Ex Parte Kim et al

Patent Trial and Appeal Board

Jan 31, 2017

12538531 (P.T.A.B. Jan. 31, 2017)

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.
12/538,531 08/10/2009 Ji Eun Kim 1576-1560 7552
10800 7590 02/01/2017
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
FARAHMAND, ASHIL S
ART UNIT PAPER NUMBER
2472
MAIL DATE DELIVERY MODE
02/01/2017 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 JI EUN KIM, VIVEK JAIN, SOUNDARARAJAN SRINIVASAN,
DIEGO BENITEZ, CHARLES SHELTON, and BRAD PETRUS
____________

Appeal 2016-003176
Application 12/538,5311
Technology Center 2400
____________

Before ALLEN R. MacDONALD, KEVIN C. TROCK, and
DAVID J. CUTITTA II, Administrative Patent Judges.

TROCK, Administrative Patent Judge.

DECISION ON APPEAL

Introduction
Appellants seek review under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 30–33, which constitute all the claims pending in
this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants indicate the real party in interest is Robert Bosch GmbH. App.
Br. 3.
2 Claims 1–29 are cancelled. Claims 30–33 were added by amendment. See
Amend. Resp. Non-Final Off. Act. 5 (filed 1/12/15).
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Invention
The disclosure is directed to a method for deploying and evaluating a
network system that includes providing an electronic two or three-
dimensional representation of a layout of a building, placing a plurality of
nodes of the network system in the building, and communicatively coupling
the nodes together to form the network system. Abstract.

Claims 30, 32
Claims 30 and 32 are reproduced below, with disputed limitations
emphasized:
30. A method of generating a layout of nodes in a wireless
network comprising:
receiving with an expert system data corresponding to a
layout of a building;
receiving with the expert system data corresponding to a
plurality of locations of a plurality of wireless nodes positioned
in the building to form a first wireless network;
receiving with the expert system data corresponding to
another location of another wireless node in a second wireless
network in the building, the second wireless network being
separate from the first wireless network;
receiving with the expert system data corresponding to
criteria for operation of the plurality of wireless nodes in the
first wireless network in coexistence with the other wireless
node in the second wireless network;
generating with the expert system a plurality of
configurations for the plurality of wireless nodes while the
plurality of wireless nodes remain in the plurality of locations
in the building;
identifying with the expert system an alternative location
for the other wireless node in the second wireless network in
response to identification that each configuration in the
plurality of configurations for the plurality of wireless nodes
fails to meet the criteria;
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identifying with the expert system one configuration in
the plurality of configurations of the plurality of wireless nodes
that meet the criteria with the other wireless node being in the
alternative location; and
generating with a graphical interface associated with the
expert systems a graphical representation of the building layout
including the plurality of nodes in the plurality of locations and
the second node in the alternative location to enable the first
wireless network to operate in coexistence with the second
wireless network.

32. The method of claim 30 further comprising:
generating with the expert system a plurality of
configuration codes for the plurality of wireless nodes in the
first wireless network with reference to the one configuration in
the plurality of configurations for the plurality of wireless
nodes; and
transmitting with the expert system the plurality of
configuration codes to the plurality of wireless nodes to
reconfigure the plurality of wireless nodes into the one
configuration.
Rejection
Claims 30–33 stand rejected under 35 U.S.C. § 112, first paragraph,
for failing to comply with the written description requirement.

ANALYSIS
We have reviewed the Examiner’s rejections and the evidence of
record in light of Appellants’ arguments the Examiner has erred. We
disagree with Appellants’ arguments and conclusions. We adopt as our
own: (1) the findings and reasons set forth by the Examiner in the Action
from which this appeal is taken; and (2) the findings and the reasons set
forth in the Examiner’s Answer. We concur with the conclusions reached by
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the Examiner and further highlight specific findings and argument for
emphasis as follows.
The standard for determining compliance with the written description
requirement is, does the description “clearly allow persons of ordinary skill
in the art to recognize that [he or she] invented what is claimed.” In re
Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989). To satisfy the written
description requirement, an applicant must convey with reasonable clarity to
those skilled in the art that, as of the filing date sought, they were in
possession of the invention, and that the invention, in that context, is
whatever is now claimed. Vas-Cath, Inc.v. Mahurkar, 935 F.2d 1555, 1563–
64 (Fed. Cir. 1991). An applicant shows possession of the claimed invention
by describing the claimed invention with all of its limitations using such
descriptive means as words, structures, figures, diagrams, and formulas that
fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107
F.3d 1565, 1572 (Fed. Cir. 1997).
A description as filed is presumed to be adequate, unless or until
sufficient evidence or reasoning to the contrary has been presented by the
Examiner to rebut the presumption. See, e.g., In re Marzocchi, 439 F.2d
220, 224 (CCPA 1971). The Examiner, therefore, must have a reasonable
basis to challenge the adequacy of the written description. The Examiner
has the initial burden of presenting by a preponderance of evidence why a
person skilled in the art would not recognize in the Applicant’s disclosure a
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description of the invention defined by the claims. In re Wertheim, 541 F.2d
257, 263 (CCPA 1976).
Claims 30–33 are new claims, added by amendment.3 In response to
the amendment, the Examiner has provided sufficient evidence and
reasoning to challenge the adequacy of the written description for the subject
matter of these new claims. The Examiner has identified the specific
limitations of the new claims the Examiner finds are not adequately
described by Appellants’ disclosure. Final Act. 2–3. The Examiner has also
explained that the identified limitations contain subject matter which was not
described adequately in Appellants’ disclosure so as to reasonably convey to
one of ordinary skill in the relevant art that the inventors had possession of
the claimed invention at the time the application was filed. Id. at 2.
In response to the Examiner’s rejection, Appellants provide a
“Summary of Claimed Subject Matter” (App. Br. 5–6) and a “Claim Chart”
(App. Br. 18–23) to identify and explain where adequate written description
support for the disputed limitations may be found. With respect to claim 30,
Appellants identify paragraphs 13 and 39 of the Published Application4 as
support for the written description requirement for the limitation “receiving
with the expert system data corresponding to a plurality of locations of a

