Ex Parte Ponnuswamy

Patent Trial and Appeal Board

Sep 9, 2016

12695017 (P.T.A.B. Sep. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/695,017 01127/2010 Subburajan Ponnuswamy
56436 7590 09/13/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
84268653 7067
EXAMINER
KASSA, ZEWDU A
ART UNIT PAPER NUMBER
2632
NOTIFICATION DATE DELIVERY MODE
09/13/2016 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):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUBBURAJAN PONNUSW AMY1
Appeal2015-005097
Application 12/695,017
Technology Center 2600
Before ALLEN R. MacDONALD, KEVIN C. TROCK, 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 Final
Rejection of claims 1-11, 13, 26-38, 40-42, 44, and 45. Claims 1,
26, 38 and 42 are independent. Claims 12, 14--25, 39 and 43 are
cancelled. We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b ).
We AFFIRM.2
1 According to Appellant, the real party in interest is Aruba Networks, Inc.
See Appeal Brief 1.
2 Throughout this Opinion, we refer to: (1) Appellant's Specification filed
Jan. 27, 2010 ("Spec."); (2) the Final Office Action ("Final Act.") mailed
Aug. 26, 2013; (3) the Appeal Brief ("Appeal Br.") filed Sept. 26, 2014; and
(4) the Examiner's Answer ("Ans.") mailed Feb. 6, 2015.
Appeal2015-005097
Application 12/695,017
BACKGROUND
According to Appellant, the application relates to a system that
estimates a frequency spectrum for a digital signal using a predetermined
template. Abstract. Claim 1 is representative and is reproduced below with
disputed limitation emphasized:
1. A system comprising:
at least one device comprising a hardware processor;
the system being configured to perform operations
compnsmg:
receiving a signal;
identifying at least a signal type of the received signal;
estimating a frequency spectrum of the received signal
based at least on the signal type of the received signal.
REFERENCES
The art relied upon by the Examiner in rejecting the claims on appeal:
Lehmann
("Lehmann")
Sugar et al. ("Sugar
'123")
Sugar ("Sugar")
us 4,054, 785 Oct. 18, 1977
US 2004/0028123 Al Feb. 12,2004
US 2006/0178124 Al Aug. 10, 2006
REJECTIONS
Claims 1-11, 13, 26, 27, 29-38, 40-42, 44, and 45 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Sugar and Sugar' 123.
Final Act. 5. Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sugar, Sugar '123, and Lehmann. Final Act. 13.
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Appeal2015-005097
Application 12/695,017
Claims 38, 40-42, 44, and 45 stand rejected under 35 U.S.C. § 112 (a)
as failing to comply with the written description requirement. Final Act. 3.
Our review in this appeal is limited only to the above rejections and
issues raised by the Appellant. We have not considered other possible issues
that have not been raised by Appellant and which are, therefore, not before
us. See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
ISSUES
1. Did the Examiner err in finding the combination of Sugar and
Sugar '123 teaches or suggests "estimating a frequency spectrum of the
received signal based at least on the signal type of the received signal," as
recited in claim 1?
2. Did the Examiner err in finding that claims 38, 40-42, 44, and
45 fail to comply with the written description requirement?
DISCUSSION
We have reviewed the Examiner's rejections and the evidence of
record in light of Appellant's arguments that the Examiner has erred. We
disagree with Appellant's arguments and conclusions. We adopt as our own,
( 1) the findings and reasons set forth by the Examiner in the Office Action
from which this appeal is taken and (2) the findings and reasons set forth in
the Examiner's Answer. We concur with the conclusions reached by the
Examiner and further highlight specific findings and argument for emphasis
as follows.
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Appeal2015-005097
Application 12/695,017
35 U.S. C. § 103: Claim 1
In rejecting claim 1, the Examiner finds that Sugar determines the
type of class of a received signal and then estimates a frequency spectrum of
the received signal based at least on the signal type of the received signal.
Final Act. 5 (citing Sugar iii! 9, 26-40, and 45). More specifically, the
Examiner finds that in Sugar the signal strength of the classified signal is
estimated and displayed as a multi-line plot. Ans. 14--16 (citing Sugar iii! 9,
45, 66----67 (see also summary spectrum information displayed at FIG. 4)).
Appellant asserts the Examiner errs in the rejection because "[t]he
frequency spectrum, as described in Sugar [], is not an estimation, but rather
a plot of detected energy." Appeal Br. 17 (emphasis omitted). Appellant
further asserts the estimated frequency spectrum of Sugar is not in any way
based on the signal type of the received signal. Appeal Br. 17.
We are not persuaded by Appellant's assertions. Appellant does not
provide sufficient evidence or a technical line of reasoning to persuade us
the Examiner's findings constitute error. Further, the Examiner correctly
finds that the cited portions of Sugar illustrate and discuss displaying an
estimated frequency spectrum that is based on the signal type of the received
