95001193 (P.T.A.B. Feb. 26, 2015)

Ex Parte 7043751 et al

Patent Trial and Appeal BoardFeb 26, 2015

95001193 (P.T.A.B. Feb. 26, 2015)

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. 95/001,193 05/28/2009 7043751 60851-379769 1919 23370 7590 02/27/2015 KILPATRICK TOWNSEND & STOCKTON LLP 1100 PEACHTREE STREET SUITE 2800 ATLANTA, GA 30309 EXAMINER WOOD, WILLIAM H ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 02/27/2015 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 ____________ HTC CORPORATION Requester and Respondent v. IPCOM GMBH & CO. Patent Owner and Appellant ____________________ Appeal 2014-003314 Reexamination Control 95/001,193 Patent US 7,043,751 B1 Technology Center 3900 ____________ Before RICHARD M. LEBOVITZ, MARC S. HOFF, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge DECISION ON REQUEST FOR REHEARING Appeal 2014-003314 Reexamination Control 95/001193 Patent US 7,043,751 B1 2 STATEMENT OF THE CASE Patent Owner filed a Request for Rehearing on July 28, 2014 under 37 C.F.R §41.79(a)(1) from the Decision on Appeal of the Patent Trial and Appeal Board (hereinafter “Board”) mailed June 27, 2014 (hereinafter “Decision”). In the Decision we affirmed the Examiner’s rejection of claims 1-26 and 30. Patent Owner alleges that the Board erred by misapprehending or overlooking the arguments presented in the Brief. We summarize Patent Owner’s allegations of error as follows: 1. An allegation that the Board’s decision with respect to claim 26 “was premised on erroneous findings that the cited art suggests asking, on the basis of the class data, whether the authorization data include a threshold value for a random number comparison” by failing to address the pivotal meaning of the phrase “on the basis of the access class data;” 2. An allegation that the Board’s decision utilized “an improper interpretation of the phrases ‘right of access’ and “access . . . is enabled;” and, 3. An allegation that the Board’s decision erroneously interpreted the “asking steps” in all claims as “merely requiring asking whether the access authorization data includes an access threshold value.” Consequently, Patent Owner requests a rehearing of the Board’s Opinion affirming the rejection of claims 1-26 and 30. Req. Reh’g 10. We have carefully reviewed the Decision in light of Patent Owner’s allegations of error. Appeal 2014-003314 Reexamination Control 95/001193 Patent US 7,043,751 B1 3 ANALYSIS With respect to claim 26, Patent Owner argues that the language of that claim requires the “evaluation unit of the mobile station be asking something on the basis of access class data.” Patent Owner asserts that the proper interpretation of the claim language requires: “that the result of asking whether the access authorization data includes an access threshold value for comparison must depend on the access class data. Req. Reh’g 3. In contrast, Patent Owner urges that Requester’s position that this claim language requires “whether or not to ask at all must depend on the access class data” is erroneous. Id. Patent Owner argues that the Board misapprehended the correct interpretation of claim 26 which states: the evaluation unit for asking when information signals which contain access authorization data that encode an access threshold value and include access class data that corresponds to a plurality of user classes are received, on the basis of the access class data, whether the access authorization data include an access threshold value for comparison of the access threshold value with a random number or a pseudo-random number. Patent Owner argues that the express wording of this claim requires “an evaluation that asks something based on received access class data.” That is, it is Patent Owner’s position that the received access class data must be used in determining the result of the asking, i.e. the access class data must be utilized to determine whether or not the access authorization data includes a value for comparison with a number. Id. at 4. In support of this position, Patent Owner argues that Requester’s interpretation, that the “asking” is based upon access class data, is not Appeal 2014-003314 Reexamination Control 95/001193 Patent US 7,043,751 B1 4 consistent with the specification. Patent Owner points to the two embodiments described in Figures 3a-3c, noting that neither embodiment uses access class data to determine whether to ask a question about received data. Patent Owner urges that in the first embodiment (Figs. 3a-3b), the access class information is not utilized to determine whether or not to ask any question, and in the second embodiment (Fig. 3c), the access class bits provide the result of asking the question of whether there is an access threshold value that must be utilized in a random number comparison. Thus, Patent Owner argues, if the claim is properly interpreted to require that the evaluation unit ask whether the access authorization data include an access threshold value for comparison where the result of that asking depends upon the access class information. Id. at 4-6. Requester, in response to Patent Owner’s request, urges that claim 26 merely requires that the access class data be used to determine