Ex Parte Bryson et al

Patent Trial and Appeal Board

Nov 2, 2017

12217820 (P.T.A.B. Nov. 2, 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.
12/217,820 07/09/2008 Sidney Llewellyn Bryson 7650-0074 9870
51094 7590 11/06/2017
MCCORMICK, PAULDING & HUBER LLP
185 ASYLUM STREET
CITY PLACE II
HARTFORD, CT 06103
EXAMINER
NGUYEN, ANGELA
ART UNIT PAPER NUMBER
2442
NOTIFICATION DATE DELIVERY MODE
11/06/2017 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):
patentdocket @ ip-lawyers .com
ipsnarocp @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIDNEY LLEWELLYN BRYSON, DAVID ALBERT
ROSSETTI, HARVEY RUBIN, and DOUGLAS WILLIAM VARNEY
Appeal 2015-004880
Application 12/217,8201
Technology Center 2400
Before JOHNNY A. KUMAR, NATHAN A. ENGELS, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—10 and 12—20, which constitute all of the pending claims. Claim
11 has been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION for all
pending claims under pre-AIA 35 U.S.C. § 112, second paragraph, pursuant
to our authority under 37 C.F.R. § 41.50(b).
1 Appellants identify Lucent Technologies Inc. as the real party in interest.
App. Br. 2.
Appeal 2015-004880
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STATEMENT OF THE CASE
Claimed Invention
Appellants’ claimed invention relates to controlling data flow in a
wireless communications network, and specifically, to “reducing network
resource overload caused by chatty applications.” Spec. 1, 11. Claims 1,
10, and 13 are independent. Claim 1, reproduced below, is illustrative of the
invention and the subject matter on appeal:
1. A system for data delivery from an application server to a
mobile client in a wireless network, the system comprising:
a packet data servicing node connected to the application
server and to the wireless network for transmitting packet data
from the application server to the mobile client, and
a wireless information node (“WIN”) network including at
least one wireless information node and at least one wireless
information database, the WIN network being connected to the
application server and to the wireless network,
wherein, without requiring direct signaling between the
mobile client and the application server, an element of the
wireless network notifies the WIN network that the mobile client
is in a connected state, the WIN network notifies the application
server that the mobile client is in the connected state and the
application server sends packet data to the mobile client through
the packet data servicing node.
App. Br. 41 (Claims App.) (emphasis added).
Rejections on Appeal
Claims 1—4, 6, 7, 10, 12—14, and 16 stand rejected under pre-AIA 35
U.S.C. § 102(b) as being anticipated by Alfano et al. (US 2005/0003765 Al;
Jan. 6, 2005) (“Alfano”). Final Act. 4—10.
Claim 5 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Alfano, Harris et al. (US 2007/0207825 Al; Sept. 6, 2007)
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(“Harris”) and Sayeedi et al. (US 2006/0007862 Al; Jan. 12, 2006)
(“Sayeedi”). Final Act. 11—12.
Claim 8 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Alfano and Kalavade et al. (US 2002/0191575 Al; Dec.
19, 2002) (“Kalavade”). Final Act. 12.
Claim 9 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Alfano and Brownwell et al. (US 2010/0057884 Al; Mar.
4, 2010) (“Brownwell”). Final Act. 13.
Claims 15 and 17 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Alfano and Watanabe et al. (US 2004/0248574 Al;
Dec. 9, 2004) (“Watanabe”). Final Act. 13—14.
Claim 18 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Alfano and Brachet et al. (US 2008/0176583 Al; July 24,
2008) (“Brachet”). Final Act. 15.
Claim 19 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Alfano, Brachet, and Forssell et al. (US 2004/0184461
Al; Sept. 23, 2004) (“Forssell”). Final Act. 16.
Claim 20 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Alfano, Brachet, and Watanabe. Final Act. 17.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments presented in this appeal. Arguments Appellants could have made
but chose not to make in the Briefs are deemed waived. See 37 C.F.R.
§ 41,37(c)(l)(iv). Appellants have persuaded us the Examiner erred in
rejecting independent claims 1,10, and 13 as anticipated, and therefore also
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erred in rejecting the dependent claims. We, however, enter new grounds of
rejection for all pending claims under pre-AIA 35U.S.C. § 112, second
paragraph. We provide the following to highlight and address specific
arguments.
Rejection Under Pre-AIA 35 U.S.C. § 102(b)
Appellants argue the Examiner erred in finding Alfano discloses “the
WIN network notifies the application server that the mobile client is in the
connected state,” as recited in claim 1. Reply Br. 4—5; see also App. Br. 11—
14. Specifically, Appellants argue the Examiner’s mapping of elements
demonstrates that in Alfano, the “packet data servicing node, not the WIN
network, [] notifies the application server that the mobile client is in the
connected state.” Reply Br. 5. We agree.
The Examiner finds Appellants’ claimed “‘packet data servicing node’
corresponds to the SGSN of Alfano,... the claimed ‘WIN’ network
corresponds to the MSC/VLR and HLR and associated databases [of]
Alfano, [and] the claimed ‘application server’ corresponds to the presence
server [of] Alfano.” Ans. 3 (citing Alfano ^fl[ 33, 37, and 83). The Examiner
further finds:
Alfano [discloses] a mobile device sending a control message to
the SGSN to inform the presence of the mobile device. . . . The
SGSN [i.e., Appellants’ “packet data servicing node”] then
informs the presence server [i.e., Appellants’ “application
