Ex Parte Qi et alDownload PDFPatent Trial and Appeal BoardAug 31, 201813948634 (P.T.A.B. Aug. 31, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/948,634 07/23/2013 156240 7590 09/05/2018 Spectrum IP Law Group LLC 558 Castle Pines Parkway, B4-362 Castle Pines, CO 80108 FIRST NAMED INVENTOR EmilyH. Qi 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. P55736 9642 EXAMINER CROMPTON, CHRISTOPHER R ART UNIT PAPER NUMBER 2463 NOTIFICATION DATE DELIVERY MODE 09/05/2018 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): intel@slgip.com eofficeactions@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EMILY H. QI and BAHAREH SADEGHI 1 Appeal2018-002896 Application 13/948,634 Technology Center 2400 Before CARL W. WHITEHEAD JR., MICHAEL J. STRAUSS, and JEREMY J. CURCURI, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellants, the real party in interest is Intel Corporation. See Br. 3. Appeal2018-002896 Application 13/948,634 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § I34(a) from a rejection of claims 1--4, 6-9, and 11-14. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 4I.50(b). 2 THE INVENTION The claims are directed to enabling devices to discover services through a network controller or group owner. Spec., Title. Claim 1, reproduced below with a dispositive limitation emphasized in italics, is representative of the claimed subject matter: 1. A device for communicating wirelessly in a network, the device comprising: a processor, a memory, and a radio, wherein the device is configured to wirelessly transmit a probe request containing a first list of services being sought in a network, the probe request having the first list of services being sought by the device; and receive a probe response responsive to the probe request, the probe response consisting essentially of a second list of services that are both in the first list and available in the network; wherein the probe response further comprises a service identification and Media Access Control (MAC) address of a provider of the services being sought. REFERENCES The following prior art is relied upon by the Examiner in rejecting the claims on appeal: Shen et al. ("Shen") US 8,681,691 B2 Mar. 25, 2014 Lee et al. ("Lee") US 2015/0206190 Al July 23, 2015 2 We refer to the Final Office Action mailed Aug. 18, 2016 ("Final Act."); the Appeal Brief filed May 18, 2017 ("Br."); and the Examiner's Answer mailed Sept. 22, 2017 ("Ans."). 2 Appeal2018-002896 Application 13/948,634 REJECTION The Examiner rejected claims 1--4, 6-9, and 11-14 under 35 U.S.C. § 103 as being unpatentable over Lee and Shen. Final Act. 3---6. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner has erred in rejecting independent claim 1 under 35 U.S.C. § 103 as being unpatentable over Lee and Shen. We agree with Appellants' conclusions as to this rejection of the claims. The Examiner finds the reason to modify Lee to include the MAC address of Shen is to: (1) simply substitute one known element for another; (2) use a known technique to improve a similar device in a similar way; and (3) to expand the utility and ease of use of wireless devices (citing Shen col. 1, 11. 49-55). Final Act. 4--5. In the Examiner's Answer, the Examiner further finds Shen discloses that it is common and well known in the art for a probe response packet to include a wireless station's MAC address and concludes "it would have been common and well known in the art to modify Lee to include informational items which are commonly included in the probe responses as known in the art." Ans. 7. Appellants contend there would have been no reason to modify Lee with Shen because Lee's service provider uses direct Wi-Fi communication and, therefore, would have not have needed to additionally provide the service provider's MAC address in the probe response. Br. 11. In connection with the Examiner's first reason to combine (i.e., simple substitution of one known element for another to obtain predictable results), 3 Appeal2018-002896 Application 13/948,634 the Examiner provides insufficient evidence to persuade us of this finding. 3 Final Act. 5. For example, the Examiner has not shown what element is proposed to be substituted (i.e., what the MAC address is replacing); instead the Examiner posits the addition of an element (i.e., the MAC address), without providing evidence of any reason (e.g., utility) for adding the element. For the reasons discussed above, the Examiner's first reason for making the combination is insufficient. In connection with the Examiner's second reason to combine (i.e., use of known technique to improve similar devices in the same way), the Examiner again provides insufficient evidence to persuade us of this finding. 4 Final Act. 5. For example, the Examiner has not shown what 3 We note section 2143(B) of the Manual of Patent Examining Procedure ("MPEP") provides guidance for rejecting a claim under a simple substitution rationale by requiring the Examiner to make findings addressing four elements including: ( 1) a finding that the prior art contained a device ( method, product, etc.) which differed from the claimed device by the substitution of some components (step, element, etc.) with other components; (2) a finding that the substituted components and their functions were known in the art; (3) a finding that one of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable; and ( 4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness. 4 We note section 2143(C) the MPEP also provides guidance for rejecting a claim as including a known technique to improve similar devices by requiring the Examiner to make findings addressing four elements including: 4 Appeal2018-002896 Application 13/948,634 element is a known technique or what is being improved; instead the Examiner posits the addition of an element (i.e., the MAC address), without providing evidence of any reason (e.g., utility) for adding the element. For the reasons discussed above, the second basis for making the combination is insufficient. Further, in connection with the Examiner's third reason for modifying Lee, the Examiner's citation to the Shen reference for supporting the reason is flawed. In particular, the portion of Shen cited by the Examiner as providing a reason for the combination by adding Shen's MAC address to the probe response of Lee does not address the asserted modification. Instead, Shen describes reasons for reversing the normal roles of stations and access points in establishing connections, not for adding a MAC address. Therefore, the Examiner's third reason for making the combination is based on insufficient evidence or technical reasoning. