Ex Parte Sammarco

Patent Trial and Appeal Board

Mar 26, 2013

10441582 (P.T.A.B. Mar. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/441,582 05/20/2003 Anthony J. Sammarco 9314-29 2388
54414 7590 03/27/2013
MYERS BIGEL SIBLEY & SAJOVEC, P.A.
P.O. BOX 37428
RALEIGH, NC 27627
EXAMINER
CHO, UN C
ART UNIT PAPER NUMBER
2413
MAIL DATE DELIVERY MODE
03/27/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANTHONY J. SAMMARCO
____________

Appeal 2010-007968
Application 10/441,582
Technology Center 2400
____________

Before BRUCE R. WINSOR, BARBARA A. BENOIT,
and DANIEL N. FISHMAN, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4-14, and 16-24, which constitute all the claims pending in this
application. Claims 3 and 15 are cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
“[Appellant’s] invention relates to cellular wireless terminals that are
compliant with more than one cellular communication protocol and
operating methods therefor, and more particularly to wireless terminals and
operating methods for roaming between wireless communication systems
having different communication protocols.” Spec. 1:10-13. Claim 1, which
is illustrative of the invention, reads as follows (disputed limitations
emphasized):
1. A method for detecting availability of an alternate
wireless communication system, the method comprising:
registering with a first wireless communication system
having a first communication protocol from a wireless terminal,
wherein the first wireless communication system provides a
different location area code to groups of communication cells in
corresponding different geographic regions and/or a different
routing area identifier to groups of communication cells that
route packet switched data to corresponding different
geographic regions;
determining within the wireless terminal if the wireless
terminal has moved out of a selected geographic region based
on a change over time in content of a location area code and/or
a routing area identifier received from the first wireless
communication system; and
scanning for the alternate wireless communication
system from the wireless terminal responsive to determining
that the wireless terminal has moved out of the selected
geographic region, the alternate wireless communication
system having a second communication protocol that is
different from the first communication protocol.
The Examiner relies on the following prior art in rejecting the claims:
Reece US 5,915,214 June 22, 1999
Mademann US 6,081,723 June 27, 2000
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Tuji US 2001/0044298 Al Nov. 22, 2001
McClure US 2003/0003910 Al Jan. 2, 2003
(filed June 28, 2001)

Jokimies US 6,526,267 B1 Feb. 25, 2003
(filed Aug. 12, 1998)
Czaja US 6,584,087 B1 June 24, 2003
(filed Dec. 29, 1999)
Raith US 6,711,408 Bl Mar. 23, 2004
(filed Feb. 5, 2000)
Claims 1, 2, 4, 9, 13, 14, 16, 21, and 24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Jokimies and Tuji. Ans. 3-6.
Claims 5, 7, 17, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jokimies, Tuji, and Mademann. Ans. 7-8.
Claims 6 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jokimies, Tuji, and McClure. Ans. 8-9.
Claims 8 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jokimies, Tuji, and Raith. Ans. 9-10.
Claims 10, 11, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jokimies, Tuji, and Reece. Ans. 10-11.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jokimies, Tuji, and Czaja. Ans. 12
Rather than repeat the arguments here, we refer to the Briefs (App.
Br.; Reply Br.) and the Answer (Ans.) for the respective positions of
Appellant and the Examiner.

ISSUES
The issues raised by Appellant’s contentions are as follows:
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Does the combination of Jokimies and Tuji teach or suggest:
determining within the wireless terminal if the wireless
terminal has moved out of a selected geographic region based
on a change over time in content of a location area code and/or
a routing area identifier received from the first wireless
communication system; and
scanning for the alternate wireless communication
system from the wireless terminal responsive to determining
that the wireless terminal has moved out of the selected
geographic region, the alternate wireless communication system
having a second communication protocol that is different from
the first communication protocol.
(hereinafter the “determining step” and “scanning step”, respectively), as
recited in claim 1?
Is the Examiner’s conclusion that claim 1 is obvious over the
combination of Jokimies and Tuji improper because the combination “would
destroy the intent, purpose, and function of Jokimies’ teachings”?
Does the combination of Jokimies and Tuji teach or suggest “scanning
for the alternate wireless communication system only if the wireless terminal
has moved out of the selected geographic region” (emphasis added), as
recited in claim 2?
Does the combination of Jokimies, Tuji, and Mademann teach or
suggest “determining whether the wireless terminal has received a different
routing area [(RA)] identifier from the first wireless communication
system,” as recited in claim 5?

