Ex Parte Naghian et al

Board of Patent Appeals and Interferences

Jun 8, 2009

10181095 (B.P.A.I. Jun. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte SIAMAK NAGHIAN and JAN KALL
_____________

Appeal 2009-000967
Application 10/181,095
Technology Center 2600
______________

Decided:1 June 9, 2009
_______________

Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and KARL D
EASTHOM, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 6(b) of the rejection of
claims 1 through 48.
We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-000967
Application 10/181,095

INVENTION
The invention is directed toward a method for use in a
telecommunications system. The method involves providing the location of
a mobile unit based upon the service area identifier of the service area with
which the mobile unit is communicating. See pages 5 and 6 of Appellants’
Specification. Claims 1 and 40 are reproduced below:
1. A method comprising:
requesting a service area identifier associated with a mobile
station of a telecommunications system comprising a plurality of
service areas, each of the service areas being served by a respective
base station or group of base stations, and being identified by a
respective service area identifier;
selecting, when said mobile station is simultaneously associated
with two or more of the service areas, one service area identifier from
a plurality of identifiers identifying said two or more of the service
areas in accordance with a predefined rule for the selection of the
service area identifier; and
providing location information based on the selected service
area identifier.

40. An access network controller for controlling a plurality of
service areas of a telecommunications system, each service area being
served by a respective base station or group of base station, and being
provided with an associated respective service area identifier, wherein
the access network controller is configured to select, when a mobile
station is simultaneously associated with two or more of the service
areas, one service area identifier from a plurality of identifiers
identifying said two or more of the service areas in accordance with at
least one predefined rule for the selection of the service area identifier
and to provide location information relating to the location of the
mobile station based on the selected service area identifier in response
to a request from a location service node.

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REFERENCES

Oyama US 5,732,125 Mar. 24, 1998
Hwang US 5,781,857 Jul. 14, 1998
Hill US 5,857,155 Jan. 5, 1999
D’Avello US 5,963,848 Oct. 5, 1999
Lim US 6,259,923 B1 Jul. 10, 2001
Zadeh US 6,266,533 B1 Jul. 24, 2001
Linkola US 6,516,190 B1 Feb. 4, 2003

Mohebbi WO 99/59367 Nov. 18, 1999

REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 5, 8 through 11, 15
through 21, 23, 24, 28 through 32, 34, 35, 37, and 40 through 48 under 35
U.S.C. § 103(a) as being unpatentable over Lim in view of Mohebbi. The
Examiner’s rejection is on pages 4 through 10 of the Answer.2
The Examiner has rejected claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Lim in view of Mohebbi and Hwang. The Examiner’s
rejection is on page 10 of the Answer.
The Examiner has rejected claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Lim in view of Mohebbi and Oyama. The Examiner’s
rejection is on page 11 of the Answer.
The Examiner has rejected claims 12 and 39 under 35 U.S.C. § 103(a)
as being unpatentable over Lim in view of Mohebbi and Hill. The
Examiner’s rejection is on pages 12 and 13 of the Answer.

2 Throughout the opinion we refer to the Answer mailed January 8, 2008.
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The Examiner has rejected claims 13 and 14 under 35 U.S.C. § 103(a)
as being unpatentable over Lim in view of Mohebbi and Appellants’
admitted prior art. The Examiner’s rejection is on page 13 of the Answer.
The Examiner has rejected claims 22 and 33 under 35 U.S.C. § 103(a)
as being unpatentable over Lim in view of Mohebbi and D’Avello. The
Examiner’s rejection is on page 14 of the Answer.
The Examiner has rejected claim 25 under 35 U.S.C. § 103(a) as
being unpatentable over Lim in view of Mohebbi and Linkola. The
Examiner’s rejection is on pages 14 and 15 of the Answer.
The Examiner has rejected claims 26, 27, 36, and 38 under 35 U.S.C.
§ 103(a) as being unpatentable over Lim in view of Mohebbi and Zadeh.
The Examiner’s rejection is on pages 15 and 16 of the Answer.

