Ex Parte Thorson et al

Patent Trial and Appeal Board

Mar 13, 2013

11212135 (P.T.A.B. Mar. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DEAN E. THORSON, WILLIAM R. BAYER,
and ASIF Z. MEHDI
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Appeal 2010-008525
Application 11/212,135
Technology Center 2600
____________

Before BRUCE R. WINSOR, JEREMY J. CURCURI, and
BARBARA A. BENOIT, Administrative Patent Judges.

BENOIT, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

Appeal 2010-008525
Application 11/212,135

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STATEMENT OF THE CASE
Appellants’ invention relates to detection of unauthorized
communication system users. See generally Abstract; Spec. ¶ 0001.
Claim 1 is illustrative and reads as follows, with key disputed limitations
emphasized:
1. A method comprising:
[(a)] at a code division multiple access base transceiver station:
[(b)] - using a correlating receiver to monitor what may comprise
possible multi-path versions of a transmission from an authorized
communication system user to provide monitoring results;
[(c)] - using the monitoring results to detect that [(i)] one of the
possible multi-path versions of the transmission was sourced by an
unauthorized communication system user while [(ii)] at least another of the
possible multi-path versions of the transmission was sourced by an
authorized communication system user.
The Rejections
1. The Examiner rejected claims 1-6 and 9-20 under 35 U.S.C.
§ 103(a) as unpatentable over Daudelin (US 6,915,123 B1; issued July 5,
2005) and Kiema (US 5,684,793; issued Nov. 4, 1997). Ans. 3-6.
2. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Daudelin, Kiema, and Urita (US 6,466,777 B1; issued
Oct. 15, 2002). Ans. 6-7.
3. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Daudelin, Kiema, and Hill (US 7,367,497 B1; issued May
6, 2008; filed Dec. 6, 2004). Ans. 7-8.

Appeal 2010-008525
Application 11/212,135

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OBVIOUSNESS REJECTION OVER DAUDELIN AND KIEMA
Contentions
The Examiner finds that Daudelin substantially teaches or suggests all
of the limitations of illustrative claim 1, including using a receiver to
monitor what may comprise possible multi-path versions of a transmission.
Ans. 4. Daudelin discloses monitoring the operational area of a subscriber
station for a wireless network and determining whether the subscriber station
is operating in an authorized coverage area. Daudelin, Abstract. The
Examiner further relies on Kiema as teaching a correlated receiver. Ans. 4.
The Examiner concludes that it would have been obvious to an ordinarily
skilled artisan to incorporate Kiema’s correlated receiver with Daudelin’s
system to recognize signals on the basis of the spreading code. Ans. 4.
Appellants argue, among other things, that Daudelin does not teach or
suggest step (c) recited in claim 1 – that is, “using the monitoring results to
detect that [(i)] one of the possible multi-path versions of the transmission
was sourced by an unauthorized communication system user while [(ii)] at
least another of the possible multi-path versions of the transmission was
sourced by an authorized communication system user.” App. Br. 7-8; Reply
Br. 5-6.
In response, the Examiner explains that Daudelin teaches or suggests
step (c) recited in claim 1 because (i) the determination that Daudelin’s
subscriber station is in an authorized area equates to detecting that one of the
possible multi-path versions of the transmission was sourced by an
authorized communication system user and (ii) the determination that
Daudelin’s subscriber station is not in an authorized area equates to
detecting that one of the possible multi-path versions of the transmission was
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Application 11/212,135

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sourced by an unauthorized communication system user. Ans. 10. The
Examiner’s position is that Daudelin’s system in which a single subscriber
station is an authorized communication system user during part of a call
(when operating in an authorized coverage area) and is an unauthorized
communication system user during a different part of the same call (when
operating outside of the authorized coverage area) teaches or suggests
step (c) recited in claim 1.
Analysis
This appeal turns on whether step (c) in claim 1 precludes the type of
monitoring results that the Examiner concluded was taught or suggested by
Daudelin – namely, a single subscriber station being both an authorized
communication system user and an unauthorized communication system
user during different times of a call.
We therefore begin by construing the term “while.” It is well-
established that we are to apply the broadest reasonable meaning to the
claim language, taking into account any definitions presented in the
Specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). As used in claim 1, “while” is a conjunction that joins
claim phrase (i) describing sourcing of the transmission by an unauthorized
communication system user and claim phrase (ii) describing sourcing of the
transmission by an authorized communication system user.
In the context of claim 1, “while” requires a temporal relationship
between phrase (i) and phrase (ii) – namely, phrase (i) must occur at the
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same time as phrase (ii) occurs.1 The broadest reasonable interpretation of
step (c) then requires the sourcing of the transmission by an unauthorized
communication system user to occur at the same time as the sourcing of the
transmission by an authorized communication system user.
With this claim construction in mind, we find the Examiner’s reliance
on Daudelin to be erroneous for Daudelin’s monitoring does not meet the
temporal relationship recited in claim 1. Rather, in rejecting claim 1, the
Examiner interpreted “while” as meaning “although” or “and”2 – that is, not
requiring a temporal relationship. We find that construing claim 1 without a
temporal relationship to be unreasonable in light of the language of claim 1
and Appellants’ Specification, which discloses detecting, in a substantially
simultaneous manner, monitoring results that comprise both a transmission
of a voice frame type and a frame type that is ordinarily not used to convey
voice content. See Spec. ¶ 0017 (describing step 103 of process 100, which
is the only description of step (c) of claim 1 in the Specification).
Accordingly, we agree with Appellants that Daudelin does not teach
or suggest step (c) recited in claim 1 because the Examiner’s interpretation is
overbroad. App. Br. 8; see also Reply Br. 6. We therefore will not sustain
the rejection of (i) independent claim 1, (ii) independent claims 9 and 15,
each of which recite commensurate limitations, and (iii) dependent claims 2-
6, 10-14, and 16-20.

1 AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 2033 (3d
ed. 1992) (defining “while conj.” as “1. As long as; during the time that
. . . 2. At the same time that”).
2 See AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 2033
(3d ed. 1992) (defining “while conj.” as “2. At the same time that;
although . . . 3. Whereas; and”).
Appeal 2010-008525
Application 11/212,135

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THE REMAINING OBVIOUSNESS REJECTIONS
Because the Examiner has not shown that Urita or Hill remedies the
deficiencies noted above regarding the independent claims, we do not
sustain (1) the obviousness rejection of dependent claim 7 over Daudelin,
Kiema, and Urita or (2) the obviousness rejection of dependent claim 8 over
Daudelin, Kiema, and Hill for similar reasons.

CONCLUSION
The Examiner erred in rejecting claims 1-20 under 35 U.S.C.
§ 103(a).

ORDER
The Examiner’s decision rejecting claims 1-20 is reversed.

REVERSED

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