Ex Parte Jung et al

Patent Trial and Appeal Board

Jun 24, 2014

10882119 (P.T.A.B. Jun. 24, 2014)

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.
10/882,119 06/30/2004 Edward K.Y. Jung SE1-0023-US 3755
80118 7590 06/25/2014
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
SURVILLO, OLEG
ART UNIT PAPER NUMBER
2442
MAIL DATE DELIVERY MODE
06/25/2014 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 2011-007342
Application 10/882,119
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 1-89. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Introduction
Appellants’ disclosed invention relates to detecting an information
value using a set of motes, and suppressing transmission of the information
value in response to a comparison of the information value against a
specified baseline information value. (Spec. 4:1-17.) 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. 10:2-
5.) In Appellants’ disclosed invention, a mote determines the specified
baseline information value based at least partially on historical data
regarding at least one environmental parameter, e.g., what the mote has
sensed over some interval of time. (Spec. 68:27-69:5.) The specified
baseline information value is based on a particular property sensed by at
least one mote sensor, such as a light sensor (Spec. 69:6-17),
electrical/magnetic sensor (Spec. 70:1-9), pressure sensor (Spec. 70:12-19),
temperature sensor (Spec. 70:22-71:2), and volume sensor (Spec. 71:3-10).
Transmission of the detected information value is suppressed when a
difference between the detected information value and the specified baseline
information value is less than a threshold, or when a similarity between the
detected information value and the specified baseline information value is
within a similarity measure. (Spec. 72:20-73:5.) Suppressing transmission
of detected information values reduces the power consumed by the set of
motes. (Spec. 67:25; 73:8-10; Abstract.)
Exemplary independent claim 1 reads as follows:
1. A system comprising:
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electrical circuitry configured to detect an information
value, said electrical circuitry configured to detect an
information value resident within a first-administered set of
motes;
electrical circuitry configured to determine a specified
baseline information value based at least partially on historical
data regarding at least one environmental parameter; and
electrical circuitry configured to suppress transmission in
response to a comparison of the information value against the
specified baseline information value, said electrical circuitry
configured to suppress transmission resident within the first-
administered set of motes.

Applied Prior Art
The Examiner relies on the following prior art in rejecting the claims:
Mulgund US 2002/0161751 A1 Oct. 31, 2002
Thornton US 2004/0158627 A1 Aug. 12, 2004
Hellerstein US 2009/0019447 A1 Jan. 15, 2009
Samuel Madden et al. TAG: A Tiny AGregation Service for Ad-Hoc
Sensor Networks, 2002 (“Madden TAG”).
Sam Madden et al. The Design of an Acquisitional Query Processor
for Sensor Networks, June 2003 (“Madden Query”).
Akis Spyropoulos et al. Energy Efficient Communications in Ad Hoc
Networks Using Directional Antennas, 2002 (“Spyropoulos”).
Joseph Dunne et al. WISENET, 2002-2003 (“Dunne”).

The Examiner’s Rejections
Claims 31-51 and 71-89 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. (See Ans. 4-9.) This ground of rejection was newly
entered in the Examiner’s Answer. (Id. at 4.)
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Claims 1-3, 5-12, 27-33, and 48-51 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Madden TAG, Hellerstein, and Thornton.
(See Ans. 10-17.)
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Madden TAG, Hellerstein, Thornton, and Mulgund. (See Ans. 18.)
Claims 13-16, 19-24, 34-37, and 40-45 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Madden TAG, Hellerstein, Thornton, and
Madden Query. (See Ans. 18-21.)
Claims 17, 18, 38, and 39 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Madden TAG, Hellerstein, Thornton, Madden Query, and
Mulgund. (See Ans. 21-22.)
Claims 25, 26, 46, and 47 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Madden TAG, Hellerstein, Thornton, Madden Query, and
Spyropoulos. (See Ans. 22-23.)
Claims 52-56, 59-64, 67-75, 78-83, and 86-89 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Madden TAG, Hellerstein,
Thornton, Madden Query, and Dunne. (See Ans. 23-29.)
Claims 57, 58, 76, and 77 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Madden TAG, Hellerstein, Thornton, Madden Query,
Dunne, and Mulgund. (See Ans. 29.)
Claims 65, 66, 84, and 85 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Madden TAG, Hellerstein, Thornton, Madden Query,
Dunne, and Spyropoulos. (See Ans. 29-30.)

