Ex Parte MartinDownload PDFPatent Trial and Appeal BoardDec 29, 201612897283 (P.T.A.B. Dec. 29, 2016) Copy Citation 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. 12/897,283 10/04/2010 Brian Alexander Martin NC74048US -NP 1578 12358 7590 01/03/2017 Mint7 T evin/Nnkia Teohnnlnaies; Ov EXAMINER One Financial Center Boston, MA 02111 TALUKDER, MD K ART UNIT PAPER NUMBER 2648 NOTIFICATION DATE DELIVERY MODE 01/03/2017 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): IPDocketingBOS @ mintz.com IPFileroomBOS@mintz.com Nokia. IPR @ nokia. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN ALEXANDER MARTIN Appeal 2016-001750 Application 12/897,283 Technology Center 2600 Before JOHN A. EVANS, JOHN P. PINKERTON, and JOHN D. HAMANN, Administrative Patent Judges. PINKERTON, Administrative Patent Judge DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—9, 18, 20, and 21, which are the only claims pending in the application. Claims 10—17 and 19 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies Nokia Corp. of Espoo, Finland as the real party in interest. App. Br. 2. Appeal 2016-001750 Application 12/897,283 STATEMENT OF THE CASE Introduction Appellant’s disclosed and claimed invention is generally directed to “connectivity and/or access control in the context of distributed or cellular communications.” Spec. 11.2 Claim 1 is representative and reproduced below (with the disputed limitation emphasized)'. 1. An apparatus, comprising: a receiver configured to receive a broadcasted message comprising cell reservation information, wherein the cell reservation information includes machine-type terminal information and non-machine type terminal information', memory configured to store information indicating whether the apparatus is implemented as a machine-type terminal; a transmitter configured to send an attachment request toward a network in dependence of the cell reservation information and the information indicating whether the apparatus is implemented as the machine-type terminal; wherein the cell reservation information comprises cell reservation information relating exclusively to determining whether machine-type terminals are barred from attaching to a cell. Rejections on Appeal Claims 1—4, 7—9, 18, 20, and 21 stand rejected under 35 U.S.C. 2 Our Decision refers to the Final Action mailed Sept. 12, 2014 (“Final Act.”); Appellant’s Appeal Brief filed Apr. 13, 2015 (“App. Br.”) and Reply Brief filed Nov. 24, 2015 (“Reply Br.”); the Examiner’s Answer mailed Sept. 25, 2015 (“Ans.”); and the original Specification filed Oct. 4, 2010 (“Spec.”). 2 Appeal 2016-001750 Application 12/897,283 § 103(a) as being unpatentable over Segura (US 2011/0201307 Al; published Aug. 18, 2011) and Ajay Vachhani (GB 2 443 233 A; published Apr. 30, 2008) (hereinafter “Ajay” to be consistent with the Examiner’s citation). Final Act. 2—8. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Segura, Ajay, and Hamalainen et al., (US 6,788,943 Bl; issued Sept. 7, 2004). Final Act. 9-11. ANAFYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments in the Briefs and are not persuaded the Examiner has erred. Unless otherwise noted, we adopt as our own the findings and reasons set forth by the Examiner in the Office Action from which this appeal is taken (Final Act. 2—11) and in the Examiner’s Answer (Ans. 3—8), and we concur with the conclusions reached by the Examiner. For emphasis, we consider and highlight specific arguments as presented in the Briefs. Rejection of Claim l3 under § 103(a) Appellant argues “nowhere does Segura or Ajay disclose or suggest a single broadcast message that includes both machine-type terminal information and non-machine type terminal information, as required by claim 1.” App. Br. 14—16; Reply Br. 6—7. In particular, Appellant argues Segura discloses a system for restricting machine-to-machine devices from access to system resources, and “at best discloses sending a broadcast 3 We decide the rejection of claims 1—4, 7—9, 18, 20, and 21, which are rejected under the first-stated ground of rejection, on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). 3 Appeal 2016-001750 Application 12/897,283 message with restriction information for machine-to-machine devices.” Id. According to Appellant, “[bjecause Segura only addresses machine-to- machine devices, there would be no reason to add non-machine type terminal information.” App. Br. 15—16; Reply Br. 7. Appellant argues Ajay fails to cure the deficiency of Segura because Ajay discloses barring access for controlling load within a mobile radio communications network by signaling restriction parameters “only to user equipment (which are not machine-to-machine devices according to Ajay).” App. Br. 16; Reply Br. 7. Appellant also argues that “other than hindsight the Examiner has not provided a motivation to combine the references.” App. Br. 16—17; Reply Br. 8. Appellant argues “[tjhere is no