Ex Parte Jung et al

Patent Trial and Appeal Board

Jun 24, 2014

10843987 (P.T.A.B. Jun. 24, 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.
10/843,987 05/12/2004 Edward K. Y. Jung SE1-0020-US 6594
80118 7590 06/24/2014
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
SURVILLO, OLEG
ART UNIT PAPER NUMBER
2442
MAIL DATE DELIVERY MODE
06/24/2014 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 2011-007337
Application 10/843,987
Technology Center 2400
____________

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

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-45, 48-93, and 96-180. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

Appeal 2011-007337
Application 10/843,987

2
STATEMENT OF THE CASE
Introduction
Appellants’ disclosed invention relates to the creation of a federated
log from a plurality of administered mote-addressed content logs within a
mote-appropriate network. (Spec. 3:14-20.) A mote is typically composed
of sensors, actuators, computational entities, and/or communications entities,
and is typically understood to be a semi-autonomous computing,
communication, and sensing device. (Spec. 8:15-17.)
Exemplary claim 1, which is illustrative, reads as follows:
1. A method comprising:
creating one or more first-administered content logs for a
first set of motes, said one or more first-administered content
logs being obtained from monitoring a first item type and being
administered by a first administrator;
obtaining at least a part of the one or more first-
administered content logs of the first set of motes;
creating one or more second-administered content logs
for a second set of motes said one or more second-administered
content logs being obtained from monitoring a second different
item type and administered by a second separate administrator;
obtaining at least a part of the second-separately-
administered content logs of the second set of motes, wherein at
least one of the one or more first-administered content logs or
the one or more second-separately-administered content logs
comprises a plurality of administered content logs;
aggregating the plurality of administered content logs
into an aggregated content log in a memory of at least one
aggregating mote of at least one of the first set of motes or the
second set of motes; and
creating a federated log from the one or more first-
administered content logs of the first set of motes and the one
Appeal 2011-007337
Application 10/843,987

3
or more second-administered content logs of the second set of
motes, the federated log including the aggregated content log.
Applied Prior Art
The Examiner relies on the following prior art in rejecting the claims:
Bennett US 5,615,367 Mar. 25, 1997
Godlewski US 6,421,354 B1 July 16, 2002
Mulgund US 2002/0161751 A1 Oct. 31, 2002
Nelson US 2004/0122849 A1 June 24, 2004
Chiloyan US 7,165,109 B2 Jan. 16, 2007

Samuel Madden et al. TAG: A Tiny AGgregation Service for Ad-Hoc
Sensor Networks, 2002 (Madden TAG).
Bob Fornaro et al. Tiny Sensor-Based Computers Could Help Track
Wildlife, November 6, 2003 (Fornaro).
Samuel Madden et al. The Design of an Acquisitional Query
Processor for Sensor Networks, September 2003 (Madden Query).
Sam Madden et al. TinyDB: In-Network Query Processing in TinyOS,
September 2003 (TinyDB).
The Rejections
Claims 1-45, 48-93, and 96-180 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. (See Ans. 9-11.) 1
Claims 1-45, 48-93, and 96-180 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite. (See Ans. 11-15.)
Claims 108-128 and 154-178 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite. (See Ans. 4-8.)

1 We refer to the Briefs (“App. Br.” filed Sept. 30, 2010, supplemented Nov.
8, 2010; “Reply Br.” filed Mar. 18, 2011) and the Answer (“Ans.” mailed
Jan. 19, 2011) for the respective positions of Appellants and the Examiner.
Appeal 2011-007337
Application 10/843,987

