Ex Parte Shah

Board of Patent Appeals and Interferences

Jun 22, 2009

10976143 (B.P.A.I. Jun. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DIPESH H. SHAH
____________

Appeal 2008-005707
Application 10/976,143
Technology Center 2600
____________

Decided:1 June 22, 2009
____________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL

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 2008-005707
Application 10/976,143

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-23 and 26. See App. Br. 2. We have jurisdiction under
35 U.S.C. § 6(b) (2002). We affirm-in-part.

STATEMENT OF THE CASE
Appellants invented a method of handing off a call if the quality level
of the communication is reduced, but not reduced to an unsalvageable level.2
Claims 1 and 26 which further illustrate the invention follows:
1. A method for determining whether to handoff a communication of a
mobile wireless device in a radio telephone network, the method comprising
the steps of:
monitoring a quality measurement of at least one aspect of the
communication between the mobile wireless device and a first cell, cell
sector, or channel in readiness for potentially handing off the communication
of the mobile wireless device to a second cell, cell sector, or channel; and
initiating a handoff from the first cell, cell sector, or channel to the
second cell, cell sector, or channel when the quality measurement of the at
least one aspect of the communication between the mobile wireless device
and the first cell, cell sector, or channel is less than a first threshold and
greater than a second, non-zero threshold, wherein the first threshold
represents a higher quality measure than the second threshold.

26. In a wireless telecommunications network for use with a wireless device,
the network being of the type that normally handoffs communications from a
first cell, cell sector, or channel to a second cell, cell sector, or channel when

2 See generally App. Br. 3 and Spec 2-5.
2
Appeal 2008-005707
Application 10/976,143

a quality measure of the communication drops below a certain threshold, the
improvement therein comprising:
handing off a call to the second cell, cell sector, or channel only if the
quality measure of the communication between the wireless device and the
first cell, cell sector, or channel is above a lower, non-zero threshold.

The Rejections
The Examiner relies upon the following prior art reference as
evidence of unpatentability:
Wadin US 5,329,635 Jul. 12, 1994
Karlsson US 5,499,386 Mar. 12, 1996
Simosson US 2001/0041537 A1 Nov. 15, 2001
Kransmo US 6,597,911 B1 Jul. 22, 2003
Jagadeesan US 2005/0059400 A1 Mar. 17, 2005

Claim 26 stands rejected under 35 U.S.C. § 102(b) as being
unpatentable over Karlsson (Ans. 3-4).
Claims 1-5, 8-10, 15-19, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wadin and Karlsson (Ans. 4-10).
Claims 6, 7, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wadin, Karlsson, and Jagadeesan (Ans. 10-12).
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wadin, Karlsson, and Simosson (Ans. 13).
Claims 12, 13, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wadin, Karlsson, and Kransmo (Ans. 13-15).
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wadin, Karlsson, Kransmo, and Simosson (Ans. 15-16).

3
Appeal 2008-005707
Application 10/976,143

Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2008).

Claim 26
Appellant argues that Karlsson discloses making a handoff based
upon the call quality with one base station in relation to the call quality with
a different base station which is in stark contrast with the claimed invention
(App. Br. 7). The Examiner argues that Karlsson initiates a handoff when
the communication quality between the mobile device and the base station is
below a first threshold but does not complete the handoff unless the second
communication quality threshold is several times higher than the primary
threshold (Ans. 18).

ISSUE
Has the Appellant shown that the Examiner erred in finding that
Karlsson discloses handing off a call to another cell sector only if the quality
measure of communication between the wireless device and the current cell
sector is above a lower, non-zero threshold?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
4
Appeal 2008-005707
Application 10/976,143

Karlsson
1. The quality of the signal received from the mobile station by the current
base station servicing the mobile device is compared with the quality of
signal received by base stations in adjacent cell sectors. When the signal
quality of the adjacent cell sectors exceeds the current base station servicing
the mobile device, the mobile device is handed off to the base station
servicing the adjacent cell (Col. 2, ll. 25-33).
2. A signal quality increment (offset or hysteresis) is applied to the signal
quality difference value between the cell sectors. The offset ensures that
unless the signal quality in the adjacent cell sector is at least “x” amount
greater than the current sector, the handoff does not occur (Col. 2, ll. 34-42).
5
Appeal 2008-005707
Application 10/976,143

