Ex Parte 6445777 et al

Patent Trial and Appeal Board

Feb 11, 2019

90013382 (P.T.A.B. Feb. 11, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
90/013,382 11/12/2014 6445777 6178-041 6010
28120 7590 02/11/2019
ROPES & GRAY LLP
IPRM Docketing - Floor 43
PRUDENTIAL TOWER
800 BOYLSTON STREET
BOSTON, MA 02199-3600
UNITED STATES OF AMERICA
EXAMINER
CORSARO, NICK
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/11/2019 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 ADVANCED MEDIA NETWORKS, LLC,
Patent Owner and Appellant
____________

Appeal 2018-003150
Reexamination Control 90/013,382
Patent 6,445,777 Bl
Technology Center 3900
____________

Before JOHN A. JEFFERY, STEPHEN C. SIU, and CHRISTA P. ZADO,
Administrative Patent Judges.

SIU, Administrative Patent Judge.

Opinion Concurring filed by JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL

This proceeding arose out of a request for ex parte reexamination of
U.S. Patent No. 6,445,777 B1 (“the ’777 patent”) to Curtis Clark, entitled
Mobile Tele-Computer Network, issued September 3, 2002. An oral hearing
was conducted on September 4, 2018.
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Patent Owner appeals under 35 U.S.C. § 134 and 306 from the
Examiner’s rejection of claims 1–48, 50–64, 66–81, 83–90, 92–103, 105–
119, and 121–152. App. Br. 3, 6–8.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We Affirm.
The disclosed invention relates generally to mobile communications.
See Spec 1:12.
Claim 1 reads as follows:

1. A system comprising: a satellite communication
subsystem; a wireless local area network (LAN) that includes at
least one computer; and a mobile unit configured to transfer
broadband information as a single nomadic transmission/reception
point between the satellite communication subsystem and the
wireless LAN using an ethernet packet switching protocol.

Patent Owner appeals the following rejections:
Claims 1, 10, 13, 22, 28, 110, 123, 131, 139, and 145 under 35 U.S.C.
§ 102(e) as anticipated by Kubler2.
Claims 1, 2, 9, 10, 13, 22, 28, 110, 123, 131, 139 and 145 under 35
U.S.C. § 102(e) as anticipated by Rebec3.

1 Appeal Brief, filed January 25, 2017 (“App. Br.”).
2 US Patent 5,726,984, issued March 10, 1998 (“Kubler”).
3 US Patent 6,175,717 B1, issued January 16, 2001 (“Rebec”).
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Claims 1–28, 30, 31, 33, 37, 38, 43, 46–48, 50, 52, 53, 55, 63, 64, 66,
68, 69, 71, 77, 80, 84, 85, 87, 89, 90, 92, 94, 95, 97, 102, 110–112, 116, 121,
123–125, 131–133, 139, 140, and 145–147 under 35 U.S.C. § 103(a) as
unpatentable over Rebec, Dutta4, and Normoyle5.
Claims 1–28, 30, 31, 33, 37, 38, 40–43, 46–48, 50, 52, 53, 55, 58–60,
63, 64, 66, 68, 69, 71, 72, 74–77, 80, 84, 85, 87, 89, 90, 92, 94, 95, 97, 99–
102, 110–116, 121, 123–127, 131–135, 139–142, 145 and 147–149 under 35
U.S.C. § 103 as unpatentable over Dutta and Kubler.
Claims 1–28, 30, 31, 33, 37, 38, 40–43, 46–48, 50, 52, 53, 55, 58–60,
63, 64, 66, 68, 69, 71, 72, 74−77, 80, 84, 85, 87, 89, 90, 92, 94, 95, 97, 99–
102, 110, 111, 112–116, 121, 123–127, 131–135, 139–142, 145, 146, 148,
and 149 under 35 U.S.C. § 103(a) as unpatentable over Kubler, Jonas6, and
Katz.7
Claims 29, 32, 34, 35, 51, 54, 67, 70, 83, 86, 93, and 96 under 35
U.S.C. § 103(a) as unpatentable over Comer8 and any one of the