4
Claims 179 and 180 stand rejected under 35 U.S.C. § 103(a)2 as being
unpatentable over Mulgund, and Madden TAG. (See Ans. 16-19.)
Claims 1-5, 8, 9, 11, 12, 14, 16, 20, 21, 23, 25, 36, 38, 39, 42-45, 48,
50-53, 56, 57, 59, 60, 62, 64, 68, 69, 71, 73, 84, 86, 87, 90-93, 96, 98-101,
104, 105, 107-112, 114-117, 119-122, 125, 126, 128-131, 133, 135, 137,
138, 140, 142, 144-147, 150, 151, 153-156, 158, 160, 162, 163, 165, 167,
169-172, 175, 176, and 178 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mulgund, Bennett, and Madden TAG. (See Ans. 19-43.)
Claims 6, 7, 54, and 55 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mulgund, Bennett, Madden TAG, and Chiloyan.
(See Ans. 43-44.)
Claims 13, 15, 17, 18, 22, 24, 40, 41, 49, 58, 61, 63, 65, 66, 70, 72,
88, 89, 97, 113, 118, 132, 134, 136, 139, 141, 143, 157, 159, 161, 164, 166,
and 168 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Mulgund, Bennett, Madden TAG, and Fornaro. (See Ans. 44-59.)
Claims 10, 19, 25, 31-35, 37, 73, 79-83, and 85 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Mulgund, Bennett, Madden TAG,
and Madden Query. (See Ans. 59-67.)
Claims 26 and 74 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mulgund, Bennett, Madden TAG, Madden Query, and
Chiloyan. (See Ans. 67-68.)

2 The Examiner referred to the rejection of claims 179 and 180 as being
under 35 U.S.C. § 102(b) as unpatentable over Mulgund in view of Madden
TAG (Ans. 16), although the rejection appears under the “Claim Rejections
35 U.S.C. § 103” section heading (Ans. 15). We find the mention of
§ 102(b) to be a typographical error and treat the rejection as a rejection
under 35 U.S.C. § 103(a), as did Appellants. (See App. Br. 13.)
Appeal 2011-007337
Application 10/843,987

5
Claims 27-30 and 75-78 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mulgund, Bennett, Madden TAG, Madden Query, and
Godlewski. (See Ans. 68-69.)
Claim 67 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Mulgund, Bennett, Madden TAG, Madden Query, and TinyDB. (See
Ans. 69-70.)
Claims 102, 103, 106, 123, 124, 127, 148, 149, 152, 173, 174, and 177
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Mulgund,
Bennett, Madden TAG, and Nelson. (See Ans. 70-73.)
Appellants’ Contentions
1. With respect to the rejection of claims 1-45, 48-93, and 96-180
under 35 U.S.C. § 112, first paragraph, Appellants contend there is support
for the claimed “aggregating mote,” “aggregating the plurality of
administered content logs” and “installing the transferred part of the multi-
mote log creation agent,” and cites portions of the drawing Figures and
Specification that Appellants assert provide an adequate disclosure to
comply with the written description requirement. (App. Br. 245-248.)
2. With respect to the rejection of claims 1-45, 48-93, and 96-180
under 35 U.S.C. § 112, second paragraph, Appellants contend (App. Br.
248-253):
(a) the claim term “obtaining” is defined sufficiently “by the
specification” or by standards in the Specification and provides the context
of the use of the term in the claims (App. Br. 249, 251);
(b) the relationship between the claimed first item type and the first
administered content log, as well as the meaning of the claimed “second
different item type” is clear, and in one implementation, “the plurality of
Appeal 2011-007337
Application 10/843,987

6
administered content logs” can be interpreted as meaning either the first or
second administered content log (App. Br. 249-250);
(c) the claimed step of “receiving at least a part of one or more mote-
addressed content logs with the transferred part of the multi-mote log
creation agent” can be performed after installation of the multi-mote log
creation agent (App. Br. 250); and
(d) the claimed “device type” is defined sufficiently “by the
specification” or by standards in the Specification and provides the context
of the use of the term in the claims (App. Br. 250-251).
3. With respect to the newly presented grounds of rejection of
claims 108-128 and 154-178 under 35 U.S.C. § 112, second paragraph,
Appellants contend there is support for the claimed “means for creating,”
“means for obtaining” and “means for aggregating,” and cites portions of the
drawing Figures and Specification that Appellants believe disclose
adequately the structure, material or acts that perform the respective recited
functions. (Reply. Br. 3-6.)
4. Appellants contend the combination of Mulgund and Madden
TAG is improper with respect to independent claim 179 because:
(a) the cited portions of Mulgund and Madden TAG describing Node
Data Tables which accommodate sensor data originating from a respective
node do not disclose the recited features of “first content logs including
content corresponding to a first type of device information being detected”
or “second content logs including content corresponding to a second
different type of device information being detected” (App. Br. 43-46, 56-
57);
Appeal 2011-007337
Application 10/843,987

