Ex Parte Bozionek et al

Patent Trial and Appeal Board

Nov 24, 2014

11587202 (P.T.A.B. Nov. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRUNO BOZIONEK, DIETER HEMKEMEYER,
KARL KLAGHOFER, RALF NEUHAUS, MICHAEL TIETSCH,
RAINER UECKER, and RAINER ZIMMERMANN
____________

Appeal 2012-004552
Application 11/587,202
Technology Center 2400
____________

Before CARL W. WHITEHEAD JR., JOHNNY A. KUMAR, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

BOUDREAU, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 14–33. Claims 1–13 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 An oral hearing was held on November 6, 2014.
2 Appellants identify Siemens Enterprise Communications GmbH & Co. and
Siemens Enterprise Communications Inc. as the real parties in interest.
App. Br. 1.
Appeal 2012-004552
Application 11/587,202

2
STATEMENT OF THE CASE
Appellants’ Claimed Invention
Appellants’ claimed invention relates “inter alia to a method, in which
location information is stored for several devices, with each item of location
information containing details about the installation location of the
respective device.” Spec. ¶ 2.3
Representative Claims
Claims 14 and 32, reproduced below, are representative of the subject
matter on appeal. Disputed limitations are italicized.
14. A method used to determine services in a network,
comprising:
storing a plurality of first location information items for a
plurality of devices, each of the first location information items
identifying a location of a respective device of the plurality of
devices;
generating a second location information item that
provides a location of a user;
automatically selecting at least one of the plurality of
devices to be used by the user based on the generated second
location information item and the stored plurality of first
location information items; and
transmitting a status report to a device used by the user,
with the user being offered a use of at least one service via the
status report, the at least one offered service effected by the at
least one selected device.

3 References to the Specification or “Spec.” refer to U.S. Patent Application
Publication No. 2007/0242819 for paragraph numbering.
Appeal 2012-004552
Application 11/587,202

3
32. A control unit in a network, comprising:
a distribution unit that distributes a first incoming media
stream and a second incoming media stream to a first device
and a second device respectively when a communication
request message directed to a communication partner device is
received; and
a bundling unit that combines a first media stream and a
second media stream from a first device and a second device
respectively when an outgoing communication request message
is received from a communication partner; and
wherein the communication request message contains a
plurality of specified services; and
wherein the distribution unit and the bundling unit are
configured to act as a single virtual device for the network.
Prior Art Relied Upon
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Roese US 2003/0217122 A1 Nov. 20, 2003
Hughes US 2005/0003834 A1 Jan. 6, 2005
Leeper US 2005/0020206 A1 Jan. 27, 2005
Wentink US 2005/0135305 A1 June 23, 2005
Rejections on Appeal
Claims 14–20, 22–31, and 33 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Wentink and Roese. Ans. 5–13.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wentink, Roese, and Leeper. Ans. 14.
Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wentink and Hughes. Ans. 14–16.
Appeal 2012-004552
Application 11/587,202

4

ANALYSIS
Rather than repeat Appellants’ arguments and the Examiner’s findings
in their entirety, we refer to the Appeal Brief filed September 1, 2011,
Examiner’s Answer mailed December 1, 2011, and Reply Brief filed
January 26, 2012, for the respective details. We have considered in this
Decision only those arguments Appellants actually raised in the Briefs. Any
other arguments Appellants could have made but chose not to make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
We adopt the Examiner’s findings in the Answer and the March 24,
2011 Final Office Action as our own, except as to those findings that we
expressly overturn or set aside in the analysis as follows.
Claims 14–31 and 33
With respect to independent claim 14 and dependent claims 15–29,
Appellants argue:
[N]either Wentink nor Roese et al. teach or suggest
automatically selecting at least one of a plurality of devices to
be used by the user based on a generated second location
information item and a stored plurality of first location
information items, or transmitting a status report to a device
used by the user as required by claims 14–29.
App. Br. 15. Appellants raise similar arguments with respect to claims 30,
31, and 33. Id. at 22.
We agree with Appellants. Although the portions of Wentink cited by
the Examiner disclose a peer discovery system that includes identifying
proximate wireless stations (i.e., in the parlance of claim 14, “at least one of
[a] plurality of devices . . . based on . . . the generated . . . and the stored . . .
location information items”) and notifying a user of the proximity of nearby
Appeal 2012-004552
Application 11/587,202

