Ex Parte Buddhikot et al

Patent Trial and Appeal Board

Sep 23, 2013

11017997 (P.T.A.B. Sep. 23, 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.
11/017,997 12/21/2004 Milind M. Buddhikot Buddhikot 11-1-13
(LCNT/1
1370
46363 7590 09/23/2013
WALL & TONG, LLP/
ALCATEL-LUCENT USA INC.
25 James Way
Eatontown, NJ 07724
EXAMINER
CAI, WAYNE HUU
ART UNIT PAPER NUMBER
2644
MAIL DATE DELIVERY MODE
09/23/2013 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 MILIND M. BUDDHIKOT,
PAUL KOLODZY, and SCOTT C. MILLER
____________

Appeal 2011-004128
Application 11/017,997
Technology Center 2600
____________

Before STEPHEN C. SIU, BRADLEY W. BAUMEISTER, and
DAVID C. McKONE, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 4, 6-30, 44, 46, and 48-51, which constitute all the claims
pending in this application. See App. Br. 3. Claims 2, 5, 31-43, 45, and 47
are cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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Application 11/017,997

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THE INVENTION
Appellants’ invention relates to dynamically managing available
spectrum in wireless communications. See Spec. 1:10-12. Claim 1, which is
illustrative of the invention, reads as follows:
1. A method for coordinated dynamic access to
radio spectrum for wireless networking, comprising:
receiving, at a server, a radio spectrum request of a
provider, wherein the server manages allocation of
spectrum from a coordinated access band (CAB) of radio
frequencies from which radio spectrum may be
dynamically allocated, wherein said CAB is defined in
radio spectrum that is under the control of a regulating
body, that requires a license from the regulating body for
use, but that is not statically licensed by the regulating
body for use by providers; and
in response to the radio spectrum request of the
provider, allocating at least a portion of said CAB in the
form of a time bound spectrum lease.

THE REJECTIONS
The Examiner relies on the following prior art in rejecting the claims:
Chillariga US 2001/0030956 A1 Oct. 18, 2001
Dettloff US 2002/0084940 A1 July 4, 2002
Schmidt US 2003/0035388 A1 Feb. 20, 2003
Lachtar US 2003/0125039 A1 July 3, 2003
Lim US 6,731,620 B1 May 4, 2004
Lescuyer US 2004/0147262 A1 July 29, 2004
Tyldesley US 2004/0218626 A1 Nov. 4, 2004
Matusz US 2004/0266387 A1 Dec. 30, 2004
(filed June 24, 2003)
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Bodin US 2006/0036719 A1 Feb. 16, 2006
(Nov. 14, 2003)
Patel US 7,043,225 B1 May 9, 2006
(filed Feb. 25, 2000)
Mashinsky US 2006/0160543 A1 July 20, 2006
(filed Mar. 14, 2002)
Claims 1, 3, 4, 6-30, 44, 46, and 48-51 stand provisionally rejected on
the ground of nonstatutory obviousness-type double patenting as
unpatentable over claims 1-20 of copending Application No. 11/557,176,
Patel, and Mashinsky. See Ans. 5-11.
Claims 1, 3, 6-9, 12, 14-17, 19, 20, 22-24, 27, 30, 44, 46, 48, and 51
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Patel and
Mashinsky. See Ans. 12-21.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Patel, Mashinsky, and Schmidt. See Ans. 21-22.
Claims 10, 13, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Patel, Mashinsky, and Dettloff. See Ans. 22-24.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Patel, Mashinsky, Dettloff, and Lim. See Ans. 24-25.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Patel, Mashinsky, and Tyldesley. See Ans. 25-26.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Patel, Mashinsky, and Matusz. See Ans. 26-27.
Claim 26 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Patel, Mashinsky, and Chillariga. See Ans. 27-28.
Claim 28 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Patel, Mashinsky, and Lachtar. See Ans. 28.
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Claim 29 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Patel, Mashinsky, and Bodin. See Ans. 29.
Claims 49 and 50 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Patel, Mashinsky, and, Lescuyer. See Ans. 29-30.

