Ex Parte Jung et al

Patent Trial and Appeal Board

Jun 25, 2014

10900163 (P.T.A.B. Jun. 25, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/900,163 07/27/2004 Edward K. Y. Jung SE1-0027-US 6941
80118 7590 06/26/2014
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
CAO, PHUONG THAO
ART UNIT PAPER NUMBER
2164
MAIL DATE DELIVERY MODE
06/26/2014 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 EDWARD K. Y. JUNG and CLARENCE T. TEGREENE
____________

Appeal 2012-002109
Application 10/900,163
Technology Center 2100
____________

Before MAHSHID D. SAADAT, BRUCE R. WINSOR, and CATHERINE
SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-56. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to motes. See generally, Spec. 4.
Exemplary claims 1, 2, and 5 read as follows:
1. A method comprising:
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accepting input defining a mote-appropriate network task;
searching at least one mote-addressed content index created by
at least one mote of a mote network in response to said accepted
input; and
presenting an indication of one or more motes appropriate to
the mote-appropriate network task, wherein at least one of the
accepting, searching, or presenting is at least partially performed
using a processing device.

2. The method of Claim 1, wherein said searching at least
one mote-addressed content index created by at least one mote of a
mote network in response to said accepted input comprises:
searching at least one mote-addressed content index created by
at least one mote of a mote network in response to said accepted input,
said at least one mote-addressed content index being stored within at
least one mote of the mote network, said at least one mote being
configured to sense at least one input relevant to the accepted input.

5. The method of Claim 1, wherein searching at least one
mote-addressed content index created by at least one mote of a mote
network in response to said accepted input comprises:
searching at least one mote-addressed content index created by
at least one mote of a mote network in response to said accepted input,
the at least one mote-addressed content index being created by the at
least one mote using content from one or more other motes of the
mote network directly accessible by the at least one mote.

Applied Prior Art
The Examiner relies on the following prior art in rejecting the claims:
Fano US 2009/0067586 A1 Mar. 12, 2009
Tanaka US 7,683,933 B2 Mar. 23, 2010

Benjamin Greenstein et al. DIFS: A Distributed Index for Features in
Sensor Networks Department of Computer Science, University of
California.
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The Examiner’s Rejections
Claims 1, 3-5, 7, 9, 11-16, 18-20, 22, 24, and 26-56 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Fano and Tanaka. See Ans.
5-33.
Claims 2, 6, 8, 10, 17, 21, 23, and 25 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Fano, Tanaka, and Greenstein. See Ans. 33-
37.

Issue on Appeal
Has the Examiner erred in rejecting claims 1-56 as being obvious over
various combinations of Fano, Tanaka, and Greenstein?

ANALYSIS
On this record, we find the Examiner did not err in rejecting the
claims.
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
arguments and conclusions set forth in Appellants’ Appeal Brief and Reply
Brief against the Examiner’s obviousness rejection. We adopt as our own
the obviousness findings and reasoning set forth by the Examiner (i) in the
action from which this appeal is taken, and (ii) in the Examiner’s Answer in
response to Appellants’ Appeal Brief. Therefore, we limit our discussion to
the following points for emphasis.

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We initially note that Appellants’ Reply Brief brings to our attention
the adequate notice requirements discussed in In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011). It is well settled that:
[The USPTO] satisfies its initial burden of production by
adequately explain[ing] the shortcomings it perceives so that
the applicant is properly notified and able to respond. In other
words, the PTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies 35 U.S.C. § 132, in
notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.

