Ex Parte Na

Patent Trial and Appeal Board

Feb 10, 2016

12010324 (P.T.A.B. Feb. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/010,324 01/23/2008
58027 7590 02/12/2016
RC PARK & ASSOCIATES, PLC
1894 PRESTON WHITE DRIVE
RESTON, VA 20191
FIRST NAMED INVENTOR
Hyun-Jung Na
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.
P3239USOO 5841
EXAMINER
BLANTON, JOHN D
ART UNIT PAPER NUMBER
2466
NOTIFICATION DATE DELIVERY MODE
02/12/2016 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):
PATENT@PARK-LAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte HYUN-JUNG NA 1
Appeal 2014-001481
Application 12/010,324
Technology Center 2400
Before ERIC S. FRAHM, NATHAN A. ENGELS, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-10 and 12. Claim 11 has been objected to as being dependent on a
rejected base claim. Final Act. 2. We have jurisdiction over the remaining
pending claims under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellant identifies Samsung Electronics Co., Ltd. as the real party in
interest. App. Br. 3.
Appeal 2014-001481
Application 12/010,324
STATEMENT OF THE CASE
Introduction
Appellant's invention is directed to "an improved access point and an
improved method for controlling channel change in the access point for [a]
Wireless Distribution System." Spec. i-f 2. According to the Specification,
in a Wireless Distribution System (WDS), an access point and a counterpart
access point may communicate over a wireless channel. Spec. i-fi-1 3--4.
Further, when a WDS supports Dynamic frequency Selection (DPS), an
access point may need to change its wireless channel. Spec. i-fi-1 6-7. In a
disclosed embodiment, "when a channel change event occurs, [the access
point] checks the state of a counterpart access point, either performs channel
change alone or changes a channel while maintaining synchronization with
the counterpart access point." Spec. i-f 9.
Claim 1 is exemplary of the subject matter on appeal and is
reproduced with the disputed limitations emphasized in italics:
1. An access point, comprising:
a channel change event detector to determine whether an
event corresponding to a request to change a channel of the
access point used for transmitting and receiving a packet
between the access point and a counterpart access point occurs;
a channel change control unit, coupled to the channel
change event detector, to perform channel change while
maintaining channel-synchronization with the counterpart
access point having a Wireless Distribution System (WDS) link
in response to a determination by the channel change event
detector that the event occurred; and
a sync flag register, coupled to the channel change
control unit, to store a sync flag indicating whether the channel
of the access point is synchronized with a channel of the
counterpart access point.
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Application 12/010,324
The Examiner ;s Rejections
1. Claims 1-6 and 12 stand rejected under 35 U.S.C. § 112,
second paragraph as being indefinite. Final Act. 5---6.
2. Claims 1, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Marinier et al. (US 2007/0104139 Al; May 10,
2007) ("Marinier") and Addy et al. (US 2004/0042430 Al; Mar. 4, 2004)
("Addy"). Final Act. 7-9.
3. Claims 2--4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marinier, Addy, and Derby et al. (US 5,426,637; June 20,
1995) ("Derby"). Final Act. 10-11.
4. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marinier, Addy, Derby, Hun et al. (US 2007/0105552 Al;
May 10, 2007) ("Hun"), and Panadian et al. (US 2008/0146230 Al; June 19,
2008) ("Panadian"). Final Act. 11-13.
5. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marinier, Addy, Derby, and Hun. Final Act. 13-14.
6. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Marinier, Addy, Derby, and Panadian. Final Act.
14--16.
Issues on Appeal
1. Did the Examiner err in finding the terms "channel change
control unit," "channel configuration module," and "message generation
module" invoke the requirements of 35 U.S.C. § 112, sixth paragraph and
that the Specification fails to disclose the corresponding structure, material,
or acts for the claimed functions?
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Application 12/010,324
2. Did the Examiner err in finding the combination of Marinier
and Addy teaches or suggests "a sync flag register, coupled to the channel
change control unit, to store a sync flag indicating whether the channel of
the access point is synchronized with a channel of the counterpart access
point," as recited in claim 1?
ANALYSIS 2
Rejection under 35 USC§ 112, second paragraph
In the Final Office Action, the Examiner finds the terms "channel
change control unit," "channel configuration module," and "channel
generation message module" are means (or step) plus function limitations
that invoke the requirements of 35 U.S.C. § 112, sixth paragraph. 3 Final
Act. 5---6. The Examiner further finds the written description fails to disclose
the corresponding structure, material or acts for the claimed functions. Id.
Accordingly, the Examiner rejects claims 1-6 and 12 under 35 U.S.C. § 112,
second paragraph.
