Ex Parte Ekl et al

Board of Patent Appeals and Interferences

Nov 9, 2009

10388043 (B.P.A.I. Nov. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RANDY L. EKL, JOSEPH E. PHILLIPS and
MICHAEL H. RETZER
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Appeal 2008-004975
Application 10/388,043
Technology Center 2400
________________

Decided: November 9, 2009
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Before JEAN R. HOMERE, JAY P. LUCAS and DEBRA K. STEPHENS,
Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2008-004975
Application 10/388,043

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Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner's rejection of claims 1-6 and 15-24. We have jurisdiction under
35 U.S.C. § 6(b) (2008).
We reverse and enter a new ground of rejection.

STATEMENT OF THE CASE
According to Appellants, the invention relates to peer to peer
communication between wireless users in close proximity. Spec. 1, ll. 6-8.

Exemplary Claim
1. In an infrastructure environment comprising a source
station, a destination station, and an infrastructure device, a
method comprising:
receiving a message identifying a source station address
and a destination station address;
transmitting a first acknowledgement message to the
source station address within a short inter-frame space time; and
transmitting the message to the destination station address
when a second acknowledgement message was not transmitted
by the destination station within a distributed inter-frame space
time.

Prior Art
The Examiner relies on the following prior art references to show
unpatentability:
Brederveld 5,898,679 Apr. 27, 1999

IEEE Standards Board, The Institute of Electrical and
Electronics Engineers, Inc., IEEE STANDARD 802.11, Ch. 9, 71-99
(1997) (hereinafter “IEEE”).

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Examiner's Rejections
The Examiner rejected claims 1-6 and 15-24 under 35 U.S.C. §102(b)
as being anticipated by Brederveld. Claims 7-14 have been cancelled.1

THE § 102 REJECTION OVER BREDERVELD
Appellants' Arguments and Contentions
Appellants contend "Brederveld does not disclose the sending of a
first acknowledgement message within a short inter-frame space time [SIFS]
and sending a second acknowledgement message within a distributed inter-
frame space time, which is different than the short inter-frame time space
[DIFS], and further require each acknowledgement to be sent during the
defined time periods." (App. Br. 7).
Appellants argue "Brederveld does not specify individual time periods
in which different messages should be sent." (Id.). Further, Appellants
argue (1) "[t]he present invention (as claimed in independent claims 1, 5, 6,
and 18) details which messages can be sent in which time periods, and
specifies characteristics of the time periods (SIFS, DIFS), so that one skilled
in the art can practice the invention"; (2) "Brederveld is not specific enough
for one to practice the invention in the context of 802.11 systems"; and
(3)"[i]f one does not use specifically SIFS and DIFS times for 802.11
systems, but uses some other, more generic (WIFS) timing, the invention
would not work." (Id.).

1 The rejection in the Final Rejection of December 12, 2007 under 35 U.S.C.
§ 112, paragraph 2 appears to be resolved and will not be considered in this
opinion. We base this on Appellants’ Amendments After Final Rejection
filed March 15, 2007 and April 2, 2007 and Status of the Claims stated in
Appellants’ Appeal Brief of April 19, 2007 and confirmed in the Examiner’s
Answer of June 12, 2007.
Appeal 2008-004975
Application 10/388,043

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Examiner's Findings and Conclusions
The Examiner found Brederveld's showing (1) that "the relay sends a
relay beep to the source to acknowledge the message (figure 2, column 5,
lines 54-56)" corresponds to transmitting a first acknowledgement message
to the source station address within a short inter-frame space time, and (2)
that "the message is transmitted when no station bleep is transmitted by the
destination (column 7, lines 36-48)" corresponds to transmitting the message
to the destination station address when a second acknowledgement message
was not transmitted by the destination station within a distributed inter-
frame space time. (See Ans. 3).
Additionally, the Examiner cited column 6, lines 10-16 of Brederveld
for teaching "sending a first acknowledgement (relay bleep) first in an inter-
frame space and then the second acknowledgement (station bleep) is
transmitted in the inter-frame space" (Id. at 8). The Examiner also found
that "[i]t is widely known that a short inter-frame space and a distributed
inter-frame space are contained in a standard interframe space between
messages (see IEEE page 75, figure 49)." (Id. at 8-9).

ISSUE
Have Appellants shown that the Examiner erred in finding Brederveld
discloses sending a first acknowledgement within a short inter-frame space
time (SIFS) and waiting a short inter-frame space time?

