Ex Parte Welsh et al

Board of Patent Appeals and Interferences

Jan 29, 2009

11005502 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEVEN M. WELSH, RAKESH BAKSHI,
ROY HERBERT DURDIK, and KARL E. SCHWAB
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Appeal 2008-5585
Application 11/005,502
Technology Center 2600
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Decided: January 29, 2009
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Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO, and
ROBERT E. NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 of the final
rejection of claims 1, 4 through 11, and 14 through 18.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm the Examiner’s rejection of these claims.

1 Claims 2, 3, 12, and 13 were previously canceled.
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Application 11/005,502

INVENTION
The invention is directed towards a method for collecting diagnostic
information with respect to a failed call in a wireless system. See generally
Spec. 1. Claim 1 is representative of the invention and reproduced below:
1. A method for controlling a communication system,
comprising:
establishing a first communications session with the
communications system;
receiving a signal from the communication system
identifying at least one type of call failure event;
collecting information related to preselected parameters
associated with the first communications session in response to
the first communications session experiencing a call failure
event of the type identified in the signal from the
communications system;
establishing a second communications session with the
communications system; and
delivering at least a portion of the collected information to
the communications system via the second communications
system.

REFERENCES
Snyder US 2003/0134631 Jul. 17, 2003

Koivukangas EP 1 309 214 A1 May 7, 2003

REJECTIONS AT ISSUE
The Examiner rejected claims 1, 4-11, and 14-18 under 35 U.S.C.
§ 103(a) as being unpatentable over Koivukangas in view of Snyder.

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ISSUE
Rejection of claims 1, 4-11, and 14-18 under 35 U.S.C. § 103(a) over
Koivukangas in view of Snyder.
Appellants contend on pages 5 through 9 of the Appeal Brief that the
Examiner’s rejection of claims 1, 4-11, and 14-18 under 35 U.S.C. § 103(a)
over Koivukangas in view of Snyder is in error. Appellants contend that
neither reference discloses “collecting information associated with selected
types of call failure events”; “receiving a signal from a communications
system identifying at least one type of call failure event, as set forth in
independent claim 1, and delivering a first signal to the mobile device
identifying at least one type of call failure event, as set forth in independent
claim 18”2; “collecting information related to preselected parameters
associated with the first communications session in response to the first
communications session experiencing the call failure event of the type
indicated in the first signal, as set forth in independent claims 1 and 18.”3
App. Br. 7-8. In addition, Appellants contend that there is no motivation or
suggestion to combine the teachings of Snyder with Koivukangas.
Thus, with respect to claims 1, 4-11, and 14-18, the issue before us is:
have Appellants shown that the Examiner erred in finding that Koivukangas
in view of Snyder teach the claim limitations set forth in independent claims

2 Claim 18 depends from claim 11. Therefore, we believe Appellants meant
to argue that this claim limitation was set forth in independent claim 11 and
we will read the argument as such.
3 See footnote 2.
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1 and 114, and if so, did the Examiner err in finding sufficient motivation to
combine the references?

FINDINGS OF FACT
Koivukangas
1. Koivukangas discloses a system capable of storing
performance-related data (PPCs) in a mobile station and, upon the
occurrence of a triggering event, transferring the PPCs to a
computer for analysis. Pg. 1, § 57.
2. PPCs include data indicating “a number of dropped calls and/or
unsuccessful origination attempts,” i.e., call failure events.
¶ [0027].
Snyder
3. Snyder discloses “one or more communication devices within a
communication network [that] are provided with a dynamically
and remotely configurable probe element.” Abstract.
4. The probe element, which is included within the one or more
communication devices, is a software element whose purpose is to
“monitor, measure and capture at least some portion of the
characteristics of the transactions the user engages in, from the
perspective of the user, as user interface data.” ¶ [0017].

