Ex Parte Bumiller et al

Patent Trial and Appeal Board

Mar 25, 2013

11246759 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte GEORGE BALDWIN BUMILLER and ADRIAN
BUCKLEY
____________________

Appeal 2010-007481
Application 11/246,759
Technology Center 2600
____________________

Before: JEAN R. HOMERE, TREVOR M. JEFFERSON, and JOHN G.
NEW, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007481
Application 11/246,759
2
STATEMENT OF CASE
Appellants1 appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-2, 4, 6-11, 13, 15-30 and 32. App. Br. 2.2 Claims 3, 5, 12, 14 and
31 are cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Introduction
The claims are directed to a system and method of switchably
configuring a handset between cellular and private wireless network modes.
Spec. Abstract. Claims 1 and 13, reproduced below with added indentation
and italics, is illustrative of the claimed subject matter:
1. A switchable configuration system for switchably
configuring a handset between a private wireless network mode
and a cellular mode, the switchable configuration system
comprising:
a cellular transceiver operating in the cellular mode;
a private wireless network transceiver operating in the
private wireless network mode; and
a configuration module determining in which mode to
configure the handset, the configuration module including:
a configuration logic unit for selecting modes of
operation of the handset;
a data collection unit for collecting available
cellular and private wireless network bands; and
a repository for storing data collected by the data
collection unit.

13. A method of switchably configuring a handset between a
private wireless network mode and a cellular mode, the method
comprising the steps of:

1 The Real Party in Interest is Research In Motion Limited.
2 Throughout the Decision, we refer to the Appellants’ Appeal Brief (“App.
Br.,” filed Dec. 4, 2009), and Reply Brief (“Reply Br.,” filed Apr. 16, 2010),
and the Examiner’s Answer (“Ans.,” mailed Feb. 18, 2010).
Appeal 2010-007481
Application 11/246,759
3
determining a mode of operation for the handset, the
mode selected from the cellular mode and the private wireless
network mode;
in the handset, collecting available cellular and private
wireless network bands;
storing collected available cellular and private wireless
network bands in a repository in the handset; and
operating the handset in the determined mode of
operation comprising:
in the cellular mode controlling a cellular
transceiver and a private wireless network transceiver
with a cellular control portion; and
in the private wireless network mode controlling
the private wireless network transceiver with a private
wireless network control portion.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mohammed
Ertel
Asokan
Jagadeesan
Sindhwani
Rune
US 2003/0176186 A1
US 2004/0116115 A1
US 2004/0166874 A1
US 2005/0148362 A1
US 2005/0190747 A1
US 2006/0077986 A1
Sep. 18, 2003
Jun. 17, 2004
Aug. 26, 2004
Jul. 7, 2005
Sep. 1, 2005
Apr. 13, 2006

Rejections
The Examiner made the following rejections:
Claims 13 and 32 stand rejected under 35 U.S.C § 102(b) as being
anticipated by Mohammed. Ans. 4-5.
Claims 1, 2, 4, 6-8, and 11 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over Mohammed. Ans. 6-8.
Appeal 2010-007481
Application 11/246,759
4
Claims 9 and 10 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Mohammed and Jagadeesan. Ans. 8-10.
Claims 15-20 and 23-28 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over Sindhwani and Rune. Ans. 10-13.
Claim 21 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Sindhwani, Rune and Asokan. Ans. 13.
Claim 22 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Sindhwani, Rune and Ertel. Ans. 14.
Claims 29 and 30 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Sindhwani, Rune and Jagadeesan. Ans. 14-15.

