Ex Parte Kelly et al

Patent Trial and Appeal Board

Sep 26, 2012

10426350 (P.T.A.B. Sep. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL R. KELLY, BRADLEY T. KENYON,
and MARK A. GULLETT
____________________

Appeal 2009-013643
Application 10/426,350
Technology Center 2400
____________________

Before ERIC S. FRAHM, BRUCE R. WINSOR, and RAMA G. ELLURU,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-15 and 17-19, all the claims pending in the application. Claim 16
has been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
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Appellants’ Disclosed Invention
Appellants disclose a wireless system for providing cross protocol
interoperability (Spec. 3:8-10) such that a communication session can be
created between the requesting station and any of a number of networks
upon which the station is registered (Spec. 3: 10-12).
Exemplary Claim
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below with emphases added:
1. A wireless system, comprising:
a first network protocol associated with a first network;
a second network protocol associated with a second network;
and
an interoperability node operable on the system to:
locate one or more stations within the first network in
response to a communication session setup request received via
the second network protocol, wherein the setup request is
interpreted and conveyed directly to the first network via the
first network protocol;
evaluate available networks for at least one of speed of
communications, cost of transmission, or quality of
transmission;
determine a preferred transmission path via one of the
first network protocol or the second network protocol based on
the evaluation; and
translate information sent via the preferred transmission
path between the first and second network protocols.

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The Examiner’s Rejections
(1) The Examiner rejected claims 1-8, 13-15, and 17-19 under 35
U.S.C. 103(a) over the combination of Bright (US 2002/0169883 A1) and
Ramaswamy (US 2004/0151162 A1). Ans. 3-9.
(2) The Examiner rejected claims 9-12 as being unpatentable under 35
U.S.C. 103(a) over the combination of Bright, Ramaswamy, and Gallagher
(US 5,933,784). Ans. 9-10.
Appellants’ Contentions
(1) With regard to the rejection of claims 1-8, 13-15, and 17-19 under
35 U.S.C. 103(a) over the combination of Bright and Ramaswamy,
Appellants present arguments on the merits only with regard to independent
claim 1 (see App. Br. 11-15; Reply Br. 2-3). Appellants argue that claims 2-
7 are patentable for their dependence from claim 1 (App. Br. 15). Such
arguments are not considered arguments for separate patentability.
1

Appellants’ arguments for independent claims 8, 14, 17, and 19 are
substantially identical to those presented for independent claim 1 (compare
App. Br. 11-15 with App. Br. 15-18 with App. Br. 18-20 with App. Br. 21-
24 with App. Br. 24-27; see also Reply Br. 2). Similar to claim 1,
independent claim 8 recites, “in response to a communication session setup
request received via the first network protocol . . . wherein the setup request
is interpreted and conveyed directly to one or more other network types via
the second network protocol . . .;” independent claim 14 recites “in response
to a communication session setup request received via the second network
protocol, wherein the setup request is interpreted and conveyed directly to

1
37 C.F.R. § 41.37(c)(1)(vii).
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the first network via the first network protocol . . .;” and independent claims
17 and 19 recite “in response to a communication session setup request
received via a second network protocol . . . interpreting and conveying the
setup request . . . to [at least one] networks via the first network
protocol . . . .”
Appellants argue that claims 9-13, 15, and 18 are patentable for their
dependence from claims 8, 14, and 17, respectively (see App. Br. 18, 20-21,
and 24). Such arguments are not considered arguments for separate
patentability.
2

Since all limitations are substantially the same, and the arguments are
substantially the same, independent claims 1, 8, 14, 17, and 19 will be
grouped together.
3
Separate patentability is not argued for dependent claims
2-7, 9-12, 13, 15, and 18. We, therefore, select claim 1 as representative of
the group of claims 1-8 and 10-15 and 17-19.
4

With regard to representative claim 1, Appellants argue (App. Br. 15-
18) that paragraphs 26 and 44 (the second embodiment) of Bright uses the
same network protocol, and not two different protocols as recited in claim 1,
because a set of common messages is used regardless of the protocol
supported (citing ¶ [0044]).
Appellants present new arguments in the Reply Brief that (i)
Ramaswamy selects an access network rather than determining a preferred
transmission path via a network (Reply Br. 2), and (ii) there is no motivation