3. Figure 10 of Karlsson is reproduced below:

Figure 10 discloses a flow chart for a system performed by the mobile
device during idle periods.
The mobile stores information on selected channel (103) and proceeds to
measure the signal strength of neighboring cells (104). After the first
channel is selected for evaluation (105), the system moves to (106) where it
is determined if the channel is a preferred one. If it is a preferred channel,
then the system moves to (107) where it is determined if the signal strength
is greater than the threshold value plus the hysteresis. If it is greater, then
the system retunes to the new preferred channel (109). If the signal strength
is not greater, then the system moves to (108) where it is determined if the
last neighbor has been evaluated. Col. 12, ll. 40-62.

6
Appeal 2008-005707
Application 10/976,143

PRINCIPLES OF LAW
“‘For a prior art reference to anticipate in terms of 35 U.S.C. § 102,
every element of the claimed invention must be identically shown in a single
reference.’” In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (quoting
Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677 (Fed. Cir.
1988)). “These elements must be arranged as in the claim under review,”
Bond, 910 F.2d at 832 (citing Lindemann Maschinenfabrik v. American
Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984)), “but this is not
an ‘ipsissimis verbis’ test,” Bond, 910 F.2d at 832-33 (citing Akzo N.V. v.
United States Int'l Trade Comm'n, 808 F.2d 1471, 1479 n.11 (Fed. Cir.
1986)).

ANALYSIS
The Appellant argues that claim 26 requires a hand off when the
quality measure of the communication between the wireless device and the
first cell sector drops below a certain threshold and if the quality measure of
the communication between the mobile device and the first cell sector is
above a lower, non-zero threshold (App. Br. 7). It is the Appellant’s
position that Karlsson discloses making a handoff based upon the call
quality with one base station in relation to the call quality with a different
base station which is dissimilar from the claimed invention (App. Br. 7).
The Examiner responds to the Appellant’s arguments by explaining the
manner in which Karlsson performs handoffs (Ans. 17). The Examiner
states:
If the quality of communication of the mobile device and the
current serving base station is below a certain threshold a second
threshold, relative to a second base station is monitored. If the quality
7
Appeal 2008-005707
Application 10/976,143

of communication of the mobile device with the serving base station
is below a certain threshold but above the second threshold the
handoff is carried out.

Ans. 17. Karlsson does not support the Examiner’s position. See FF 1-3.
Claim 26 states, “handing off a call to the second cell, cell sector, or
channel only if the quality measure of the communication between the
wireless device and the first cell, cell sector, or channel is above a lower,
non-zero threshold.” Karlsson’s criteria for handing off a call is based upon
comparing the quality of the signal of the base station currently servicing the
mobile device with the quality of signal received by base stations in adjacent
cell sectors (FF 1-3). Karlsson does not make the call handoff unless the
quality measurement of the communication between the wireless device and
the cell sector is above a lower, non-zero threshold and this is achieved by
requiring the signal quality in the second cell sector to be at least “x” amount
greater than the current base station signal quality. See FF 2-3.
Karlsson fails to anticipate claim 26 because Karlsson relies upon the
comparison of the quality between neighboring sectors as the criteria for a
handoff while claim 26 requires that the handoff criteria be based upon the
quality measurement between the wireless device and the current sector and
not a neighboring sector as indicated in Karlsson.
The Examiner states:
Although, it was not referred to in the office action in column[s] 12-
13 lines 65-10, Karlsson explicitly discloses that a handoff occurs if it
is determined that the serving channel is less than a preselected
threshold value plus a hysteresis and if the serving channel’s signal
strength is below the threshold value minus a hysteresis value (second
nonzero threshold).

