Ex Parte Bu et al

Patent Trial and Appeal Board

Apr 18, 2013

11094416 (P.T.A.B. Apr. 18, 2013)

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.
11/094,416 03/31/2005 Tian Bu 129250-002114/US 8283
32498 7590 04/19/2013
CAPITOL PATENT & TRADEMARK LAW FIRM, PLLC
P.O. BOX 1995
VIENNA, VA 22183
EXAMINER
SCHWARTZ, DARREN B
ART UNIT PAPER NUMBER
2435
MAIL DATE DELIVERY MODE
04/19/2013 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 TIAN BU, SAMPHEL NORDEN, and
THOMAS Y. WOO
____________________

Appeal 2010-011533
Application 11/094,416
Technology Center 2400
____________________

Before: ROBERT E. NAPPI, DEBRA K. STEPHENS, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-4, 7-10, 12, 13, 15-17, 19-24 and 26. We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 5, 6, 11, 14, 18, 25 and 27 are canceled.
We affirm.
Appeal 2010-011533
Application 11/094,416

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STATEMENT OF CASE
Introduction
The claims are directed to methods and devices for defending a 3g
wireless network against a signaling attack. Spec. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method for detecting attacks against a wireless
network comprising:
measuring a traffic level associated with a mobile device;
generating a cost-to-data ratio derived from a low,
measured traffic level directed at one_or more mobile devices
and a signaling cost that is based on establishment and release
of a data transfer channel; and
comparing the generated ratio to a profiled, reference
cost-to-data threshold ratio to determine whether a signaling
attack is directed at the mobile device.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ye US 7,092,357 Aug. 15, 2006
Macaulay
Hrastar
Pruthi
US 2003/0135762 A1
US 2003/0217283 A1
US 2004/0015582 A1
Jul. 17, 2003
Nov. 20, 2003
Jan. 22, 2004

Rejections
Claims 1-4, 7-10, 12, 13, 15, 19, 22-24, and 26 stand rejected under
35 U.S.C §112 second paragraph as being indefinite.
1
Ans. 3.

1
Paragraph 11 of the Final Office Action mentions only claims 1-21 as
rejected under 35 U.S.C. § 112, second paragraph, even though claim 22 is
addressed in the rejection. Appellants acknowledge the mistake. App. Br. 1.
Claims 23, 24, and 26 depend from claim 22. We construe the typographical
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Application 11/094,416

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Claims 1-4, 7-10, 12, 13, 15, 19 and 22-24 stand rejected under 35
U.S.C §103(a) as being unpatentable over Pruthi and Macaulay. Ans. 4.
Claims 16-17 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Pruthi, Macaulay, and Ye. Ans. 9.
Claims 20 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Hrastar and Pruthi. Ans. 9.
Claims 21 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Hrastar, Pruthi, and Ye. Ans. 11.
Claims 26 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Pruthi, Macaulay, and Hrastar. Ans. 11.

Issues on Appeal
Has the Examiner erred in rejecting the independent claims (claims 1,
13, 20, and 22) as indefinite for reciting “a low, measured traffic level” and
“estimated from a low volume of traffic” or similar limitations?
If so, has the Examiner erred in rejecting the claims as obvious?

ANALYSIS
Appellants contend that the Examiner has erred in rejecting claims 1-
4, 7-10, 12, 13, 15, 19 and 22-24, which includes all the independent claims
(1, 13, 20, and 22), as being indefinite, instead arguing that the specification
provides sufficient disclosure that one skilled in the art would understand the
terms “a low, measured traffic level” and “estimated from a low volume of
traffic” (claims 1 and 13, respectively, and similar phrases in claims 20 and

error to extend to claims 23, 24, and 26, and analyze the arguments
accordingly.
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Application 11/094,416

