Ex Parte Anand et al

Patent Trial and Appeal Board

Jan 27, 2017

13440793 (P.T.A.B. Jan. 27, 2017)

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.
13/440,793 04/05/2012 Narendra Anand 82963525 1016
56436 7590
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
CHAKRABORTY, RAJARSHI
ART UNIT PAPER NUMBER
2648
NOTIFICATION DATE DELIVERY MODE
01/31/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NARENDRA ANAND, SUNG-JU LEE,
and EDWARD KNIGHTLY
Appeal 2016-005297
Application 13/440,793
Technology Center 2600
Before BRUCE R. WINSOR, KARA L. SZPONDOWSKI, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-005297
Application 13/440,793
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1 and 3—20, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The application is directed to “[a] system [that] enhances
communications security in a wireless local area network.” (Abstract.)
Claim 1, reproduced below, is exemplary:
1. A system for enhancing communications security in a wire­
less network, comprising:
a multiple antenna array arranged to transmit signals;
a transmitter coupled to the multiple antenna array and con­
figured with a beamformer to transmit the signals, the beam-
former comprising:
a signal processor component that generates a transmit signal
to an intended user using a spatial signal beam, a blinding com­
ponent that computes one or more blinding signals using spatial
blinding beams having a zero inter-user interference condition
with the spatial signal beam, and
a beamforming component that generates the signal and
blinding beams, wherein the transmitter transmits the signal
beam and the blinding beams simultaneously, wherein the spatial
signal beam and the spatial blinding beams are generated using
channel information for only the intended user.
1 Appellants identify Hewlett-Packard Development Company, LP as the
real party in interest. (See App. Br. 3.)
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Application 13/440,793
THE REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kim et al. US 2010/0046659 A1 Feb. 25, 2010
Huietal. US 2010/0279729 Al Nov. 4, 2010
Shany et al. US 2012/0214404 Al Aug. 23, 2012
THE REJECTIONS
1. Claims 1, 5, 6, 7, 8, 9, 12, 14, 15, 16, 19, and 20 stand rejected
under 35 U.S.C. § 102(e) as anticipated by Shany. (See Final Act. 5—13.)
2. Claims 4, 10, 11, 13, 17, and 18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Shany and Hui. (See Final Act. 14—21.)
3. Claim 3 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Shany, Hui, and Kim. (See Final Act. 22—23.)
ANALYSIS
Each of the rejections is based on Shany, either alone or in
combination with Hui or with Hui and Kim. Appellants do not seek to
distinguish the claimed invention over these references. Instead, they argue
only that the rejections are improper because Shany is not prior art, relying
on a “Declaration Under 37 C.F.R. § 1.131 Accompanying A Request For
Continued Examination (RCE)” (the “Declaration”) signed by each of the
inventors and submitted in an effort to swear behind Shany. The Examiner
found the Declaration inadequate, and Appellants now seek our review of
that determination.
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Application 13/440,793
In the Declaration, the inventors aver, under oath, that
[W]e established prior invention of the claimed subject matter
due to an actual reduction to practice of our invention on a date
no later than February 17, 2011, which predates the earliest
effective filing date of Shany. An actual reduction to practice of
our invention is evidenced by the construction of tangible code
files that are implemented to perform every element of the
independent claims, and thus, operate for their intended purpose
as shown in the attached Exhibits A-D.
(Declaration | 5.) Exhibit A is a screenshot of a computer file directory
showing a list of files. The Declaration identifies three of the files and states
that each was created on February 13, 2011 or February 14, 2011 and last
modified on February 14, 2011 or February 17, 2011. {Id. 1 5(a).2) The
Declaration generally describes the content of each of the three files and
identifies Exhibits B—D as the code in each of the files. {Id. | 5(c)—5(e).3)
Exhibits B—D are annotated to map the code to the limitations of the
independent claims. {Id. | 5(f).) The Declaration further states that the
inventors “continuously tested and implemented the code files . . . between
February 13, 2011 and February 17, 2011 to ensure that the code files
operated for [their] intended purpose of enhancing communications security
in a wireless network.” {Id. 1 5(g).)
In the absence of a statutory bar, 37 C.F.R. § 1.131 provides that an
