Ex Parte Liu et al

Patent Trial and Appeal Board

Nov 25, 2014

12052219 (P.T.A.B. Nov. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HUAIYU LIU and VICTOR LORTZ
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Appeal 2012-007709
Application 12/052,2191
Technology Center 2400
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Before ANTON W. FETTING, NINA L. MEDLOCK, and
SCOTT C. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 3, 6, 7, 12–14, and 16–18, which are all of the pending
claims in the subject patent application. Appeal Br. 4, Ans. 3. We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

1 Appellants state that the real party in interest is Intel Corporation. Appeal
Br. 2.
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Claimed Subject Matter
Claims 1 and 12 are the independent claims on appeal, and are
reproduced below. The claim language that is the focus of this appeal is
indicated with underlining.
1. A method of server
energy conservation in a wireless
network, comprising:
integrating a service
discovery proxy with an access point
(AP) in said network and recording
by said service discovery proxy in
said AP information on services
registered by at least one server in
said wireless network, wherein said
AP advertises services on behalf of at
least one server in said wireless
network, by indicating through
broadcast or direct messages or
combination of both by said AP that
said services are available, wherein
advertising services of said at least
one server allow client devices to
discover services in said wireless
network without connecting to said
wireless network.
12. An apparatus,
comprising:
a service discovery
proxy integrated with an access
point (AP) in a wireless network and
capable of recording in said AP
information on services registered
by at least one server in said
wireless network, wherein said AP
advertises services on behalf of at
least one server in said wireless
network, by indicating through
broadcast or direct messages or
combination of both that said
services are available, wherein
advertising services of said at least
one server allow client devices to
discover services in said wireless
network without connecting to said
wireless network.

Rejections
Claims 1, 3, 6, 7, 12–14, and 16–18 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
Claims 1, 3, 12, 14, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cheshire (US 7,107,442 B2, iss. Sept. 12, 2006) in
view of Satoh (US 2001/0049638 A1, pub. Dec. 6, 2001).
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Claims 6, 7, 13, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cheshire, Satoh, and Olsen (US 2004/0255008 A1,
pub. Dec. 16, 2004).

PROCEDURAL HISTORY
The Examiner’s indefiniteness rejection is based on the following
claim language, which is present in independent claims 1 and 12: “wherein
advertising services of said at least one server allow client devices to
discover services in said wireless network without connecting to said
wireless network.” See Ans. 4. Appellants added this language in an
Amendment in an attempt to distinguish prior art that was cited by the
Examiner in a Non-Final Office Action. See Amdt. 2–3, 7 (dated June 24,
2011). The Examiner responded with a Final Office Action that rejected
claims 1 and 12, and all dependent claims, as indefinite under 35 U.S.C.
§ 112, second paragraph. Final Act. 5. In particular, the Examiner found
that the newly-added claim language was ambiguous because the word
“allow” merely requires that an action not be prohibited, and does not
specify any particular functionality that must occur in the computer. Id.
Appellants subsequently attempted to amend the disputed claim
language as follows: “wherein advertising services of said at least one
server allow inform client devices of available to discover services in said
wireless network without connecting to said wireless network.” See Amdt.
2–3 (dated Oct. 10, 2011). However, the Examiner refused to enter this
amendment, finding that it would change the scope of the claims, and thus
require further consideration and/or searching. See Adv. Act. (mailed Oct.
18, 2011). Appellants did not file a request for continued examination in
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order to have this amendment entered. Instead, Appellants chose to bring
the present appeal. Thus, we must determine whether the unamended
version of claims 1 and 12 claims satisfy the definiteness requirement of 35
U.S.C. § 112, second paragraph.

