Ex Parte Ling et al

Patent Trial and Appeal Board

Feb 23, 2017

13485034 (P.T.A.B. Feb. 23, 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.
13/485,034 05/31/2012 Curtis Ling 24758US02 1051
23446 7590 02/27/2017
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
EXAMINER
SALAD, ABDULLAHI ELMI
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
02/27/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mhmpto @ mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CURTIS LING, TIMOTHY GALLAGHER, and
SRIDHAR RAMESH
Appeal 2016-002970
Application 13/485,034
Technology Center 2400
Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
CARL L. SILVERMAN, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1, 2 and 4—20. Claim 3 is cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The Invention
The claimed invention relates to “a method and system for Server-
Side Message Handling in a Low-Power Wide Area Network.” Spec. 13.
Appeal 2016-002970
Application 13/485,034
Illustrative Claim
Claim 1 is illustrative of the subject matter on appeal:
1. A system comprising:
a network device which manages a network connection of
customer premise equipment, wherein:
while said customer premise equipment is operating m a
normal mode of operation, said network device communicates
with said customer premise equipment utilizing one or more
messages of a first type, [LI] wherein said one or more messages
of saidfirst type comprise an MPEG transport packet not having
a particular program identifier, and
while said customer premise equipment is operating in a
low-power mode of operation, said network device
communicates with said customer premise equipment utilizing
one or more messages of a second type, [L2] wherein said one
or more messages of said second type comprise an MPEG
transport packet having said particular program identifier.
(Contested limitations LI and L2 emphasized).
Rejections
A. Claims 1, 2, 4—7, and 9—20 are rejected under 35 U.S.C. § 102 (e) as
being anticipated by Quigley et al., (US 2011/0172000 Al, published
July 14, 2011).
B. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combined teachings of Quigley and Rakib et al., (US
2005/0025145 Al, published Feb. 3, 2005).
ANALYSIS
In reaching this decision, we consider all the evidence presented and
all arguments actually made by Appellants. We focus our analysis on
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Application 13/485,034
contested limitations LI and L2, particularly regarding the respective
MPEG transport packets which, as required by the language of claim 1:
(1) do not have, and (2) do have, a “particular program identifier,”
corresponding to the recited: (1) normal, and (2) low-power modes of
operation, respectively. Commensurate language is recited in remaining
independent method claim 13.
Appellants contend the Examiner disregards these limitations. (App.
Br. 4). Specifically, Appellants contend the Examiner’s finding that
“Quigley teaches the use of different message types to distinguish between
sleep mode and full power mode” is insufficient to support the anticipation
rejection. (App. Br. 3). (emphasis added).
Appellants further urge the Examiner’s claim construction is overly
broad and unreasonable: “The Examiner's interpretation of this claim
language as merely ‘requiring] [a] certain message type be used while the
CPE is in a low-power mode while another message type be used while the
CPE is [n]ot in Low-power mode ’ is not the broadest reasonable
interpretation, but is instead a mis characterization of the claim that
effectively ignores express limitations of the claim C (App. Br. 4).
Although in Quigley’s “exemplary power management system, CMTS
14 [(Cable Modem Termination System)] commands inactive cable modems
into standby or sleep mode for relatively long periods of time” (136; Fig. 2),
we find the Examiner has not fully developed the record to establish that the
CMTS commands in Quigley contain “MPEG transport packets” which:
(1) do not have, AND (2) do have, “a particular program identifier,”
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corresponding to the: (1) normal, and (2) low-power modes of operation,
respectively, as contested by Appellants. (App. Br. 3—4). 1
We note Quigley (136) discloses that “[a]n exemplary CMTS
preferably includes an out of band generator (OOBG) 36 that generates
control messages and places the messages into an out-of-band data stream.”
(emphasis added). Quigley (140) further discloses: “OOBG 36 preferably
supports a plurality of message formats, including for example, MPEG-2
pure messages, MPEG-2 private messages with a section syntax indicator
designating the message as a private section, INTS messages, and GI
protocol messages.” (emphasis added). We further note Quigley describes
an embodiment (|| 81—82; Fig. 11) in which activation of the cable modem
to full power operation is triggered not by a message in a MPEG transport
packet, but rather by an interrupt or a “wake up” timer.
However, even if both of Quigley’s control messages (full power (i.e.
“normal”) and sleep (i.e., “low-power”)) are MPEG messages {id.), on this
record, we find the Examiner has not identified the contested “particular