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Appellants’ Contentions
1. With respect to the newly presented grounds of rejection of
claims 31-51 and 71-89 under 35 U.S.C. § 112, second paragraph,
Appellants contend there is support for the claimed “means for obtaining,”
“means for determining,” and “means for comparing” because:
(a) the algorithms described in Appellants’ disclosure provide the
required structure for the computer-implemented means-plus-function
limitations, or Appellants’ disclosure of general purpose processors provides
the required structure because the claimed functions may be performed by
the general purpose processors without special programming (Reply Br. 3);
and
(b) Appellants’ Appeal Brief and Reply Brief cite portions of the
drawing Figures and Specification that disclose the structure corresponding
to the various means-plus-function limitations of the claims (Reply Br. 3-
13).
2. With respect to the rejection of claim 1, Appellants contend the
combination of Madden TAG, Hellerstein, and Thornton is improper
because:
(a) the Examiner’s proposed combination is based on “mere
conclusory statements” (App. Br. 43-45);
(b) the proposed combination would result in “an impermissible
change of the principle of operation” of at least one of Madden TAG,
Hellerstein, and Thornton because (i) the suppression technique of Madden
TAG is limited to aggregations, while Hellerstein performs baseline
comparisons of non-aggregated performance metrics, and Thornton
measures non-aggregated attributes, and (ii) Madden TAG’s suppression
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technique applies only to monotonic aggregates, while Hellerstein’s adaptive
throttling system requires the ability to work with non-aggregates and non-
monotonic data, and Thornton deals with non-monotonic data (App. Br. 45-
49);
(c) the proposed combination would render at least one of Madden
TAG, Hellerstein and Thornton “unsuitable for its intended purpose” for the
same reasons given with respect to contention 2b (App. Br. 50-52);
(d) the Examiner “has not met his burden to establish a prima facie
case of unpatentability,” and, specifically, Madden TAG fails to teach the
claimed “electrical circuitry configured to determine a specified baseline
information value based at least partially on historical data regarding at least
one environmental parameter” because (i) the aggregation queries of
Madden TAG are posed by users, and (ii) the description of Madden TAG is
“very different on its face” from the claimed limitations (App. Br. 53-60);
and
(e) the Examiner’s proposed combination is “through the lens of
Applicant’s application” and, therefore, based on impermissible hindsight,
personal knowledge, or Official Notice (App. Br. 60-61).
3. Appellants argue the patentability of dependent claims 2-6
based on the reasons asserted for base claim 1 (App. Br. 61); thus, claims 2-
6 stand or fall with claim 1.
4. Appellants separately contend, with respect to dependent claims
7-9, the “modification/combination of Hellerstein and Thornton as proposed
by the Examiner would require an impermissible change of the principle of
operation of at least one of Hellerstein and Thornton (or both)” because the
sensor module of Hellerstein is only configured to sense performance
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metrics of a computer system, not a plurality of ambient condition
measurements (App. Br. 61-62). Separate arguments are not presented for
claims 8 and 9; thus, claims 8 and 9 stand or fall with claim 7.
5. Appellants argue the patentability of independent claim 10,
repeating the arguments presented with respect to claim 1, and the
patentability of dependent claims 13-30 based on the reasons asserted for
base claim 10 (App. Br. 62-77); thus, claims 10 and 13-30 stand or fall with
