transceiver, instead of the WWAN transceiver, and vice versa.
See Ans. 6, 16.
Further, Appellant’s arguments that the cited prior art references are
not combinable in the manner suggested by the Examiner (App. Br. 27-29)
merely restate the claimed features allegedly missing from the collective
teachings of Bridgelall, Awater, Mohammed, and Leedom, and are not
Appeal 2010-001582
Application 10/600,084

12
persuasive for the reasons discussed above. We are also not persuaded by
Appellant’s arguments that the Examiner failed to articulate a reason to
combine the references or find that the resulting combination would have
yielded predictable results. See App. Br. 29-33.
First, the Examiner clearly articulates a reason for combining the
references:
It would have been obvious to one of ordinary skill in the art to
recognize the handoff of Mohammed as an alternative to the apparatus
of Bridgelall and Awater et al. for shifting the burden in processing
call re-route from the first/old wireless network to the second/new
wireless network in case of severed connection.

See Ans. 6; see also Ans. 16. In other words, in view of Mohammed, it
would have been obvious to initiate re-routing a call through Bridgelall’s
WLAN network with the WLAN radio A, rather than with the WWAN radio
B, and vice versa. The advantage to Mohammed’s teaching would have
been obvious to an ordinarily skilled artisan given Bridgelall’s re-routing a
call to a new network when there are “packet error rates, frequent rates scale
back or a consistent signal strength degradation” on the old network. See
Bridgelall, ¶ 0075. That is, initiating the call transfer through the new
network, as Mohammed teaches, would be more successful in avoiding a
dropped call if initiated by the new network transceiver instead of by the old
network transceiver through the degrading connection to the old network.
Second, the Examiner’s combination yields predictable results. See
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.”). Bridgelall’s existing
transceivers, WLAN radio A and WWAN radio B, are capable of sending
Appeal 2010-001582
Application 10/600,084

13
signals to initiate call transfers, as previously discussed. See FF 3-4. The
Examiner’s proposed modification merely requires Bridgelall’s transceivers
to switch the criteria for when each transceiver initiates a call transfer. For
example, the WLAN radio A transceiver would issue an ECT command to
request roaming when a connection to a WLAN network is established,
rather than when the WLAN network connection is lost. One would have
found such result predictable because it could be accomplished through
programming changes within the ability of an ordinarily skilled artisan.
Appellant provides no evidence to the contrary, but rather argues that the
resulting system would not meet the limitations of claim 1. App. Br. 31-32.
However, the cited references collectively disclose the argued limitations of
claim 1 for the reasons discussed above.
We are therefore not persuaded that the Examiner erred in rejecting
claim 1, and also claims 2-9 not separately argued with particularity.
Despite nominally arguing claims 14-19 and 39-43 separately, Appellant
relies on similar arguments to those regarding claim 1. App. Br. 33-36. We
are not persuaded by these arguments for the reasons previously discussed.

CONCLUSION
The Examiner erred in rejecting claim 39 under § 112, but did not err
in rejecting claims 1-9, 14-19, and 39-43 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-9, 14-19, and 39-43 is
affirmed.
Appeal 2010-001582
Application 10/600,084

14
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).

AFFIRMED

rwk