Ex Parte Foti

Patent Trial and Appeal Board

Mar 9, 2018

13482516 (P.T.A.B. Mar. 9, 2018)

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.
4015-8080/P35857 US1 4253
EXAMINER
BIAGINI, CHRISTOPHER D
ART UNIT PAPER NUMBER
2445
MAIL DATE DELIVERY MODE
13/482,516 05/29/2012
24112 7590 03/12/2018
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
George Foti
03/12/2018 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 GEORGE FOTI
Appeal 2017-008442
Application 13/482,516
Technology Center 2400
Before JUSTIN BUSCH, NORMAN H. BEAMER, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a
non-final rejection of claims 1, 6, 7, 12, 17, 18, and 23—34, i.e., all pending
claims. Because the claims have been twice rejected, we have jurisdiction
under 35 U.S.C. §§ 6(b) and 134(a). See Ex parte Lemoine, 46 USPQ2d
1420, 1423 (BPAI 1994) (precedential).
We affirm.
1 Appellant identifies the real party in interest as Telefonaktiebolaget L M
Ericsson. App. Br. 2.
Appeal 2017-008442
Application 13/482,516
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention “generally relates to a
geomessaging server and a geomessaging client for use with a cooperative
intelligent transportation system, and particularly relates to a geomessaging
server and client for relaying event notifications via a vehicular ad-hoc
network (VANET).” Spec. ]f 1,2 The server “generates a message relay
request that solicits” the “client to relay the message to any other vehicles
within the vehicle’s vicinity via” a VANET, and the server then “sends the
generated request to the client via” an “infrastructure-based network.”
Abstract. The Specification explains that an “infrastructure-based network”
includes “for instance a cellular communication network ... or any similar
network that employs infrastructure for routing communications between
communication endpoints.” Spec. 1 5.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows:
1. A method implemented by a geomessaging server for use
in a cooperative intelligent transportation system, comprising:
sending an event notification message, via an
infrastructure-based wireless communication network, to
geomessaging clients registered with the geomessaging server
as being associated with respective vehicles that are located
within a targeted one of multiple defined geographical areas
2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed May 29, 2012; “Non-Final Act.” for the Non-Final
Office Action, mailed December 23, 2016; “App. Br.” for the Appeal Brief,
filed April 10, 2017; “Ans.” for the Examiner’s Answer, mailed May 15,
2017; and “Reply Br.” for the Reply Brief, filed May 25, 2017.
2
Appeal 2017-008442
Application 13/482,516
serviced by the geomessaging server, the message indicating
the occurrence of an event pertinent to travel conditions in the
targeted area;
generating a message relay request that solicits a
geomessaging client which receives the message relay request
to relay the event notification message to any other vehicles
within the vehicle’s vicinity via a vehicular ad-hoc wireless
communication network;
selecting a subset of said registered geomessaging clients
to include geomessaging clients registered as associated with
vehicles that are located within the targeted geographical area
but that are not co-located with one another within that area and
exclude geomessaging clients registered as associated with
vehicles that are co-located within the targeted geographical
area with a vehicle associated with any one of the included
geomessaging clients; and
selectively sending the message relay request to the
subset of geomessaging clients via the infrastructure-based
wireless communication network.
App. Br. 13 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability, the Examiner relies on the following
prior art:
Bondy et al. (“Bondy”)
Zhao et al. (“Zhao”)
Elliott
Yi et al. (“Yi”)
Weniger et al. (“Weniger”)
Jana et al. (“Jana”)
Scofield et al. (“Scofield”)
Lee et al. (“Lee”)
US 2002/0051518 Al
US 2004/0068364 Al
US 7,023,818 B1
US 2008/0102854 Al
US 2011/0238822 Al
US 2013/0099941 Al
US 2013/0132434 Al
EP 1489578 A2
May 2, 2002
Apr. 8, 2004
Apr. 4, 2006
May 1,2008
Sept. 29, 2011
Apr. 25, 2013
(filed Oct. 20, 2011)
May 23, 2013
(filed Nov. 22, 2011)
Dec. 22, 2004
3
Appeal 2017-008442
Application 13/482,516
The Rejections on Appeal
Claim 26 stands rejected under 35U.S.C. § 112 ]f 1 for failing to
comply with the written-description requirement. Non-Final Act. 3.
Claims 1, 6, 12, 17, 26, 29, 30, 32, and 33 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Zhao, Jana, and Elliott. Non-Final
Act. 4—12.
Claims 7 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zhao, Jana, Elliott, and Lee. Non-Final Act. 12—13.
Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Zhao, Jana, Elliott, and Scofield. Non-Final Act. 14—15.
Claims 24 and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zhao, Jana, Elliott, and Bondy. Non-Final Act. 15—16.