claim 1.
6. Appellants argue the patentability of dependent claims 11 and
12, repeating the arguments presented with respect to claims 7-9 (App. Br.
77-78); thus, claims 11 and 12 stand or fall with claim 7.
7. Appellants do not present separate arguments for the
patentability of independent claim 31 and dependent claims 32-51; thus,
claims 31-51 stand or fall with claim 1.
8. Appellants argue the patentability of independent claim 52,
repeating the arguments presented with respect to claim 1, and the
patentability of dependent claims 53-70 based on the reasons asserted for
base claim 52 (App. Br. 79-94); thus, claims 52-57 stand or fall with claim
1.
9. Appellants argue the patentability of independent claim 71,
repeating the arguments presented with respect to claim 1, and the
patentability of dependent claims 72-89 based on the reasons asserted for
base claim 71 (App. Br. 94-109); thus, claims 71-89 stand or fall with claim
1.
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The Examiner’s Findings
Claim 1
The Examiner finds (Ans. 10-11) Madden TAG teaches a network of
motes each containing one or more sensors configured to detect specific
types of information values (Madden TAG, § 2, 2nd ¶). In one embodiment,
grouping is used to reduce the number of sensor data messages that must be
sent by the motes (id. § 4.2). Specifically, a query is provided with a
predicate that instructs the motes to compare their detected information
values to a specified baseline information value and suppress transmission of
the detected information values when the comparison indicates the detected
information values are unwanted/unneeded (id. § 4.2, 3rd ¶). In another
embodiment, hypothesis testing is used to reduce the number of sensor data
messages that must be sent by the motes (id. § 6.2). For hypothesis testing
of monotonic aggregates, a root/parent mote computes a minimum sensor
value m over the highest levels of the mote network, and then issues an
updated query that instructs the lower level motes to compare their detected
information values to this specified baseline information value m and
suppress transmission of the detected information values when the
comparison indicates the detected information values are unwanted/
unneeded (id. § 6.2, 1st-3rd ¶¶). For non-monotonic aggregates, the user
defines a fixed-size error bound that is sent to the lower level motes along
with the specified baseline information value m, and the lower level motes
suppress transmission of the detected information values when the detected
information values are within the error bound of the specified baseline
information value m (id. § 6.2, 4th-5th ¶¶). Suppressing transmission of
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unwanted/unneeded detected information values significantly reduces the
power consumed by the network of motes (id. § 6.2, 6th ¶).
Because the Examiner finds (Ans. 11) Madden TAG does not teach
that the specified baseline information value is based at least partially on
historical data regarding at least one environmental parameter, the Examiner
relies on Hellerstein (Ans. 11) to teach a specified baseline information
value based at least partially on historical data regarding at least one
performance metric parameter (Hellerstein, ¶¶ 0048-0049), and the
Examiner relies on Thornton (Ans. 11-12) to teach a specified baseline
information value based on at least one environmental parameter (Thornton,
¶ 0071).
Claim 7
The Examiner finds Hellerstein teaches a specified baseline
information value based at least partially on historical data regarding at least
one performance metric parameter (Ans. 11; Hellerstein, ¶¶ 0048-0049), and
the Examiner finds Thornton teaches a specified baseline information value
based on a plurality of ambient condition measurements (Ans. 12-13;
Thornton, ¶ 0071).