7
(b) the Examiner’s proposed combination is based on impermissible
hindsight, personal knowledge, or Official Notice (App. Br. 54-55, 65-66);
and
(c) the Examiner’s proposed combination is based on “mere
conclusory statements” without evidentiary support (App. Br. 66-68).
These arguments have been substantially repeated with respect to the
rejection of independent claim 180 (App. Br. 68-92). Therefore, claim 180
stands or falls with claim 179.
5. Appellants argue the patentability of independent claims 1, 108,
129, and 154 over the combination of Mulgund, Bennett, and Madden TAG,
as well as the remaining respective dependent claims (App. Br. 92-244) by
repeating substantially the arguments presented with respect to independent
claim 179 (App. Br. 42-68). Therefore, claims 1, 108, 129, and 154 stand
or fall with claim 179.
6. Appellants present separate argument with respect to claim 19
that the prior art fails to disclose the migration of a multi-mote log creation
agent to a mote of a first set of motes. (App. Br. 130-132.)
The Examiner’s Findings
Claim 179
The Examiner finds (Ans. 16-17) Mulgund teaches a database server
10 coupled to a first set of nodes 2 connected to and administered by a first
access point 6, as well as a second set of nodes 2 connected to and
administered by a second access point 6. (Mulgund Fig. 1.) Content logs
are received from the respective sets of nodes, including content
corresponding to the types of sensors resident on the respective nodes.
(Mulgund ¶¶ 0026, 0041.) The respective content logs are then aggregated
Appeal 2011-007337
Application 10/843,987

8
into an aggregated content log, e.g., Data Table List 30. (Mulgund Fig. 4.)
Additionally, a network modeling agent operates to create a federated log
comprising an aggregated content log received from a node in either the first
or second set of nodes. (Mulgund ¶¶ 0025, 0041-0042, 0062). The
Examiner finds the disclosed nodes are analogous to the claimed motes.
(See Mulgund ¶ 0026.) The Examiner further relies upon Madden TAG for
its disclosure of an aggregating mote, i.e., Madden’s parent mote. (Ans. 17-
18, citing Madden TAG, abstract; § 1.1, 2nd ¶; § 4; § 4.1, 1st-2nd ¶¶; § 4.2;
Fig. 2.)
Claim 1
The Examiner presents (Ans. 20-23) findings analogous to those made
with respect to claim 179, with the additional reliance (Ans. 22) on Bennett
for its teaching of the details of the creation of a federated log from one or
more first-administered content logs and one or more second-administered
content logs i.e., Bennett’s creation of a design document from a first and
second table, each table containing a log. (See Bennett, col. 3, l. 49-col. 4, l.
40; Fig. 5A.)
Claim 19
The Examiner finds Mulgund teaches using a network modeling agent
to interrogate a node to retrieve sensor information from the node. (Ans. 61
(citing Mulgund ¶ 0044).) The Examiner finds the disclosed network
modeling agent performs functions that are analogous to the claimed multi-
mote log creation agent. The Examiner further relies on Madden Query
(Ans. 61-62 (citing Madden Query, § 1, 4th ¶)) for teaching the migration of
log creation agents (a TinyDB distributed query processor) from mote to
mote.
Appeal 2011-007337
Application 10/843,987