motivation to add non-machine information in Segura’s system block type 2 message because the message is not intended for non-machine devices,” and “[likewise, Ajay’s message restricts information only for non machine-to- machine devices.” App. Br. 17; Reply Br. 8. We are not persuaded by Appellant’s arguments that the Examiner has erred. Appellant’s arguments that neither Segura nor Ajay teach or suggest the disputed limitation of claim 1 are not persuasive because they attack the references individually, whereas the Examiner’s rejection is based on the combined teachings of Segura and Ajay. See Ans. 4; Final Act. 2—\. Non obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of the references. See In re Keller, 642 F.2d 413, 425 (CCPA 4 Appeal 2016-001750 Application 12/897,283 1981). Here, the Examiner finds the combination of Segura and Ajay teaches the disputed limitation of claim 1: “Segura teaches each and every limitation[] of claim 1 except the cell reservation information includes non machine type terminal information. Ajay teaches a process of sending cell reservation information [which] includes non machine type terminal information.” Ans. 4. We also are not persuaded by Appellant’s arguments that “other than hindsight,” the Examiner has not provided a motivation to combine Segura and Ajay. See App. Br. 16—17; Reply Br. 8. First, the Examiner finds one of ordinary skill in the art would have combined Segura and Ajay for the cell reservation information to include machine type terminal information and non-machine type terminal information by known methods, and that “[t]he results of the combination would have been predictable.” Ans. 4. As stated by the Supreme Court, the “combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Here, Appellant has not provided persuasive evidence or arguments that it would not have been possible for a person of skill in the art to combine Segura and Ajay by known methods or that the results of the combination would have been unpredictable. Absent such evidence or arguments, we agree with the Examiner’s findings as the skilled artisan would “be able to fit the teachings of multiple patents together like pieces of a puzzle” because the skilled artisan is “a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420-21. Second, the Examiner specifically finds the motivation for sending machine type and non-machine type terminal information together “is to 5 Appeal 2016-001750 Application 12/897,283 save bandwidth and power in the system by sending messages together rather than wasting resources by sending messages two separate times.” Ans. 4—5. Thus, we find that the Examiner has provided sufficient articulated reasoning having rational underpinning such that a person of ordinary skill in the art would have been motivated to combine the teachings of Segura and Ajay so as to render obvious the subject matter of claim 1. See KSR, 550 U.S. at 418. Third, in response to Appellant’s arguments that the Examiner engaged in impermissible hindsight in modifying Segura with Ajay’s teachings, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. However, so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the Appellant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, we conclude the Examiner did not use impermissible hindsight because the rejection is based on the references and what they would have taught or suggested to a person of ordinary skill in the art. Thus, we find a preponderance of the evidence supports the Examiner’s findings that the combined teachings of Segura and Ajay would have taught or suggested the disputed limitation of claim 1. Accordingly, we are not persuaded the Examiner erred in (1) finding the combined teachings of Segura and Ajay teach or suggest the disputed limitation of claim 1 and (2) concluding that the combination of Segura and Ajay renders the subject matter of claim 1 obvious under 35 U.S.C. § 103(a). Accordingly, we sustain the Examiner’s rejection of claim 1. For the same 6 Appeal 2016-001750 Application 12/897,283 reasons, we sustain the Examiner’s rejections of independent claims 9, 18, and 20, as well as dependent claims 2-4, 7, 8, and 21. Rejection of Claims 5 and 6 Appellant advances no separate, substantive arguments for claims 5 and 6, which are rejected under the second-stated ground of rejection. Appellant contends these claims are allowable for the same reasons previously argued regarding independent claim 1 and because Hamalainen does not cure the noted deficiency in Segura in view of Ajay. App. Br. 17— 18. However, for the reasons discussed above regarding the first-stated ground of rejection, we find no deficiency regarding the Examiner’s rejection of independent claim 1. Therefore, we sustain the second-stated rejection of claims 5 and 6. DECISION We affirm the Examiner’s rejections of claims 1—9, 18, 20, and 21 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation