Ex Parte Tatman et al

Board of Patent Appeals and Interferences

Sep 10, 2012

11397082 (B.P.A.I. Sep. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LANCE A. TATMAN, JERRY J. LIU, GLENN R. ENGEL,
and GLEN L. PURDY JR.

Appeal 2010-005607
Application 11/397,082
Technology Center 2600
____________

Before LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and
ANDREW J. DILLON, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-12, and 14-25. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A parameter measurement system, for measuring
parameters accessible by mobile equipment which
communicates over a communication network, the
communication network including a network service provider,
the network service provider having first and second services
available for use by the mobile equipment, the system
comprising:

an agent which includes:

(i) measuring means for measuring predetermined
parameters of operation of the mobile equipment regarding one
of the first and second services, and for detecting a change of
service;

(ii) means for changing measurement parameters to
make parameter measurements appropriate for a detected
change of service; and

(iii) a transmitter for transmitting measured parameters
over the communication network;
wherein the first and second services are resources
provided to network clients such as customers or other users,
taken from the group of services consisting of:
General Packet Radio Service (GPRS);
Packet Data Protocol (PDP);
Transmission Control Protocol (TCP);
E-mail;
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Wireless Application Protocol (WAP);
HyperText markup language (HTML);
User Datagram Protocol (UDP);
Global Mobile (Communications) System (GMS);
Short Message Service (SMS); and
Integrated Digital Enhanced Network (IDEN).
(disputed limitations emphasized).

REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Bostica US 2007/041330 A1 Feb. 22, 2007

Fok US 2006/0234698 A1 Oct. 19, 2006

Ofel US 2007/0130306 A1 Jun. 7, 2007

REJECTIONS
1) Claims 1-8, 10-12, 14-21 and 23-25 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over the combination of Bostica and
Fok.
2) Claims 9 and 22 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Bostica, Fok, and Ofel.

ANALYSIS
Issue: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested
the following disputed limitations (labeled L1 and L2 for convenience and
with emphasis added):
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[L1] i) measuring means for measuring predetermined
parameters of operation of the mobile equipment regarding one
of the first and second services, and for detecting a change of
service;

[L2] (ii) means for changing measurement parameters to
make parameter measurements appropriate for a detected
change of service;

within the meaning of independent claim 1, and the commensurate
limitations recited in independent claim 14?

ANALYSIS
Based upon our review, of the record, we reverse the Examiner’s
rejections under §103 for essentially the same reasons argued by Appellants
in the Briefs. (App. Br. 10-13; Reply Br. 2-5).
We begin our analysis by observing that the Examiner broadly
construes the claimed “change of service” as being taught or suggested by
any change in the status of a mobile device: “[w]hen a mobile device’s
status changes, the service it is performing has changed.” (Ans. 13, emphasis
added).
However, we observe that the particular “services” covered by
Appellants’ independent claims are defined and enumerated in both claims 1
and 14 as a closed set using “consisting of” language:
wherein the first and second services are resources
provided to network clients such as customers or other users,
taken from the group of services consisting of:
General Packet Radio Service (GPRS);
Packet Data Protocol (PDP);
Transmission Control Protocol (TCP);
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E-mail;
Wireless Application Protocol (WAP);
HyperText markup language (HTML);
User Datagram Protocol (UDP);
Global Mobile (Communications) System (GMS);
Short Message Service (SMS); and
Integrated Digital Enhanced Network (IDEN).

Our reviewing court guides that claim terms are not interpreted in a
vacuum, devoid of the context of the claim as a whole. See Hockerson-
Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999)
(“proper claim construction . . . demands interpretation of the entire claim in
context, not a single element in isolation.”); ACTV, Inc. v. Walt Disney Co.,
346 F.3d 1082, 1088 (Fed. Cir. 2003) (“While certain terms may be at the
center of the claim construction debate, the context of the surrounding words
of the claim also must be considered....”).
This reasoning is applicable here. Thus, under a broad but reasonable
interpretation, we construe the claim as a whole such that the claimed
measuring means (limitation L1) is capable of detecting a change from a
first to a second type of service, where the types of services are limited to
the closed set of enumerated services that are expressly claimed using
“consisting of” language. (Claims 1, 14).
Under our construction, the “means for changing measurement
parameters” (limitation L2) must be capable of operating responsive to any
change from a first to a second (enumerated) type of service, as detected by
the aforementioned measuring means (limitation L1).
Although the primary Bostica reference clearly detects changes in the
quality of service (e.g., see para. [0038]), and also teaches transporting
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configuration commands and data that correspond to at least three of
Appellants’ claimed enumerated types of services (SMS, TCP, UDP, see
para. [0032]), we find the Examiner has not fully developed the record to
establish the claimed nexus between limitations L2 and L1, within the
meaning of Appellants’ independent claims 1 and 14, as construed above.
Although this appeal presents a close question, on this record, we find the
weight of the evidence supports Appellants’ position.
Accordingly, for essentially the same reasons articulated by
Appellants in the Briefs, we reverse the Examiner’s §103 rejection of
independent claims 1 and 14. (See App. Br. 10-13; Reply Br. 2-5). Because
we have reversed the rejection of each independent claim on appeal, we also
reverse the rejections of each dependent claim on appeal.

DECISION
We reverse the Examiner's rejections of claims 1-12, and 14-25 under
§103.
ORDER
REVERSED

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