PRINCIPLES OF LAW
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
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devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007). “[T]he [obviousness] analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418. “A person of
ordinary skill is also a person of ordinary creativity, not an automaton.” Id.
at 421.
“An assertion of what seems to follow from common experience is
just attorney argument and not the kind of factual evidence that is required to
rebut a prima facie case of obviousness.” In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997)); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984).
A reference's disclosure is not to be interpreted on an ipsissimis verbis
basis. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
To justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
reference can be physically inserted into the device shown in
the other. 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
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). “[O]ne
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references.” Id. at 426.
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Where a rejection is based on a combination of references, the order
in which prior art references are cited to the Applicant is of no significance,
but merely a matter of exposition. In re Bush, 296 F.2d 491, 496 (CCPA
1961).

ANALYSIS
Claim 1
The Examiner finds, inter alia, that Jokimies teaches the determining
step, Ans. 4 (citing Jokimies, Fig. 4 (refs. 19, 20a-c); col. 3, ll. 1-4, 27-44,
66-67; col. 4. ll. 1-5, 14-24, 47-54), see also Final Rej. 2-3 (citing Jokimies,
col. 3, ll. 1-23, 27-44), and that Tuji, when combined with Jokimies, teaches
or suggests the scanning step, Ans. 5 (citing Tuji, Fig. 2 (refs. 1, 11, 12); ¶
[0043]), see also Final Rej. 3-4 (citing Tuji ¶¶ [0045]-[0048]). Appellant
contends that Jokimies does not teach or suggest the determining step or the
scanning step. App. Br. 7. Appellant further contends that Tuji does not
remedy the deficiencies of Jokimies because Tuji does not teach or suggest
scanning in response to “determining that the wireless terminal has moved
out of the selected geographic region.” App. Br. 7-8. We are unpersuaded
by Appellant’s contentions.
We find, as did the Examiner, Ans. 5, that Tuji teaches
communication system A (i.e., a “first wireless communication system”),
Tuji ¶ [0043], and communication system B (i.e., an “alternate wireless
communication system”), in which a mobile phone (i.e. “wireless terminal”)
scans for communication system B when it determines that the mobile phone
is out of the area covered by communication system A, id.; see also Tuji,
Figs. 1, 2, 4.
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Appellant contends that:
Tuji's mobile phone 1 has no idea or concern for whether or not
it has moved out of any geographic region, it only knows that at
the present time it cannot communicate with communication
system A, which may be due to momentary multipath signal
fading and/or momentary signal blockage due to interfering
terrestrial objects (e.g., user's body, tree, car, or other object
between phone and a base station). Consequently, Tuji's mobile
phone 1 can unnecessarily search for communication system B
when it is still well within the coverage area of communication
system A, which could have been avoided simply by waiting a
few seconds/minutes until the multipath signal fading
sufficiently diminished and/or moving the mobile phone 1 a
short distance to sufficiently overcome terrestrial signal
blockage.
App. Br. 8. However, Tuji expressly states that:
FIG. 4 shows an example of the message to be displayed
on the display portion 2 in a case where the search operation for
the base station of the communication system (in this case,
communication system A) set in the memory portion 8 is
performed when the power source of the mobile phone 1 is
turned on and the base station can not be caught, that is, the
mobile phone 1 is out of an area covered by the same
communication system.
(emphasis added) Tuji, ¶ [0043]. Appellant further contends that Tuji
teaches away from the scanning step because Tuji offers the user the option
to permit or avoid scanning for System B. Reply Br. 2-3. However, the
inclusion of the additional manual step before scanning begins does not
negate the fact that Tuji expressly teaches scanning for communication
system B in response to determining that the mobile phone is out of the area
covered by communication system A. Furthermore, Appellant’s speculation
regarding other conditions that can cause the mobile system to be unable to
catch communication system A at most argue that Tuji’s system would
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benefit from an improved method of determining that the mobile phone is
out of the area covered by communication system A. Accordingly, we agree
with the Examiner that Tuji teaches the searching step.
As found by the Examiner, Ans. 4, Jokimies teaches a mobile station
(i.e., a “wireless terminal”), Jokimies, Fig. 4 (ref. 19), that determines if the
mobile station has moved out of a home area (i.e., a “selected geographic
region”) based on the change over time in coded home area data (i.e., a
“local area code and/or a routing area identifier”) included in transmissions
from base stations (i.e., “received from the first wireless communication
system”), Jokimies, Fig. 4 (refs. 20a-c). Jokimies, col. 3, ll. 1-4, 27-44, 66-
67; col. 4. ll. 1-5, 14-24, 47-54. Accordingly, we agree with the Examiner
that Jokimies teaches or suggests the determining step.
We further agree with the Examiner’s conclusion that:
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to provide the technique of
Tuji to the system of Jokimies in order to provide an efficient
roaming system that can assist the user in selecting another
network system and for providing a reliable and continuous