8
Appeal 2008-005707
Application 10/976,143

Ans. 17. It is the Appellant’s position that the Examiner’s reliance upon
Karlsson’s statement in column 13, lines 3-6 is improper because Karlsson’s
statement itself is in error and therefore Karlsson cannot establish a safe
range (Reply Br. 4). We will not comment upon validity of the Karlsson
reference.3 However we find the Appellant’s argument in regard to the
Examiner’s reliance upon Karlsson to establish a safe range to be persuasive.
Karlsson states, that “the system moves to 111 at which it determines
whether or not the serving channel signal strength is less than a preselected
threshold value plus the hysteresis, if any” (Col. 12, l. 66 – col. 13, l. 2). It
is clear that this statement is inconsistent with the statement that the
Examiner is relying upon to establish a safe range. Once Karlsson’s system
has determined that the serving channel signal strength is less than the
threshold value plus the hysteresis it would be counter intuitive to place a
decisive factor that renders the decision at 111 unproductive. Therefore we
agree with the Appellant’s arguments that Karlsson fails to establish a safe
zone.

3 See Appl. Mat'ls, Inc. v. Adv. Semicond. Mat'ls Am., Inc., 98 F.3d 1563,
1569 (Fed. Cir. 1996) (“When a patent has been examined and duly granted,
[Indeed, the Amgen court all but indicated as much by noting that § 282 is
not the source of the presumption of enablement. Amgen, 314 F.3d 1313,
1355.] judicial review must give due weight to the presumption of validity
.… The presumption of validity is based on the presumption of
administrative correctness of actions of the agency charged with
examination of patentability.”); see also KSR Int'l v. Teleflex, Inc., 550 U.S.
398, 426 (2007) (noting that the rationale underlying a U.S. patent's
presumption of validity is that the USPTO, in its expertise, has approved the
patent claim.

9
Appeal 2008-005707
Application 10/976,143

For the above reasons, we will not sustain the Examiner’s anticipation
rejection of claim 26.

Claim 1
Appellant argues that Wadin does not describe maintaining the call
with the current base station if call quality is not sufficient to complete a
successful handoff (App. Br. 9). Appellant further argues that Karlsson fails
to cure the deficiencies of the Wadin reference (App. Br. 9). The
Examiner’s position is that Wadin as modified by Karlsson discloses a
method wherein a handoff only occurs when the quality measurement
between the mobile device and the first base station is below a certain
threshold; therefore the communication is maintained if the quality is above
a first threshold (Ans. 19).
ISSUE
Has the Appellant shown that the Examiner erred in finding that the
combination of Wadin and Karlsson discloses a method for determining the
appropriate time to execute a handoff in a radio telephone network based
upon a quality measurement that is less than a first threshold but greater than
a second, non-zero threshold?

10
Appeal 2008-005707
Application 10/976,143

FINDING OF FACTS
Wadin
4. Figure 2 of Wadin is reproduced below:

Figure Two is a simplified block diagram of a second generation
cordless telephone system with a handoff controller and transceiver for
seamless transfer or handoff.

5. A time-division duplex radio system having a plurality of base stations
and mobile radio units wherein a method for seamless handoff of a
communication link from a first base station to a second base station is based
upon the comparison of the received signal strength of the base stations.
Wadin further discloses that the handoff occurs when the first received
signal strength indicator level is below the first handoff threshold and the
second received signal strength indicator level is above a second handoff
threshold (Col. 1, ll. 29-61 and Col. 2, ll. 24-28).
11
Appeal 2008-005707
Application 10/976,143

6. Figure 4 of Wadin is reproduced below:

Figure 4 discloses a flow diagram of a method for seamless handoffs for
radio telephone systems.