5
station users, see, e.g., Wentink ¶¶ 44, 47, we agree that the cited portions of
Wentink and Roese do not disclose or suggest “selecting . . . devices to be
used by the user” or a status report that “offer[s] a use of at least one service
. . . effected by [a] selected device,” as recited in claim 14, or similar
limitations recited in claim 30.
Accordingly, we are constrained by the record before us to reverse the
Examiner’s rejection of independent claims 14 and 30, as well as the
rejection of claims 15–29, 31, and 33 dependent therefrom.
Claim 32
With respect to claim 32, Appellants allege error in the Examiner’s
finding that Wentink teaches the recited “bundling unit.” App. Br. 23–24.
Referring to the Examiner’s finding that Figures 17 and 18 and paragraphs
104 and 105 of Wentink disclose an access point “AP as bundling unit that
combines the first frame from [a] first wireless station and [a] second frame
from [a] second wireless device having [a] destination MAC address being
intended for [a] wireless device other than [the] first wireless device” (see
Final Office Action 15), Appellants argue the cited portions of Wentink do
not mention a bundling unit that combines a first frame and a second frame,
but are “merely directed to a formation of a direct link between wireless
stations.” App. Br. 24.
In response, the Examiner finds Appellants’ disclosure “merely hints”
at a bundling unit and that there is no mention of a control unit with
bundling unit in the figures. Ans. 23. The Examiner finds “bundling unit”
to be a broad conceptual statement that is fit by “any piece of
hardware/software and/or both that combines request messages,” and that
“[e]ven though the exact term ‘bundling unit’ is not prescribed [by
Appeal 2012-004552
Application 11/587,202

6
Wentink], it is more likely than not that the AP is capable of combining
stream[s] of frames that originate from each wireless station.” Id. The
Examiner further finds that Wentink’s frames “cannot be construed as
‘request messages’ as required by the claim language,” but that Hughes
teaches request messages containing a plurality of specified services and that
it would be obvious to configure Wentink’s wireless station to include
request messages with services. Id. at 24.
We agree with the Examiner’s findings. During examination, claims
are to be given their broadest reasonable interpretation consistent with the
specification. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (during
patent examination the pending claims must be interpreted as broadly as
their terms reasonably allow). Here, claim 32 merely recites that the
bundling unit “combines a first media stream and a second media stream
from a first device and a second device respectively when an outgoing
communication request message is received when a communication
partner.” And notwithstanding Appellants’ argument that “paragraphs 49–
75 of the Specification . . . all disclose and describe a control unit that is one
embodiment of the invention defined by claim 32,” Reply Br. 6, we discern
no error in the Examiner’s finding that paragraph 26 of the Specification
alone “hints” at a bundling unit. Indeed, paragraph 26 contains the sole
reference in the Specification to either “bundling,” a “bundling unit,” or the
function of “combining” media streams. In view of such sparse disclosure,
the recited bundling unit is reasonably interpreted to include Wentink’s
disclosed access point (AP).
We are also unpersuaded by Appellants’ conclusory argument that
“neither Wentink, Roese et al., nor Hughes teach or suggest . . . a
Appeal 2012-004552
Application 11/587,202

7
distribution unit and a bundling unit that are configured to act as a single
virtual device for the network” (App. Br. 23), in view of the Examiner’s
finding (Ans. 15) that Wentink teaches that element. See 37 C.F.R.
§ 41.37(c)(vii) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”);
see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).
Accordingly, we affirm the Examiner’s rejection of independent claim
32.

DECISION
The Examiner’s rejections of claims 14–31 and 33 under 35 U.S.C.
§ 103(a) are reversed.
The Examiner’s rejection of claim 32 under 35 U.S.C. § 103(a) is
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).

AFFIRMED-IN-PART

msc