ANALYSIS
Independent Claims 13 and 32 under 35 U.S.C §102(b)
Issue: Did the Examiner err in finding that Mohammad disclosed the
“storing collected available cellular and private wireless network bands in a
repository in the handset” limitation of claim 13?
Appellants contend that Mohammed fails to disclose “storing
collected available cellular and private wireless network bands in a
repository in the handset” as recited in claim 13. App. Br. 6. Appellants
assert that Mohammed merely discloses “executable programs” residing in a
memory module. App. Br. 8 (citing Mohammad ¶ [0031], [0034], and
[0035]).
Appellants also argue that Mohammed fails to disclose “in the cellular
mode controlling a cellular transceiver and a private wireless network
transceiver with a cellular control portion” as recited in claim 13. App. Br.
9, 10. Appellants argue that “nowhere in paragraphs [0030]-[0033] or
[0055] in Mohammed is the claimed limitation ‘in the cellular mode
Appeal 2010-007481
Application 11/246,759
5
controlling a cellular transceiver and a private wireless network transceiver
with a cellular control portion’ taught or suggested.” App. Br. 10.
Having reviewed Appellants’ arguments that the Examiner erred, we
agree with the Examiner that that Mohammed discloses that memory 106
stores a handoff module to coordinate the handoff operation. Ans. 16 (citing
Mohammad ¶ [0036]). Thus, we also agree with the Examiner that “one of
ordinary skill in the art can see that the information of both signals are stored
in the memory in order for the mobile phone processing stored information
and determining the handoff.” Ans. 16-17. We also find that Mohammad
“discloses that the mobile phone processes the handoff operation from
cellular mode to private wireless network mode” Ans. 17(citing Mohammad
¶ [0055]). Indeed, Mohammad discloses that the control circuit for all
operations of the mobile phone, includes “determining and selecting modes
of operation of the cellular--enterprise handset (see [Mohammad ¶][0030]-
[0030]).” Ans. 17. Thus, Mohammad discloses that the mobile phone
operates between cellular and private wireless networks.
Finally, we are not persuaded by Appellants’ argument that
Mohammed does not disclose the limitations of claim 1 as “arranged in the
claim.” App. Br. 10 (citing Net Moneyln v. Verisign, 545 F.3d 1359 (Fed.
Cir. 2008)). Although Appellants have not identified which disclosures of
Mohammad are not arranged as in claim 13, we find that Mohammad
discloses the controller and memory in the mobile phone or handset in the
configuration found in claim 13.
Based on the foregoing, we find that the Examiner did not err in
finding that Mohammad disclosed the “storing collected available cellular
and private wireless network bands in a repository in the handset” limitation
of claim 13. Accordingly, we sustain the Examiner’s rejection of claim 13
Appeal 2010-007481
Application 11/246,759
6
under 35 U.S.C §102(b). Because Appellants makes no separate arguments
for independent claim 32 (App. Br. 10), we also sustain the Examiner’s
rejection of claim 32 under 35 U.S.C §102(b).

Independent Claim 1 under 35 U.S.C § 103(a)
Issue: Did the Examiner err in finding that Mohammad teaches or
suggests “a repository for storing data” and “a data collection unit”
limitations of claim 1?
Appellants contend that Mohammed fails to teach or suggest “a
repository for storing data collected by the data collection unit” as part of the
handset as recited in claim 1, because Mohammad merely teaches or
suggests “executable programs” residing in a memory module. App, Br. 11,
12. Appellants also contend that Mohammed fails to teach or suggest “a
data collection unit for collecting available cellular and private wireless
network bands” as recited in claim 1. App. Br. 12-13 (citing Spec. 6:32-33).
Furthermore, Appellants argue that Mohammad teaches away from such a
limitation because the data for communicating with a licensed network is
stored remotely. App. Br. 12.
We disagree with Appellants’ contentions. As discussed above, we
agree with the Examiner that Mohammed discloses that memory 106 stores a
handoff module to coordinate the handoff operation. Ans. 16, 18 (citing
Mohammad ¶ [0036]). Mohammad teaches or suggests that circuitry
processes signals in the private network and cellular bands. Ans. 18 (citing
Mohammad ¶¶ [0031]-[0033]). However, the Examiner is not merely
relying on the processing circuits or programs but also on the memory that
stores information related to the handoffs among and between the discussed
cellular and private wireless networks. See Ans. 18-19. Thus, we agree with
Appeal 2010-007481
Application 11/246,759
7
the Examiner that “interpreted numerals 114 and 118 in combination with
memory 106 of figure 2 in Mohammed as the data collection unit.” Ans. 19.
We are not persuaded by Appellants’ contention that Mohammad
teaches away from the claimed limitation of “a repository for storing data
collected by the data collection unit” as part of the handset. App. Br. 12;
Reply 3. “A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” Ricoh Co., Ltd. v. Quanta
Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted). A
reference does not teach away if it merely expresses a general preference for
an alternative invention from amongst options available to the ordinarily
skilled artisan, and the reference does not discredit or discourage
investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). We do not find that references in Mohammad to remotely
storing some programs for operations or handoffs (App. Br. 12) either
discredits or discourages the teachings regarding memory used in handoffs
and a processing circuitry for various networks identified by the Examiner.
See Ans. 19.
Based on the foregoing, we find that the Examiner did not err in
determining that Mohammad teaches or suggests “a repository for storing
data” and “a data collection unit” limitations as recited in claim 1. Because
Appellants rely on the arguments presented for independent claim 1 for
dependent claims 2, 4, 6-8, and 11 (App. Br. 14), we sustain the Examiner’s
rejection of claims 1, 2, 4, 6-8, and 11 under 35 U.S.C § 103(a).