4 US Patent 5,953,319, issued September 14, 1999 (“Dutta”).
5 M.B. Normoyle and R.E. Nunan, “A Tactical Deployable Wireless
Multimedia LAN,” 1993 (“Normoyle”).
6 Karl Jonas, Manfred Kaul, Lothar Klein, and Dirk Steinberg,
“Interconnection of ATM Networks Via Satellite Links for Multimedia
Teleconferencing,” 1995 (“Jonas”).
7 Randy H. Katz, “Improving Communication Through Situation Awareness,
Adaptation and Mobility in Wireless Information Systems,” Oct. 1992
(“Katz”).
8 Douglas E. Comer, “Internetworking with TCP/IP, Vol. I, Principles,
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combination of Kubler, Jonas, and Katz; the combination of Rebec, Dutta,
and Normoyle; or the combination of Dutta and Kubler.
Claims 36, 56, and 72 under 35 U.S.C. § 103(a) as unpatentable over
Oikarinen9 and any one of the combination of Kubler, Jonas, and Katz; the
combination of Rebec, Dutta, and Normoyle; or the combination of Dutta
and Kubler.
Claims 39, 57, 73, and 98 under 35 U.S.C. § 103(a) as unpatentable
over Robinson-CGI10 and any one of the combination of Kubler, Jonas, and
Katz; the combination of Rebec, Dutta, and Normoyle; or the combination of
Dutta and Kubler.
Claims 44, 61, 78, 88, 103, 105–109, 117–119, 122, 128–130, 136–
138, 143, 144, and 150–152 under 35 U.S.C. § 103(a) as unpatentable over
the Eng Patent11and any one of the combination of Kubler, Jonas, and Katz;
the combination of Rebec, Dutta, and Normoyle; or the combination of
Dutta and Kubler.
Claims 45, 62, 79, and 81 under 35 U.S.C. § 103(a) as unpatentable
over Wilson12 and any one of the combination of Kubler, Jonas, and Katz;

Protocols, and Architecture,” 1995 (“Comer”).
9 J. Oikarinen and D. Reed, “Internet Relay Chat Protocol,” RFC 1459, May
1993 (“Oikarinen”).
10 D. Robinson, “The WWW Common Gateway Interface Version 1.1”,
January 1996 (“Robinson-CGI”).
11 US Patent 5,623,495, issued April 22, 1997 (“Eng Patent”).
12 US Patent 4,663,633, issued May 5, 1987 (“Wilson”).
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the combination of Rebec, Dutta, and Normoyle; or the combination of
Dutta and Kubler.
Claims 111 and 124 are unpatentable under 35 U.S. C. § 112, second
paragraph as indefinite.

ISSUE
Did the Examiner err in rejecting claims 1–48, 50–64, 66–81, 83–90,
92–103, 105–119, and 121–152?