ANALYSIS
Rejection of Claims 1, 3, 6, 7, 12–14, and 16–18
Under 35 U.S.C. § 112, Second Paragraph
A decision on whether a claim is indefinite under 35 U.S.C. § 112
requires a determination of whether those skilled in the art would understand
what is claimed when the claim is read in light of the specification. Power-
One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1350 (Fed. Cir. 2010). A
claim is indefinite if that claim, “read in light of the specification . . . and the
prosecution history[] fail[s] to inform, with reasonable certainty, those
skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). “[I[f a claim is amenable to
two or more plausible claim constructions, the USPTO is justified in
requiring the applicant to more precisely define the metes and bounds of the
claimed invention by holding the claim unpatentable under 35 U.S.C. § 112
. . . as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential).
Here, the Examiner determines that the word “allow” in the above-
quoted claim limitation does not require the advertising services to take any
affirmative action, but instead merely requires that the advertising services
not prohibit client devices from discovering services without connecting to
the wireless network. See Ans. 4. The Examiner reasons that the disputed
claim language is indefinite because it is “unclear what Applicant’s intended
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metes and bounds of the claim are, since the claim appears to cover anything
and everything that does not prohibit actions from occurring.” Id.
Appellants do not dispute that the claims are indefinite under the
claim construction adopted by the Examiner. See Appeal Br. 12,
Reply Br. 1–2. Instead, Appellants argue that the Examiner’s claim
construction is unreasonably broad, and assert that the disputed claim
language should be construed to require that the advertising services
affirmatively permit client devices to discover services without connecting
to the network. See Appeal Br. 12. In particular, Appellants cite a
dictionary definition of “allow” and paragraphs 14–17 of the Specification
as evidence that “[t]he claimed language has only one interpretation, which
is the use of the advertising services (‘broadcast or direct messages’) by the
AP provides a client device with the opportunity to disconnect from the
wireless network and still not lose the ability to be made aware of services
available from a server.” Id. Appellants’ argument is not persuasive.
During prosecution, the PTO gives claims their “broadest reasonable
interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367,
1372, (Fed. Cir. 2000). Limitations appearing in the specification but not
recited in the claim are not read into the claim. E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). Here, the ordinary meaning of
the term “allow” is not as narrow as Appellants suggest. The dictionary that
Appellants cite contains the following alternative definition for “allow”: “to
forbear or neglect to restrain or prevent.” See http://www.merriam-
webster.com/dictionary/allow (last visited Nov. 20, 2014). Thus, this
dictionary does not indicate that the ordinary meaning of “allow” is limited
to affirmatively permitting. In addition, the portions of the Specification
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cited by Appellants are merely a description of the preferred embodiment,
and do not contain lexicographic definitions of any claim terms. See Spec.
¶¶ 14–17. Thus, it would be improper for us to adopt a construction that
limits the claims to the particular embodiment described at paragraphs 14–
17 of the Specification.
Because Appellants have not offered any persuasive evidence or
technical reasoning that the Examiner erred in construing the disputed claim
language, and because Appellants do not dispute that independent claims 1
and 12 are both indefinite under the Examiner’s claim construction, we
sustain the Examiner’s rejection of claims 1 and 12 under 35 U.S.C. § 112,
second paragraph.
Dependent claims 3, 6, 7, 13, 14, and 16–18 all depend from claim 1
or claim 12, and thus incorporate the claim language discussed above. Thus,
we also sustain the Examiner’s rejection of claims 3, 6, 7, 13, 14, and 16–18
as indefinite under 35 U.S.C. § 112, second paragraph.

Rejections of Claims 1, 3, 6, 7, 12–14, and
16–18 under 35 U.S.C. § 103(a)
We do not reach the merits of the rejections under 35 U.S.C. § 103(a)
at this time. Before a proper review of the rejections under 35 U.S.C.
§ 103(a) can be performed, the subject matter encompassed by the claims on
appeal must be reasonably understood without resort to speculation.
Because the claims fail to satisfy the requirements under 35 U.S.C. § 112,
second paragraph, for definiteness, we are constrained to reverse, pro forma,
the Examiner's rejections under 35 U.S.C. § 103(a). See In re Steele, 305
F.2d 859, 862–63 (CCPA 1962) (A prior art rejection cannot be sustained if
the hypothetical person of ordinary skill in the art would have to make
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speculative assumptions concerning the meaning of claim language.); see
also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably
definite meaning can be ascribed to certain terms in the claim, the subject
matter does not become obvious—the claim becomes indefinite”). Because
this pro forma reversal does not reflect on the merits of the prior art-based
rejections, the Examiner is not precluded from re-asserting these rejections
in the event Appellants subsequently amend their claims.

DECISION
The Examiner’s rejection of claims 1, 3, 6, 7, 12–14, and 16–18 under
35 U.S.C. § 112, second paragraph, is affirmed.
The Examiner’s rejections of claims 1, 3, 6, 7, 12–14, and 16–18
under 35 U.S.C. § 103(a) are reversed pro forma.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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