Ex Parte Qiang et alDownload PDFPatent Trial and Appeal BoardJan 24, 201713508544 (P.T.A.B. Jan. 24, 2017) 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. 13/508,544 05/08/2012 Zu Qiang 3602-769 6676 6449 7590 01/26/2017 ROTHWELL, FIGG, ERNST & MANBECK, P.C. 607 14th Street, N.W. SUITE 800 WASHINGTON, DC 20005 EXAMINER OHRI, ROMANI ART UNIT PAPER NUMBER 2479 NOTIFICATION DATE DELIVERY MODE 01/26/2017 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): PTO-PAT-Email @rfem. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ZU QIANG and YONG YANG Appeal 2016-003263 Application 13/508,544 Technology Center 2400 Before KRISTEN L. DROESCH, CATHERINE SHIANG, and JAMES W. DEJMEK, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1—8, 10—23, 25—32, and 36, which are all the claims pending and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2016-003263 Application 13/508,544 STATEMENT OF THE CASE Introduction According to the Specification, the present invention relates to improving PMIP [Proxy Mobile Internet Protocol] protocol usage. See generally Spec. 1. Claim 1 is exemplary: 1. A method in a first network peer node for determining a Proxy Mobile Internet Protocol version 6 (PMIPv6) control plane used by a second network peer node, the first and second network peer nodes being in an Internet Protocol version 4 (IPv4) transport network, the method comprising: sending, to the second network peer node, a first communication message in a first control plane format, said first control plane format being one of: a control plane format according to Request For Comment (RFC) 5844 (RFC Control Plane Format) and a control plane format according to a draft of RFC 5844 (Draft RFC Control Plane Format); obtaining first information with respect to the first communication message, the first information indicating one of: 1) that the second network peer responded to the first communication message by transmitting a responsive communication message in said first control plane format and 2) that the second network node did not respond to the first communication message by transmitting a responsive communication message in said first control plane format; and determining, using said obtained first information, whether the second network peer node is: a) utilizing a first version of the PMIPv6 control plane or a second version of the PMIPv6 control plane or b) not utilizing either the first version or the second version of the PMIPv6 control plane, wherein the first version of the PMIPv6 control plane is a version corresponding to RFC 5844 and the second version of the PMIPv6 control plane is a version corresponding to a draft of RFC5844. 2 Appeal 2016-003263 Application 13/508,544 References and Rejections Claims 1—8, 10-23, 25—32, and 36 are rejected under 35 U.S.C. § 112, first paragraph for failing to comply with the written description requirement. Claims 1—8, 10-23, 25—32, and 36 are rejected under 35 U.S.C. § 112(b), second paragraph for being indefinite. Claims 1, 2, 8, 16, 17, and 23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Sarikaya (US 2009/0122750 Al; May 14, 2009), Jiang (US 2011/0222543 Al; Sept. 15, 2011) and Tremaine (US 2009/0323557 Al; Dec. 31, 2009). Claims 4—7, 15, 19-22, and 30 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Sarikaya, Jiang, Tremaine, 3GPP (3GPP TS 29.275 V9.1.0, 3rd Generation Partnership Project; Technical Specification Group Core Network and Terminals; Proxy Mobile IPv6 (PMIPv6) based Mobility and Tunnelling protocols; Stage 3 (Release 9) (2010)), and Melia (US 2012/0179803 Al; July 12, 2012). Claims 10-12, 14, 25—27, and 29 are rejected under 35 U.S.C. §103 (a) as being unpatentable over Sarikaya, Jiang, Tremaine, and Merlin (US 2012/0076073 Al; Mar. 29, 2012). Claims 13, 28, 31, and 32 are rejected under 35 U.S.C. § 103 (a) as being unpatentable over Sarikaya, Jiang, Tremaine, Merlin, and 3GPP. ANALYSIS 35 U.S.C. § 112, First paragraph To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that Appellants possessed the claimed 3 Appeal 2016-003263 Application 13/508,544 invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc). Specifically, the description must “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed” and the test requires an objective inquiry into the four comers of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed. Ariad Pharms., Inc., 598 F.3d at 1351 (internal quotations and citations omitted). The Examiner determines the limitation said first control plane format being one of: a control plane format according to Request For Comment (RFC) 5844 (RFC Control Plane Format) and a control plane format according to a draft of RFC 5844 (Draft RFC Control Plane Format); . . . wherein the first version of the PMIPv6 control plane is a version corresponding to RFC 5844 and the second version of the PMIPv6 control plane is a version corresponding to a draft of RFC5844 of claim 1 (and similarly claim 16) does not comply with the written description requirement. See Final Act. 2—3; Ans. 2—4. We agree with Appellants that the detailed descriptions from pages 5, 11, and 16 of the Specification would reasonably convey to skilled artisans that Appellants possessed the claimed invention. See App. Br. 9-13; Reply Br. 2—4. Specifically, we agree with Appellants that in the context of the Specification, the Specification’s reference to RFC (or PMIP RFC) means RFC5844, and the draft (or PMIP draft) means draft RFC5844. See App. Br. 9—13; Reply Br. 2—4. 4 Appeal 2016-003263 Application 13/508,544 Because the Examiner fails to provide sufficient evidence or explanation to support the rejection, we reverse the Examiner’s rejection of claims 1 and 16, and corresponding dependent claims 2—8, 10-15, 17—23, 25—32, and 36 under 35U.S.C. § 112, first paragraph. 