communication even when the mobile terminal is out of its
current communication system area.
Ans. 5. Putting the same conclusion another way, one of ordinary skill in
the art would have recognized that Jokimies’ use of changes over time in
coded home area data to detect when a mobile terminal moves out the home
area would improve Tuji’s method of scanning for an alternate mobile
communication system by providing reliable mobile terminal location
detection, Jokimies, col. 2, ll. 39-40. Thus, Tuji’s method of scanning for an
alternate communications system would be improved in the same way that
Jokimies’ method of controlling call tariffs and services, Jokimies, col. 2, ll.
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43-45, is improved. See KSR, 550 U.S. at 417; see also Bush, 296 F.2d at
496.
We find Appellant’s contention that the combination of Jokimies and
Tuji would “destroy the intent, purpose, and function of Jokimies’ principal
operation,” App. Br. 9, to be unpersuasive. First of all, we conclude that the
argument is moot in view of the equivalent statement of the Examiner’s
rationale set forth supra. See Bush, 296 F.2d at 496.
Secondly, Appellant takes an overly narrow view of Jokimies “principal
operation.” Appellant contends Jokimies’ principal operation is
to improve the ability of a cellular network to apply proper call
tariffs to calls from a mobile station . . . by the functional
requirement that a mobile station must report to the originally
registered cellular network operator whether it is within or
outside the mobile station's home area so that the same
registered cellular network will apply the correct call tariffs to
new/ongoing calls by that mobile station
App. Br. 9. We find that the intended purpose of Jokimies’ (and Tuji’s)
apparatus and method is to provide wireless or mobile communication, and
that the modification proposed by the Examiner would not render the
Jokimies’ apparatus and method inoperative for wireless or mobile
communication. Compare In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984)
(“Indeed, if the French apparatus were turned upside down, it would be
rendered inoperable for its intended purpose.” (emphases added)). Finally,
for emphasis only, we note that the test of non-obviousness is not whether
one reference can be bodily inserted into another, but, rather, what the
references, when considered together, would suggest to one of ordinary skill
in the art, Keller, 642 F.2d at 425, who is a person of ordinary creativity and
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not an automaton, KSR, 550 U.S. at 421, and whose inferences and creative
steps we may consider, id. at 418.
Accordingly, we sustain the rejection of (1) claim 1; (2) independent
claims 13 and 24, which were argued together with claim 1, see generally
App. Br. 6-10; and (3) claims 4, 6-12, 16, and 18-23, which depend directly
or indirectly from claim 1 or 13, and were not separately argued with
particularity, see App. Br. 10, 12.
Claim 2
The Examiner finds that Tuji teaches or suggests “scanning for the
alternate wireless communication system only if the wireless terminal has
moved out of the selected geographic region,” as recited in claim 2. Ans. 5-
6 (citing Tuji, ¶¶ [0043], [0045]-[0048]). Appellant contends that “[i]n
neither the cited section nor elsewhere does Tuji describe or suggest that
mobile terminal scans for an alternate wireless communication system,
which has a different communication protocol from the presently registered
communication system, only if the mobile terminal has moved out of the
selected geographic region.” App. Br. 11.
We agree with the Examiner. The cited passages of Tuji do not
expressly exclude searching for system B under conditions in which Tuji’s
mobile phone has moved out of the coverage area of system B. However, a
reference’s teaching is not limited to what is stated verbatim, see Bond, 910
F.2d at 832, but rather is measured by what one of ordinary skill in the art
would have understood from the reference, see KSR, 550 US at 418, see also
Keller, 642 F.2d at 425. The only search for an alternate wireless
communication system taught by the cited passages occurs if “the base
station can not be caught, that is, the mobile phone 1 is out of an area
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covered by the same communication system.” Tuji, ¶ [0043]. Appellant
speculates, App. Br. 8, as to other conditions that might cause Tuji’s mobile
phone to search for alternate wireless communication system. However,
Appellant does not direct us to any evidence in the record to show that Tuji’s
mobile phone searches for system B other than when it is out of the coverage
area for system A. Such unsupported attorney argument has little persuasive
value. See Geisler, 116 F.3d at 1470.
We find that one of ordinary skill in the art would have inferred from
the cited passages of Tuji that Tuji teaches or suggests “scanning for the
alternate wireless communication system only if the wireless terminal has
moved out of the selected geographic region,” as recited in claim 2. See
KSR, 550 U.S. at 418. Accordingly, we will sustain the rejection of claim 2
and claim 14, which was argued together with claim 2, see generally App.
Br. 10-11.
Claim 5
The Examiner finds the Mandemann, when combined with Jokimies
and Tuji as applied to claim 1, teaches or suggests “determining whether the
wireless terminal has received a different routing area identifier from the
first wireless communication system,” as recited in claim 5. Ans. 7 (citing
Mandemann, col. 4, ll. 20-64). Appellant contends that
in neither the cited section nor elsewhere does Mandemann describe
or suggest that the mobile terminal uses the RA identifiers to make
any decision and, much less, to decide whether it has moved out of a
selected geographic region to initiate searching for an alternate
wireless communication system that has a different communication
protocol with a presently registered communication system.

