Ex Parte Mahany et al

Patent Trial and Appeal BoardJul 28, 2014

11419565 (P.T.A.B. Jul. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/419,565 05/22/2006 Ronald L. Mahany 14528.00248 9563 16378 7590 07/28/2014 BGL/Broadcom P.O. Box 10395 Chicago, IL 60610 EXAMINER NGUYEN, PHUONGCHAU BA ART UNIT PAPER NUMBER 2464 MAIL DATE DELIVERY MODE 07/28/2014 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 RONALD L. MAHANY, ALAN G. BUNTE, RONALD E. LUSE, GUY J. WEST, and CHARLES D. GOLLNICK ____________________ Appeal 2011-004749 Application 11/419,565 Technology Center 2400 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 59, 60, 62–64, 69, 70, and 76–90. Claim 1–58, 61, 65–68, and 71–75 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2011-004749 Application 11/419,565 2 A. INVENTION According to Appellants, the invention relates generally to local area networks and, more specifically, to a communication system for maintaining connectivity between devices on networks which have different operating parameters while limiting the power drain of battery powered devices (Spec. 7, ll. 11–17). B. ILLUSTRATIVE CLAIM Claim 59 is exemplary: 59. A communication system comprising: a first radio network; a second radio network having a shorter range than the first network; and a mobile network device comprising a radio transceiver configured to communicate with both the first and second radio networks; the mobile network device being operable to participate as a slave device on the first radio network and operable to participate as a master device on the second radio network. C. REJECTIONS The prior art, relied upon by the Examiner in rejecting the claims on appeal are: Thrower US 4,748,655 May 31, 1988 Darnell US 5,043,736 Aug. 27, 1991 Appeal 2011-004749 Application 11/419,565 3 Claims 59, 60, 62, 63, 69, 76–79, 83, 84, and 87–90 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Thrower. Claims 70, 80, 82, and 85 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Thrower. Claim 86 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Thrower and Darnell.1 II. ISSUE The issue before us is whether the Examiner has erred in finding Thrower discloses a “communication system” comprising “a mobile network device comprising a radio transceiver configured to communicate with both the first and second radio networks” (claim 59, emphases added). III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Thrower 1. Thrower discloses a gateway comprising a communal multi- channel radio telephone unit 15 that can be accessed simultaneously by a number of subscribers over their personal portable telephones 11 (col. 4, ll. 57–63). 2. Unit 15 of Thrower comprises a first multi-channel receiver/transmitter 20 which communicates with the various personal telephones 11 within the service area of the unit 15 (col. 5, ll. 44–47) and a 1 The rejection of claim 64 under 35 U.S.C. 112, 1st paragraph has been withdrawn (Ans. 3). Appeal 2011-004749 Application 11/419,565 4 second receiver/transmitter 26 which communicates this information over the control channel to the base station of the cell in which the unit is located (id. at ll. 64–67). IV. ANALYSIS Claim 59 Appellants contend “Figure 2 of Thrower shows that the multi- channel gateway unit 15 includes two separate transceivers” (App. Br. 4) and thus “Thrower fails to teach ‘a radio transceiver configured to communicate with both the first and second radio networks,’ as claimed in claim 59” (id. at 5). However, the Examiner finds Thrower discloses “a mobile network device (single mobile telephone 9) comprising a radio transceiver” which “inherently comprised the first radio unit (1st transceiver) and second radio unit (2nd transceiver)” that is “configured operable to communicate with” first and second radio networks (Ans. 4, 5). That is, the Examiner finds Thrower discloses a single radio transceiver unit with “the radio transceiver unit comprising two transceivers” (id. at 14). We find no error with the Examiner’s broad but reasonable claim interpretation and the Examiner’s finding of anticipation. We give the claims their broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). At the outset, we note claim 59 is directed to a communication “system” and merely requires a “radio transceiver” with the intended purpose of “to communicate” with radio networks. The intended purpose of the “radio transceiver” does not limit the scope of the “system” claim because the intended purpose merely defines a context in which the Appeal 2011-004749 Application 11/419,565 5 invention operates. See Boehringer Ingelheim Vetmedica, Inc. v. Schering- Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Moreover, since claim 59 is directed to a “system,” we conclude the contested functional limitation “to communicate” does not further limit the structure of the claimed system/apparatus. Our reviewing court guides that the patentability of an apparatus claim “depends on the claimed structure, not on the use or purpose of that structure.” Catalina Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see also Superior Industries. Inc. v. Masaba, Inc., 2013-1302, 2014 WL 163046 at *5 (Fed. Cir. Jan. 16, 2014) (Rader, J., concurring), [A] system claim generally covers what the system is, not what the system does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157,[](1875) (“The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.”). [That is,] it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009). We find this reasoning applicable here, as Appellants urge that the claimed system (structure) is patentably distinguished over the prior art structure (Thrower’s structure) based solely on a functional limitation of how it is communicating with radio networks (Claim 59; App. Br. 5). Thus, giving the claim its broadest reasonable interpretation, we conclude the claimed “communication system” (apparatus) of claim 59 merely requires a “system” which comprises a “mobile network device” comprising “a radio transceiver.” Appeal 2011-004749 Application 11/419,565 6 Nevertheless, claim 1 does not define “radio transceiver” other than it is “configured to communicate” with first and second radio networks. We find no error with the Examiner’s broad but reasonable interpretation of a “radio transceiver” as any “radio transceiver unit” that comprises transceivers for communicating with a plurality of radio networks (Ans. 14). That is, we find no error with the Examiner’s finding that Thrower teaches “a radio transceiver” in that it discloses a “radio transceiver unit” for communicating with a plurality of radio networks (Ans. 14; FF 1-2). Additionally, even arguendo that our reviewing court interprets Thrower’s radio transceiver unit as comprising two separate transceivers and not “a” transceiver, the Court of Appeals for the Federal Circuit has repeatedly emphasized “that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (citing Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 977 (Fed. Cir. 1999); Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997); North Am. Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1575[,] 1576, (Fed. Cir. 1993)). Thus, contrary to Appellants’ contentions, claim 59 does not preclude a “mobile network device” having more than one radio transceiver, since such device would comprise at least “a” radio transceiver. Accordingly, we find no error with the Examiner’s anticipation rejection of claim 59 over Thrower. Appellants do not provide arguments for claims 60, 62, 63, 69, 76–79, 81, 83, 84, and 87–90 separate from those of claim 59 (App. Br. 5). Accordingly, claims 60, 62, 63, 69, 76–79, 81, 83, 84, and 87–90 fall with claim 59 over Thrower. Appeal 2011-004749 Application 11/419,565 7 Claims 70, 80, 82, 85 and 86 rejected under §103 Appellants do not provide arguments for claims 70, 80, 82, 85 and 86 separate from claim 59. Arguments not made are considered waived. Accordingly, Appellants also have shown no error with the Examiner’s rejections of claims 70, 80, 82, and 85 over Thrower, and of claim 86 over Thrower in further view of Darnell. V. CONCLUSION AND DECISION The Examiner’s rejections of claims 59, 60, 62, 63, 69, 70, and 76–90 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 rvb