Ex Parte Cheng et al

Patent Trial and Appeal Board

Mar 27, 2017

13433858 (P.T.A.B. Mar. 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.
13/433,858 03/29/2012 Ching-Wen CHENG LON-389 1095
23995 7590
Rabin & Berdo, PC
1101 14TH STREET, NW
SUITE 500
WASHINGTON, DC 20005
03/29/2017 EXAMINER
PEREZ GUTIERREZ, RAFAEL
ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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):
firm @ rabinberdo .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHING-WEN CHENG, JEN-SHUN YANG,
STEPHAN GLEIXNER, SHUBHRANSHU SINGH, and
KUEI-LI HUANG
Appeal 2016-003774
Application 13/433,8581
Technology Center 2600
Before THU A. DANG, KAMRAN JIVANI, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
Final Rejection of claims 1—18. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 According to Appellants, the real party in interest is INDUSTRIAL
TECHNOLOGY RESEARCH INSTITUTE. App. Br. 3.
Appeal 2016-003774
Application 13/433,858
INVENTION
Appellants’ application relates to an apparatus and a method for
determining and routing emergency communications. Abstract. Claim 1 is
illustrative of the appealed subject matter and reads as follows:
1. A determining and routing apparatus for emergency
communications, adapted to a network environment, said
determining and routing apparatus including an emergency event
pre-processor (EEPP), and said EEPP comprising:
a pre-processing element, wherein for at least one
emergency request issued by one or more machine-based
senders, the pre-processing element determines the at least one
emergency request, resolves at least one machine-based
emergency service category value specified in a non-access
stratum signaling priority parameter of configuration
management objects (NAS config MO parameter) according to
the emergency request, selects at least one emergency reaction
center (emRC) for processing the at least one machine-based
emergency service category value, and decides at least one
routing path to transmit one or more corresponding emergency
messages;
wherein an original format of said NAS config MO
parameter is defined as a 256-bit field having a reserved 0th bit,
a first bit for indicating an NAS low priority, and second-to-255th
reserved bits, and
wherein said EEPP utilizes one or more of the second-to-
255th reserved bits of said original format of said NAS config
MO parameter to carry additional emergency service category
values, the additional emergency service category values
including a category identity (ID) of the at least one machine-
based emergency service category value.
REJECTION
Claims 1—18 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Faccin et al. (US 2011/0189971 Al; published Aug.
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Application 13/433,858
4, 2011) (“Faccin”), 3GPP TS 24.368 ver. 10.0.0 Release 10 (dated Apr.
2011) (“3GPP”), and Kuo et al. (US 2004/0136356 Al; published July 15,
2004) (“Kuo”).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur with the
conclusions reached by the Examiner. We highlight the following additional
points.
In rejecting claim 1, the Examiner found that Faccin teaches or
suggests ah of the recited limitations, except a particularly formatted NAS
message, for which the Examiner relied on 3GPP, and the limitation
“deciding at least one routing path to transmit one or more corresponding
emergency messages,” for which the Examiner relied on Kuo even though
the Examiner found that limitation also implicitly taught by Faccin. See
Final Act. 3^4.
Appellants contend the Examiner erred because the cited portions of
Faccin, 3GPP, and Kuo do not teach or suggest the two wherein clauses
recited at the end of claim 1. App. Br. 9. In particular, Appellants argue that
“[tjhere is absolutely no suggestion in Faccin of the noted subject matter of
claim 1.” Id. at 11.
Appellants’ arguments do not persuade us of Examiner error. We
agree with the Examiner that the only claimed limitations Faccin does not
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Application 13/433,858
teach are those in the disputed “wherein” clauses that are directed to the
particular format of the emergency request. See Ans. 4. Moreover, we agree
with the Examiner that 3 GPP teaches a NAS Config MO parameter defined
as a 256-bit field having a reserved 0th bit, a first bit for indicating an NAS
low priority, and a second-to-255th reserved bits. Final Act. 3. Indeed,
Figure 5 of Appellants’ Specification incorporates the cited table from
3GPP, as Appellants acknowledge. See App. Br. 9. Appellants filed no
Reply Brief and do not persuasively rebut the Examiner’s explanation in the
Answer of the Examiner’s findings with regard to Faccin’s teachings. See
id. (citing Faccin || 146-48, 162). Moreover, the Examiner provided
persuasive articulated reasoning with rational underpinning for an artisan of
ordinary skill to have modified Faccin’s routing apparatus, which routes an
emergency request that includes an Emergency Category value, with 3GPP’s
NAS config MO parameter defined by recited bit fields. Final Act. 4.
We also disagree with Appellants’ further contention that the
proposed modification would change the principle of operation of Faccin
and render Faccin unsatisfactory for its intended purpose. See App. Br. 7,
12—17. Appellants argue that the combination of Faccin and 3GPP would
require modification of the 3 GPP network elements responsible for
processing NAS messages to handle Faccin’s information field “Emergency
Category” to prevent the 3GPP network element from abandoning them for
not being compatible with the NAS protocol. Id. at 16. Appellants’
arguments are not persuasive because they presume a bodily incorporation
of the features of Faccin into the data structure of 3 GPP, which is not the
proper standard under 35 U.S.C. § 103(a). “[A] determination of
obviousness based on teachings from multiple references does not require an
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Application 13/433,858
actual, physical substitution of elements.” In reMouttet, 686 F. 3d 1322,
1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for obviousness
whether a secondary reference’s features can be bodily incorporated into the
structure of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA
1981). Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art. Id. Appellants
have not persuaded us that combining the respective familiar elements of the
cited references in the manner proffered by the Examiner would have been
“uniquely challenging or difficult for one of ordinary skill in the art” at the
time of Appellants’ invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Thus,
we agree with the Examiner that modifying Faccin to use the 3 GPP format
“is merely a substitution that is manageable by a skilled artisan with a
predictable and workable outcome.” Ans. 5.
With regard to Appellants’ contention that the Examiner used
impermissible hindsight in combining the teachings of Faccin and 3 GPP, the
Examiner explained that Faccin’s emergency request content is transmitted
via NAS signaling, and that 3GPP’s NAS signaling is a standardized
signaling format that was well-known in the art and has a format that is
readily adoptable to carry the content of Faccin’s emergency request. App.
Br. 6. Appellants have not persuasively rebutted the Examiner’s findings.
Thus, we are not persuaded that the Examiner employed impermissible
hindsight in rejecting claim 1.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of
independent claim 1, as well as the 35 U.S.C. § 103(a) rejection of
independent claim 9, which Appellants argue are patentable for similar
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Application 13/433,858
reasons. App. Br. 26. We also sustain the Examiner’s rejection of
dependent claims 2—8 and 10—18, for which Appellants make no additional
arguments. Id.
DECISION
We affirm the decision of the Examiner rejecting claims 1—18.
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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