35 U.S.C. § 112, Second paragraph Claims must “particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, second paragraph. [W]e read § 112,12 to require that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty. The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable. The standard we adopt accords with opinions of this Court stating that “the certainty which the law requires in patents is not greater than is reasonable, having regard to their subject-matter.” Nautilus, Inc. v. Biosig Instruments, Inc, 134 S.Ct. 2120, 2129 (2014) (citations omitted). First, with respect to claims 1 and 16, the Examiner determines the claim limitation said first control plane format being one of: a control plane format according to Request For Comment (RFC) 5844 (RFC Control Plane Format) and a control plane format according to a draft of RFC 5844 (Draft RFC Control Plane Format); . . . wherein the first version of the PMIPv6 control plane is a version corresponding to RFC 5844 and the second version of the PMIPv6 control plane is a version corresponding to a draft of RFC5844 5 Appeal 2016-003263 Application 13/508,544 does not comply with the statute, because it “does not limit to claiming specific features or difference between RFC 5844 and draft of RFC 5844 rather it’s claiming the RFC 5844 draft.” Final Act. 4; see also Ans. 5. We agree with Appellants that the Examiner erred, as the statute does not impose the requirement articulated by the Examiner. See App. Br. 14. Second, with respect to claim 4 (and similarly claims 7, 10, 19, 22, and 25), the Examiner determines “said second control plane format being one of: an RFC Control Plane Format and a Draft RFC Control Plane Format” does not comply with the statute, because it does not define the specific version of RFC. See Final Act. 5; see also Ans. 6—7. We agree with Appellants that the Examiner has erred, as the statute does not impose the requirement articulated by the Examiner. See App. Br. 14-15. Third, with respect to claim 36, the Examiner determines “wherein the draft of RFC 5844 is draft-ietf-netlmm-pmip6-ipv4-support-NN, wherein NN is less than 18” does not comply with the statute, because it does not define NN. See Final Act. 5; see also Ans. 7—8. We agree with Appellants that claim 36 defines NN as being “less than 18.” See App. Br. 15. Viewed in light of the Specification, the limitation informs one skilled in the art about the scope of the invention with reasonable certainty. See App. Br. 15. Fourth, with respect to claim 10, the Examiner determines “the second communication message is sent prior to obtaining said first 6 Appeal 2016-003263 Application 13/508,544 information” does not comply with the statute, because it is not clear. See Final Act. 5—6; see also Ans. 8—9. We agree with Appellants that the limitation is clear, and when viewed in light of the Specification, the limitation informs one skilled in the art about the scope of the invention with reasonable certainty. See App. Br. 15. Because the Examiner fails to provide sufficient evidence or explanation to support any of the rejections, we reverse the Examiner’s rejection of claims 1—8, 10-23, 25—32, and 36 under 35 U.S.C. § 112, second paragraph. Obviousness We have reviewed the Examiner’s rejection in light of Appellants’ contentions and the evidence of record. We concur with Appellants’ contention that the Examiner erred in finding Sarikaya and Jiang collectively teach determining, using said obtained first information, whether the second network peer node is: a) utilizing a first version of the PMIPv6 control plane or a second version of the PMTPv6 control plane or b) not utilizing either the first version or the second version of the PMIPv6 control plane, wherein the first version of the PMTPv6 control plane is a version corresponding to RFC 5844 and the second version of the PMIPv6 control plane is a version corresponding to a draft of RFC5844, as recited in claim 1.1 See App. Br. 16—17; Reply Br. 7—10. 1 Appellants raise additional arguments with respect to the obviousness rejections. Because the identified issue is dispositive of the appeal with respect to the obviousness rejections, we do not reach the additional arguments. 7 Appeal 2016-003263 Application 13/508,544 The Examiner cites Jiang’s Figure 6 and paragraphs 71, 74, 76, and 82 for teaching the disputed claim limitation. See Final Act. 7—8; Ans. 9—10. We have examined the cited Jiang portions, and they do not discuss RFC 5844, let alone determining, using said obtained first information, whether the second network peer node is: a) utilizing a first version of the PMIPv6 control plane or a second version of the PMTPv6 control plane or b) not utilizing either the first version or the second version of the PMIPv6 control plane, wherein the first version of the PMTPv6 control plane is a version corresponding to RFC 5844 and the second version of the PMIPv6 control plane is a version corresponding to a draft of RFC5844, as required by claim 1. See App. Br. 16—17; Reply Br. 7—10. Absent further explanation from the Examiner, we do not see how the cited Jiang portions teach the disputed claim limitation. The Examiner cites paragraph 8 of the Specification (Ans. 10), but that paragraph is a part of Appellants’ invention—not prior art—and cannot be relied on for the Examiner’s mapping. Because the Examiner fails to provide sufficient evidence or explanation to support the rejection, we are constrained by the record to reverse the Examiner’s rejection of claim 1, and claim 16 for similar reasons. We also reverse the Examiner’s rejection of corresponding dependent claims 2—8, 10-15, 17—23, 25—32, and 36. 8 Appeal 2016-003263 Application 13/508,544 DECISION We reverse the Examiner’s decision rejecting claims 1—8, 10—23, 25— 32, and 36. REVERSED 9 Copy with citationCopy as parenthetical citation