ANALYSIS
35 U.S.C. § 112, sixth paragraph and 35 U.S.C. § 112, second paragraph
Claims 1 and 10 recite a mobile unit configured to transfer broadband
information. The Examiner finds that “the phrase ‘mobile unit configured to
. . .’ . . . invokes 35 U.S.C. § 112, 6th paragraph,” that the Specification
discloses “examples as related to a vehicle such as a van or motor home,”
and that a “mobile unit” may include “a server and/or hub . . . including a
WLAN interface . . . and a satellite interface . . . which may be housed in a
vehicle or package” or a “vehicle, van or ‘mobile home.” Final Act. 16–19,
22. The Examiner also indicates that Patent Owner’s expert testifies that one
of skill in the art would have understood that the term “mobile unit” may
include any of “a class of devices, assemblies or systems with at least one
wireless transceiver or equivalent structure or combination of structures and
at least one antenna or equivalent structure so that the unit can transfer
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information,” “cellular telephone equipment installed in a vehicle,” or “a
mobile radio transceiver that can be a handheld or car mounted transceiver.”
Final Act. 16–19 (citing McNally Dec. ¶¶ 8, 10).
We agree with Patent Owner that the claim term “mobile unit” “does
not use the word ‘means,’” and that the claim term provides “sufficient
recitation of structure,” is “not a generic structural term such as ‘means,’
‘element,’ or ‘device’,” not “a coined term lacking a clear meaning, such as
‘widget’ or ‘ram-a-fram,’” and has “a well-known meaning to those of skill
in the electrical arts connotative of structure.” Personalized Media Comm.,
LLC, v. Int’l Trade Comm., 161 F.3d 696, 704 (Fed. Cir. 1998). See also
Inventio AG v. TyssenKrupp Elevator Americas Corp., 649 F.2d 1350, 1359
(Fed. Cir. 2011) (stating that “the claimed ‘computing unit’ . . . connotes
sufficiently definite structure to those of skill in the art”).
Even assuming that the structure of a “mobile unit” would have been
unknown to one of ordinary skill in the art, we still cannot agree with the
Examiner that the Specification fails to disclose sufficient structure at least
in view of Examiner’s indication that the Specification, in fact, discloses that
a “mobile unit” may be a “vehicle such as a van or motor home” or may
include “a server and/or hub . . . including a WLAN interface . . . and a
satellite interface . . . which may be housed in a vehicle or package” or an
equivalent.
The Examiner finds that Patent Owner’s and Patent Owner’s expert’s
proposed “structure” of the claimed “mobile unit,” as disclosed in the
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Specification, is insufficient because, according to the Examiner, the
proposed “structure” “is circular,” is “unclear how the structure . . . can
perform the entire function [recited in claim 1],” and “doesn’t address how
the alleged ‘mobile radio transceiver’ electronically connects with the . . .
‘satellite communication subsystem’ while ‘using an Ethernet packing
switching protocol.’” Final Act. 17–19. Based on these observations, the
Examiner states that the disclosed “structure” of “the claimed ‘mobile unit’
is not sufficient to inform one of ordinary skill in the art that the term mobile
unit is a particular structure within the context of the claimed invention.” Id.
20. We are not persuaded by the Examiner at least because the Examiner
does not explain sufficiently how the alleged lack of disclosure of “how” to
perform a function indicates a supposed deficiency in disclosure of the
structure of a claimed “mobile unit.”
In addition, Patent Owner argues that the Specification discloses
sufficient “structure” of a “mobile unit.” App. Br. 16. For example, Patent
Owner argues that a “mobile unit” may be “in a vehicle,” may include “the
server 103A and hub 103B,” may have “an antenna that is used to
transmit/receive information,” may have “antennas . . . [that] are coupled to
hub 101B and 102B, respectively,” may include a “transmitter and receiver,”
or may include “a device, assembly or system that receives a signal from one
device and redistributes it to another device on a network.” App. Br. 16–17.
Even assuming that Patent Owner’s citation of “structure” in the
Specification is somehow “circular,” as the Examiner states, the Examiner
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does not adequately explain how the specific structures disclosed in the
Specification indicated by Patent Owner fail to convey sufficient “structure”
for purposes of 35 U.S.C. § 112, sixth paragraph.
The Examiner repeats arguments for the claim terms “mobile hub
station” and “portable field unit.” See, e.g., Final Act. 25–32. We are not
persuaded by the Examiner’s arguments for similar reasons. Therefore, we
reverse the Examiner’s rejection of claims 111 and 124 under 35 U.S.C. 112,
second paragraph.
Patent Owner argues that “the examiner decided to construe . . .
‘mobile unit,’ ‘mobile hub station,’ and ‘portable field unit’ – as means-plus-
function terms under 35 U.S.C. 112, ¶ 6. . . then found that he could ignore
the functional limitations in the challenged claims because he found that the
prior art disclosed what he believed to be corresponding structures.” App.
Br. 8–9, see also App. Br. 10–28. However, we note that the Examiner, in
fact, did not “ignore the functional limitations in the claims.” These issues
will be addressed below.