4 Appellants’ arguments group the claims into two groups, the first group
consisting of claims 1 and 4 through 10 and the second group consisting of
claims 11 and 14 through 18. Therefore in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii),we select independent claims 1 and 11 to be representative
of the respective groups.
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5. The probe element’s software, i.e., the functional definition, “is
able to be dynamically and remotely configured, added to,
changed, deleted, upgraded, etc. at will via the one or more
communication links by the network operator or other party
interested in controlling probe operations of the communication
device.” ¶ [0017].
6. By changing the functional definition, the network operator is able
to change the desired diagnostic criterion requested to be
performed by the software probe. ¶ [0015] and ¶ [0019].
7. The desired diagnostic criterion can include user interaction data
which includes: “the location of attempted calls, … power
measurements, interference measurements, quality measurements
(such as signal strength, bit error rate, and frame erasure rate,
etc.), … characterization of a call as incoming or outgoing, data
throughput and location measurements (including latitude,
longitude, elevation, time, speed of vehicle in which device is
located).” ¶ [0022].
8. The information collected is sent back to the system to determine
areas that are experiencing certain network problems. ¶ [0034].

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PRINCIPLES OF LAW
Office personnel must rely on Appellants’ disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc).
“[I]nterpreting what is meant by a word in a claim ‘is not to be confused
with adding an extraneous limitation appearing in the specification, which is
improper.’” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348,
(emphasis in original) (citations and quotations omitted).
On the issue of obviousness, the Supreme Court has stated that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co.
v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if 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
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.

Id. at 1740. “One of the ways in which a patent’s subject matter can be
proved obvious is by noting that there existed at the time of the invention a
known problem for which there was an obvious solution encompassed by the
patent’s claims.” Id. at 1742.