Jung, 637 F.3d at 1362 (internal citations and quotation marks omitted).
Contrary to Appellants’ assertion, the Examiner made explicit findings
regarding the elements taught by the remaining prior art, and explained how
the elements were interpreted as corresponding to the respective features of
the appealed claims. See Ans. 5-41.
With respect to claim 1, Appellants assert that Fano and Tanaka do
not teach the recited “at least one mote-addressed content index created by at
least one mote of a mote network” (emphases added) because the
Specification provides a special definition of mote. See App. Br. 29-36.
The Specification states: “As used herein, the term ‘mote’ typically means a
semi-autonomous computing, communication, and/or sensing device as
described in the mote literature (e.g., Intel Corporation’s mote literature), as
well as equivalents recognized by those having skill in the art (e.g., Intel
Corporation’s smart dust projects).” Spec. 9-10. Appellants then quote an
Intel Corporation document and argue the external Intel document governs
the definition of “mote” in the Specification. See App. Br. 35: 8-10.
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We disagree. “During examination, ‘claims . . . are to be given their
broadest reasonable interpretation consistent with the specification, and . . .
claim language should be read 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). And the
words of a claim “are generally given their ordinary and customary
meaning.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en
banc) (citations omitted).
The Specification states the term mote typically means a semi-
autonomous computing, communication and/or sensing device as described
in the mote literature (e.g., Intel Corporation’s mote literature), as well as
equivalents recognized by those having skill in the art (e.g., Intel
Corporation’s smart dust projects). See Spec. 9-10. Because the
Specification only offers what the term typically means, the Specification
merely offers non-limiting examples—not a definition of the term “mote.”
Further, the Specification also states typical examples encompass
equivalents recognized by those having skill in the art (e.g., Intel
Corporation’s smart dust projects) and therefore, well beyond what a single
Intel document states.
Accordingly, Appellants’ arguments have not persuaded us of error
because in light of the broadest reasonable interpretation of the term “mote,”
the Examiner reasonably finds Tanaka’s teachings encompass “at least one
mote-addressed content index created by at least one mote of a mote
network.”
With respect to claim 2, Appellants further argue it is independently
patentable. See App. Br. 36-40. Specifically, Appellants argue that “there
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can be no motivation to modify/combine the technologies of Fano and
Greenstein in the manner proposed by the Examiner because such a
modification/combination changes the principle of operation of one or more
of the technologies.” See App. Br. 39.
Appellants fail to persuade us of error. The Examiner correctly finds
Fano and Greenstein are analogous art because they are in the same field of
endeavor. See Ans. 34, 40. Further, Greenstein discloses explicit
advantages in storing data locally because “if far more data is collected than
is actually required to answer queries, then [a] local storage approach results
in significant energy savings.” See Greenstein col. 2, paragraphs 1-2; see
also Ans. 40. Contrary to Appellants’ argument that the combination would
have changed the principle of operation of Fano, combining Fano’s method
with Greenstein’s technique would have improved Fano’s method by using
local storage (a well-known architecture) instead of central storage (a well-
known architecture). See Ans. 34, 40. Therefore, combining the teachings
of Fano and Greenstein would have predictably used prior art elements
according to their established functions—an obvious improvement. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The combination “only
unites old elements with no change in their respective functions” and thus is
unpatentable. KSR, 550 U.S. at 416-417. Further, “[i]n determining whether
the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls.” KSR, 550 U.S.
at 419 (2007). In any event, the Examiner has articulated a motivation to
combine because the combination saves energy and therefore, is more
efficient (An. 40). See DyStar Textilfarben GmbH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (“[A]n implicit
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motivation to combine exists . . . when the ‘improvement’ is technology-
independent and the combination of references results in a product or
process that is more desirable . . . because it is . . . more efficient.”).
Accordingly, the Examiner has provided articulated reasoning with some
rational underpinning to justify the Examiner’s obviousness conclusion. See
Ans. 34, 40.
With respect to claim 5, Appellants further assert it is independently
patentable. See App. Br. 40-41. Specifically, Appellants assert that both
Fano and Greenstein1 are silent as to “the at least one mote-addressed
content index being created by the at least one mote using content from one
or more other motes of the mote network directly accessible by the at least
one mote” as recited in claim 5, but do not present any argument. See App.
Br. 41.
Appellants’ assertion does not amount to an argument, as Appellants
do not explain why that is the case, let alone show error in the Examiner’s
rejection. See 37 C.F.R. § 41.37(c)(1)(vii) (2011) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”); see also In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (holding that “the Board reasonably interpreted
Rule 41.37 to 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”).
Further, contrary to Appellants’ unsupported assertion, the Examiner
made explicit findings regarding the elements taught by Fano and Tanaka,

1 The Examiner cites Fano and Tanaka for the claim limitation of claim 5.
See Ans. 10-11, 41.
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and explained how the elements are mapped to the claim limitation “creating
a mote-addressed content index using content from one or more other motes
of the mote network directly accessible by the at least one mote.” See Ans.
10-11, 41.
As explained in Jung, 637 F3d at 1362, the Examiner’s findings and
explanations would have put any reasonable Applicants on notice of the
Examiner’s rejection, and given them ample information with which to
counter the grounds of rejection, which is all that is required to establish a
prima facie case of unpatentability. In short, the Examiner has satisfied the
initial burden of production by combining the references to establish a case
of obviousness. The burden then shifts to Appellants to rebut the
Examiner’s case.
In order to rebut a prima facie case of unpatentability, Appellants
must distinctly and specifically point out the supposed Examiner errors, and
the specific distinctions believed to render the claims patentable over the
applied references. See 37 C.F.R. § 41.37(c)(vii); see also Lovin, 652 F.3d
at 1357; cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991)
(“It is not the function of this court to examine the claims in greater detail
than argued by an appellant, looking for [patentable] distinctions over the
prior art.”).
Appellants have failed to carry their burden because Appellants fail to
demonstrate what gaps exist between the cited references and the claims.
Finally, Appellants fail to persuade us of error because for each of the
claims, although the cited text does not repeat the recited claim limitation
verbatim, one skilled in the art would understand the recited claim limitation
encompasses the disclosure cited by the Examiner. See In re Bond, 910 F.2d
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831, 832 (Fed. Cir. 1990) (whether a reference teaches a claim limitation “is
not an ‘ipsissimis verbis’ test”).
Because Appellants fail to explicitly and persuasively rebut the
Examiner’s findings, Appellants fail to persuade us of error. Accordingly,
we sustain the Examiner’s rejection of independent claim 1 and
corresponding dependent claims.
For similar reasons discussed above with respect to claim 1, we
sustain the Examiner’s rejection of claims 16, 33, 36, 41, 44, 49, and 52, and
corresponding dependent claims.

DECISION
The Examiner’s decision rejecting claims 1-56 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)(iv).

AFFIRMED

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