Rejections over Rebec
The Examiner finds that the combination of Rebec, Dutta, and
Normoyle discloses each claim limitation. Final Act. 102–40. For example,
the Examiner finds that Rebec discloses “a mobile unit” (Final Act. 103
(citing Rebec Figs 3B, 5)) and transferring broadband information using a
protocol, as recited in claim 1. Final Act. 103, 108–10 (citing Rebec 8:19–
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42, 65−67; 9:1–6; 11:35–55; 12:28–40; 13:4–20; Fig. 3B). The Examiner
also finds that Dutta discloses a mobile unit or “mobile vehicle” that
transfers information using a packet switching protocol (Final Act. 119
(citing Dutta Fig. 1, 3:45–60, 4:20–50, 5:1–5, 26–50)) and that Normoyle
also discloses transferring information using an Ethernet packet switching
protocol. Final Act. 125 (citing Normoyle Fig. 1, Table 1, p. 503). The
Examiner also provides a rationale demonstrating that it would have been
obvious to one of ordinary skill in the art to have combined the teachings of
Rebec, Dutta, and Normoyle. Final Act. 120–140.
As the Examiner indicates, Rebec discloses communicating with a
“communications system” on a “communications vehicle” and a “remote
digital suitcase.” Rebec 7:58, 59, 66; 8:5–10, 20–21. The system of Rebec
includes a “transmission system” and “digital receiving system,” that
includes, for example, a “protocol converter,” and transmitting “high quality
broadcast audio/video information” via “communication links” and “satellite
links.” Rebec 8:32–35; 9:29, 47; 10:30–31, 51. In other words, Rebec
discloses a satellite communications system that transmits information over
a transmission path via use of a communications protocol (that may be
“converted” as needed).
Like Rebec, Dutta also discloses transmitting information in wide area
“mobile communication network” including a mobile unit (e.g., “mobile
vehicle equipment”). Dutta 3:46, 50. Dutta also discloses “a wide range of
communication path sub-network services” that includes “packet
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switch[ing]” via a “packet switch.” Dutta 3:45, 57–58; 4:38. Hence, Dutta
confirms that one of ordinary skill in the art would have understood that
communication systems may include transmission of information in a
network via the use of a communications protocol (e.g., Rebec or Dutta) and
further discloses that one of ordinary skill in the art would have understood
that transmission of information may be performed via packet switching and
a packet switching protocol, as disclosed by Dutta.
Like Rebec and Dutta, Normoyle discloses transmission of
information in a wireless (mobile) communication system that includes the
use of “commercial off the shelf (COTS)” components, including devices for
transmission of information that are “compatible with IEEE 802.3/Ethernet
and TCP/IP routing protocols.” p. 502, col. 1, p. 503, col. 2. In other words,
Normoyle, like Rebec and Dutta, discloses that one of ordinary skill in the
art would have understood the known practice of transmitting information in
a communication system via packet switching and further discloses that one
of ordinary skill in the art would have understood the known practice of
using an ethernet packet switching protocol in the transmission of
information with a wireless LAN (e.g., using known “COTS” components
that are compatible with Ethernet and TCP/IP routing protocols). p. 503,
col. 1.
Patent Owner argues that “Rebec fails to disclose a mobile unit” and
“using an actual ethernet packet switching protocol.” App. Br. 40. We are
not persuaded by Patent Owner’s argument for at least the above discussed
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reasons. For example, Patent Owner does not explain a sufficient difference
between a “communications vehicle” of Rebec and the claimed “mobile
unit.” In both cases, an entity or “unit” is “mobile.” Also, even assuming
Patent Owner to be correct that Rebec does not disclose “an actual Ethernet
packet switching protocol,” Patent Owner does not assert or demonstrate
persuasively that the combination of Rebec, Dutta, and Normoyle also fails
to disclose or suggest this feature. For at least the above discussed reasons,
we agree with the Examiner that the combination of Rebec, Dutta, and