whether the Access Threshold Value (“ATV”) is included, in the manner taught by the cited prior art. Opp. to Req. Reh’g. 3. As noted in the Decision (page 6.), each claim is directed to granting access to a telecommunications channel and Patent Owner does not distinguish between “access” and “subsequent access” in the appealed claims, leading us to the conclusion that these claims can be read upon the subsequent access procedure taught by the prior art. The March 1998 GSM Specification and the October 1998 GSM Specification both teach that access is initially granted by class barring techniques and that subsequent access, in the event of a collision, is determined by random number comparison. As expressed in the Decision, at page 7, we find that an inquiry regarding a random number associated with a mobile station must necessarily be accomplished in order to perform the Appeal 2014-003314 Reexamination Control 95/001193 Patent US 7,043,751 B1 5 random number comparison persistence control process described in both GSM references. Further, in response to a withdrawn rejection regarding support for the claimed phrase “on the basis of the access class data,” Patent Owner cited the specification of the ‘751 Patent, which describes the use of the telecommunication channel by particular users of a “predetermined user class,” such as police or fire departments (’751 Patent, col. 1, ll. 45-64, cited in Comments Filed in Response to an Action Closing Prosecution dated May 31, 2012). We interpret the claimed description of evaluating access requests “on the basis of the access class data,” as described in Patent Owner’s specification, to be almost exactly what is described in the cited GSM references, where access is initially determined on the basis of access class data, and thereafter based upon random number comparison. As we have interpreted this phrase as described in Patent Owner’s specification, we decline to disturb our previous finding. Next, Patent Owner urges error on our part by alleging we have misapprehended the meaning of “right of access” and “access . . . is enabled” as encompassing both an initial sending and a resending of a message in a manner that is inconsistent with the ‘751 Patent specification. In support of this position, Patent Owner relies upon column 10, lines 24-37 of the ‘751 Patent specification, which describes a repetition counter and repeat interval which Patent Owner argues are not part of the bit pattern of “access” rights granted. Req. Reh’g. 8. We initially note that the cited portion of the ‘751 Patent specification relied upon by Patent Owner, on its face, describes what we believe to be an Appeal 2014-003314 Reexamination Control 95/001193 Patent US 7,043,751 B1 6 alternative approach, i.e. “can additionally be attained by . . .” Further, the description that the repetition counter and/or repeat interval may be utilized “[t]ogether with the bit pattern of access rights granted” seems to imply that the repetition counter and/or repeat interval form part of the “access” rights, rather than a separate mechanism. Absent some evidence (beyond mere attorney argument) that the repetition counter and/or repeat interval do not form part of the “access” mechanism, we find no error in the Decision.. Finally, Patent Owner argues that the Board erred in rejecting claims 13, 14, 19, 22, 26, and 30 by not addressing the “for comparison” language in those claims. Patent Owner argues that the language in these claims specifically requires that “the evaluation unit be configured for asking whether an access threshold value is to be used in a comparison with a random number to enable channel access.” Req. Reh’g. 9. The Decision noted our belief that it is beyond cavil that an inquiry regarding the value/existence of a random number associated with a mobile station must necessarily be accomplished in order to perform the random number comparison persistence control process described in both GSM references. We therefore found that the Examiner did not err in finding that the cited prior art references necessarily teach “asking” in the manner claimed. For this reason we decline to modify our original finding. We are therefore satisfied that all arguments timely submitted by Patent Owner and Requester in the Briefs were adequately addressed in the original Decision. We have consequently found that Patent Owner has not shown that the Board erred in misapprehending or overlooking those identified arguments previously raised in the Briefs. Therefore, we maintain Appeal 2014-003314 Reexamination Control 95/001193 Patent US 7,043,751 B1 7 our position as set forth in the Decision that Patent Owner has not shown error in the Examiner’s rejection of claims 1-26 and 30. CONCLUSION In view of the foregoing discussion, we decline to modify our decision in this Appeal. Consequently, we deny Patent Owner’s Request for Rehearing with respect to making any changes therein. DENIED Appeal 2014-003314 Reexamination Control 95/001193 Patent US 7,043,751 B1 8 ack Patent Owner: KILPATRICK TOWNSEND & STOCKTON LLP 1100 PEACHTREE STREET SUITE 2800 ATLANTA, GA 30309 Third Party Requester: PERKINS COIE LLP PATENT-SEA P.O. BOX 1247 SEATTLE, WA 98111-1247