ISSUES
Rejection under 35 U.S.C. § 103(a) based upon Lim in view of
Mohebbi.
Appellants argue on pages 7 through 9 of the Brief3 that the
Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) is in error.
Appellants argue that the Examiner’s rejection is in error because selecting
which base transmission stations (BTS) that are involved in a soft-handoff
operation (as taught by Mohebbi) is not equivalent to selecting a service area
identifier as recited in claim 1. Brief 8 and 9, Reply Brief 2. Further,
Appellants argue that there is no motivation to combine the teachings of

3 Throughout the opinion we refer to the Brief filed October 26, 2007 and
the Reply Brief March 10, 2008.
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Mohebbi and Lim. Appellants assert that since the service area identifier is
used to provide location information it has nothing to do with selection of a
base station for communication. Brief 8, Reply Brief 2, 3.
Thus, Appellants’ contentions directed to the rejection of claims 1
through 5, 8 through 11, 15 through 21, 23, 24, 28 through 32, 34, 35, 37,
and 40 through 48 under 35 U.S.C. § 103(a) present us with two issues:
1) have Appellants shown that the Examiner erred in equating the
selection of base transmission stations (BTS) in Mohebbi with the selection
of identifiers to provide location information as recited in claim 444?
2) have Appellants shown that the Examiner erred in finding that one
skilled in the art would combine the teachings of the references?

Rejections of claims 6, 7, 12 through 14, 22, 25 through 27, 33, 36,
38, and 39 under 35 U.S.C. § 103(a).
Appellants’ arguments, on pages 10 and 11 of the Brief, directed to
the Examiner’s rejections of each of these claims state that each claim
“ultimately depends from an independent claim, and therefore is not
disclosed or suggested by the cited references at least in view of its
dependency” (Brief 11) where all of the independent claims are rejected by
the combination of Lim and Mohebbi. Thus, Appellants’ arguments directed
to the Examiner’s rejections of claims 6, 7, 12 through 14, 22, 25 through

4 Appellants’ statements directed to claims 2 through 5, 8 through 11, 15
through 21, 23, 24, 28 through 32, 34, 35, 37 and 40 through 48 are not
separate arguments under 37 C.F.R. 41.37 § (c)(1)(vii). As such Appellants
have grouped claims 1 through 5, 8 through 11, 15 through 21, 23, 24, 28
through 32, 34, 35, 37 and 40 through 48 together and we select claim 44 as
representative.
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27, 33, 36, 38, and 39 under 35 U.S.C. § 103(a) present us with the same
issues as discussed above with respect to claims 1 through 5, 8 through 11,
15 through 21, 23, 24, 28 through 32, 34, 35, 37, and 40 through 48.
PRINCIPLES OF LAW
In analyzing the scope of the claim, Office personnel must rely on
Appellants’ disclosure to properly determine the meaning of the terms used
in the claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 980
(Fed. Cir. 1995). “[I]nterpreting what is meant by a word in a claim is not to
be confused with adding an extraneous limitation appearing in the
specification, which is improper.” In re Cruciferous Sprout Litig., 301 F.3d
1343, 1348 (Fed. Cir. 2002) (citation omitted) (internal quotation marks
omitted).
On the issue of obviousness, the Supreme Court has recently stated
that “the obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation.” KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Further, the Court stated
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416. “One of the ways in which a patent’s subject matter
can be proved obvious is by noting that there existed at the time of the
invention a known problem for which there was an obvious solution
encompassed by the patent’s claims.” Id. at 419-420.

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FINDINGS OF FACT
1. Appellants’ Specification states:
The following specification uses the term ‘service area identifier’
to refer to all such identifiers that relate to an area that is served by
an element of a telecommunications system, such as by a cell or a
group of cells or a base station or a group of base stations.

Specification 5:4-8
LIM
2. Lim teaches a system for providing location information of a mobile
device without using an additional device. Abstract.
3. In Lim’ system when a cell location request is generated the mobile
device provides a message identifying the base station with which the
mobile device is in communication. This identification includes the
base transceiver system (BTS) number. Col. 4, ll. 7-25 and Table 1.
MOHEBBI
4. Mohebbi teaches a system where during hand off, a mobile station
may be receiving signals from more than one base transceiver station
(BTS). The BTSs are ranked based upon the received signal strength,
and the identity of the selected BTS is transmitted to all BTSs. Thus,
Mohebbi teaches that the mobile station is in communication with
more than one BTS and selects one of the BTS. Page 9, ll. 1-17, p.
12, ll. 5-20, Figure 5, and Figure 7.