Appeal 2010-007481
Application 11/246,759
8
Dependent Claims 9, 10, 29, and 30 under 35 U.S.C § 103(a)
Issue: Did the Examiner err in finding that Jagadeesan teaches or
suggests the call hold and call conferencing limitations of dependent claims
9, 10, 29 and 30?
With respect to claims 9, 10, 29 and 30, Appellants contend that
Jagadeesan “uses a signaling pathway between an Internet protocol private
branch exchange and the mobile station via the cellular data network,”
which differs from the claimed method where the configuration is
determined in the handset. App. Br. 14-15.
We are not persuaded by Appellants’ argument regarding
Jagadeesan’s use of internet protocol signaling pathways. The Examiner
correctly found that Jagadeesan teaches or suggests the call hold and
conference limitations of claims 9, 10, 29 and 30. See Jagadeesan ¶¶ [0027]
to [0030] and [0059]; Ans. 8-9 (claims 9 and 10); 14-15 (claims 29 and 30).
Jagadeesan teaches or suggests that the handset or mobile phone invokes the
specified feature. See Jagadeesan ¶¶ [0027] to [0030] and [0059]; see also
Ans. 20.
Appellants also contend that there is no reason for a person of
ordinary skill in the art to incorporate Jagadeesan’s implementation of a
signal pathway using Internet protocol signaling into Mohammed. App. Br.
15. Although Appellants’ arguments include claims 29 and 30, we note that
those claims are not subject to rejection over Mohammad and Jagadeesan,
but instead were rejected under Sindhwani, Rune and Jagadeesan. Compare
App. Br. 14 with Ans. 14-15.
With respect to claims 9 and 10, however, we disagree with
Appellants’ arguments regarding the combination of Jagadeesan and
Mohammad. The Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S.
Appeal 2010-007481
Application 11/246,759
9
398 (2007), rejected the rigid requirement of a teaching or suggestion or
motivation to combine known elements in order to show obviousness. KSR
Int’l Co., 550 U.S. at 415. Instead, “there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co., 550 U.S. at 418. Furthermore, “it is not
necessary that the inventions of the references be physically combinable to
render obvious the invention under review.” In re Sneed, 710 F.2d 1544,
1550 (Fed. Cir. 1983). The relevant inquiry is whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. See In re Keller, 642 F.2d
413, 425 (CCPA 1981). In the instant case, we find that the Examiner
provided a rational basis for the combination of Jagadeesan and Mohammad
with respect to claims 9 and 10, finding that the “motivations [are] found
either in the references themselves (see Jagadeesan paragraphs [0006] and
[0003]) or in the knowledge generally available to one of ordinary skill in
the art.” Ans. 20-21.
Based on the foregoing, we find that the Examiner did not err in
finding that Jagadeesan teaches or suggests the limitations of dependent
claims 9, 10, 29 and 30. We sustain the Examiner’s rejection of dependent
claims 9, 10, 29 and 30 under 35 U.S.C § 103(a).

Claims 15-20 and 23-28 under 35 U.S.C § 103(a)
Issue: Did the Examiner err in finding that the combination of Rune
and Sindhwani teaches or suggests “determining a public land mobile
network is accessible through the second private wireless network” as
recited in claim 15?
Appeal 2010-007481
Application 11/246,759
10
Appellants argue that Rune does not teach or suggest “determining a
public land mobile network is accessible through the second private wireless
network” as recited in claim 15. App. Br. 16. Appellants contend that Rune,
cited by the Examiner for this limitation, routes “authentication,
authorization, or accounting and similar operations” (AAA) messages to the
AAA server either directly or through an intermediary network connected to
the WLAN. Id. (citing Rune, ¶[0057]). According to Appellants, routing
AAA messages is not analogous to claimed method of switchably
configuring a handset. App. Br. 16.
We disagree with Appellants’ arguments that the Examiner erred.
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner is
not relying on Rune alone for claiming a method of switchably configuring a
handset as recited in claim 15. Instead, it is the combination of Sindhwani
and Rune, wherein “Sindhwani discloses a method of switchably
configuring a handset (fig. 9) between a private wireless network mode and
a cellular mode [0038].” Ans. 10, 21. The Examiner relies on Rune to teach
“determining a public land mobile network is accessible through the private
wireless network [0057].” Id. We also find that the Examiner has provided
a reasonable rationale (Ans. 21-22) for the combination of Sindhwani and
Rune. See KSR Int’l Co., 550 U.S. at 418.
Accordingly, we find that the Examiner did not err in finding that
Sindhwani and Rune teach or suggest “determining a public land mobile
network is accessible through the second private wireless network” as
recited in claim 15. Appellants argue the claims 16-20 and 23-28 together
based on the arguments presented for claim 15. App. Br. 15-16.
Appeal 2010-007481
Application 11/246,759
11
Accordingly, we sustain the Examiner’s rejection of claims 15-20 and 23-28
under 35 U.S.C § 103(a).

Dependent Claims 21, 22, 29 and 30
Appellants make no separate arguments for dependent claims 21, 22,
29 and 30. App. Br. 17-18. These claims stand or fall with their respective
independent claims. Based on the foregoing, we sustain the Examiner’s
rejection of claims 21, 22, 29 and 30 under 35 U.S.C § 103(a).

DECISION
For the above reasons, the Examiner’s rejection of claims 1-2, 4, 6-11,
13, 15-30 and 32 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) (2011).

AFFIRMED
tj