Appellant disputes the Examiner's finding that the identified claim
terms invoke 35 U.S.C. § 112, sixth paragraph and, therefore, are indefinite
2 Throughout this Decision we have considered the Appeal Brief filed June
27, 2013 ("App. Br."); the Reply Brief filed November 11, 2013 ("Reply.
Br."); the Examiner's Answer mailed on September 11, 2013 ("Ans."); and
the Final Office Action mailed on January 14, 2013, from which this Appeal
is taken ("Final Act.").
3 In the Final Office Action, the Examiner also identified the term "channel
change event detector." Final Act. 5. The Examiner has withdrawn the
rejection under 35 U.S.C. § 112, second paragraph as it relates to this term.
Ans. 14. Additionally, we note that the term "channel generation message
module" does not appear in the version of the claims being appealed. We
proforma reverse the Examiner's rejection as it relates to this term.
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Application 12/010,324
under 35 U.S.C. § 112, second paragraph. App. Br. 9-12. In particular,
Appellant argues: (i) the rejected claims do not recite a "means for" or a
"step for" and, therefore there is a strong presumption that 35 U.S.C. § 112,
sixth paragraph is not invoked (App. Br. 10); (ii) the Specification provides
sufficient structure for the disputed terms (App. Br. 10-11); and (iii) a
person of ordinary skill in the art would "readily appreciate that an algorithm
or method" involving the disputed terms is clearly described (App. Br. 11-
12).
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and
such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and
equivalents thereof.
35 U.S.C. § 112, sixth paragraph (emphasis added). While this provision
permits a claim limitation to be set forth using solely functional language, it
operates to restrict such claim limitation to those structures, materials, or
acts disclosed in the specification (or their equivalents) that perform the
claimed function. See Northrop Grumman Corp. v. Intel Corp., 325 F.3d
1346, 1350 (Fed. Cir. 2003).
The Federal Circuit has established that use of the term "means" is
central to the analysis of whether a claim limitation should be interpreted in
accordance with 35 U.S.C. § 112, sixth paragraph: use of the word "means"
creates a rebuttable presumption that the inventor intended to invoke § 112,
sixth paragraph, whereas failure to use the word "means" creates a
rebuttable presumption that the inventor did not intend the claims to be
governed by§ 112, sixth paragraph. Personalized Media Commc 'ns., LLC
v. Int'! Trade Comm'n, 161F.3d696, 703---04 (Fed. Cir. 1998).
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Application 12/010,324
Contrary to Appellant's assertion, the presumption that a limitation
that does not recite a "means for" or a "step for" and, therefore, is not
subject to§ 112, sixth paragraph is not a strong one. Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (Concluding "that such a
heightened burden is unjustified and that we should abandon characterizing
as 'strong' the presumption that a limitation lacking the word 'means' is not
subject to § 112, para. 6"). Rather, the Williamson Court explained:
The standard is whether the words of the claim are understood
by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure. When a claim term
lacks the word "means," the presumption can be overcome and
§ 112, para. 6 will apply if the challenger demonstrates that the
claim term fails to "recite sufficiently definite structure" or else
recites "function without reciting sufficient structure for
performing that function."
Williamson, 792 F.3d at 1349 (internal citations omitted). Further, the Court
stated:
"Module" is a well-known nonce word that can operate as a
substitute for "means" in the context of§ 112, para. 6 ....
Generic terms such as "mechanism " "element " "device " and
' ' '
other nonce words that reflect nothing more than verbal
constructs may be used in a claim in a manner that is
tantamount to using the word "means" because they "typically
do not connote sufficiently definite structure" and therefore
may invoke§ 112, para. 6.
Williamson, 792 F.3d at 1350.
We agree with the Examiner that "channel change control unit" and
"channel configuration module," on their own, do not connote structure and,
therefore, invoke§ 112, sixth paragraph. We tum our inquiry, then, to
determine whether sufficient structure for performing the respective
functions has been disclosed.
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Here, we agree with Appellant that sufficient structure has been
disclosed in the Specification and Figures. There is not a "lofty standard" in
indefiniteness cases. Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323,
1341 (Fed. Cir. 2008). Rather, sufficient structure must "permit one of
ordinary skill in the art to 'know and understand what structure corresponds
to the means limitation"' so that he may "perceive the bounds of the
invention." Id. at 1340-41.