Normoyle at least suggests the disputed feature.
With respect to claims 110 and 145, Patent Owner argues that “Rebec
. . . fails to disclose a ‘wireless LAN’.” App. Br. 39. We are not persuaded
by Patent Owner’s argument. Even assuming Patent Owner to be correct
that Rebec fails to disclose a “wireless LAN,” Patent Owner does not assert
or demonstrate sufficiently that the combination of Rebec, Dutta, and
Normoyle also fails to disclose or suggest a “wireless LAN.” We note that
Rebec discloses a communication network and each of Dutta and Normoyle
discloses that one of skill in the art would have understood that
communication networks include wireless networks. See e.g., Dutta Fig. 1.
With respect to claims 5, 16, 43, 77, 110, and 145, Patent Owner
argues that Rebec fails to disclose “at least one computer” or “at least one
personal computer.” App. Br. 39. We are not persuaded by Patent Owner’s
argument, given the fact that “a person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550
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U.S. 398, 421 (2007). Even assuming Patent Owner to be correct that Rebec
fails to disclose the specific term “computer,” the inclusion of a computer
within a network of communication devices would have been within the
purview of one of ordinary skill of ordinary creativity – particularly given
the fact that one of ordinary skill is not merely an automaton.
Patent Owner argues that Rebec fails to disclose “a ‘secured private
intranet’ as required by claims 10, 22, 28, 123, and 139.” App. Br. 39. We
are not persuaded by Patent Owner’s argument. Even assuming Rebec, in
fact, fails to disclose a network that is “secure” and “private,” as Patent
Owner contends, Patent Owner does not assert or demonstrate persuasively
that the combination of Rebec, Dutta, and Normoyle, as opposed to Rebec in
isolation, also fails to disclose or suggest a “secure” and “private” network.
In any event, we also note that, as previously noted, a skilled artisan is not
an “automaton” and possesses “ordinary creativity.”
Also, “[w]hen there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within
his or her technical grasp. If this leads to the anticipated success, it is likely
the product not of innovation but of ordinary skill and common sense.” KSR,
550 U.S. at 421. Given that a communication network would have been
known and used in the art that would have included the transmission of
communications, and that such communications would have included private
communications, it would have been well within the purview of one of
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ordinary skill in the art to ensure that the network would have managed such
private communications. Providing a “secure” and/or “private” network to
manage such communications would have entailed no more than common
sense by one of ordinary skill in the art to arrive at the anticipated success of
providing a communication network in which communications may be
transmitted (securely). “Rigid preventative rules that deny factfinders
recourse to common sense . . . are neither necessary under our case law nor
consistent with it.” Id.
Patent Owner argues that there is “exclusivity between satellite
communications protocols vs. terrestrial protocols,” and ‘“complete
collapses of TCP performance’ using TCP/IP over ATM on the satellite
portion of the network.” App. Br. 41 (citing Dutta 1:20–32, Jonas 4).
Hence, Patent Owner argues that, based on Dutta and Jonas, it would not
have been obvious to one of ordinary skill in the art to have combined the
teachings of Rebec, Dutta, and Normoyle because bodily incorporating the
Ethernet packet switching protocol of Normoyle/Dutta into the
communication system of Rebec would have resulted in “complete
collapse.” The cited portion of Dutta discloses:
A logical connection merely establishes the routing of packets
through a multiplicity of switching nodes within the network,
the path being determined by source and destination addresses
of the packets. It is not necessary to dedicate to the call a
specific physical path for the entire call duration – packets with
different source and destination addresses, following different
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logical paths, are time multiplexed on the links within the
network.