9

ISSUES ON APPEAL
Has the Examiner erred in rejecting claims 1-45, 48-93, and 96-180 as
failing to comply with the written description requirement?
Has the Examiner erred in rejecting claims 1-45, 48-93, and 96-180 as
being indefinite?
Has the Examiner erred in rejecting claims 1-45, 48-93, and 96-180 as
being obvious over various combinations of Mulgund, Madden TAG,
Bennett, Chiloyan, Godlewski, Nelson, Fornaro, Madden Query, and
TinyDB?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We agree with the Examiner’s
conclusions with respect to the rejections under § 103 and § 112, second
paragraph, with the exception of the rejection of claim 180. We disagree
with the rejection under § 112, first paragraph and the rejection of claim 180
under § 112, second paragraph.
Appellants’ Reply Brief (filed Oct. 6, 2011), brings to our attention
the adequate notice requirements discussed in In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011). We find the rejections made by the Examiner give
adequate notice to Appellants to determine whether to continue prosecution
and to counter the rejections. See 35 U.S.C. § 132(a).
35 U.S.C. § 112, first paragraph, Rejection
With respect to Appellants’ contention 1, we note each of independent
claims 1, 108, 129, 154, 179, and 180 includes the term “aggregating mote.”
Appeal 2011-007337
Application 10/843,987

10
Although, as pointed out by the Examiner (Ans. 9-10), this term does not
appear in the Specification, we nevertheless find Appellants’ Specification
provides sufficient support for the term.
Section 112, first paragraph, of 35 § U.S.C. requires that the
Specification contain a written description of the invention, and of the
manner and process of making and using it, in such clear, concise, and exact
terms to enable any person skilled in the art to which it pertains to make and
use the same.
In this case, an ordinarily skilled artisan would have interpreted the
term “aggregating mote” as a mote that performs aggregation. Appellants’
Specification discloses that an “aggregated log” encompasses a “multi-mote
log.”
[I]n some implementations, multi-mote log creation agent 502
creates multi-mote content log 504, at least in part, from a
previously generated aggregate of mote-addressed content logs
(e.g., from a previously generated multi-mote content log).
(Spec. 21:5-7.)
The Specification further discloses the agents that create the multi-
mote or aggregated log exist on various motes:
[I]n some applications motes are low-power and/or low
bandwidth devices, and thus in some implementations the
systems and processes described herein allow many minutes
(e.g., hours, days, or even weeks) for herein described agents
and processes to migrate to and establish themselves at various
motes (e.g., by transferring their instructions in a piecewise
fashion over time).
(Spec. 21:15-20.)
The Specification thus discloses aggregation agents that are installed
on motes and perform aggregation of content logs, which an ordinarily
Appeal 2011-007337
Application 10/843,987

11
skilled artisan would have understood as providing support for the recited
“aggregating mote.”
Claim 67 includes the limitation “transferring at least a part of a multi-
mote log creation agent.” As discussed above, the Specification (Spec.
21:15-20) discloses that log creation agents can be migrated to a mote “in a
piecewise fashion over time,” supporting the claimed transferring of at least
a part of a multi-mote log creation agent.
Given its broadest reasonable interpretation, “at least a part” of an
agent would include the entire agent. As a result we conclude that the
instant Specification includes adequate disclosure to support the recited
“receiving…content logs with the transferred part of the multi-mote log
creation agent” limitation. Therefore, the rejections of claims 1-45, 48-93,
and 96-180 under 35 U.S.C. § 112, first paragraph are not sustained.
35 U.S.C. § 112, second paragraph, Rejections
of Claims 1-45, 48-93, and 96-180
With respect to Appellants’ contention 2, Appellants have not
presented any arguments with sufficient particularity to traverse the rejection
of claims 3, 131, 156, and 179 under 35 U.S.C. § 112, second paragraph.
(See e.g., App. Br. 252.) Accordingly, Appellants have waived appeal as to
these rejections, see 37 C.F.R. § 41.37(c)(1)(iv) (2011), and we summarily
sustain the rejection of claims 3, 131, 156, and 179 under 35 U.S.C. § 112,
second paragraph.
With respect to claims 1, 108, 129, and 154, in response to the
rejections under 35 U.S.C. § 112, second paragraph, Appellants have merely
argued that various claim terms (e.g., “obtaining,” “device type”) are
“defined ‘by the specification’ or by standards in the specification that are
Appeal 2011-007337
Application 10/843,987