"Structure disclosed in the specification qualifies as 'corresponding
structure' if the intrinsic evidence clearly links or associates that structure to
the function recited in the claim." Williamson, 792 F.3d at 1352. We find
that Appellant has recited sufficiently definite structure linked to the claimed
functional terms. For instance, Appellant directs our attention to Figure 2
from the Specification showing a block diagram of an access point according
to a disclosed embodiment. App. Br. 11; Spec. i-f 20, Fig. 2. As illustrated in
Figure 2 and described in the accompanying text, the "channel change
control unit" and "channel configuration module" are described, including
their connections and signals. See, e.g., Spec. i-fi-128--44. Specifically, for
example, paragraph 41 states: "Channel configuration module 134
configures a channel using channel information included in the channel
selection policy received from channel sync request determination module
132 or the channel change request message received from message parser
131." Additionally, Figure 3 provides a flowchart illustrating the steps to
control channel change in the claimed invention. A flow chart is sufficient,
for purposes of§ 112, sixth paragraph, if it "disclose[s], at least to the
satisfaction of one of ordinary skill in the art, enough of an algorithm to
provide the necessary structure." Finisar, 523 F.3d at 1340. We agree with
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Application 12/010,324
Appellant that "to a person having ordinary skill in the art at the time of the
invention (PHOSITA) that Appellant's figures and specification disclose an
algorithm directed to the claimed features." Reply Br. 5.
Accordingly, for the reasons discussed supra, we do not sustain the
Examiner's rejection of claims 1-6 and 12 under 35 U.S.C. § 112, second
paragraph. 4
Rejection under 35 USC§ 103(a)
Appellant argues the Examiner erred in finding Addy teaches or
suggests the sync flag register as claimed in claim 1. App. Br. 13-14. In
particular, Appellant contends Addy relates to synchronization between the
transmitter and receiver of a single node, as opposed to synchronization
between two separate nodes. Id. Appellant directs our attention to Figure 7
of Addy reproduced below:
4 We additionally note, in claim 12, "a channel configuration module" is
recited as a separate limitation of an access point apparatus without further
recitation of how the channel configuration module connects or interacts
with other elements of the access point. A claim that fails to positively
recite structural relationships of two or more essential elements of the
invention may fail to point out and distinctly claim the invention. See In re
Collier, 397 F.2d 1003, 1005 (CCPA 1968). For this reason, in the event of
further prosecution, we invite the Examiner to determine whether claim 12
comports with the requirements of 35 U.S.C. § 112, second paragraph.
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FIG. 7
Figure 7 shows two communicating nodes (20, 22) of a baseband bus. Addy
i-f 20. Appellant contends Addy teaches communication channels 41 and 43
are used to determine if synchronization between the transmitter and
receiver of each node is lost. App. Br. 13 (citing Addy i-f 40). Thus,
Appellant concludes Addy fails to teach or suggest synchronization between
two different nodes. App. Br. 13.
We are unpersuaded by Appellant's argument because, as the
Examiner explains, Addy teaches "the process of synchronizing is
performed by the transmitter sending IDLE bytes to the receiver of the other
node then [sic] changing to the synchronized state if the IDLE bytes are
received properly." Ans. 16 (citing Addy i-fi-148-57, 63---68, 73-80). Thus,
while the unidirectional communication links 41 and 43 "may be used by
receivers on a node to inform the transmitters if a loss of synchronisation
occurs," (Addy i-f 40), synchronization between nodes is achieved via
detection of the IDLE bytes in messages sent from a transmitter of one node
to a receiver of another node. See, e.g., Addy, Tables 2, 3. Further, a status
register ( 45) "for each transmitting and receiving element of each node of
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Application 12/010,324
the bus indicat[es] the synchronisation status." Addy il 59. Appellant does
not provide persuasive rebuttal evidence or argument to the Examiner's
finding and explanation. See Reply Br. 7-9. Accordingly, we agree with the
Examiner's findings that Addy teaches "a sync flag register, coupled to the
channel change control unit, to store a sync flag indicating whether the
channel of the access point is synchronized with a channel of the counterpart
access point," as recited in claim 1. Ans. 17; Final Act. 8.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we affirm the Examiner's rejection under 35 U.S.C.
§ 103 (a) of independent claim 1. For similar reasons, we also sustain the
Examiner's rejection of independent claim 7, which contains a similar
limitation and was not argued separately. App. Br. 14. Further, we sustain
the rejections of dependent claims 2---6 and 8-10, which were not argued
separately. App. Br. 14--15.
DECISION
We reverse the Examiner's decision to reject claims 1-6 and 12 under
35 U.S.C. § 112, second paragraph.
We affirm the Examiner's decision to reject claims 1-10 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). See 37 C.F.R.
§ 41.50(±).
AFFIRMED-IN-PART
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