program identifier” with specificity within a “MPEG transport packet”
(claim 1) for both the recited first and second types of messages
(corresponding to the claimed “normal” and “low-power” modes of
operation, respectively), as necessary to establish express or inherent
anticipation of contested claim limitations LI and L2. (Claim 1).
In response to Appellants’ arguments in the principal Brief, the
Examiner advances a new finding of inherent anticipation in the Answer (5)
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997).
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Application 13/485,034
[I]t is inherent that control messages used when the customer
premise equipment is operating in a normal mode of operation,
may include different format than control message when the
customer premise equipment is operating in a normal mode [2]
of operation in order to differentiate the two different modes of
the operation of the CPE.
However, we agree with Appellants (Reply Br. 5) that the express
language of claim 1 requires more than merely a different format control
message. The contested language of claim 1 expressly recites (emphasis
added):
[LI] “wherein said one or more messages of said first type comprise
an MPEG transport packet not having a particular program identifier;
and . . . [L2] wherein said one or more messages of said second type
comprise an MPEG transport packet having said particular program
identifier.”
The Examiner further explains in the Answer (4) that “Quigley
teaches special control message [s] or commands in the form of a cable
modem address (i.e. identifier) to activate a cable modem operating in a low
power state (see par. 0036).” (emphasis added).
Because the Examiner advances a new finding of inherency in the
Answer (5), as a matter of due process and fairness, and in accordance with
2 It appears the Examiner intended to state: “[I]t is inherent that control
messages used when the customer premise equipment is operating in a
normal mode of operation, may include [a] different format than control
message[s] [used] when the customer premise equipment is operating in a
[low-power] mode of operation in order to differentiate the two different
modes of [] operation of the CPE. (Ans. 5).
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our procedural rule,3 we consider Appellants’ responsive arguments in the
Reply Brief (5—6):
[CJontrary to the Office's findings, Quigley's cable modem
address cannot be the claimed ‘particular program identifier’ at
least because: (1) Quigley's cable modem address is plainly an
identifier of a cable modem, and not an identifier of a
particular program', and (2) Quigley's CMTS (the alleged
‘network device’ of claim 1) ‘communicates with’ the cable
modem (the alleged ‘customer premise equipment’ of the
claim) only through messages having that particular cable
modem's address (and not through messages not having that
particular cable modem's address). For at least these reasons,
the rejections of claims 1 and 13 should be reversed.
(emphasis added).
Our reviewing court guides: “[a] claim is anticipated only if each and
every' element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegaal Bros. v.
Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). “Inherency
. . . may not be established by probabilities or possibilities. The mere fact
that a certain thing may result from a gi ven set of circumstances is not
sufficient.” In re Robertson, 169 F.3d 743, 745, (Fed. Cir. 1999) (internal
citations omitted).
This reasoning is applicable here. Regarding the Examiner’s findings
(Ans. 5), mere “probabilities or possibilities” are not enough to establish
anticipation. Robertson, 169 F.3d at 745. In reviewing the record, and the
plain language of claim 1, we find a preponderance of the evidence supports
Appellants’ contentions in the Briefs that the Examiner has not established
3 See 37 C.F.R. § 41.41(b)(2).
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that Quigley expressly or inherently anticipates contested limitations LI and
L2.4
Because Appellants have persuaded us the Examiner erred, we reverse
rejection A under § 102(e) of claim 1. For the same reasons, we also reverse
rejection A of independent method claim 13 (which recites commensurate
language), and the remaining dependent claims which were rejected under
anticipation rejection A.
Regarding remaining dependent claim 8, rejected under § 103
rejection B, the Examiner has not shown how the secondary Rakib reference
overcomes the aforementioned deficiencies of Quigley. Therefore, we also
reverse § 103 rejection B of remaining dependent claim 8.
DECISION
We reverse the Examiner's decision rejecting claims 1, 2 and 4—20.
REVERSED
4 Because a rejection under §103 for independent claims 1 and 13 is not
before us on appeal, we do not reach and express no opinion as to whether
these claims might be obvious over the teachings and suggestions of the
Quigley reference, considered alone, or considered in combination with one
or more additional references. In the event of further prosecution of this
application, we leave such consideration to the Examiner. Although the
Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02.
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