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ANALYSIS
Rejection under 35 U.S.C. § 103(a) over Koivukangas in view of Snyder.
Claims 1 and 4-10
Appellants’ arguments have not persuaded us that the Examiner erred
in rejecting claim 1. Appellants contend that neither reference discloses the
following limitation recited in claim 1: “receiving a signal from the
communications system identifying at least one type of call failure event.”
App. Br. 6-8. The Examiner has found that Koivukangas discloses a system
that requests performance related data (i.e., dropped calls). Ans. 13. In
addition, the Examiner has found that Snyder discloses a system wherein the
data requested can be desired (i.e., a type of ) diagnostic criterion (i.e., a call
failure event). Ans. 14. We agree with the Examiner.
Koivukangas discloses a method of monitoring a communication
system to determine when calls are dropped. FF. 1 and 2. Snyder similarly
discloses a method of monitoring a communication system using probe
elements. FF. 1. The probe elements are located in the mobile unit and are
implemented in software. FF. 4. When a network operator chooses to
change the desired diagnostic criterion (i.e., the type of call failure event),
the network operator sends a software update, via the communication link, to
the probe element. FF. 5 and 6. Therefore, Koivukangas is able to monitor
one type of call failure event, i.e. a dropped call. However, Koivukangas
does not explicitly disclose the ability of the system to use a signal to
identify one type of call failure event. On the other hand, Snyder is able to
specify, i.e., identify, to the probes in a signal the desired diagnostic criterion
to be collected. As a result, the combination of Koivukangas’ system which
monitors call failure events with Snyder’s ability to use a signal to change
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the information requested in the software probe of the communication
device meets the claim limitation. Accordingly, Appellants’ arguments have
not persuaded us of error in the Examiner’s rejection.
Appellants also argue that neither Koivukangas nor Snyder discloses
the following portion of claim 1: “collecting information related to
preselected parameters associated with the first communications session in
response to the first communications session experiencing a call failure
event of the type identified in the signal from the communication system.”
App. Br. 6-8. The Examiner has found that the preselected parameters are
the PPCs, which include dropped calls, i.e., a call failure event. Ans. 14.
The Examiner has additionally found that information associated with the
PPCs is collected. Ans. 14. Further, the Examiner has found that Snyder
more clearly demonstrates this feature by the server’s ability to send desired
diagnostic criterion. Ans. 14. We agree with the Examiner.
As discussed above, Koivukangas discloses a method of monitoring a
communications system to determine when a call is dropped. FF. 1 and 2.
Snyder further discloses a communications system that sends a signal to a
probe element. FF. 3 and 5. The signal contains a functional definition that
specifies the diagnostic criterion to be performed by the software probe. FF.
5. Included within the diagnostic criterion are parameters associated with a
dropped call, such as: power measurements, interference measurements,
quality measurements (such as signal strength, bit error rate, and frame
erasure rate, etc.). FF. 7. Therefore, the combination of Koivukangas and
Snyder discloses collecting specified information relating to a dropped call.
Accordingly, Appellants’ arguments have not persuaded us of error.
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We are not persuaded by Appellants’ argument that there is no
motivation or suggestion to combine the references. Appellants’ argument
focuses on there being no motivation to combine the references to include
collection of information related to call failure events. App. Br. 8-9. We are
not persuaded by this argument. As discussed supra, we find that
Koivukangas discusses monitoring call failure events. Further, as to the
rationale to combine the references, the Examiner stated, on pages 17 and 18
of the Answer that the combination would enable dynamic measurement and
monitoring of a mobile device within a communication network. In
addition, the Examiner stated that the combination would allow for the
efficient collection of large amounts of data from actual call failure events so
that the data can be analyzed to determine the location and the reasons for
failure. Ans. 18. Appellants’ argument, that there is no motivation to collect
call failure events, has not addressed an error in the Examiner’s reasoning as
to why the skilled artisan would combine the teachings. In the absence of
such argument and evidence, we find the Examiner’s finding that a skilled
artisan would combine the references to be sufficient.
Accordingly, Appellants’ arguments have not persuaded us of error in
the Examiner’s rejection of claim 1 or of claims 4 through 10 which are
grouped with claim 1.
Rejection under 35 U.S.C. § 103(a) over Koivukangas in view of Snyder.
Claims 11 and 14-18
Appellants’ arguments have not persuaded us that the Examiner erred
in rejecting claim 11. Appellants argue on pages 6 through 8 of the Appeal
Brief, that neither reference teaches “delivering a first signal to the mobile
device identifying at least one type of call failure event, as set forth in
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independent claim 18.”5 App. Br. 7. However, as indicated supra with
respect to claim 1, Koivukangas discloses a system and method wherein
performance-related data (PPCs) are collected during operation of a
communication system. FF. 1. The PPCs include indications of dropped
calls. FF. 2. Snyder discloses a communications system wherein mobile
units contain a software probe element that is used to collect diagnostic
criterion. FF. 3-4. A network operator has the ability to configure, add to,
change, delete, upgrade, etc., the information requested to be collected at
will. FF. 5-6. Therefore, the network operator is able to deliver a signal to
a mobile device to identify at least one type of call failure event. As such,
Appellants’ arguments have not persuaded us of error in the Examiner’s
rejection.
Additionally, Appellants argue that neither reference explicitly
teaches “collecting information related to preselected parameters associated
with the first communications session in response to the first
communications session experiencing the call failure event of the type
indicated in the first signal.” App. Br. 8. As discussed supra with respect to
claim 1, we find that Koivukangas and Snyder disclose this limitation. As
such, Appellants arguments have not persuaded us of error in the Examiner’s
rejection.
Finally, Appellants argue that there is no motivation to combine the
references. App. Br. 8-9. As discussed supra with respect to claim 1, we
find that the Examiner has provided a reasoning to combine the references
and Appellants have not shown error in the Examiner’s reasoning.

5 See footnote 2.
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Accordingly, we find the Examiner’s finding that a skilled artisan would
combine the teachings of the references to be sufficient.
Accordingly, Appellants’ arguments have not persuaded us of error in
the Examiner’s rejection of claim 11 or of claims 14 through 18 which are
grouped with claim 11.

CONCLUSIONS OF LAW
Appellants have not shown the Examiner erred in finding that
Koivukangas in view of Snyder teach the claim limitations set forth in
independent claims 1 and 11.
Further, Appellants have not shown the Examiner erred in finding
sufficient motivation to combine Koivukangas and Snyder.

SUMMARY
The Examiner’s rejection of claims 1, 4 through 11, and 14 through 18
is affirmed.
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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

ELD

WILLIAMS, MORGAN & AMERSON
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