Ex Parte Machireddy et al

Patent Trial and Appeal Board

Sep 12, 2016

12891102 (P.T.A.B. Sep. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/891,102 09/27/2010
75916 7590 09/14/2016
IBM AUS IPLA W (GLF)
c/o Garg Law Firm, PLLC
4521 Copper Mountain Lane
Richardson, TX 75082
FIRST NAMED INVENTOR
Ramana R. Machireddy
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
AUS920100373US1 9722
EXAMINER
MCCORMACK, THOMAS S
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
09/14/2016 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):
dpandya@garglaw.com
uspto@garglaw.com
garglaw@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMANA R. MACHIREDDY, VISHAL R. MANSUR, and
MATTHEWRYANOCHS 1
Appeal2015-005089
Application 12/891, 102
Technology Center 2600
Before MICHAEL J. STRAUSS, JON M. JURGOV AN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Non-
Final Rejection of claims 1-20. Claims 1, 7, and 15 are independent. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. 2
1 According to Appellants, the real party in interest is International Business
Machines Corporation. See Appeal Brief 2.
2 Throughout this Opinion, we refer to: (1) Appellants' Specification filed
Sept. 27, 2010 (Spec.); (2) the Non-Final Office Action (Non-Final Act.)
mailed May 14, 2014; (3) the Appeal Brief (Appeal Br.) filed Nov. 4, 2014;
(4) the Examiner's Answer (Ans.) mailed Feb. 11, 2015; and (5) the Reply
Brief (Reply Br.) filed Apr. 1, 2015.
Appeal2015-005089
Application 12/891, 102
BACKGROl.J1'-JD
According to Appellants, the application relates to a method, system,
and computer usable program product for remote device location
identification using an identification command included in a predetermined
communication directed to the remote device. Spec. 3. Claim 1 is
illustrative and is reproduced below with a disputed limitation emphasized:
1. A computer implemented method for remote device
location identification, the computer implemented method
compnsmg:
receiving, at a remote device in a data processing environment,
a command to identify the remote device, the command being
included in a predetermined communication directed to the
remote device, wherein the predetermined communication is to
cause another operation distinct from the identification of the
remote device, wherein the command is embedded in a first
Next page of a link auto-negotiation procedure by setting a set
of bits in the first Next page to a first value, wherein setting by
the remote device the set of bits in the first Next page to a
second value causes the remote device to provide information
about a type of identification supported at the remote device,
wherein the first Next page is a new page added to a page in the
predetermined communication, and wherein the first value and
the second value are unused in the link auto-negotiation
procedure;
determining, at the remote device, whether the command is
supported at the remote device;
setting, by the remote device, responsive to the determining
being affirmative, a bit in a second Next page in the link auto-
negotiation procedure to indicate support for the command
during the link auto-negotiation procedure; and
identifying by the remote device, responsive to the determining
being affirmative, the remote device by transmitting an
identification of a location associated with the remote device.
2
Appeal2015-005089
Application 12/891, 102
REFERENCES
The art relied upon by the Examiner in rejecting the claims on appeal:
Petite
Baumer et al.
("Baumer")
Sheikman et al.
("Sheikman")
US 2002/0019725 Al
US 2007 /0086450 Al
US 2012/0068822 Al
REJECTION
Feb. 14,2002
Apr. 19, 2007
Mar. 22, 2012
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Petite, Sheikman, and Baumer. Non-Final Act. 4.
Our review in this appeal is limited to the above rejection and issues
raised by Appellants. We have not considered other possible issues that
have not been raised by Appellants and which are, therefore, not before us.
See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
ISSUE
Did the Examiner err in finding that the combination of Petite,
Sheikman, and Baumer teaches or suggests "determining, at the remote
device, whether the command is supported at the remote device" as recited
in claim 1?
DISCUSSION
The Examiner relies on Petite' s transmission of a negative
acknowledgement from a wireless device to teach or suggest "determining,
at the remote device, whether the command is supported at the remote
device" as recited in claim 1. Non-Final Act. 2 and 8.
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Appeal2015-005089
Application 12/891, 102
Specifically, the Examiner finds that, in Petite, a negative
acknowledgement is sent whenever the message is not received and
understood and the negative acknowledgement indicates the received
message is not supported by the remote device because it does not allow
operation of the remote device. Ans. 27 (citing Petite i-f 73).
Appellants contend that the Examiner errs because:
Nowhere does Petite teach[,] that when the remote device sends
a negative acknowledgement, that negative acknowledgement is
due to a lack of support of the command at the remote device.
In fact, even when the command is supported at the remote
device of Petite, the remote device of Petite can send a negative
acknowledgement because the command may be faulty,
untimely, misdirected, or otherwise improper.
Appeal Br. 13.
We find Appellants arguments' persuasive. The Examiner fails to
demonstrate that Petite's transmission of a negative acknowledgement in
response to the receipt of the command suggests determining that the
command is not supported by the wireless device.
The Examiner's rejection of the disputed limitation relies on the
Oxford dictionary definition of the term "support," as the broadest
reasonable interpretation of that claim term. Ans. 27. According to the
Examiner, the Oxford dictionary defines "support," as used in computing,
"as allowing the use or operation of a device." Id.
Under a broadest reasonable interpretation, the words of the claim
must be given their plain meaning unless the plain meaning is inconsistent
with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); Chef
America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372 (Fed. Cir. 2004).
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Appeal2015-005089
Application 12/891, 102
The Examiner's dictionary definition of support is not reasonable in view of
the Appellants' Specification, which indicates, for example, that the remote
device does not support a command when the remote device is incapable of
complying with the command. Spec. i-f 62. Therefore, we disagree with the
Examiner's conclusion that the cited portions of Petite suggest determining
"whether the command is supported at the remote device," as claimed.
Because we agree with at least one of the dispositive arguments
advanced by Appellants, we need not reach the merits of Appellants' other
contentions.
We are thus constrained to reverse the Examiner's obviousness
rejection of independent claims 1, 7, and 15 and their respective dependent
claims over Petite, Sheikman, and Baumer.
We note, in an ex parte appeal, the Board "is basically a board of
review-we review ... rejections made by patent examiners." Ex parte
Gambogi, 62 USPQ2d 1209, 1211 (BP AI 2001 ). "The review authorized by
35 U.S.C. Section 134 is not a process whereby the examiner ... invite[s]
the [B]oard to examine the application and resolve patentability in the first
instance." Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI
1999). Because we are a board of review, and not a place of initial
examination, we will not engage in the de nova examination required to
supplement the Examiner's findings in connection with the determining of
whether the command for identification of the remote device is supported at
the remote device. We express no opinion as to whether independent claim
1 would be obvious over Petite, Sheikman, and Baumer if supported by
additional explanation and/or references. We leave any such further
consideration to the Examiner. Although the Board is authorized to reject
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Appeal2015-005089
Application 12/891, 102
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 (9th Ed., Mar. 2014).
Furthermore, our decision is limited to the findings before us for
review. The Board does not "allow" claims of an application and cannot
direct an Examiner to pass an application to issuance. Rather, the Board's
primary role is to review adverse decisions of examiners including the
findings and conclusions made by the Examiner. See 37 C.F.R.
§ 41. 50( a)( 1) ("The Board, in its decision, may affirm or reverse the decision
of the examiner in whole or in part on the grounds and on the claims
specified by the examiner").
DECISION
We reverse the Examiner's decision rejecting claims 1-20 under 35
U.S.C. § 103(a) as being unpatentable over Petite, Sheikman, and Baumer.
REVERSED
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