12
generally prevalent in patent claims . . .” (see App. Br. 249). However,
Appellants have not further elaborated or provided citation as to where in the
Specification such definitions may be found.
These arguments, lacking in specificity, are not persuasive. The
rejections of claims 1, 108, 129, and 154, and their respective dependent
claims under 35 U.S.C. § 112, second paragraph are sustained.
With respect to claim 67, the Examiner additionally finds (Ans. 12) it
is unclear how a part of a multi-mote log creation agent can receive content
logs, and rejects the claim as indefinite. In view of our finding that the
claimed “at least a part of a multi-mote log creation agent” could include the
entire log creation agent, we disagree with the Examiner’s specific findings.
However, in view of claim 67’s ultimate dependency from claim 1,
discussed above, the rejection of claim 67 is sustained.
With respect to claim 180, the Examiner finds the term “content of a
second different type” is ambiguous, because it is unclear what this type of
content is different from. However, in light of the use of the antecedent term
“content of a first type,” it is clear the “second different type” is claimed as
being different from the first type. The rejection of claim 180 is not
sustained.
Therefore, the rejection of claims 1-45, 48-93, and 96-179 is
sustained, and the rejection of claim 180 is not sustained.
35 U.S.C. § 112, second paragraph, Rejections
of Claims 108-128 and 154-178
Claims 108-128 and 154-178 are newly rejected in the Examiner’s
Answer under 35 U.S.C. § 112, second paragraph as being indefinite (Ans.
4-8). With respect to Appellants’ contention 3, the Examiner finds that
Appeal 2011-007337
Application 10/843,987

13
claim elements “means for creating,” “means for obtaining,” and “means for
aggregating” are means plus function limitations which invoke 35 U.S.C.
§ 112 sixth paragraph (Ans. 5). However, the Examiner finds the written
description fails to clearly link or associate a disclosed structure, material, or
acts to the claimed function such that one of ordinary skill in the art would
recognize what structure, material or acts perform the function.
Appellants argue the corresponding structure is “implicitly or
inherently set forth in the written description of the specification.” (Reply
Br. 4). Appellants also point to various passages in the Specification and
drawing figures (Reply Br. 4-6).
For a computer-implemented means-plus-function claim limitation
invoking 35 U.S.C. § 112, sixth paragraph, the corresponding structure for
performing a specific function is required to be more than simply a general
purpose computer or microprocessor. In re Katz Interactive Call Processing
Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011). In such an
instance, the structure corresponding to a 35 U.S.C. § 112, sixth paragraph
claim limitation for a computer-implemented function must include the
algorithm needed to transform the general purpose computer or
microprocessor disclosed in the Specification. Aristocrat Technologies
Australia Pty Ltd. V. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir.
2008); Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir.
2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed.
Cir. 1999).
We have reviewed the Specification and citations made by Appellants
in analyzing their position that the claims are sufficiently definite, when the
Appeal 2011-007337
Application 10/843,987

