Ex Parte Rai et al

Board of Patent Appeals and Interferences

Jan 9, 2012

11091560 (B.P.A.I. Jan. 9, 2012)

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.
11/091,560 03/28/2005 Vikram Rai 67,108-105; Rai 5-4 5787
46368 7590 01/09/2012
CARLSON, GASKEY & OLDS, P.C./Alcatel-Lucent
400 W MAPLE RD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
CHO, UN C
ART UNIT PAPER NUMBER
2617
MAIL DATE DELIVERY MODE
01/09/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte VIKRAM RAI and RUI A. SILVA
____________________

Appeal 2010-001167
Application 11/091,560
Technology Center 2600
____________________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-11, 14-18, and 23-24 (App. Br. 2). Appellants are not appealing
the Examiner’s rejections of claims 21 and 22, but note that these claims are
pending (App. Br. 2). The Board has no jurisdiction as to non-appealed
claims, and we consider claims 21 and 22 cancelled and not before us for
review. The Examiner has the authority to cancel the non-appealed claims
21 and 22. See Ex parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008)
(precedential). Claims 12, 13, 19, and 20 have been canceled (App. Br. 2.).
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

A. INVENTION
Appellants’ invention is directed to a wireless communication system
having a plurality of intermediate cells each recognized as a single user that
communications with a wireless network through a base station; wherein,
each intermediate cell may directly provide communication for end-users
within its local area network to communicate with end-users of another
intermediate cell (without communication through the base station)
(Abstract; Spec. ¶¶ [0026]-[0028]).

B. ILLUSTRATIVE CLAIMS
Claims 1 and 23 are exemplary:
1. A method of communicating, comprising:

communicating between a base station and an
intermediate cell on behalf of a plurality of end users that
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communicate directly with the intermediate cell, the base
station having a backhaul connection with a wireless
communication network, the intermediate cell using over air
resources with the base station as would a single one of the end
users such that the intermediate cell is treated as an individual
user.

23. A method of communicating comprising:

communicating between a base station and an
intermediate cell on behalf of a plurality of end users that
communicate directly with the intermediate cell; and

selectively communicating directly between a first
intermediate cell that communicates directly with a plurality of
end users and a second intermediate cell that communicates
directly with a second plurality of end users, the
communicating directly between the first and second
intermediate cells being on behalf of a first end user in direct
communication with the first intermediate cell and a second end
user in direct communication with the second intermediate cell
to communicate at least one signal between the first and second
end users, the communicating directly between the first and
second intermediate cells occurring without routing the at least
one signal through the base station or a wireless communication
network connected with the base station.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Knight Pub. No.: US 2002/0025779 Al Feb. 28, 2002
Sugaya US 6,490,459 Bl Dec. 3, 2002
Miyazaki Pub. No.: US 2003/0073403 Al Apr. 17, 2003
Tamaki Pub. No.: US 2003/0124976 Al Jul. 3, 2003
Lovinggood US 6,697,603 Bl Feb. 24, 2004
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Moon US 7,092,434 B2 Aug. 15, 2006
(Filed Jun. 25, 2002)

Claims 1, 2, 7, 8, and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Knight in view of Moon.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Knight in view of Moon and Tamaki.
Claims 4-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Knight in view of Moon and Lovinggood.
Claims 9-11 and 15-18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Knight in view of Moon and Sugaya.
Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Knight in view of Miyazaki.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Knight in view of Miyazaki and Sugaya.