ANALYSIS
PROVISIONAL DOUBLE PATENTING REJECTION
We do not reach the merits of the Examiner’s provisional
obviousness-type double patenting rejection because it would be premature
to do so at this time, consistent with the holding of Ex Parte Moncla, 95
USPQ2d 1884, 1885 (BPAI 2010) (precedential).

REJECTION OF CLAIMS 1, 3, 6-9, 12, 14-17, 19, 20, 22-24,
27, 30, 44, 46, 48, AND 51 UNDER 35 U.S.C. § 103(a)
Claims 1, 3, 6-9, 12, 16, 17, 19, 20, 22-24, 27, 30, 44, 46, 48, and 51
Regarding claim 1, the Examiner finds that Patel teaches a method for
coordinated dynamic access to radio spectrum for wireless networking,
comprising receiving, at a server, a radio spectrum request of a provider,
wherein the server manages allocation of spectrum from a coordinated
access band (“CAB”) of radio frequencies from which radio spectrum may
be dynamically allocated. See Ans. 12. The Examiner also finds that Patel
teaches, in response to the radio spectrum request of the provider, allocating
at least a portion of the CAB in the form of a time bound spectrum lease.
See id. However, the Examiner concedes that Patel does not expressly
disclose “wherein said CAB is defined in radio spectrum that is under the
control of a regulating body, that requires a license from the regulating body
for use, but that is not statically licensed by the regulating body for use by
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providers,” as recited in claim 1. See id. The Examiner finds this limitation
taught in Mashinsky and concludes that it would have been obvious to
combine the teachings of Patel and Mashinsky. See Ans. 13.
Appellants do not dispute the Examiner’s findings as to Patel’s
teachings. Appellants instead contend that the Examiner erred in finding
that Mashinsky teaches a CAB that is “under the control of a regulating
body . . . but that is not statically licensed by the regulating body for use by
providers.” App. Br. 11. According to Appellants, the Examiner erred in
concluding that a “regulating body” is broad enough to include a “licensee”
or “owner” of radio spectrum, as described in Mashinsky. See App. Br. 11-
13; Reply Br. 4-5. Appellants further argue that the Examiner failed to cite
the best references in the obviousness combination, see App. Br. 13, failed
to properly establish the differences between the claimed subject matter and
the prior art, see id.; Reply Br. 3, and failed to articulate a reason, with
rational underpinning, to combine Patel and Mashinsky, see App. Br. 15-16.
Finally, Appellants argue that Patel and Mashinsky cannot be combined
without added features and software modifications, and that such a
combination would “destroy either arrangement.” App. Br. 14-15; Reply Br.
5-6.
We conclude that the language, “wherein said CAB is defined in radio
spectrum that is under the control of a regulating body, that requires a
license from the regulating body for use, but that is not statically licensed by
the regulating body for use by providers[,]” is nonfunctional descriptive
material, and, thus, cannot patentably distinguish claim 1 from the prior art.
Nonfunctional descriptive material cannot render nonobvious an invention
that would otherwise have been obvious. See In re Ngai, 367 F.3d 1336,
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1339 (Fed. Cir. 2004). When the nature of information being manipulated is
the asserted distinguishing factor between a claimed process and the prior
art, that information must functionally affect the process in order to be given
patentable weight. See Ex parte Nehls, 88 USPQ2d 1883, 1888-89 (BPAI
2008) (precedential); see also Ex parte Curry, 84 USPQ2d 1272, 1274
(BPAI 2005) (informative). As a general proposition, we need not give
patentable weight to descriptive material absent a new and nonobvious
functional relationship with the prior art process or substrate. See Ngai, 367
F.3d at 1339; King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279
(Fed. Cir. 2010); MPEP § 2111.05(I)(A) (citing In re Lowry, 32 F.3d 1579,
1584 (Fed. Cir. 1994)).
Appellants do not contest the Examiner’s finding that Patel teaches
receiving, at a server, a radio spectrum request of a provider, that the server
manages allocation of spectrum, or that, in response to the radio spectrum
request, the server allocates at least a portion of the spectrum in the form of
a time bound spectrum lease. Instead, Appellants argue that claim 1 recites a
different legal relationship between radio spectrums and a server than is
taught in Mashinsky. See App. Br. 10-13. However, characterizing radio
spectrum as under the control of a regulating body, but not statically
licensed, does not functionally change the method of claim 1 or the circuitry
recited as carrying out the receiving and allocating steps of this method, and,
thus, this claim language constitutes nonfunctional descriptive material. See
Nehls, 88 USPQ2d at 1888-89; Curry, 84 USPQ2d at 1274. Thus,
Appellants do not persuasively show that claim 1 is patentably distinct from
Patel, regardless of the teachings of Mashinsky.
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Appellants’ remaining arguments are also unpersuasive, as they do not
explain why claim 1 is structurally or functionally different from Patel.
Thus, Appellants have not shown error in the Examiner’s conclusion that
claim 1 is obvious over Patel and Mashinsky.
Appellants identify similar nonfunctional descriptive material in
claims 16 and 51 as the only features distinguishing those claims from Patel.
See App. Br. 18. We find these arguments unpersuasive for the same
reasons given for claim 1.
Accordingly, we sustain the rejection of: (1) independent claims 1, 16,
and 51; and (2) claims 3, 6-9, 12, 17, 19, 20, 22-24, 27, 30, 44, 46, and 48,
each of which depends on claim 1 or claim 16 and is not argued separately
with particularity.