2
Id.
3
Id.
4
Id.
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to combine Ramaswamy with Bright (Reply Br. 3). Appellants present no
explanation as to why these arguments were not raised in the Appeal Brief.
(See generally Reply Br.). Consequently, issues from these arguments are
raised for the first time in the Reply Brief, and, therefore, are deemed to be
waived. See Optivus Tech., Inc. v. Ion Beam Appl’ns S.A., 469 F.3d 978,
989 (Fed. Cir. 2006) (“an issue not raised by an appellant in its opening brief
. . . is waived.”) (citations and quotation marks omitted); see also Fuji Photo
Film Co. v. Jazz Photo Corp., 394 F.3d 1368, 1375 n.4 (Fed. Cir. 2005)
(arguments first raised in the reply brief and not properly raised in the
opening brief are not addressed.) These new arguments have not been
considered because they are untimely. See 37 C.F.R. § 41.41(g).
(2) With regard to the rejection of claims 9-12 as being unpatentable
under 35 U.S.C. 103(a) over the combination of Bright, Ramaswamy, and
Gallagher, Appellants argue that (i) claims 9-12 are patentable for the same
reasons presented with regard to claim 8 from which these claims depend
(which in turn is argued for similar reasons as provided for claim 1 (see App.
Br. 15-18)), and (ii) Gallagher fails to cure the deficiencies of Bright and
Ramaswamy (App. Br. 28-29).
Issues Presented on Appeal
Based on Appellants’ arguments, the issues presented on appeal are:
(1) Did the Examiner err in rejecting claims 1-8, 13-15, and 17-19
under 35 U.S.C. 103(a) because Bright, and thus the combination of Bright
and Ramaswamy, fails to teach or suggest an interoperability node operable
to “locate one or more stations within the first network in response to a
communication session setup request received via the second network
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protocol, wherein the setup request is interpreted and conveyed directly to
the first network via the first network protocol,” as recited in claim 1?
(2) Did the Examiner err in rejecting claims 9-12 as being
unpatentable under 35 U.S.C. 103(a) over the combination of Bright,
Ramaswamy, and Gallagher because Gallagher fails to cure the deficiencies
of Bright and Ramaswamy?
Because claims 9-12 depend from claim 8, and claim 8 stands or falls
with the outcome of the issue outlined above with regard to claim 1, the
result of the second issue as to claims 9-12 will stand or fall with the result
of the first issue as to claim 1.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contention in the Appeal Brief (App. Br. 11-29) and the Reply Brief (Reply
Br. 2-3) that the Examiner has erred.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to the Appellants’ Appeal Brief (Ans. 3-
21). Appellants arguments have little persuasive value as they rely only on
Bright’s description of a different disclosed embodiment (see embodiment
described at ¶ [0026], lines 17-21; Fig. 2 discussed in ¶¶ [0011] and [0039]-
[0051]) which describes the multiple-protocol home location register (MP-
HLR) 101 shown in Figure 2 as using common messages. The Examiner
(Ans. 4 and 12) relies upon another embodiment of Bright (see embodiment
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described at ¶ [0026], lines 12-17; Figs. 1 and 4 discussed in ¶¶ [0052]-
[0061]) as disclosing the feature recited in claim 1 of using different network
protocols, and not the embodiment asserted by Appellants.
We agree with the Examiner (Ans. 3-4 and 12-13) that the
embodiment of Figures 1 and 4 discloses that MP-HLR 101 uses two
different protocols as evidenced by MP-HLR 101’s use of GSM HLR 401
and ANSI-41 HLR 403 (¶ [0052]). More specifically, we agree with the
Examiner (Ans. 11-13) that Bright discloses a first protocol as being ANSI,
and a second and different protocol being GSM (¶¶ [0059] and [0060]).
Appellants do not dispute the findings made by the Examiner regarding the
ANSI and GSM protocols (the embodiment relied upon by the Examiner as
to Figures 1 and 4) in either of the briefs.
Appellants’ argument that there is no motivation to combine is
unpersuasive because it is untimely as discussed supra. However, even if
this argument is considered to have been timely made, Appellants have
provided no evidence on this record to support this assertion apart from mere
conclusory statements. It is well settled that mere lawyer’s arguments and
conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). The
Examiner’s proffered and articulated reasoning for making the combination,
that it would have been obvious to modify Bright’s MP-HLR to evaluate
characteristics of paths/networks from the multiple networks connected to
the MP-HLR including cost and a determined, preferred path/network based
on the evaluation “in order to reduce cost of operation by selecting the more
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cost effective network” (Ans. 4-5), is reasonable and has not been
persuasively rebutted.

CONCLUSIONS
(1) The Examiner did not err in rejecting:
(a) claims 1-8, 13-15, and 17-19 as being unpatentable under 35
U.S.C. 103(a) over the combination of Bright and Ramaswamy; and
(b) claims 9-12 as being unpatentable under 35 U.S.C. 103(a)
over the combination of Bright, Ramaswamy, and Gallagher.
(2) Claims 1-15 and 17-19 are not patentable.

DECISION
The Examiner’s rejections of claims 1-15 and 17-19 are affirmed.
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