signal. Ans. 14--16. Accordingly, we agree the combination of Sugar and
Sugar ' 123 teaches or suggests the disputed limitations and we therefore
sustain the Examiner's rejection of these claims.
35 U.S.C. § 103: Claims 2-11, 13, 26--38, 40--42, 44, and 45
Appellant does not make any other substantive argument regarding
the rejection of independent claims 26, 38 and 42 or of any of the pending
dependent claims. Appeal Br. 7. Therefore, we likewise sustain the
rejections of these claims under 35 U.S.C. § 103(a).
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Appeal2015-005097
Application 12/695,017
35 U.S.C. § 112 (a): Claims 38, 40--42, 44, and 45
We sustain the Examiner's decision to reject independent claim 38
under§ 112(a), as failing to comply with the written description requirement
by impermissibly adding new matter to the original disclosure. To satisfy
the written description requirement, the disclosure must reasonably convey
to skilled artisans that the patentee possessed the claimed invention as of the
filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en bane). Although the description requirement under
§ 112 does not demand (1) any particular form of disclosure, a description
that merely renders the invention obvious does not satisfy the requirement.
Id. at 1352.
A written-description question often arises when an applicant, after
filing a patent application, subsequently adds "new matter" to the claims not
present in the original application. Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1560 (Fed. Cir. 1991). When an applicant amends a claim to
introduce new elements or limitations or adds claims during prosecution, for
example, the newly claimed subject matter must find written description
support in the original specification. Id.; see also Turbo Care Div. of Demag
Delavel Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed.
Cir. 2001 ). Without written description support, claims containing new
matter are properly rejected under 35 U.S.C. § 112. Ariad at 1348. This
required compliance with 35 U.S.C. § 112 ensures that the applicant fully
possessed the entire scope of the claim as of the original filing date.
Turbo Care, 264 F .3d at 1118. While there is no in haec verba requirement,
newly added claim limitations must be supported in the specification
through express, implicit, or inherent disclosure. Ariad at 1352.
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Appeal2015-005097
Application 12/695,017
Here, Appellant does not dispute that the claims were newly added by
amendment during prosecution. See Amendment filed May 22, 2013.
Appellant also does not dispute that the limitations in question are not
expressly stated in Appellant's original disclosure. Appellant, instead, relies
on paragraph 28 of the Specification to implicitly support the disputed
limitations of claim 38. Appeal Br. 5. Specifically, Appellant states that
paragraph 28 provides support for "combining the estimated signal strength
spectra data and the actual signal strength spectra data to obtain a combined
signal strength spectra data," as recited, for example, in claim 38. Appeal
Br. 3.
While we do not disagree with Appellant's previous statement, we
find that Appellant still fails to demonstrate that paragraph 28 provides
support for all of the disputed limitations. For example, Appellant's have
not demonstrated that paragraph 28 describes determining signal strength
spectra data differently for IEEE 802.11 type signals than for non-IEEE
802.11 type signals, nor does our review of paragraph 28 find descriptive
support for this claim limitation. Accordingly, Appellant fails to
demonstrate support for the "combining [of] the estimated signal strength
spectra data [corresponding to one or more IEEE 802 .11 signals] and the
actual signal strength spectra data [corresponding to one or more non-IEEE
802 .11 signals]," as recited in claim 3 8. We therefore find Appellant's
Specification fails to reasonably convey to those skilled in the art that the
inventor had possession of the subject matter at issue as of the filing date
and the rejection of claims 38 is sustained. Appellant provides similar
arguments for independent claim 42 and thus we also sustain the rejection of
claim 42. Dependent claims 40, 41, 44, and 45 include the rejected
limitations and we therefore also sustain the rejection of these claims.
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Appeal2015-005097
Application 12/695,017
Accordingly, based on the record before us, we sustain the Examiner's
rejection of claims 38, 40-42, 44, and 45 for failing to comply with the
written description requirement of 35 U.S.C. § 112 (a).
DECISION
We affirm the Examiner's rejection of claims 1-11, 13, 26-38, 40-42,
44, and 45 under 35 U.S.C. § 103(a) as being unpatentable over Sugar,
Sugar ' 123, and Lehmann.
We affirm the Examiner's rejection of claims 38, 40-42, 44, and 45
under 35 U.S.C. § 112 (a) as lacking written description.
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
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