II. ISSUES
The dispositive issues before us are whether the Examiner has erred in
determining that:
1. the combination of Knight and Moon teaches or would have
suggested “communicating between a base station and an intermediate cell
on behalf of a plurality of end users that communicate directly with the
intermediate cell, the base station having a backhaul connection with a
wireless communication network, the intermediate cell using over air
resources with the base station as would a single one of the end users such
that the intermediate cell is treated as an individual user” (claim 1,
emphasis added); and
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2. the combination of Knight and Miyazaki teaches or would have
suggested “the communicating directly between the first and second
intermediate cells occurring without routing the at least one signal through
the base station or a wireless communication network connected with the
base station” (claim 23, emphasis added).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Knight
1. Knight is directed to a wireless communications using a remote,
self-contained cell site 117 that transceives signals from wireless personal
communication devices 120,121 and communicates these signals with a
cellular system 101 connected to a centrally located cellular switch, such as
a Mobile Telephone Switching Office (MTSO), which connects to a
terrestrial telephone network such as the Public Switch Telephone Network
(PSTN) (Fig. 1; Abstract; ¶ [0025]).
2. The self-contained cell site has the appearance of a
conventional operational cell site base station to the communications
network; wherein, the remote, self-contained cell site provides a rapid,
inexpensive, and efficient method and system to transceive communication
signals from wireless personal communication devices and to connect these
wireless personal communication devices with the communications network
(¶ [0015]).
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Miyazaki
3. Miyazaki is directed to a digital radio relay system having a
base station 55 and a control station 51 including at least a first mobile
station M1; wherein, a relay station 53 couples to the control station 51 by a
radio channel such that a mobile station m1, m2 connected to the relay
station 53 may directly communicate with the first mobile station M1
without communication through the base station 55 (Fig. 6; ¶¶ [0002] and
[0057]).

IV. ANALYSIS
Claims 1, 2, 7, 8, and 14
As to claim 1, Appellants contend that “[t]he Examiner's proposed
combinations cannot be made because they would require such significant
redesign of the primary reference that they would entirely change the
principle of operation of that reference” (App. Br. 5). In particular,
Appellants argue that since Knight discloses that “‘[t]he remote self-
contained cell site has the appearance of a conventional operational cell site
base station to the wireless communications network’” (App. Br. 5), the
Examiner’s proposed change “to modify the Knight reference to make the
remote, self-contained cell site be treated as an individual user instead of
being treated as - or having the appearance of - a conventional operational
cell site base station” “cannot be made when attempting to manufacture a
prima facie case of obviousness” (App. Br. 6).
Although, the Examiner finds that “the test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference; nor is it that the claimed
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invention must be expressly suggested in anyone or all of the references;”
“[r]ather, the test is what the combined teachings of the references would
have suggested to those of ordinary skill in the art” (Ans.13), we agree with
Appellants that “[t]he Examiner's proposed combinations cannot be made
because they would require such significant redesign of the primary
reference that they would entirely change the principle of operation of that
reference” (App. Br. 5).
Knight is directed to a wireless communications using a remote, self-
contained cell site that transceives signals from wireless personal
communication devices and communicates these signals with a cellular
system connected to a centrally located cellular switch, MTSO, which
connects to a terrestrial telephone network such as the PSTN (FF 1). The
self-contained cell site has the appearance of a conventional operational cell
site base station to the communications network such that it transmits and
receives signals on behalf a plurality of wireless personal devices (FF 2).
We, however, do not find a sufficient teaching or suggestion that one
skilled in the art would alter the self-contained cell site such that it has the
appearance of a single user.
Accordingly, we find that Appellants have shown that the Examiner
erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) over Knight
in view of Moon; and claims 2, 7, 8, and 14 depending from claim 1.
Claims 3-6, 9-11, and 15-18
As noted supra, we reversed the rejection of claim 1 from which
claims 3-6, 9-11, and 15-18 respectively depend.
The Examiner has not identified how Tamaki cures the noted
deficiencies of Knight and Moon. As such, we also reverse the rejection of
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claim 3 over Knight in view of Moon and Tamaki. Additionally, the
Examiner has not identified how Lovinggood cures the noted deficiencies of
Knight and Moon. As such, we also reverse the rejection of claims 4-6 over
Knight in view of Moon and Lovinggood. Finally, the Examiner has not
identified how Sugaya cures the noted deficiencies of Knight and Moon. As
such, we also reverse the rejection of claims 9-11 and 15-18 over Knight in
view of Moon and Sugaya.
Claim 23
Appellants contend that “[t]he Knight reference does not contain such
a teaching” as “communicating directly between first and second
intermediate cells occurring without routing a corresponding signal through
a base station or a wireless communication network connected with the base
station” as required by the claim (App. Br. 7), because “the way the self-
contained cell site of the Knight reference operates is based upon routing
signals through a base station” (App. Br. 8). Appellants argue that “the
Knight reference itself teaches away from the result that the Examiner hopes
to achieve by the proposed modification” (App. Br. 8).1