Claims 25 and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zhao, Jana, Elliott, and Yi. Non-Final Act. 16—17.
Claims 31 and 34 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zhao, Jana, Elliott, and Weniger. Non-Final Act. 17—18.
ANALYSIS
We have reviewed the rejections of claims 1, 6, 7, 12, 17, 18, and
23—34 in light of Appellant’s arguments that the Examiner erred. For the
reasons explained below, we disagree with Appellant’s assertions regarding
Examiner error. We adopt the Examiner’s findings and reasoning in the
Non-Final Office Action (Non-Final Act. 3—18) and Answer (Ans. 2—9). We
add the following to address and emphasize specific findings and arguments.
4
Appeal 2017-008442
Application 13/482,516
The §112 f 1 Rejection of Claim 26
Appellant does not contest the written-description rejection. App.
Br. 11—12. Because Appellant does not contest the written-description
rejection, we summarily sustain that rejection. See Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir. 2008) (explaining that “[wjhen the appellant fails to
contest a ground of rejection to the Board,... the Board may treat any
argument with respect to that ground of rejection as waived”); see also
Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed. Rev.
07.2015 Nov. 2015) (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, appellant has waived any challenge to that
ground of rejection and the Board may summarily sustain it, unless the
examiner subsequently withdrew the rejection in the examiner’s answer.”).
The § 103(a) Rejection of Claims
1, 6, 12, 17, 26, 29, 30, 32, and 33
The Propriety of Using Elliott as a Reference
Appellant argues that the Examiner erred in rejecting claim 1 because
“one of ordinary skill would not look to Elliott to solve the problem of
which nodes to signal via an infrastructure-based network because Elliott
relates to a purely ad-hoc network in which no infrastructure-based
network is present.” App. Br. 5—6; Reply Br. 2. Appellant also argues that
“[a]n inventor would not look to an ad-hoc specialized network to solve the
problem of selecting nodes to signal via an infrastructure-based network.”
App. Br. 7. According to Appellant, “‘[t]he question is whether an inventor
would look to this particular art [Elliott] to solve the particular problem at
hand) which in this case is Zhao and Jain’s [sic] failure to teach selection of
an appropriate subset of nodes to signal via an infrastructure-based wireless
5
Appeal 2017-008442
Application 13/482,516
communication network.” App. Br. 7 (emphasis in original) (quoting
Circuit Check Inc. v. QXQInc., 795 F.3d 1331, 1335 (Fed. Cir. 2015)); see
Reply Br. 4—5. Appellant quotes from the section in Circuit Check where
the Federal Circuit considered whether certain disputed references were
analogous art. See Circuit Check, 795 F.3d at 1333, 1335—36.
The scope of analogous art includes references “from the same field
of endeavor” as the claimed invention and references “reasonably pertinent
to the particular problem with which the inventor is involved.” In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004); see In re Wood, 599 F.2d 1032, 1036
(CCPA 1979).
In the Answer, the Examiner finds that Elliott is: (1) “from the same
field of endeavor as the claimed invention”; and (2) “reasonably pertinent to
the problem faced by the inventor, at least because both Elliot[t] and the
inventor were concerned with the problem of sending messages to enough
relay nodes to cover a given area, while excluding nodes which provide
redundant or overlapping radio coverage.” Ans. 3. In the Reply Brief,
Appellant does not dispute the Examiner’s findings that Elliott qualifies as
analogous art. Reply Br. 2—3.
Selecting a Subset of Clients and Sending a
Message Relay Request to the Selected Subset via
an Infrastructure-Based Wireless Communication Network
Appellant contends that the Examiner improperly “combine[s]
Elliot[t] with the combination of Zhao and Jana to teach” the following
features in claim 1: “selecting a subset of said registered geomessaging
clients to include [some] geomessaging clients and exclude [other]
geomessaging clients . . . and selectively sending the message relay request
to the subset. . . via the infrastructure-based wireless communication
6
Appeal 2017-008442
Application 13/482,516
network.'1'’ App. Br. 5 (alterations in original); see Reply Br. 2—3. Appellant
also contends that “an infrastructure-based network is explicitly not present”
in Elliott. Reply Br. 2; see App. Br. 5—6.
In addition, Appellant asserts that “Elliott leads one of ordinary skill
away from the particular features of the claims to which Elliott has been
applied” because Elliott’s “teachings are particular to an ad-hoc networking
environment'” that uses specialized routers with specialized routing
protocols. Reply Br. 3; see id. at 5; App. Br. 6. Appellant also asserts that
those specialized routers “would not be present in, or necessarily even
compatible with, an infrastructure-based network.” Reply Br. 3; see App.