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22) to mean “a volume of traffic (or estimated volume) that is lower than the
volume of traffic used in a wireline DoS attack, where such a lower volume
of traffic can be 6% or 10% of traffic.” App. Br. 6. Appellants specifically
cite ¶¶ [0001], [0002], [0004], [0005], [0007], [0027], [0030], [0031],
[0038], and [0045]-[0049] in support of their contention. Id. at 7-12.
Appellants further state that “there is no absolute requirement under §112,
second paragraph that the claims or the specification set forth specific values
(e.g., percentages, quantities or ranges). Instead, what is required is that the
specification set forth a reasonable explanation of the phrases in the claims
such that their meaning would be understood by those skilled in the art.” Id.
at 12.
The Examiner finds that “the term ‘low’ in the claims is a relative
term which renders the claim indefinite.” Ans. 19. We have reviewed the
rejection and find no error. We note that the function of claims is (1) to point
out what the invention is in such a way as to distinguish it from the prior art;
and (2) to define the scope of protection afforded by the patent. In re Vamco
Mach., Inc., 752 F.2d 1564, 1577 n.5 (Fed. Cir. 1985). “[T]he language of
the claims must make it clear what subject matter they encompass.” In re
Hammack, 427 F.2d 1378, 1382 (CCPA 1970). That is, the claims must set
forth the “metes and bounds” of their coverage. See In re Venezia, 530 F.2d
956, 958 (CCPA 1976); In re Goffe, 526 F.2d 1393, 1397 (CCPA 1975); In
re Watson, 517 F.2d 465, 477 (CCPA 1975); In re Knowlton, 481 F.2d 1357,
1366, (CCPA 1973). This is necessarily viewed from the perspective of a
potential infringer “so that they may more readily and accurately determine
the boundaries of protection involved and evaluate the possibility of
infringement and dominance.” In re Hammack, 427 F.2d at 1382. We find
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that the claims do not sufficiently define the scope of protection such that a
potential infringer could accurately determine the possibility of
infringement.
In context, the limitations “a low, measured traffic level” and
“estimated from a low volume of traffic” require numerical precision.
Otherwise, the recited “cost-to-data ratio,” “current measure,” or “rate”
cannot be determined and/or compared to the recited reference for
subsequent decision making. If, therefore, a potential infringer is to
“determine the boundaries of protection involved and evaluate the possibility
of infringement . . . ” with accuracy to thereby avoid it, the potential
infringer must be able to identify a measured level or volume of traffic as
“low” to thereby know when the comparison would be an infringing one. In
re Hammack, 427 F.2d at 1382. Neither the claims at issue nor the
specification provide a standard for determining specific traffic measures to
be “low.”
We further note the Examiner’s finding regarding the “cost-to-data
ratio,” specifically that “[w]hile the disclosure of the invention recites
various methods of fetching and transmitting the ratio, the actual calculation
is not explicitly set forth.” Ans. 22. This finding is further evidence of
indefiniteness.
We find, therefore, that the Examiner did not err in concluding that
claims 1, 13, 20, and 22 are indefinite for reciting “a low, measured traffic
level,” “estimated from a low volume of traffic,” or similar limitations. The
claims that depend therefrom inherit the indefiniteness.
Appellants also contend that the rejections under 35 U.S.C. § 103 are
in error, but we do not reach the merits of this. Before a proper review of
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the rejections under 35 U.S.C. § 103 can be performed, the subject matter
encompassed by the claims on appeal must be reasonably understood
without resort to speculation. Since the independent claims fail to satisfy the
requirements of the second paragraph of 35 U.S.C. § 112, we are constrained
to reverse, pro forma, the rejection under 35 U.S.C. § 103. See In re Steele,
305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if
the hypothetical person of ordinary skill in the art would have to make
speculative assumptions concerning the meaning of claim language.).

CONCLUSIONS
On the record before us, we conclude that, because claims 1, 13, 20,
and 22 include indefinite limitations, the Examiner did not err in rejecting
them, together with all claims that depend therefrom.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-4, 7-10,
12, 13, 15-17, 19-24 and 26 is sustained.

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) (2011).

AFFIRMED
dw