PRINCIPLES OF LAW
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)).
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
12
Appeal 2008-005707
Application 10/976,143

doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). If the Examiner's burden
is met, the burden then shifts to the Appellants to overcome the prima facie
case with argument and/or evidence. Obviousness is then determined on the
basis of the evidence as a whole and the relative persuasiveness of the
arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

ANALYSIS
Appellant argues that the system in Wadin attempts to handoff the call
even if the quality measurement between the mobile device and the base
station is bad and by doing so, increases the risk of losing the call during the
handoff (App. Br. 9). It is the Appellant’s position that Wadin does not
maintain the connection with the current base station if the handoff is
severely compromised by poor quality (App. Br. 9). Appellant further
argues that Karlsson fails to cure the deficiencies of Wadin (App. Br. 9). It
is the Examiner’s position that Wadin as modified by Karlsson discloses the
handoff method claimed by the Appellant (Ans. 19).
Wadin discloses a seamless handoff for a mobile telephone system
(FF 4 and 6). Wadin further discloses that the handoff occurs when the first
received signal strength indicator level is below the first handoff threshold
and the second received signal strength indicator level is above a second
handoff threshold (FF 5). The Examiner recognizes that, “Wadin however
does not disclose that the quality of the at least one aspect of the
communication between the mobile wireless device and the first cell, cell
sector, or channel is also greater than second threshold wherein the first
threshold represents a higher quality measure than the second” (Ans. 5).
13
Appeal 2008-005707
Application 10/976,143

The Examiner relies upon Karlsson to address the deficiency of Wadin (Ans.
5-6).
Claim 1 requires, “monitoring a quality measurement of at least one
aspect of the communication between the mobile wireless device and a first
cell, cell sector.” However, as we indicated previously, Karlsson discloses
monitoring a quality measurement between the mobile device and the
neighboring sectors not between the mobile device and the current or first
sector as required by claim 1. See FF 2-3.
Claim 1 also requires measuring the quality measurement of the
mobile device and the current cell sector and performing the handoff when,
the quality measurement “is less than a first threshold and greater than a
second, non-zero threshold, wherein the first threshold represents a higher
quality measure than the second threshold.” Claim 1 requires the handoff to
be made between thresholds wherein Karlsson requires the handoff to be
made above the current threshold value plus the hysteresis if any. See FF 3.
Therefore for these reasons as well as the reasons we stated
previously, we conclude that Wadin and Karlsson does not render claim 1
obvious.
We will not sustain the Examiner’s rejection of independent claim 1
and dependent claims 2-5 and 8-10 for similar reasons. Since the other
cited references to Jagadeesan, Kransmo, and Simosson do not cure the
deficiencies of Wadin and Karlsson noted above with respect to independent
claim 1, we will also not sustain the Examiner’s obviousness rejections of
dependent claims 6, 7, and 11-14 for similar reasons.
14
Appeal 2008-005707
Application 10/976,143

ISSUE
Has the Appellant shown that the Examiner erred in finding that the
combination of Wadin and Karlsson discloses a system for maintaining
communication with a mobile wireless device that utilizes a handoff
controller adapted to monitor a quality parameter between the mobile device
and the transceiver currently serving the mobile device?

Claim 154
Appellant argues that neither Wadin nor Karlsson discloses a
controller adapted for monitoring a quality parameter which is indicative of
the communication quality between the mobile wireless device and a first
transceiver (App. Br. 13). Appellant further argues that neither Wadin nor
Karlsson discloses directing the handoff to the second transceiver when the
quality parameter between the mobile wireless and the first transceiver is
within a determined range (App. Br. 13). It is the Examiner’s position that
Karlsson addresses the deficiencies of Wadin by disclosing a handoff system
that is based upon the comparison of quality measurements of base stations.
See Ans. 21-22.
Claim 15 requires “a plurality of transceivers each adapted for serving
a discrete geographical area,” “a controller coupled with the transceivers and
adapted for monitoring a quality parameter which is indicative of
communication quality between the mobile wireless device and a first
transceiver” and a “controller further adapted to direct a handoff of the
communication to the second transceiver.” The Examiner uses Karlsson to
address the adapting controller limitations of claim 15. See Ans. 8.