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FINDINGS OF FACT
We find the facts as follows:
The Brederveld Reference
1. A BLEEP signal is transmitted shortly after the reception of a
message and is sufficiently brief in duration that it fits in the Wireless Inter
Frame Space (WIFS) employed by many wireless computer networks. Two
'BLEEP' signals are employed by wireless networks according to the present
invention. A Relay-BLEEP (R-BLEEP) signal is transmitted by a relay
immediately after the end of the message transmitted by the source end-
station. A station BLEEP (S-Bleep) signal is transmitted by the destination
end-station immediately after the end of the time slot reserved for the R-
BLEEP signal. (Col. 5, ll. 48-59).
The IEEE Reference
2. "The time interval between frames is called the interframe
space (IFS)." (IEEE at 9.2.3).
3. Four different IFSs, which include SIFS and DIFS, are defined
to provide priority levels for access to the wireless media. (Id.).
4. "The SIFS shall be used for an ACK [acknowledgement]
frame" (see IEEE at 9.2.3.1; see also IEEE Figure 49).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, "[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation." Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
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Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
Analysis of whether a claim is patentable over the prior art under 35
U.S.C. § 102 begins with a determination of the scope of the claim. We
determine the scope of the claims in patent applications not solely on the
basis of the claim language, but upon giving the claims their broadest
reasonable construction "in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). The properly
interpreted claim must then be compared with the prior art.

ANALYSIS
Exemplary claim 1 recites "transmitting a first acknowledgement
message to the source station address within a short inter-frame space time"
(App. Br. 9, Claims App’x; and see analogous language in independent
claims 5, 6, and 18).
Appellants argue "[t]he present invention (as claimed in independent
claims 1, 5, 6, and 18) details which messages can be sent in which time
periods, and specifies characteristics of the time periods (SIFS, DIFS), so
that one skilled in the art can practice the invention." (App. Br. 7). We
agree with Appellants. We find the passages in Brederveld, cited by the
Examiner, fail to specifically reference a short inter-frame space time. Thus,
while Brederveld discloses sending a first acknowledgement message within
a wireless inter-frame space time (WIFS) (see FF 1), we find Brederveld
fails to teach transmitting a first acknowledgement message in a short inter-
frame space time. Accordingly, Appellants have persuaded us of error in the
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Examiner's finding that Brederveld discloses sending a first
acknowledgement within a short inter-frame space time (SIFS) and waiting a
short inter-frame space time. Thus, Appellants have persuaded us of error in
the Examiner’s rejection of claim 1 as being anticipated by Brederveld.
Independent claims 5 and 18 similarly recite "transmitting a first
acknowledgement message to the source station address within a short inter-
frame space time" (see App. Br. 10 and 12, Claims App’x). Further, we find
independent claim 6 recites "waiting a short inter-frame space time" (id. at
11). Thus, for the reasons discussed above, Appellants have persuaded us of
error in the Examiner's finding of anticipation regarding independent claims
1, 5, 6, and 18, as the independent claims recite a "short inter-frame space
time." Accordingly, we reverse the Examiner's rejection of (1) independent
claim 1 and claims 2-4, and 15-17 which depend therefrom; (2) independent
claim 5; (3) independent claim 6; and (4) independent claim 18, and claims
19-24 which depend therefrom.

OTHER ISSUES
NEW GROUND of REJECTION
Claim 1
We enter the following new ground of rejection using our authority
under 37 C.F.R. § 41.50(b) (2008).
Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Brederveld and IEEE. Claim 1 recites "transmitting
a first acknowledgement message to the source station address within a short
inter-frame space time" (App. Br. 9, Claims App’x).
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We find that Brederveld teaches sending a first acknowledgement
message within a wireless inter-frame space time. (See FF 1). We also find
that IEEE teaches (1) an interframe space referred to as a short inter-frame
space time, and (2) utilized to provide priority levels for access to wireless
media. (See FF 2-3). Further, we find short inter-frame space times are used
for acknowledgements. (FF 4). Thus, we find it would have been obvious
to one of ordinary skill in the art to transmit the acknowledgement of
Brederveld within a short inter-frame space time, as it is known in the art to
transmit an acknowledgement within a short inter-frame space time.
Discussing the question of obviousness of claimed subject matter
involving a combination of known elements, KSR Int’l v. Teleflex, Inc., 550
U.S. 398 (2007), explains:
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill. Sakraida [v. Ag Pro, Inc., 425 U.S. 273 (1976)]
and Anderson's-Black Rock[, Inc. v. Pavement Salvage Co., 396
U.S. 57 (1969)] are illustrative—a court must ask whether the
improvement is more than the predictable use of prior art
elements according to their established functions.

Id. at 417.
Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does
not mean the remaining claims are patentable. Rather, we merely leave the
patentability determination of these claims to the Examiner. See MPEP §
1213.02.
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DECISION
We reverse the Examiner's rejection with respect to claims 1-6 and
15-24. Moreover, we enter a new ground of rejection, exercising our
authority under 37 C.F.R. § 41.50(b), against claim 1 under 35 U.S.C. §
103(a).

37 C.F.R. § 41.50(b) also provides that the Appellants, 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 proceeding will be remanded to the examiner.…
(2) Request rehearing. Request that the proceeding be reheard under §
41.52 by the Board upon the same record.…

REVERSED
37 C.F.R. § 41.50(b)

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