Mobile packet data networks in existence today use exclusively
a satellite transmission path or exclusively a terrestrial
transmission path.

Dutta 1:20–32.
We do not identify a disclosure within the cited portion of Dutta that
would support Patent Owner’s contention that “using TCP/IP over ATM on
the satellite portion of the network” would result in negative consequences,
much less “complete collapse.” In any event, claim 1 recites “a mobile unit
configured to transfer . . . information . . . between the satellite
communication subsystem and the wireless LAN using an ethernet packet
switching protocol” but does not also recite “using TCP/IP over ATM on the
satellite portion of the network.” In fact, claim 1 does not recite using any
specific protocol “on the satellite portion of the network” at all.
As noted, Patent Owner also cites to Jonas as support for the alleged
“complete collapse” upon use of TCP. However, Jonas discloses that “we
wanted to use TCP on top of ATM” and, after making various technical
adjustments, such use “worked flawlessly.” Jonas p. 5, col. 1. In direct
contrast to Patent Owner’s contention that the use of TCP caused “complete
collapse,” Jonas actually discloses the opposite – i.e., the system “worked
flawlessly.”
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In any event, with regard to Patent Owner’s implied contention that it
would not have been obvious to one of ordinary skill in the art to have
bodily incorporated the teachings of Dutta and/or Normoyle into that of
Rebec, we note that “the test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference. . . . Rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art.”
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
With respect to claims 4, 14, 15, and 23, Patent Owner argues that
“Normoyle only mentions TCP/IP being used on the T1 side of the
network.” App. Br. 42. Hence, Patent Owner argues that Normoyle fails to
disclose using TCP/IP on a “side of the network” other than the “T1 side.”
Claims 4 and 15 recite the information is transferred using the TCP/IP
protocol. Claim 14 recites that the network “operates as a secured private
intranet.” Claim 23 recites that the network “operates as a private intranet.”
None of claims 4, 14, 15, or 23 also recites that TCP/IP must be used on any
particular “side” of the network, much less a side other than a “T1 side.” In
fact, none of claims 4, 14, 15, or 23 recites a “T1 side” at all. Therefore, we
need not consider whether Normoyle (or Rebec and Dutta) discloses the
hypothetical claim limitation.
With respect to claims 5, 16, 43, 77, 87, 102, 116, 125, 133, 140, and
147, Patent Owner argues that the Examiner “provides no explanation with
regard to how or why one would use ‘web browser software’ with a ‘signal
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processor.’” App. Br. 42. We note that none of the disputed claims recite
using “web browser software” with a “signal processor.” To the extent that
Patent Owner may be arguing that Rebec fails to disclose a “computer,” this
argument was previously addressed above.
With respect to claims 33, 47, 55, 71, and 97, Patent Owner argues
that Rebec, Dutta, and Normoyle discloses “the World Wide Web” but fails
to disclose user access “through one or more web-based software
applications.” App. Br. 42. However, we agree with the Examiner that it
would have been obvious to one of ordinary skill in the art using “the World
Wide Web” to have used applications that are appropriate for the “World
Wide Web” – namely, “web-based software applications.” One of skill in
the art would have understood that “web-based” applications would be used
on the “Web” at least as a matter of common sense. “[T]he common sense
of those skilled in the art demonstrates why some combinations would have
been obvious where others would not.” Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at
413).
Patent Owner does not provide additional arguments in support of the
remaining disputed claims or additional arguments with respect to the
combination of Rebec, Dutta, and Normoyle with any of Comer, Oikarinen,
Robinson-CGI, the Eng Patent, or Wilson. App. Br. 43–45.