4 Claim 15 is argued separately by the Appellants. See App. Br. 12-13.
15
Appeal 2008-005707
Application 10/976,143

Wadin discloses a plurality of transceivers adapted for serving
geographical locations. See FF 4 and 6. Wadin discloses a handoff
controller used in telephone systems for smooth transfers based upon
comparison of received signal strengths (FF 4). As we indicated previously,
Wadin does not disclose monitoring for a quality parameter which is
demonstrative of the communication quality between the mobile wireless
device and the first transceiver. In fact, Wadin teaches that the handoff
occurs when the first received signal strength indicator level of one base is
below the first handoff threshold and wherein the second received signal
strength indicator level of another base is above a second handoff threshold
(FF 4 and 6).
Notwithstanding Wadin’s disclosure, claim 15 only requires that the
handoff controller be adapted to monitor the quality parameter between the
mobile device and the first transceiver. There were no arguments presented
as to why Wadin’s handoff controller could not be adapted to monitor the
quality parameter and we see no reason why the controller could not be
adapted to monitor such quality parameter.
Wadin’s handoff controller directs a handoff when the received signal
strength indicator of the second base is above the handoff threshold of the
current base (FF 4). Again it is noted that Wadin does not disclose directing
a handoff based upon the quality parameter between the wireless device and
the current transceiver serving the wireless device. However, claim 15 only
requires that the controller be adapted to direct the handoff of the
communication based upon the quality parameter between the wireless
device and the current transceiver. Again, there were no arguments
presented as to why Wadin’s handoff controller could not be adapted to
16
Appeal 2008-005707
Application 10/976,143

direct the handoff based upon the quality parameter between the wireless
device and the current transceiver and we see no reason why the controller
could not be adapted to handoff based upon the same quality parameter.
Therefore, for these reasons, we find that Wadin actually anticipates
claim 15. Nevertheless, we find no reversible error in the Examiner's
obviousness rejection based upon Wadin and Karlsson as obviousness
rejections can be based on references that happen to anticipate the claimed
subject matter. See In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979).
We therefore sustain the Examiner’s obviousness rejection of claim 15 for
the above reasons.

Claims 16-23
Regarding the obviousness rejections of (1) claims 16-19 and 22 over
Wadin and Karlsson (Ans. 4 and 9-10); (2) claims 20 and 21 over Wadin,
Karlsson, and Jagadeesan (Ans. 10-12); and (3) claim 23 over Wadin,
Karlsson, and Kransmo (Ans. 13-15), we find that Appellant has not
persuasively rebutted the Examiner's prima facie case of obviousness for
these claims, but merely contended that the additional references fail to cure
the previously-noted deficiencies of Wadin and Karlsson (App. Br. 12-15).
Once the Examiner has satisfied the burden of presenting a prima
facie case of obviousness, the burden then shifts to Appellant to present
evidence and/or arguments that persuasively rebut the Examiner's prima
facie case. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Since
Appellant did not particularly point out errors in the Examiner’s reasoning to
persuasively rebut the Examiner's prima facie case of obviousness, the
rejections are therefore sustained.
17
Appeal 2008-005707
Application 10/976,143

CONCLUSIONS
1. Appellant has shown that the Examiner erred in finding that Karlsson
discloses handing off a call to another cell sector only if the quality measure
of communication between the wireless device and the current cell sector is
above a lower, non-zero threshold.
2. Appellant has shown that the Examiner erred in finding that the
combination of Wadin and Karlsson discloses a method for determining the
appropriate time to execute a handoff in a radio telephone network based
upon a quality measurement that is less than a first threshold but greater than
a second, non-zero threshold.
3. Appellant has not shown that the Examiner erred in finding that the
combination of Wadin and Karlsson discloses a system for maintaining
communication with a mobile wireless device that utilizes a handoff
controller adapted to monitor a quality parameter between the mobile device
and the transceiver currently serving the mobile device.

ORDER
We will not sustain the Examiner’s rejections of claims 1-14 and 26.
We will sustain the Examiner’s rejections of claims 15-23.
18
Appeal 2008-005707
Application 10/976,143

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) (2007).
AFFIRMED-IN-PART

ELD

AT&T Legal Department - T&W
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
19