Issues on Appeal
Has the Examiner erred in rejecting claims 31-51 and 71-89 as
indefinite?
Has the Examiner erred in rejecting claims 1-89 as obvious over
various combinations of Madden TAG, Hellerstein, Thornton, Mulgund,
Madden Query, Spyropoulos, and Dunne?

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We agree with the Examiner’s
findings and conclusions with respect to the rejections under §§ 112 and
103.
35 U.S.C. § 112, ¶ 2 Rejections
With respect to Appellants’ contentions 1a and 1b, the Examiner
finds that claim elements “means for obtaining,” “means for determining,”
and “means for comparing” are means-plus-function limitations that invoke
35 U.S.C. § 112, sixth paragraph, but that the written description fails to
clearly link or associate a disclosed structure, material, or acts to each
claimed function such that one of ordinary skill in the art would recognize
what structure, material or acts perform the respective function (Ans. 4-5).
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 into a special purpose
computer or microporcessor. 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).
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We have reviewed the Specification and citations provided by
Appellants in analyzing their contention that the claims are sufficiently
definite, when the Specification is consulted, to overcome the rejections.
We find that the Specification fails to describe structure adequate to support
the functions claimed.
The entire Specification is drafted with a disclosure of functions, but
minimal reference to structure, i.e., algorithms or other structures that
perform the functions. The drawing Figures similarly illustrate boxes
labeled to identify the recited functions without adequate disclosure of
structure to perform the functions. Additionally, Appellants have failed to
point out specific structures to support the claimed functions, but instead cite
entire paragraphs or entire drawing Figures. Appellants citation of
“reporting entity,” “mote network,” “gateway-proximate mote,” “log,” “log
creation agent,” “log creation unit,” “device entity,” “database entity,”
“architectural component,” “processor,” “electrical circuitry resident within
the mote,” “electrical circuitry capable of accepting input,” “computer
system of gateway,” “electrical circuitry forming a communication device,”
“Application Specific Integrated Circuits (ASICs),” “Field Programmable
Gate Arrays (FPGAs),” “digital signal processors (DSPs),” “microprocessor
configured by a computer program,” etc. (Reply Br. 8-9 and 13) likewise
fails to provide adequate structure because no associated algorithm or other
structure that imparts the recited functionality is disclosed.
Further, to the extent that Appellants contend (Reply Br. 3) the
functions are coextensive with disclosed general purpose processors,
requiring no special programming (see In re Katz, 639 F.3d at 1316),
Appellants offer no evidence or particularized argument to support such a
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contention. For example, we note that the “means for comparing” and
“means for determining” recited in claim 31 and the “means for
determining” recited in claim 71 do not appear to be standard functions of a
general purpose processor, but rather functions to be programmed to convert
the general purpose processor into a special purpose processor.
Further, Appellants’ reliance (Reply Br. 3) on the prosecution history
of the instant application (Reply Br. 3) is misplaced.