ANALYSIS
First Issue:
Appellants’ arguments have not persuaded us that the Examiner erred
in equating the selection of base transmission stations (BTS) in Mohebbi
with the selection of identifiers to provide location information as recited in
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claim 44. Claim 44 recites “selecting, when a user equipment is
simultaneously associated with two or more of said cells … a cell identifier
from a plurality of identifiers identifying said two or more cells in
accordance with a predetermined rule for the selection of the cell identifier;
and providing location information based on the selected cell identifier.”
Thus, claim 44 recites providing information based upon an identifier of one
of the cells the user equipment is in communication with. Claim 44 does not
recite use of “service area identifiers” as argued with respect to claim 1
which Appellants grouped with claim 44. Further, given the definition of
“service area identifier” provided in Appellants’ Specification, it is clear that
any identifier associated with a base station or base station transmitter can be
considered a “service area identifier.” Fact 1. Accordingly, we consider that
claim 44, broadly construed, recites using any identifier of a base station to
provide location information.
The Examiner has found that Lim teaches providing a location based
upon the base station that the mobile device is in communication with.
Answer 4. We find ample evidence to support this finding. Further, we note
that Lim identifies that this includes the base transceiver system (BTS)
number. Facts 2 and 3. The Examiner has found that Mohebbi teaches a
system where if there are more than one BTS in communication with a
mobile device an algorithm is used to determine which of the BTS is to be
used for communication. Answer 3 and 4. We find ample evidence to
support this finding. Fact 4. As discussed infra with respect to the second
issue, we do not find error in the Examiner’s combination of the teachings of
these references. As such, Appellants’ arguments have not persuaded us that
the Examiner erred in equating the selection of base transmission stations
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(BTS) in Mohebbi with the selection of identifiers to provide location
information as recited in claim 40.
Second issue
Appellants’ arguments have not persuaded us that the Examiner erred
in finding that one skilled in the art would combine the teachings of the
references. The Examiner has concluded that one would be motivated to
combine the references based upon the need to determine the location of the
mobile station when the mobile station is in a soft handoff. Answer 18. We
find ample evidence to support this conclusion. Lim teaches a system that
determines the location of a mobile station based upon the identity of the
base station transmitter with which it is communicating. Fact 3. Lim does
not address how the system determines which base station is to communicate
with the mobile unit. Mohebbi teaches that in certain scenarios the mobile
unit may be in communication with several base station transmitters and that
one should be selected. Fact 4. Thus, using Mohebbi’s system of selecting
one base station transmitter is merely using a known method to
communicate with a mobile unit (selecting one base station transmitter to
communicate with) and providing the information for a known method of
locating a mobile transmitter, i.e. the combination of the teachings is nothing
more than combining elements of known systems to perform their
established and predictable functions. Accordingly, Appellants’ arguments
have not persuaded us of error in the Examiner’s conclusion that one skilled
in the art would combine the teachings of the references as claimed. Thus,
we sustain the Examiner’s rejection of claims 1 through 5, 8 through 11, 15
through 21, 23, 24, 28 through 32, 34, 35, 37, and 40 through 48 under 35
U.S.C. § 103(a) as being unpatentable over Lim in view of Mohebbi.
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Rejections of claims 6, 7, 12 through 14, 22, 25 through 27, 33, 36,
38, and 39 under 35 U.S.C. § 103(a).
Appellants’ arguments directed to the rejections of claims 6, 7, 12
through 14, 22, , 25 through 27, 33, 36, 38, and 39 under 35 U.S.C. § 103(a)
present us with the same issues discussed supra with respect to claims 1
through 5, 8 through 11, 15 through 21, 23, 24, 28 through 32, 34, 35, 37,
and 40 through 48. Accordingly, we sustain the Examiner’s rejections of
claims 6, 7, 12 through 14, 22, 25 through 27, 33, 36, 38, and 39 under 35
U.S.C. § 103(a) for the reasons discussed supra.

CONCLUSION
Appellants have not persuaded us of error in the Examiner’s rejections
of claims 1 through 48 under 35 U.S.C. § 103(a)

ORDER
The decision of the Examiner to reject claims 1 through 48 is
affirmed.

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Appeal 2009-000967
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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

ELD

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