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Rejections over Dutta
As noted above, claim 1 recites a satellite communication subsystem,
a wireless local area network, and a mobile unit configured to transfer
information between the satellite communication subsystem and the wireless
LAN using an ethernet packet switching protocol. The Examiner finds that
the combination of Dutta and Kubler (and any one of Comer, Oikarinen,
Robinson-CGI, Eng, or Wilson) discloses each disputed claim limitation.
Final Act. 148–178. For example, the Examiner finds that Dutta discloses a
satellite communication subsystem (Final Act. 149 (citing Dutta Fig. 1,
5:25–46)), a local area network (LAN) (Final Act. 149 (citing Dutta Fig. 1),
and “a mobile unit” (Final Act. 149 (citing Dutta Fig. 1)) configured to
transfer information using an ethernet packet switching protocol, as recited
in claim 1. Final Act. 149 (citing Dutta 3:45–60, 4:50–64, 5:25–50). The
Examiner also explains that Kubler discloses a similar system including a
“wireless local area network” that uses a “packet switched protocol.” Final
Act. 150 (citing Kubler Figs 28B, 28C, 44:65–67, 46:10–30, 9:24–26,
48:54–67, 49:53–67, 82:62–67).
As the Examiner indicates, Dutta discloses a “packet switched multi-
mode wide area mobile communication network” or “wireless data
transmission network” (Dutta 3:45–46, 4:32–33), including “mobile
terrestrial vehicles” (Dutta 4:36) and “[m]obile vehicle data terminal
equipment.” Dutta 2:66, 4:36, 41–42. The “mobile terrestrial vehicles”
facilitate communication between mobile vehicle data terminal equipment
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120 . . . through base station packet switch 130” to “selectively couple” the
transmission “to any of the multiple . . . transmission paths” including a
“satellite sub-network.” Dutta 1:30; 4:51–57, 5:38, Fig. 1. Hence, as the
Examiner finds, Dutta discloses a “satellite communication subsystem” (e.g.,
a “satellite sub-network”), wireless local area network (e.g., wireless data
transmission network), and a mobile unit (e.g., a “mobile terrestrial vehicle”)
configured to transfer information between the satellite communication
subsystem and the wireless LAN (e.g, between the “satellite sub-network”
and the “wireless local area network”) using an Ethernet packet switching
protocol (e.g., via the “packet switched multi-mode wide area mobile
communication network” of Dutta).
Patent Owner argues that Dutta “is silent with regard to the type of
connection between the mobile vehicle equipment 110 and terminal 120, i.e.,
whether wired or wireless.” App. Br. 46. As noted above, however, Dutta
discloses a “wireless data transmission network” (Dutta 3:45–46, 4:32–33).
Patent Owner argues that Kubler “does not teach using an Ethernet
packet switching protocol . . . over its wireless networks” (App. Br. 46) but
does not assert or demonstrate sufficiently that the combination of Dutta and
Kubler also fails to disclose using an Ethernet packet switching protocol. As
noted above and by the Examiner, Dutta discloses a “packet-switched”
network.
Patent Owner argues that it would not have been obvious to one of
ordinary skill in the art to have combined the teachings of Dutta and Kubler
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because, according to Patent Owner, “Kubler does not teach the necessity of
connecting wireless portable devices to a wide area network.” App. Br. 46.
We note, however, that the standard is whether it would have been obvious
to combine the teachings of Dutta and Kubler and not whether there would
have been a necessity to do so. In any event, with respect to Patent Owner’s
argument regarding Kubler’s alleged failure to disclose “wireless” devices,
as explained above and by the Examiner, Dutta discloses a “wireless”
network. One of skill in the art would have understood that a “wireless”
network would have included devices that are “wireless.”
Regarding claims 10, 22, 28, 123, and 139, Patent Owner argues that
Dutta fails to disclose a “secured private intranet” or that such an “intranet is
being used.” App. Br. 47. We are not persuaded by Patent Owner’s
argument. As previously discussed, Dutta discloses a “wireless data
transmission network.” Also as previously discussed, “[w]hen there is a
design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp. If
this leads to the anticipated success, it is likely the product not of innovation
but of ordinary skill and common sense.” KSR, 550 U.S. at 421. Given that
a communication network would have been known and used in the art that
would have included the transmission of communications and that such
communications would have included private communications, it would
have been well within the purview of one of ordinary skill in the art to
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ensure that the network would have managed such private communications.
Providing a “secure” and/or “private” network to manage such
communications would have entailed no more than common sense by one of
ordinary skill in the art to arrive at the anticipated success of providing a
communication network in which communications may be transmitted
(securely). “Rigid preventative rules that deny factfinders recourse to
common sense . . . are neither necessary under our case law nor consistent
with [it].” Id.
Regarding claim 22, Patent Owner argues that Dutta fails to disclose
“a redundant satellite communication system.” As previously discussed
Dutta discloses multiple transmission paths (e.g., “first transmission path,”
“second transmission path,” “Nth transmission path” – Dutta Fig. 1). Patent
Owner does not explain a sufficient difference between the Dutta system
with multiple (“redundant”) transmission paths and the “redundant” system
as recited in claim 22, for example.
Patent Owner does not provide additional arguments in support of the
other disputed claims or additional argument with respect to Dutta and
Kubler in combination with any of Comer, Oikarinen, Robinson-CGI, Eng,
or Wilson. App. Br. 47–49.
The above discussion addresses all the claims on appeal and are
dispositive, rendering it unnecessary to reach the propriety of any remaining
contentions. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
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1984); see also Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999); In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009).