An element in a claim for a combination may be
expressed as a means or step for performing a specified
function without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to cover the
corresponding structure, material, or acts described in the
specification and equivalents thereof.
35 U.S.C. § 112, 6th ¶ (emphasis added). Accordingly, we will not look to
the prosecution history to fill in gaps in the structure disclosed in the written
description of the Specification.
Furthermore, Appellants’ disclosure at pages 79-81 of the
Specification, and specifically 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. 79:26-28),
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. 80:8-10) gives further evidence that
the broadest reasonable interpretation of claims 31-51 and 71-89
encompasses every conceivable structure for performing the recited
functions. We note the following, however:
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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 31-51 and 71-89 is sustained.
35 U.S.C. § 103(a) Rejections
As an initial matter, we note that 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. 41-42, 53 and 59).
With respect to the rejections of record, the final Office action
specifically puts Appellants on notice that the Examiner considered the
network of motes taught by Madden TAG as corresponding to the claimed
electrical circuitry within a set of motes configured to: (a) detect an
information value, citing section 2, second paragraph from Madden TAG,
which the Examiner identifies as disclosing the “hardware components of a
mote” (see Ans. 10) that include sensors for detecting information values;
(b) determine a specified baseline information value, citing section 6.1, third
paragraph and section 6.2, first, second and fourth paragraphs from Madden
TAG, which the Examiner identifies as disclosing determining a baseline
information value in the form of “a threshold sensor value m or error bound
value that determines whether sensor has to transmit its message or not”
(id.); and (c) suppress transmission in response to a comparison of the
information value against the specified baseline information value, citing
section 2, second paragraph, section 4.2, third paragraph, and section 6.2,
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second, fourth and fifth paragraphs from Madden TAG, which the Examiner
identifies as disclosing “hardware components of a mote” and “sensors
configured to suppress transmission of messages based on comparison of the
threshold sensor value m or error bound value with sensor reading value”
(id. at 10-11). The Examiner similarly makes explicit findings regarding the
elements disclosed by Hellerstein, Thornton, and other prior art relied upon,
and explains how the elements are interpreted as corresponding to the
respective features of the appealed claims (id. at 11-30). As explained in In
re Jung, 637 F3d 1356 (Fed. Cir. 2011), these 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, id. at 1362-63.
Moreover, in order to rebut a prima facie case of unpatentability,
Appellants are required to distinctly and specifically point out the supposed
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)(1)(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 [or this board] to
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examine the claims in greater detail than argued by an appellant, looking for
[patentable] distinctions over the prior art.”).
Appellants have failed to do that at least with respect to contentions 2a
and 2d. 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’ contention 2a ignores the articulated reasoning with
specific rational underpinning provided by the Examiner to support the
conclusion of obviousness (Ans. 31). Further, Appellants’ contention 2d
generally amounts to a recitation of the claim limitations at issue, 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 from the references does not meet the quoted
claim language (Ans. 30).
Therefore, with respect to Appellants’ contentions 2a and 2d, 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 features of the claims (Ans.
35). The cited portions of the references and the accompanying explanations
collectively constitute the “objectively verifiable evidence” which
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
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its broadest reasonable interpretation in light of the Specification (Ans. 35-
36). Cf. In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990) (interpretation of
references “is not an ‘ipsissimis verbis’ test” (citing Akzo N.V. v. U.S. Int’l
Trade Comm’n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir. 1986))); 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’ contentions 2b and 2c, we agree with the
Examiner that Madden TAG is not limited to using a specified baseline
information value only with monotonic aggregates (Ans. 31-32). As pointed
out by the Examiner (id.), while the embodiment described in section 4.2 of
Madden TAG is limited to monotonic data, the embodiments described in
section 6.2 encompass non-monotonic data, such as summary aggregates,
and, therefore, are compatible with the non-monotonic data of Hellerstein
and Thornton.
Further, we agree with the Examiner that the specific type of data
(performance metrics) used in Hellerstein are not relevant to the instant
question of obviousness because the Examiner is not relying on Hellerstein
for the teaching of a specific type of data, but rather is relying on the
reference to show that it was known in the art to utilize historical data in
determining a specified baseline information value (Ans. 32-34). One of
ordinary skill in the art would have recognized from the teachings of
Hellerstein that such an approach (using historical data to determine a
specified baseline information value) could be applied to Madden TAG by
using the historical sensor data collected by the motes of Madden TAG to
determine the specified baseline information value m and the error bound
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used to suppress transmission of the detected information values (see