applicant may establish invention of the claimed subject matter before the
effective date of a reference. The requisite showing of facts to establish
prior invention is stated in § 1.131(b):
2 The dates on the file copy of Exhibit A are not legible, but are identified in
the text of the Declaration.
3 The Declaration has no paragraph 5(b).
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Application 13/440,793
The showing of facts for an oath or declaration ... shall be such,
in character and weight, as to establish reduction to practice prior
to the effective date of the reference, or conception of the
invention prior to the effective date of the reference coupled with
due diligence from prior to said date to a subsequent reduction to
practice or to the filing of the application.
The applicant is obligated to give a clear explanation of the exhibits pointing
out exactly “what facts or data appellants are relying upon to show a
completion of their invention.” In re Borkowski, 505 F.2d 713, 718—19
(CCPA 1974). We have broad discretion as to the weight to be given the
evidence. In re American Academy of Science Tech Center, 367 F.3d 1359,
1368 (Fed. Cir. 2004).
“An invention is reduced to practice when the patentee has an
embodiment that meets every limitation and operates for its intended
purpose.” Honeywell Int 7 Inc. v. Universal Avionics Sys. Corp., 488 F.3d
982, 997 (Fed. Cir. 2007); see Taskett v. Dentlinger, 344 F.3d 1337, 1340
(Fed. Cir. 2003) (“In order to establish an actual reduction to practice, the
inventor must prove that: (1) he constructed an embodiment or performed a
process that met all the limitations of the [claim]; and (2) he determined that
the invention would work for its intended purpose.” (quoting Cooper v.
Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998).)
We find Appellants’ Declaration insufficient to establish a reduction
to practice because it is devoid of any showing that the subject work
included a “multiple antenna array” or a “transmitter,” as recited in claims 1
and 15, or that it “transmitted” both “a signal beam” and a “blinding beam,”
as recited in claim 8. Although the Declaration avers that the inventors
“continuously tested and implemented the code files . . . between February
13, 2011 and February 17, 2011 to ensure that the code files operated for
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Application 13/440,793
[their] intended purpose of enhancing communications security in a wireless
network” (Declaration 4, emphasis added), there is no allegation or other
evidence that the code was tested and worked in conjunction with an actual
“multiple antenna array” and an actual “transmitter,” or so as to actually
generate or transmit “a signal beam” or a “blinding beam.”4 As the claims
require that hardware and real world activity, it is not sufficient that the
software was deemed to be in a state that would have resulted an operable
embodiment of the claimed invention were it mated with the hardware—an
Applicant seeking to establish an actual reduction to practice is required to
show “an embodiment that meets every limitation.” Honeywell, 488 F.3d at
997 (emphasis added). For this reason, we agree with the Examiner that the
Declaration is insufficient to establish a reduction to practice prior to
Shany’s earliest effective filing date.5
We accordingly sustain the rejections of claims 1 and 3—20.
4 The assertion that the inventors “established prior invention . . . due to an
actual reduction to practice ... on a date no later than February 17, 2011”
(Declaration | 5) is merely conclusory. We discern no improper intent in
this inaccurate averment but also observe that ultimate conclusions are
unhelpful in such a declaration, as “conception and reduction to practice are
questions of law.” Singh v. Brake, 317 F.3d 1334, 1340 (Fed. Cir. 2003).
5 In addition, although not necessary to our decision, we note that a “37 CFR
[§] 1.131 affidavit or declaration must contain an allegation that the acts
relied upon to establish the date prior to the reference or activity were
carried out in this country or in a NAFTA country or WTO member
country.” MPEP § 715.07(c); see pre-AIA 35 U.S.C. § 104. Appellants’
Declaration and exhibits do not allege or otherwise establish that any
relevant acts were carried out in this country or in a NAFTA country or
WTO member country.
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Appeal 2016-005297
Application 13/440,793
DECISION
The rejections of claims 1 and 3—20 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)(l)(iv).
AFFIRMED
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