Br. 6. According to Appellant, “[o]ne of ordinary skill would not find it
obvious to apply” Elliott’s “hishlv-specialized ad-hoc principles to an
infrastructure-based network environment” because those principles “are not
directed to” the disclosure allegedly absent from Zhao and Jana. Reply
Br. 4—5; see App. Br. 7.
Appellant’s arguments do not persuade us of Examiner error. Elliott
discloses wireless ad-hoc networks for, among other uses, “mobile and
temporary environments,” such as “vehicles” and “business meetings.”
Elliott 1:27—30, 12:31—38. Elliott explains that “[i]n wireless ad-hoc
networks, all network nodes are preferably equipped with communications
transceivers,” and “[a]t least some of these nodes are capable of network
routing functions (‘routers’).” Id. at 1:13—16; see Ans. 3. The “routers”
create ad-hoc networks by forming relationships with nearby “routers” and
then forward messages from node to node using “known networking
protocols.” Elliott 1:13-52, 2:36-37, 3:51^1:8, 6:57-67, 9:7-19, 10:25-55,
Abstract. Elliott also explains that “[s]ome ad-hoc networks have nodes that
7
Appeal 2017-008442
Application 13/482,516
occasionally enter radio silence” and “[a] radio-silent node can still receive
messages from a network.” Id. at 4:39-48.
Although Elliott discusses various embodiments that use only
“routers” in an ad-hoc network to send messages to radio-silent nodes,
Elliott also discloses an “alternative arrangement. . . implemented in a
centralized form” with “a central server.” Elliott 8:7—25, 8:49—9:19, 10:25—
55, 13:18—54, 15:49-62, Figs. 3, 5, 10; see Ans. 5 (citing Elliott 15:49-62).
“The central server can be a conventional server, having known processing,
memory and communications components.” Elliott 15:55—57. Nodes that
need to find a radio-silent node query the central server for the required
information. Id. at 15:60-62.
Elliott’s conventional central server and known communications
components “employ[] infrastructure for routing communications between
communication endpoints” according to the Specification’s explanation of
an “infrastructure-based network.” See Spec. 1 5. Consequently, contrary to
Appellant’s contentions, Elliott discloses an “infrastructure-based network”
and sending messages to radio-silent nodes using that network. See Ans. 4—
5. In the Answer, the Examiner discusses Elliott’s “alternative
arrangement.” Id. at 5. In the Reply Brief, Appellant fails to address that
arrangement. See Reply Br. 2—5.
Moreover, the “disclosure of more than one alternative does not
constitute a teaching away” from any of the alternatives unless the reference
criticizes, discredits, or otherwise discourages investigation into the claimed
invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); see DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009). Elliott does not criticize, discredit, or otherwise discourage
8
Appeal 2017-008442
Application 13/482,516
investigation into the claimed invention. See, e.g., Elliott 1:13—52,
3:23—4:51, 6:57-67, 8:7-25, 8:49-9:19, 10:25-55, 13:18-54, 15:49-62.
Appellant’s assertion that “routers” according to Elliott “would not be
present in, or necessarily even compatible with, an infrastructure-based
network” constitutes attorney argument. Attorney argument “cannot take
the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Further, Appellant’s assertion conflicts with Jana’s disclosure concerning the
use of base stations and the Internet to relay messages between vehicular
ad-hoc networks that have “routers” according to Elliott, i.e., “routers” that
form relationships with nearby “routers” and forward messages through the
resulting ad-hoc network using “known networking protocols.” See, e.g.,
JanaH4AA5, 53-56, Figs. 2-3; Elliott 1:13-52, 2:36-37, 3:51^1:8,
6:57—67, 9:7—19, 10:25—55; see also Ans. 4 (citing Jana^t 53—56, Fig. 3).
Appellant argues that “one of ordinary skill would not have any
apparent reason to combine the references in the manner alleged by” the
Examiner. Reply Br. 2. That argument does not persuade us of Examiner
error because the Examiner articulates reasoning with a rational
underpinning for why one of ordinary skill would have combined Elliott and
Zhao. Non-Final Act. 7; Ans. 7. In particular, the Examiner explains that
modifying Zhao’s system with Elliott’s teachings permits “blanketing] an
area with retransmissions while reducing the total number of transmissions
necessary to do so.” Non-Final Act. 7; Ans. 7. Consistent with the
Examiner’s explanation, Elliott instructs that “[t]here are advantages to only
using a subset, for example, a subset reduces the overall number of
transmissions used in order to deliver the message” and “may also reduce
9
Appeal 2017-008442
Application 13/482,516
the probability of self-interference caused by a number of different nodes
transmitting at roughly the same time.” Elliott 13:46—51.
Thus, the Examiner identifies an advantage achieved with the
combination and a reason to combine the references. “[T]he law does not
require that the references be combined for the reasons contemplated by the
inventor.” In re Beattie, 91A F.2d 1309, 1312 (Fed. Cir. 1992). “[A]ny need
or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining” references.
KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). “[T]he desire to
enhance commercial opportunities by improving a product or process is
universal. . . .” DyStar Textilfarben GmbHv. C.H. Patrick Co., 464 F.3d
1356, 1368 (Fed. Cir. 2006); see In re Peterson, 315 F.3d 1325, 1330
(Fed. Cir. 2003). “[A]n implicit motivation to combine” may result from a
desire to make a product or process “stronger, cheaper, cleaner, faster,
lighter, smaller, more durable, or more efficient.” DyStar, 464 F.3d at 1368.
Selection/Exclusion Based on Co-Focation
Appellant argues that the Examiner erred in rejecting claim 1 because
“co-location of nodes is not a basis for subset selection according to Elliott.”
App. Br. 7. Appellant also argues that the Examiner “appears to conflate the
notion of overlapping coverage with the notion of co-location” and
“selecting based on coverage (as in Elliott) is not the same as selecting
based on co-location (as claimed).” Id. at 8. According to Appellant,
Elliott’s “coverage-based considerations, such as range estimations, signal
propagation analytics, [and] radio transmission characteristics” differ from
selection/exclusion based on co-location. Id. at 10.
10
Appeal 2017-008442
Application 13/482,516
Appellant’s arguments do not persuade us of Examiner error.
“[DJuring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000). Here, the Examiner determines based
on the Specification that “the claims include within their scope the selection
process described in Elliot.” Ans. 5—6 (citing Spec. 142). In particular, the
Specification discusses clients 44-1, 44-2, 44-3, and 44-4 shown in Figure 2
reproduced in part below:
x
Spec. Fig. 2. “Figure 2 illustrates an example of selectively sending a
message relay request to a subset” of clients “according to one or more
embodiments” of the invention. Id. 118.
The Specification explains that clients 44-1 and 44-2 “are associated
with vehicles that are substantially co-located, at least in the sense that the
geographic range over which the clients 44-1 and 44-2 would relay event
notification messages substantially overlap.” Spec. 142. Based on radio
coverage overlap, a controller “selects the subset to include clients 44-1,
44-3, and 44-4” and “selects the subset to exclude client 44-2.” Id. Thus,
11
Appeal 2017-008442
Application 13/482,516
the Specification discloses subset selection/exclusion based on geographic
radio coverage. See Ans. 5—6.
Like the Specification, Elliott discloses subset selection/exclusion
based on geographic radio coverage, for example, (1) “examining every
possible subset” of nodes covering a given area and then “choosing the
smallest subset” of nodes covering the given area and (2) excluding nodes
“providing only redundant coverage” for a given area such that the
“remaining subset would still cover” the given area. Elliott 13:35—46; see
Non-Final Act. 6—7; Ans. 3, 6—7; see also App. Br. 7—8. Thus, the Examiner
finds that “[i]n at least one embodiment, Elliot[t] explicitly considers
geographic distance as a proxy for radio coverage, and therefore reasonably
teaches the claimed process for excluding co-located nodes.” Ans. 6—7.
Summary for Independent Claim 1
For the reasons discussed above, Appellant’s arguments have not
persuaded us that the Examiner erred in rejecting claim 1 for obviousness
based on Zhao, Jana, and Elliott. The combination of disclosures in the
references teaches or suggests the disputed limitations in claim 1. See
Non-Final Act. 4—7; Ans. 3—8. Hence, we sustain the § 103(a) rejection of
claim 1.
Independent Claim 12 and
Dependent Claims 6,17,26,29,30,32, and 33
Appellant does not argue patentability separately for independent
claim 12 or dependent claims 6, 17, 26, 29, 30, 32, and 33. App. Br. 5—11.
Because Appellant does not argue the claims separately, we sustain the
§ 103(a) rejection of these claims for the same reasons as claim 1. See
37C.F.R. §41.37(c)(l)(iv).
12
Appeal 2017-008442
Application 13/482,516
The § 103(a) Rejections of Claims 7, 18, 23—25, 27, 28, 31, and 34
For dependent claims 7, 18, 23—25, 27, 28, 31, and 34, Appellant
asserts that the additionally cited references do not “cure the deficiencies of
Zhao, Jain, [sic] and Elliott discussed” for claim 1. App. Br. 11.
Appellant’s assertion does not amount to a separate patentability argument.
See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (explaining that the
applicable rules “require more substantive arguments in an appeal brief than
a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art”). Because
Appellant does not argue the claims separately, we sustain the § 103(a)
rejections of these dependent claims for the same reasons as the related
independent claim. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner’s decision to reject claims 1, 6, 7, 12, 17, 18,
and 23—34.
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). See
37 C.F.R. § 41.50(f).
AFFIRMED
13