3 See Amend. Resp. Non-Final Off. Act. 5 (filed 1/12/15).
4 Appellants indicate that all paragraph numbers refer to the Published
Application and not to the Specification as originally filed (U.S. Pub. No.
2011/0032826). App. Br. 18. We use Appellants’ paragraph citations to the
Published Application for consistency.
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plurality of wireless nodes positioned in the building to form a first wireless
network.” App. Br. 5, 18.
Appellants argue:
[T]he specification clearly describes not just a generic computer
system, but includes a detailed description of a specific expert
system and functional software and hardware components in the
expert system to perform the claimed methods. Specification
¶¶ 0031–0036, 0039–0056, and FIG. 1–2, and FIG. 4–6. In
particular, as noted in the tables listed in Appendix A, the
specification includes detailed descriptions of the components in
the expert system of FIG. 1 and a description of the claimed
methods that point out a non-exhaustive set of specific passages
in the specification that support the limitations of the pending
claims.
App. Br. 10. See also Reply Br. 2–4.
The Examiner finds, however, and we agree, the cited paragraphs do
not describe that an expert system receives data corresponding to a plurality
of locations of a plurality of wireless nodes. Ans. 3. Although paragraphs
13 and 39 describe ascertaining locations where nodes should be installed
and placing nodes in a building based on expert system results, neither of
these two paragraphs describes an expert system receiving data
corresponding to a plurality of locations of a plurality of nodes positioned in
a building to form a wireless network.
Appellants identify paragraphs 40, 50 and Figure 4 as support for the
written description requirement for the limitation “receiving with the expert
system data corresponding to another location of another wireless node in a
second wireless network in the building, the second wireless network being
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separate from the first wireless network,” as recited in claim 30. App. Br. 5,
19.
The Examiner finds, however, and we agree, the cited paragraphs and
figure do not describe that an expert system receives data corresponding to
another location of another wireless node in a second wireless network in a
building. Ans. 4. Although these paragraphs and figure describe that
Network Coexistence 132 may provide details such as whether a wireless
network will operate satisfactorily in the presence of another wireless
network and that Network Coexistence 132 may evaluate other networks and
determine optimal locations for the nodes in the other networks, neither of
these two paragraphs or the figure describes or illustrates an expert system
receiving data corresponding to another location of wireless node in a
second wireless network in a building.
Appellants identify paragraph 41 as support for the written description
requirement for the limitation “generating with the expert system a plurality
of configurations for the plurality of wireless nodes while the plurality of
wireless nodes remain in the plurality of locations in the building,” as recited
in claim 30. App. Br. 5, 19.
The Examiner finds, however, and we agree, the cited paragraph does
not describe an expert system that generates a plurality of configurations for
a plurality of wireless nodes while the nodes remain in their locations in the
building. Ans. 4. Although paragraph 41 describes that Automatic Code
134 may be generated for nodes according to a given topology, thus
configuring the nodes with a basic code, and that a final version of the code
may be flashed after network evaluation 116 has been completed, this
paragraph does not describe an expert system that generates a plurality of
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configurations for a plurality of wireless nodes while the nodes remain in
their locations in the building.
Finally, Appellants identify paragraph 52 and Figure 5 as support for
the written description requirement for the limitation “transmitting with the
expert system the plurality of configuration codes to the plurality of wireless
nodes to reconfigure the plurality of wireless nodes into the one
configuration,” as recited in claim 32. App. Br. 21–22.
The Examiner finds, however, and we agree, these citations do not
describe an expert system that transmits a plurality of configuration codes to
a plurality of wireless nodes to reconfigure the nodes into one configuration.
Ans. 4. Although paragraph 52 and Figure 5 may describe that automatic
runtime components deployment arrangement 500 may include parsers 502
that read system topology and evaluation results together with requirements
and constraints, and that expert system 508 may provide algorithms to
propose software component deployment strategies, where expert system
508 may include fault-tolerance model 510, security model 512, network
communications model 514, system properties model 516, and loader 520,
they do not describe an expert system that transmits a plurality of
configuration codes to a plurality of wireless nodes to reconfigure the nodes
into one configuration.
We have considered all of Appellants’ arguments and the citations
Appellants have identified as supporting the written description requirement.
We are, however, not persuaded that the citations identified by Appellants
convey with reasonable clarity to those skilled in the art that, as of the filing
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date sought, Appellants were in possession of the invention as currently
claimed.
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 30–33 for failing to comply with the written description requirement.
Therefore, we sustain the Examiner’s rejection of claims 30–33 under
35 U.S.C. § 112, first paragraph.

DECISION
We AFFIRM the Examiner’s rejections of claims 30–33.
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