1 Appellants also submit that “for similar reasons discussed above regarding
the rejection of claim 2 [sic; 1],” the “proposed modification would change
the principle of operation of the Knight reference.” (App. Br. 7). Claim 23,
however, does not recite the intermediate cell using over air resources with
the base station “as would a single one of the end users such that the
intermediate cell is treated as an individual user.” To the extent that
Appellants’ remarks could be construed as alleging that communicating
directly between first and second intermediate cells without routing a
corresponding signal through a base station or a communication network
connected with the base station would “change the principle of operation” of
Knight, we find the argument unpersuasive.
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However, the Examiner notes that reliance is upon Miyazaki and not
Knight to teach “a plurality of mobile stations” that “communicate directly
with a control station” and that “the control station is in direct
communication with a relay station” (Ans. 15-16).
As noted supra, Knight discloses wireless communications using a
remote, self-contained cell site that transceives signals from wireless
personal communication devices (FF 1).
In addition, Miyazaki is directed to a digital radio relay system having
a base station and a control station including at least a first mobile station;
wherein, a relay station couples to the control station by a radio channel such
that a mobile station connected to the relay station may directly
communicate with the first mobile station without communication through
the base station (FF 3). We find that direct communication between the
control station and the relay station is “communicating directly between the
first and second intermediate cells occurring without routing the at least one
signal through the base station or a wireless communication network
connected with the base station.” That is, we find that “communicating
directly between the first and second intermediate cells occurring without
routing the at least one signal through the base station or a wireless
communication network connected with the base station” reads on
Miyazaki’s direct communication between the control station and relay
station.
Though Appellants also contend that the Knight reference “teaches
away from the result that the Examiner hopes to achieve by the proposed
modification” (App. Br. 8), our reviewing court has held that “‘[a] reference
may be said to teach away when a person of ordinary skill, upon
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[examining] 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.’” Para-Ordnance Mfg., Inc. v. SGS
Importers Int’l., Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995) (quoting In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).
Appellants have identified no support for a direction divergent from
the claimed invention other than “the way the self-contained cell site of the
Knight reference operates is based upon routing signals through a base
station” (App. Br. 8). Here, the Appellants appear to have viewed the
reference from a different perspective than the Examiner. The issue here is
not whether Knight teaches direct communication between the mobile
stations users connected to the self-contained cell site and the mobile station
users coupled to the base station; but rather, whether a person of ordinary
skill, upon reading Knight, would be discouraged from using direct
communication through a control station and a relay station as taught by
Miyazaki.
Thus, we find no error in the Examiner’s finding that the combination
of Knight’s wireless communication system (including a self-contained cell
site) with the control station and relay stations that function to directly
communicate the signals sent by respectively coupled mobile stations, as
disclosed in Miyazaki, produces “communicating directly between the first
and second intermediate cells occurring without routing the at least one
signal through the base station or a wireless communication network
connected with the base station” (Ans. 16; FF 1 and 3).
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Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting claim 23 under 35 U.S.C. § 103(a) over Knight
in view of Miyazaki.
Claims 24
Appellants argue that claim 24 is patentable over the cited prior art
because the claim depends from claim 23 and because Sugaya does not cure
the deficiencies asserted with respect to the Knight and Miyazaki references
(App. Br. 8).
As noted supra, however, we find that the combined teachings of
Knight and Miyazaki disclose all the features of claim 23. We, therefore,
affirm the Examiner’s rejection of claim 24 under 35 U.S.C. § 103, for the
same reasons expressed with respect to parent claim 23, supra.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-11 and 14-18 under 35 U.S.C.
§ 103(a) is reversed. The Examiner’s rejection of claims 23 and 24 under
35 U.S.C. § 103(a) 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).

AFFIRMED-IN-PART

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