server”] of the presence of the mobile device, [which] is
equivalent to “a mobile client in a connected state.”
Ans. 4.
In other words, according to the Examiner, Alfano discloses the
packet data servicing node notifies the application server that the mobile
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Application 12/217,820
client is in the connected state. Ans. 4; Reply Br. 4—5. Claim 1, however,
recites the WIN network notifies the application server that the mobile client
is in the connected state. App. Br. 41. The Examiner’s finding, therefore,
contradicts the claim language and we are persuaded of error.
Independent claims 10 and 13 recite limitations commensurate in
scope to the foregoing disputed limitation of claim 1, and we find the
Examiner erred for the same reason as claim 1. See, e.g., Ans. 3^4
(grouping independent claims 1,10, and 13).
Accordingly, we do not sustain the rejection of claims 1,10, and 13
under 35 U.S.C. § 102(b) as anticipated by Alfano. We also do not sustain
the same rejection of dependent claims 2-4, 6, 7, 12, 14, and 16, which
include the limitations of their base claims. We need not reach Appellants’
remaining arguments regarding the foregoing rejection. See Beloit Corp. v.
Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984).
Rejections Under Pre-AIA 35 U.S.C. § 103(a)
The Examiner rejected dependent claims 5, 8, 9, 15, and 17—20 as
unpatentable over Alfano and additional references. We do not sustain the
rejections of the dependent claims, for the reasons discussed above.
NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)
The following is a quotation of pre-AIA 35 U.S.C. § 112, second
paragraph:2
2 Section 4(c) of the Leahy-Smith America Invents Act (AIA), Pub. L. No.
112—29, re-designated 35 U.S.C. § 112, second paragraph, as 35 U.S.C. §
112(b). Because Appellants’ application was filed before September 16,
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The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.
Claims 1—10 and 12—20 are rejected as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
Appellants regard as the invention.
Independent claims 1 and 10 are indefinite because each claim recites
both an apparatus (system) and method steps of using the apparatus. See In
re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318
(Fed. Cir. 2011); Ex Parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter.
1990); see also MPEP§ 2173.05(p). Specifically, claim 1 recites “a system
comprising” various physical elements including a “packet data servicing
node” and a “wireless information node,” and further recites (in the
“wherein” clause) steps performed within the claimed system.* * 3 Claim 10,
similarly, recites “a wireless network comprising” physical elements such as
a radio access network, a packet data servicing node, and a wireless
information node, and further recites (in the “wherein” clause) steps
performed within the claimed system. Accordingly, independent claims 1
and 10 are indefinite, as are their dependent claims (which include the
limitations of claims 1 and 10).
2012 (the effective date of the statute), we refer to the pre-AIA second
paragraph of 35 U.S.C. § 112.
3 The claim does not recite a system “configured to” perform certain steps,
but rather, recites actually performing the steps.
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Independent claim 13, in contrast to claims 1 and 10, is a method
claim. Claim 13, however, includes the indefinite limitation “monitoring the
connection state of the mobile client at the wireless information node
network without requiring direct signaling between the mobile client and the
application server.”4 App. Br. 43 (emphasis added). The meaning of this
limitation is ambiguous because it is unclear what “direct” (as opposed to
indirect) signaling is, and also because it is unclear whether “without
requiring” direct signaling means that such signaling never occurs or, if it
does occur, whether the signaling was “required” or simply occurred without
being required. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211—12 (BPAI
2008) (precedential) (“if a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring an applicant to more
precisely define the metes and bounds of the invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite”);
Halliburton Energy Servs., Inc. v. M-ILLC, 514 F.3d 1244, 1255 (Fed. Cir.
2008) (“it is highly desirable that patent examiners demand that applicants”
resolve any “ambiguity in the patent claims . . . during prosecution”).
Accordingly, independent claim 13 is indefinite, as are its dependent
claims (which include the limitations of claim 13).
DECISION
The Examiner’s rejections of claims 1—10 and 12—20 are
REVERSED.
4 Claims 1 and 10 include a similarly indefinite limitation.
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In a NEW GROUND OF REJECTION pursuant to our authority
under 37 C.F.R. § 41.50(b), we reject claims 1—10 and 12—20 under pre-AIA
35 U.S.C. § 112, second paragraph, as being indefinite.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new
Evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner,
in which event the prosecution will be remanded to
the examiner. The new ground of rejection is
binding upon the examiner unless an amendment
or new Evidence not previously of Record is made
which, in the opinion of the examiner, overcomes
the new ground of rejection designated in the
decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant
to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
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ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
REVERSED
37 C.F.R. $ 41.50(b)
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