14
Specification is consulted. We find the Specification fails to describe the
corresponding structure adequately to support the recited functions.
The entire Specification is drafted with some disclosure of function
but minimal reference to structure, i.e., algorithms that perform the function.
The drawing figures similarly comprise boxes labeled with recited functions,
but without adequate disclosure of the structure to perform the functions.
For example, Appellants point to item 990 of Figure 11 as the support for
“means for creating a federated log” of claim 108. (Reply Br. 4.) Item 990
is a “Mainframe” in a box, nothing more. See Fig. 11. The blocks
illustrated as encompassed within item 990, i.e., “Federated Log Creation
Agent” 914 and “Federated Log” 916, do not provide additional disclosure
of a structure corresponding to the function of the “means for creating a
federated log,” but would have been understood by one of ordinary skill in
the art as merely disclosing the recited function. Id.
Furthermore, Appellants’ disclosure at pages 41-43 of the
Specification gives further evidence that the claims could be fairly construed
as encompassing every conceivable structure for performing the claimed
functions. Such examples include the disclosure that “each function and/or
operation within such block diagrams, flowcharts, or examples can be
implemented, individually and/or collectively, by a wide range of hardware,
software, firmware, or virtually any combination thereof” (Spec. 42, lines 7-
10), and that “designing the circuitry and/or writing the code for the software
and/or firmware would be well within the skill of one of ordinary skill in the
art in light of this disclosure” (Spec. 42, lines 19-21). We note the
following, however:
Appeal 2011-007337
Application 10/843,987

15
Enablement of a device requires only the disclosure of
sufficient information so that a person of ordinary skill in the
art could make and use the device. A section 112 paragraph 6
disclosure, however, serves the very different purpose of
limiting the scope of the claim to the particular structure
disclosed, together with equivalents.
Aristocrat, 521 F.3d at 1336.  
Therefore, the rejection of claims 108-128 and 154-178 is sustained.
35 U.S.C. § 103 Rejections
As an initial matter, we note Appellants have styled their arguments as
a challenge to the existence of a prima facie case of unpatentability of the
claims at issue (App. Br. 30).
With respect to the rejections of record, the final Office action
specifically puts Appellants on notice that the Examiner considered the
Node Data Table taught by Mulgund as corresponding to the claimed
content logs, citing specific paragraphs from the Mulgund reference that
disclose the functionality of the distributed sensor network in general and the
creation and aggregation of the Node Data Table in particular. (See Ans. 20-
23.) The Examiner similarly made explicit findings regarding the elements
disclosed by Mulgund and the other prior art of record, and explained how
the elements were interpreted as corresponding to the respective features of
the appealed claims (id. 23-73, 77-83). As explained in In re Jung, 637 F.3d
1356 (Fed. Cir. 2011), these findings and explanations would have put
reasonable Applicants on notice of the Examiner’s rejection, and given them
ample information with which to counter the grounds of rejection, which
establishes a prima facie case of unpatentability.
Moreover, in order to rebut a prima facie case of unpatentability,
Appellants are required to distinctly and specifically point out the supposed
Appeal 2011-007337
Application 10/843,987

16
errors in the Examiner’s action as well as the specific distinctions believed
to render the claims patentable over the applied references. See 37 C.F.R.
§ 41.37(c)(vii) (“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) (“[W]e hold 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.”); 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 do this. Instead, Appellants have merely
made general allegations that the claims define a patentable invention
because the Examiner has failed to establish a prima facie case of
unpatentability, without specifically articulating what gaps exist between the
cited references and the claims. Appellants’ contentions against the
rejections of record generally amount to a recitation of the claim at issue,
and a quotation of the Examiner’s statement of the rejection, followed by a
quotation of each of the cited portions of the prior art references, and
contending, without more, that the quoted language does not meet the quoted
claim limitations.
Therefore, with respect to Appellants’ contentions 4a, 5, and 6, we
observe that in each of the rejections of record, the Examiner has cited
specific portions of the prior art references, and provided an explanation as
to how the disclosed elements are interpreted as corresponding to the
Appeal 2011-007337
Application 10/843,987