Claims 14 and 15
Independent claim 14 recites means-plus-function limitations.
Appellants argue that the Examiner did not consider the specific structure
described in the Specification when interpreting claim 14. See App. Br. 17.
In particular, Appellants argue that the Specification describes a Spectrum
Information and Management (“SPIM”) Service, which Appellants
characterize as a “mediator,” as structure corresponding to the means for
managing allocation of spectrum from a CAB of radio frequencies from
which radio spectrum may be dynamically allocated. Id. According to
Appellants, the owner and licensee of Mashinsky, cited by the Examiner as
teaching means for managing allocation (Ans. 15), are not equivalent to a
regulating body. See id.
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We are not persuaded. As for claim 1, Appellants have not shown
that claim 14’s recitation of the nature of the CAB (as defined in radio
spectrum that is under the control of a regulating body but not statically
licensed) functionally changes the structure described as managing
allocation of spectrum. Therefore, the argued claim language constitutes
nonfunctional descriptive material and does not distinguish the means for
allocation of spectrum over the structure the Examiner cites in Patel and
Mashinsky.
In the Response to Argument, the Examiner argues that Appellants
did not identify in their Appeal Brief the structure corresponding to the
means for allocation of spectrum and did not show how the structure taught
in Patel differs. See Ans. 37. The Examiner then points to Mashinsky’s
spectrum management server 23 and/or database as teaching the means for
allocation of spectrum. See Ans. 37-38. In reply, Appellants argue that
Patel includes seven drawings, while the Specification includes thirteen, and
that “[e]ven a cursory look at Patel’s structure compared to the instant
application’s disclosed structure reveals that the two are worlds apart.”
Reply Br. 6. However, Appellants do not identify any differences. The
difference in numbers of drawings is not determinative. Nor do Appellants
persuasively explain why Mashinsky’s spectrum management server is
structurally different from the claimed means for allocation of spectrum.
Accordingly, we are not persuaded of examiner error.
Appellants also argue that the Examiner improperly groups claims 1
and 14 together and only addresses the limitations of claim 1. See App. Br.
17-18. We disagree. The Examiner separately addresses claims 1 and 14.
Compare Ans. 12-13 with Ans. 14-16.
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Accordingly, we sustain the rejection of claim 14, as well as
dependent claim 15, which is not argued separately with particularity.

REMAINING OBVIOUSNESS REJECTIONS
Claims 4, 10, 11, 13, 49, and 50 depend on claim 1; claims 18, 21, 25,
26, 28, and 29 depend on claim 16. Appellants do not separately argue these
claims with particularity. Accordingly, we sustain the rejection of claims 4,
10, 11, 13, 18, 21, 25, 26, 28, 29, 49, and 50 for the same reasons as claims 1
and 16.

ORDER
The decision of the Examiner to reject claims 1, 3, 4, 6-30, 44, 46, and
48-51 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)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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