CONCLUSION
We affirm the Examiner’s rejections of claims 1, 2, 9, 10, 13, 22, 28,
110, 123, 131, 139 and 145 as anticipated by Rebec; claims 1–28, 30, 31, 33,
37, 38, 43, 46–48, 50, 52, 53, 55, 63, 64, 66, 68, 69, 71, 77, 80, 84, 85, 87,
89, 90, 92, 94, 95, 97, 102, 110–112, 116, 121, 123–125, 131–133, 139, 140,
and 145–147 as unpatentable over Rebec, Dutta and Normoyle; claims 1–28,
30, 31, 33, 37, 38, 40–43, 46–48, 50, 52, 53, 55, 58–60, 63, 64, 66, 68, 69,
71, 72, 74–77, 80, 84, 85, 87, 89, 90, 92, 94, 95, 97, 99–102, 110–116, 121,
123–127, 131–135, 139–142, 145 and 147–149 as unpatentable over Dutta
and Kubler; claims 29, 32, 34, 35, 51, 54, 67, 70, 83, 86, 93, and 96 as
unpatentable over Comer and any one of the combination of Rebec, Dutta,
and Normoyle or the combination of Dutta and Kubler; claims 36, 56, and
72 as unpatentable over Oikarinen and any one of the combination of Rebec,
Dutta, and Normoyle or the combination of Dutta and Kubler; claims 39, 57,
73, and 98 as unpatentable over Robinson-CGI and any one of the
combination of Rebec, Dutta, and Normoyle or the combination of Dutta and
Kubler; claims 44, 61, 78, 88, 103, 105–109, 117–119, 122, 128–130, 136–
138, 143, 144, and 150–152 as unpatentable over the Eng Patent and any one
of the combination of Rebec, Dutta, and Normoyle or the combination of
Dutta and Kubler; and claims 45, 62, 79, and 81 as unpatentable over Wilson
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and any one of the combination of Rebec, Dutta, and Normoyle or the
combination of Dutta and Kubler.
We reverse the Examiner’s rejection of claims 111 and 124 under 35
U.S. C. § 112, second paragraph as indefinite.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ADVANCED MEDIA NETWORKS, LLC
____________

Appeal 2018-003150
Reexamination Control 90/013,382
Technology Center 3900
____________

JEFFERY, Administrative Patent Judge, CONCURRING:

I join the majority in its decision, but write separately to emphasize
that, based on the evidence on this record, the term “mobile unit” in claim 1
has a concrete structural meaning in the art and, therefore, does not invoke
means-plus-function treatment under 35 U.S.C. § 112, sixth paragraph
despite its apparent non-structural and functional terms. Notably, Appellant
cites definitions of “mobile unit” from no less than three dictionaries, and
shows similar usage of the term in other technical references, to prove this
point. See App. Br. 18–19.
At first blush, the term “mobile unit” seems to be merely a nonce
term, or non-structural generic placeholder, that is tantamount to the term
“means,” particularly when considered in light of our reviewing court’s
means-plus-function interpretation of functional limitations that include the
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term “unit.” For example, in Diebold Nixdorf, Inc. v. International Trade
Commission, 899 F.3d 1291 (Fed. Cir. 2018), our reviewing court held that
the term “cheque standby unit” failed to recite sufficiently definite structure,
and merely recited a function without sufficient structure for performing that
function. Diebold, 899 F.3d at 1298. In reaching this conclusion, the court
noted that the claims merely described the term “cheque standby unit” solely
in relation to its function and location in the apparatus. Id. Notably, the
court emphasized that despite expert testimony determining that the term
“cheque standby unit” is not a means-plus-function term, no other evidence
was cited, such as dictionary definitions, suggesting that “cheque standby
unit” is a term commonly understood by ordinarily skilled artisans to denote
a device or class of devices. Id. at 1300.
That is not the case here. To the contrary, we have not one—but
three—technical dictionary definitions establishing the meaning of “mobile
unit” as at least a device or class of devices as the term is understood in the
art. And we have other technical references on this record that confirm that
understanding.
So although “mobile unit” may appear at first blush to be a non-
structural nonce term, it is instead understood in the art as connoting
concrete structure as shown by the documentary evidence on this record. As
acknowledged at the oral hearing, had the term “mobile” been omitted from
the limitation at issue, such that claim recited “a unit configured to transfer
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broadband information . . . between the satellite communication subsystem
and the wireless LAN using an ethernet packet switching protocol,” the
generic term “unit” would have invoked means-plus-function treatment. See
Transcript of Oral Hearing, filed Sept. 26, 2018, at 6.13 But that is not the
case here, where just one additional word—“mobile”—makes all the
difference in this regard.
I, therefore, concur with the majority’s construction of “mobile unit”
as not invoking means-plus-function treatment, and join the majority’s
opinion in all other respects.

13 The relevant dialogue from the hearing transcript’s page 6 is reproduced
below with emphasis added:
“JUDGE JEFFERY: Would it make a difference here if, let’s say this
[limitation] said instead of mobile unit, just said, unit configured to transfer
broadband information? Just simply stripping out the word mobile?
MR. MCKEOWN: I think that’s a different case. . . . [b]ecause unit does not
have a dictionary definition that would correspond to a mobile context. It’s
just, it’s a generic term.”