17
features of the claims (see Ans. 77-80). The cited portions of the references
and the accompanying explanations collectively constitute the “objectively
verifiable evidence” that Appellants allege to be lacking.
Additionally, we are unpersuaded by Appellants’ above-noted
contentions because the test of whether a reference teaches a claim limitation
is not whether the exact language is present but rather whether the
limitations are taught or suggested by the prior art when the claim is given
its broadest reasonable interpretation in light of the Specification. Cf. In re
Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990) (citing Akzo N.V. v. U.S. Int’l
Trade Comm’n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir.1986))
(interpretations of references is not an “‘ipsissimis verbis’ test.”); Standard
Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir.
1991) (“[A] . . . reference . . . need not duplicate word for word what is in
the claims.”).
Regarding Appellants’ contention 4b, as stated by the Examiner, the
proposed combination is based on the reference teachings and within the
level of ordinary skill in the art at the time the claimed invention was made
(Ans. 80-82). In re McLaughlin 443 F.2d 1392, 1395, 170 USPQ 209, 212
(CCPA 1971). We recognize that our reviewing courts have not established
a bright-line test for hindsight. However, in KSR, the U.S. Supreme Court
stated “[a] factfinder should be aware, of course, of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (citing
Graham v. John Deere Co., 383 U.S. 1, 36 (1966)). Nevertheless, in KSR
the Supreme Court also qualified the issue of hindsight by stating “[r]igid
preventative rules that deny factfinders recourse to common sense . . . are
Appeal 2011-007337
Application 10/843,987

18
neither necessary under our case law nor consistent with it.” KSR, 550 U.S.
at 421. Consequently, we are satisfied the cited portions of Mulgund and
Madden TAG (and Bennett with respect to independent claims 1, 108, 129,
and 154) . disclose nothing other than prior art elements that perform their
ordinary functions to predictably result in a sensing network that utilizes
sensors in order to generate aggregated and federated content logs. See KSR,
550 U.S. at 417.
Regarding Appellants’ contention 4c, we further observe the
Examiner provided, in each case, a rationale for combining the references
which was drawn directly from the respective references. In the case of
claim 179, for example, the Examiner found including an aggregating mote
as taught by Madden TAG in the sensing network taught by Mulgund would
lower the number of message transmissions, latency, and power
consumption compared to the server approach (Ans. 18 (citing Madden TAG
§ 4)). Since fewer message transmissions, as well as lower latency and
power consumption are all desirable qualities for a sensing network, this
statement would have suggested to an ordinary skilled artisan to combine the
references as proposed by the Examiner.
In the case of claim 1, as another example, the Examiner found
incorporating the details of federated log creation based on one or more first-
administered content logs and one or more second-administered content logs
as taught by Bennett would allow users to access data from both logs at the
same time (Ans. 22 (citing Bennett Abstract; col. 17, ll. 1-2)). Since
accessing data from multiple content logs at the same time would provide
the advantage of requiring fewer steps to access the same data, this statement
Appeal 2011-007337
Application 10/843,987

19
would have suggested to an ordinary skilled artisan to combine the
references as proposed by the Examiner.
In view of our analysis above, Appellants’ contentions have not
persuaded us of error in the Examiner’s findings and conclusion that claims
1-45, 48-93, and 96-180 are obvious over various combinations of Mulgund,
Madden TAG, Bennett, Chiloyan, Godlewski, Nelson, Fornaro, Madden
Query, and TinyDB.

DECISION
The Examiner’s decision rejecting claims 1-45, 48-93, and 96-180
under 35 U.S.C. § 112, first paragraph, is reversed.
The Examiner’s decision rejecting claims 1-45, 48-93, and 96-179
under 35 U.S.C. § 112, second paragraph, is affirmed.
The Examiner’s decision rejecting claim 180 under 35 U.S.C. § 112
second paragraph is reversed.
The Examiner’s decision rejecting claims 1-45, 48-93, and 96-180
under 35 U.S.C. § 103(a) is affirmed.
As the rejection of each of the appealed claims is affirmed on at least
one of the grounds specified in the rejection appealed from, the decision of
the Examiner to reject claims 1-45, 48-93, and 96-180 is affirmed. See
37 C.F.R. § 41.50(a)(1).

Appeal 2011-007337
Application 10/843,987

20

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

tj