App. Br. 11. We agree with the Examiner.
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Appellant’s argument is unpersuasive as it attacks the Examiner’s
citation to Mandemann without considering the combination made by the
Examiner with Jokimies and Tuji. See Keller, 642 F.2d at 426. The
Examiner relies on Jokimies to teach or suggest the determining step of
claim 1. Ans. 4 (citing Jokimies, Fig. 4 (refs. 19, 20a-c); col. 3, ll. 1-4, 27-
44, 66-67; col. 4. ll. 1-5, 14-24, 47-54), see also Final Rej. 2-3 (citing
Jokimies, col. 3, ll. 1-23, 27-44).
More particularly, the Examiner relies on Jokimies to teach deciding
whether a wireless terminal has moved out of a selected geographic region
based on data received from the presently registered communication system.
The Examiner relies on Tuji to teach initiating searching for an alternate
wireless communication system that has a different communication protocol
with a presently registered communication system in response to moving out
of the selected geographic region. Ans. 5 (citing Tuji, Fig. 2 (refs. 1, 11,
12); ¶ [0043]), see also Final Rej. 3-4 (citing Tuji ¶¶ [0045]-[0048]). The
Examiner relies on Mandemann to teach or suggest that the data received
from the presently registered communication system may comprise routing
area identifiers.
Appellant further contends that Jokimies teaches away from the
combination with Tuji and Mandemann because the combination “would
destroy the intent, purpose, and function of Jokimies’ principal operation.”
App. Br. 12. We find this contention unpersuasive for the reasons discussed
supra regarding claim 1.
Accordingly, we sustain the rejection of claim 5 and claim 17, which
was argued together with claim 5, see generally App. Br. 11-12.

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ORDER
The decision of the Examiner to reject claims 1, 2, 4, 9, 13, 14, 16, 21,
and 24 under 35 U.S.C. § 103(a) as unpatentable over Jokimies and Tuji is
affirmed.
The decision of the Examiner to reject claims 5, 7, 17, and 19 under
35 U.S.C. § 103(a) as unpatentable over Jokimies, Tuji, and Mademann is
affirmed.
The decision of the Examiner to reject claims 6 and 18 under
35 U.S.C. § 103(a) as unpatentable over Jokimies, Tuji, and McClure is
affirmed.
The decision of the Examiner to reject claims 8 and 20 under
35 U.S.C. § 103(a) as unpatentable over Jokimies, Tuji, and Raith is
affirmed.
The decision of the Examiner to reject claims 10, 11, 22, and 23 under
35 U.S.C. § 103(a) as unpatentable over Jokimies, Tuji, and Reece is
affirmed.
The decision of the Examiner to reject claim 12 under 35 U.S.C.
§ 103(a) as unpatentable over Jokimies, Tuji, and Czaja 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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