Madden TAG, § 6.2, 1st-5th ¶¶).
We also note that Hellerstein teaches that sensor data is typically
averaged over a specified time interval (see Hellerstein, ¶ 0043) in a similar
fashion to the summary aggregates described in Madden TAG (see Madden
TAG, § 6.2, 4th-5th ¶¶).
Likewise, one of ordinary skill in the art would have readily
recognized from the teachings of Thornton that the motes of Madden TAG
could be used to collect data regarding an environmental parameter (such as
temperature) to be used in determining the specified baseline information
value m and the error bound used to suppress transmission of the detected
information values. We note that Thornton teaches temperature as one
environmental parameter (see Thornton, ¶¶ 0062, 0071), and the motes of
Madden TAG are disclosed as having a temperature sensor (see Madden
Tag, § 2, 2nd ¶) capable of collecting historical data regarding this same type
of environmental parameter taught by Thornton. Further, we note that
Thornton teaches that sensor data may be transmitted and stored for later
analysis (see Thornton, ¶ 0070) in a similar fashion to the data-collection
function of the motes of Madden TAG.
For these reasons, we are not persuaded that the teachings of
Hellerstein (namely the use of historical data in determining a specified
baseline information value) or the teachings of Thornton (namely the use of
an environmental parameter in determining a specified baseline information
value) relied upon in the rejection would have caused an impermissible
change in the principle of operation of Madden TAG or render Madden
TAG unsuitable for its intended purpose.
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Regarding Appellants’ contention 2d(i), we agree with the Examiner
that the manner in which the queries of Madden TAG are posed is not
relevant to the recited invention (Ans. 36). Further, the fact that the queries
of Madden TAG are posed by users does not preclude the motes from
determining a specified baseline information value based at least partially on
historical data regarding at least one environmental parameter. Still further,
Madden TAG teaches that the motes themselves generate queries containing
a specified baseline information value in the embodiments using hypothesis
testing. Specifically, a root/parent mote computes a minimum sensor value
m over the highest levels of the mote network, and then issues an updated
query that instructs the lower level motes to compare their detected
information values to this specified baseline information value m and
suppress transmission of the detected information values, when the
comparison indicates the detected information values are unwanted/
unneeded (Madden Tag, § 6.2, 1st-3rd ¶¶). For non-monotonic aggregates,
the fixed-size error bound is sent by the root/parent mote along with the
specified baseline information value m, and the lower level motes suppress
transmission of the detected information values when the detected
information values are within the error bound of the specified baseline
information value m (id. § 6.2, 4th-5th ¶¶). Thus, Madden TAG is not limited
to queries posed solely by users, but rather teaches motes that generate
queries including a specified baseline information value.
Regarding Appellants’ contention 2e, we agree with the Examiner that
the proposed combination is based on the teachings of the prior art
references relied upon, takes into account only knowledge which was within
the level of ordinary skill in the art at the time the claimed invention was
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made, and does not include knowledge gleaned only from appellants’
disclosure (Ans. 37). In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
We are also cognizant 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 argument 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
neither necessary under our case law nor consistent with it.” KSR, 550 U.S.
at 421. Consequently, we are satisfied the cited portions of Madden TAG,
Hellerstein, and Thornton disclose nothing other than prior art elements that
perform their ordinary functions to predictably result in a system that detects
an information value using a set of motes, determines a specified baseline
information value based at least partially on historical data regarding at least
one environmental parameter, and suppresses transmission of the
information value in response to a comparison of the information value
against the specified baseline information value. See KSR, 550 U.S. at 417.
Regarding Appellants’ contention 4, Appellants’ argument is not
persuasive because it is based on the premise that Hellerstein must be
modified in view of Thornton. This argument fails to accurately address the
Examiner’s rejection that combines Madden TAG with the combined
teachings of Hellerstein and Thornton. (Ans. 13.) Further, as explained in
detail above with respect to Appellants’ contentions 2b and 2c, we are not
persuaded that the teachings of either Hellerstein or Thornton are
Appeal 2011-007342
Application 10/882,119

20
incompatible with Madden TAG. Still further, as pointed out by the
Examiner, the environmental parameter sensor of Thornton (e.g., the
temperature sensor) is capable of use with the computer condition
monitoring system of Hellerstein (Ans. 37-38).
Regarding Appellants’ contentions 3, 5, and 7-9, we are not persuaded
for the same reasons given above with respect to contentions 2a-2e.
Regarding contention 6, we are not persuaded for the same reasons given
above with respect to contention 4.
In view of our analysis above, Appellants’ contentions have not
persuaded us of error in the Examiner’s findings and conclusion that claims
1-89 are obvious over various combinations of Madden TAG, Hellerstein,
Thornton, Mulgund, Madden Query, Spyropoulos, and Dunne.

DECISION
The Examiner’s decision rejecting claims 31-51 and 71-89 under
35 U.S.C. § 112, second paragraph, is affirmed.
The Examiner’s decision rejecting claims 1-89 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

msc