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be (1) a finding that the prior art contained a "base" device (method, or product) upon which the claimed invention can be seen as an ''improvement"; (2) a finding that the prior art contained a "comparable" device (method, or product that is not the same as the base device) that has been improved in the same way as the claimed invention; (3) a finding that one of ordinary skill in the art could have applied the known "improvement" technique in the same way to the "base" device (method, or product) and the results would have been predictable to one of ordinary skill in the art; and ( 4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness. The Examiner has not addressed these elements in concluding the claims to have been obvious as a known technique to improve similar devices in the same way. 5 Appeal2018-002896 Application 13/948,634 sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness"). In addition, the Examiner's further finding (Ans. 7) that Shen discloses that it is common and well known in the art for a probe response packet to include a wireless station's MAC address is in error because the cited evidence does not support the finding. Shen col. 11, 11. 1-5 (cited by the Examiner) refers to the destination's MAC address, and not to the MAC address of a provider of the services being sought. Because we agree with at least one of the arguments advanced by Appellants, we need not reach the merits of Appellants' other arguments. Therefore, for the reasons supra, we do not sustain the rejection of independent claim 1 under 35 U.S.C. § I03(a) over Lee and Shen and, for the same reason, we do not sustain the rejection of independent claims 6 and 11 which include substantially the same limitation, or the rejection of dependent claims 2--4, 7-9, and 12-14. NEW GROUND OF REJECTION 35 U.S.C. § 102(a)(l) Pursuant to our authority under 37 C.F.R. § 4I.50(b), we reject independent claims 1, 6, and 11 under 35 U.S.C. § I02(a)(l) as being anticipated by Sherman (US 2008/0181154 Al, published July 31, 2008). Sherman discloses a device (see, e.g., Fig. 20: WLAN STA #4 on IBSS Network; Fig. 7: WLAN STA) for communicating wirelessly (see Fig. 20: WLAN means wireless local area network) in a network (Fig. 20: IBSS Network), the device (Fig. 7: WLAN STA), as well as a corresponding method and computer readable medium having executable instructions (see, e.g., ,r 59), comprising: 6 Appeal2018-002896 Application 13/948,634 a processor (Fig. 7: BASEBAND PROCESSOR/MAC 162), a memory (Fig. 7: MEMORY 160), and a radio (Fig. 7: RADIO 167), wherein the device is configured to wirelessly transmit a probe request (see ,r 119 explaining that ST A #4 transmits a probe request; see also ,r,r 94--95, explaining the details of the probe request) containing a first list of services being sought in a network (i-fi-f 94--95, explaining the probe request seeks a list of services supported by all stations in the IBSS network), the probe request having the first list of services being sought by the device (i-fi-f 94--95, explaining the probe request from the specific ST A may provide a requested list that seeks the stations in the IBSS network that support the services in the requested list); and receive a probe response responsive to the probe request (see ,r 119, explaining that STAs #1---#3 receive the STA #4's probe request and send a probe response, which ST A #4 will receive; see also ,r,r 96-97, explaining the details of the probe response), the probe response (see Figs. 15-16) consisting essentially of a second list of services that are both in the first list and available in the network (see Fig. 15: LIST OF STA SERVICES RECORDS 214, which is shown in further detail in Fig. 16: 220; see Fig. 16: STA SERVICES 230; see ,r,r 96-97, explaining the probe response includes records of the "network services IE" having ST A Services IE 230, which provides only the available services in the IBSS network that correspond to the requested list of services from the probe request); wherein the probe response (see ,r,r 96-97; see Figs. 15-16) further comprises a service identification (Fig. 16: STA Services IE 230) and Media Access Control (MAC) address (Fig. 16: STA MAC ADDRESS IE 222) of a provider of the services being sought (see ,r,r 94--97). 7 Appeal2018-002896 Application 13/948,634 Remaining claims Although we have rejected the independent claims under 37 C.F.R. § 41. 50(b ), we have not reviewed the remaining claims to the extent necessary to determine whether these claims are unpatentable under 35 U.S.C. §§ 102, 103. We leave it to the Examiner to determine the appropriateness of any further rejections based thereon. DECISION We reverse the Examiner's decision to reject claims 1--4, 6-9, and 11- 14 under 35 U.S.C. § 103 and we enter new grounds of rejection under 37 C.F.R. § 4I.50(b) for claims 1, 6, and 11. Claims 1, 6, and 11 are newly rejected under 35 U.S.C. § 102(a)(l) as being anticipated by Sherman. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 4I.50(b) also provides: When the Board enters such a non-final decision, Appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground[s] of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground[s] of rejection [are] binding upon the Examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the exammer, overcomes the new ground[s] of rejection 8 Appeal2018-002896 Application 13/948,634 designated in [this] decision. Should the examiner reject the claims, [ A ]ppellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. REVERSED; 37 C.F.R. § 4I.50(b) 9 Copy with citationCopy as parenthetical citation