Ex Parte Dorenbosch

Board of Patent Appeals and Interferences

Feb 12, 2003

09144414 (B.P.A.I. Feb. 12, 2003)

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The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JHEROEN PIETER DORENBOSCH
________________
Appeal No. 2001-0848
Application 09/144,414
________________
ON BRIEF
________________
Before KRASS, JERRY SMITH and DIXON, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1-4, 6-11, 13 and
14, which constituted all the claims in the application. An
amendment after final rejection was filed on July 11, 2000 and
was entered by the examiner. This amendment cancelled claims 7
and 14. Accordingly, this appeal is directed to the rejection of
claims 1-4, 6, 8-11 and 13.
Appeal No. 2001-0848
Application 09/144,414
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The disclosed invention pertains to a method and
apparatus in a wireless messaging system for estimating and using
required delivery parameters to meet a target transmission
reliability.
Representative claim 1 is reproduced as follows:
1. A method in a wireless messaging system for estimating
and using required delivery parameters to meet a target
transmission reliability, the method comprising the steps of:
monitoring delivery of outbound messages to a plurality of
two-way portable messaging units, said outbound messages being of
a type for which an acknowledgement is expected;
recording reliability statistics for said outbound messages
as a function of delivery parameters;
determining the target transmission reliability for sending
a message of a type for which an acknowledgment is not expected;
estimating, from said reliability statistics, the required
delivery parameters for sending said message at said target
transmission reliability; and
transmitting said message in accordance with the required
delivery parameters.
The examiner relies on the following references:
Blasbalg 4,771,391 Sep. 13, 1988
Mahany 5,862,171 Jan. 19, 1999
(filed June 06, 1995)
The standard TCP/IP protocols.
Appeal No. 2001-0848
Application 09/144,414
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Claims 1-4, 6, 8-11 and 13 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness the examiner offers Mahany and
the standard TCP/IP protocols with respect to claims 1, 3, 4, 6,
8, 10, 11 and 13, and the examiner adds Blasbalg to this
combination with respect to claims 2 and 9.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner’s
rationale in support of the rejections and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in the
claims on appeal. Accordingly, we reverse.
Appeal No. 2001-0848
Application 09/144,414
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In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
Appeal No. 2001-0848
Application 09/144,414
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to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
by appellant [see 37 CFR § 1.192(a)].
We consider first the rejection of claims 1, 3, 4, 6, 8,
10, 11 and 13 based on the teachings of Mahany (and the TCP/IP
Standards). With respect to independent claims 1 and 8, the
examiner indicates how he has determined these claims to be
obvious over the applied prior art [answer, pages 6-8]. The
examiner’s finding of obviousness is based inter alia on a
determination that Mahany inherently provides the step of
determining a target transmission reliability for sending
messages as well as a taking of Official Notice that transmitting
messages for which an acknowledgment is expected in a segmented
Appeal No. 2001-0848
Application 09/144,414
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data communication system was well known in the art as set forth
in the standard TCP/IP protocols.
Although appellant has nominally indicated that
independent claims 1 and 8 stand or fall separately [brief, page
9], the arguments section of the brief argues these two claims as
a single group. Therefore, we will consider claims 1 and 8 as
constituting a single group for purposes of this appeal.
Appellant argues that Mahany does not teach or suggest monitoring
delivery of messages of a type for which an acknowledgment is
expected to obtain reliability information for sending messages
of a type for which an acknowledgment is not expected. Appellant
notes that Mahany only deals with messages for which an
acknowledgment is expected. Appellant argues that the examiner’s
taking of Official Notice is based on a finding which is opposite
to what Mahany states. Appellant also argues that knowledge of
the TCP/IP protocol would not have led the artisan to use
reliability statistics obtained from messages sent when an
acknowledgment is expected to estimate or calculate delivery
parameters needed for messages sent when an acknowledgment is not
expected. Finally, appellant argues that the examiner’s
unsubstantiated conclusion that one protocol encapsulates the
other protocol is not correct [brief, pages 11-14].
Appeal No. 2001-0848
Application 09/144,414
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The examiner responds that the standard TCP/IP protocol
teaches that an adjustment in the size of the TCP packet must
naturally result in adjustment in the size of the IP packet,
citing Ranaganthan (U. S. Patent No. 5,931,961). The examiner
responds that providing TCP/IP in Mahany’s system would
inherently result in adjusting the packet sizes of IP packets
(messages without acknowledgment) by monitoring the reliability
statistics of the TCP packets (messages with acknowledgment).
The examiner also asserts that appellant has failed to timely
challenge the examiner’s taking of Official Notice [answer, pages
10-13].
We will not sustain the examiner’s rejection of
independent claims 1 and 8 because the examiner has failed to
establish a prima facie case of obviousness. Initially, we note
that we will not consider the teachings of Ranaganthan because it
was not used in the statement of the rejection. We also note
that the examiner’s rejection improperly relies on the examiner’s
findings of what is deemed to be inherent in the prior art
teachings and on the examiner’s taking of Official Notice as to
certain facts. First, inherency will not support a rejection
under 35 U.S.C. § 103 when these findings are challenged by
appellant. Second, appellant is not precluded from arguing the
Appeal No. 2001-0848
Application 09/144,414
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taking of Official Notice in the appeal brief as asserted by the
examiner. Since appellant has argued the taking of Official
Notice while the case was still before the examiner, we find that
this argument is timely made.
Just as important, however, is the fact that even if all
the examiner’s findings were accepted, there is still no prima
facie case of obviousness. The standard TCP/IP protocol only
establishes that it was known to send messages in which a
response was expected as well as messages in which no response
was expected. Even if one accepts that this finding is correct,
there is still no suggestion within the applied prior art that
statistics obtained from messages sent when a response is
expected would be used to estimate the required delivery
parameters for sending messages in which no response is expected
at a target transmission reliability. The examiner has provided
no motivation, and we have found none, as to why the artisan
would have been motivated to modify the system of Mahany as
proposed by the examiner except to recreate the claimed invention
in hindsight.
Appeal No. 2001-0848
Application 09/144,414
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Since we have not sustained the rejection of independent
claims 1 and 8, we also do not sustain the rejection of claims 3,
4, 6, 10, 11 and 13 which depend therefrom. With respect to the
rejection of claims 2 and 9 based on Mahany and Blasbalg, since
Blasbalg does not overcome the deficiencies of Mahany discussed
above, we also do not sustain the rejection of claims 2 and 9.
In conclusion, we have not sustained either of the
examiner’s rejections of the claims on appeal. Therefore, the
decision of the examiner rejecting claims 1-4, 6, 8-11 and 13 is
reversed.
REVERSED

ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
Appeal No. 2001-0848
Application 09/144,414
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