Ex Parte Seelman et al

Patent Trial and Appeal Board

Sep 21, 2016

13332812 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/332,812 12/21/2011 George Seelman
34018 7590 09/23/2016
GREENBERG TRAURIG, LLP
77 WEST WACKER DRIVE
SUITE 3100
CHICAGO, IL 60601-1732
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.
81230.906US1 5598
EXAMINER
SOW A, TIMOTHY JOHN
ART UNIT PAPER NUMBER
2448
NOTIFICATION DATE DELIVERY MODE
09/23/2016 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):
j arosikg@gtlaw.com
chiipmail@gtlaw.com
escobedot@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE SEELMAN, MICHAEL LAMB,
MICHAEL BAILEY, and JAY STONE 1
Appeal2015-003373
Application 13/332,812
Technology Center 2400
Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-12. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify Ecolink Intelligent Technology, Inc. as the real party in
interest. Br. 3.
Appeal2015-003373
Application 13/332,812
STATEMENT OF THE CASE
Introduction
Appellants' invention is directed to "registering a remote network
device with a network control device." Abstract.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A method for registering a remote network device with a network
control device, comprising:
receiving a query from the network control device requesting
that the remote network device provide a network identification code
stored within the remote network device;
transmitting a response to the query after a time period has
expired, the response comprising the network identification code stored
within the remote network device;
determining whether an acknowledgement message has been
received from the network control device;
if the acknowledgement message has been received, setting a
J'lag l'Vithin the remote netl'Vork device indicating that the remote
network device has successfully registered with the network control
device; and
if the acknowledgment message has not been received, re-
sending the response to the network control device after a second time
period has elapsed.
The Examiner's Rejections
1. Claims 1, 4, 5, 8, 9, and 12 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Kadambi et al. (US 8,116,203 B2; Feb. 14,
2012 (filed May 31, 2007)) ("Kadambi"). Final Act. 5-11.
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Application 13/332,812
2. Claims 2, 6, and 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kadambi and Holeman, Sr. et al. (US 6,934,87 6 B 1;
Aug. 23, 2005) ("Holeman"). Final Act. 11-13.
3. Claims 3, 7, and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kadambi and Schlangen (US 2010/0125659 Al;
May 20, 2010). Final Act. 14--15.
Issues on Appeal
1. Did the Examiner err in finding the Virtual Channel request of
Kadambi discloses, inter alia, a request "that the remote network device
provide a network identification code stored within the remote network
device," as recited in claim 1?
2. Did the Examiner err in finding Kadambi discloses "setting a
flag within the remote network device indicating that the remote network
device has successfully registered with the network control device," as
recited in claim 1?
3. Did the Examiner err in finding the combination of Kadambi
and Holeman teaches or suggests "whether the remote network device has
previously registered with the network control device," as recited in claim 2?
ANALYSIS2
Claims 1, 3-5, 7-9, 11, and 12
Appellants contend Kadambi fails to disclose a network control
device requesting that the remote network device provide a network
2 Throughout this Decision, we have considered the Appeal Brief, filed
July 24, 2014 ("Br."); the Examiner's Answer, mailed on November 13,
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Application 13/332,812
identification code. Br. 7-8. In particular, Appellants assert Kadambi
discloses a Virtual Channel (VC) protocol wherein a local device sends a
VC REQUEST to a remote device. Br. 7. Appellants argue this request is
used to determine whether the remote device is VC compliant. Br. 7.
Further, Appellants argue, the VC REQUEST of Kadambi does not
specifically instruct a remote device to provide a network identification code
of any kind. Br. 7. Additionally, Appellants contend the remote device in
Kadambi does not provide a network identification code in response to the
VC REQUEST. Br. 8. Instead, Appellants assert, Kadambi returns a source
address (SA) field, which identifies a particular remote device on the
network, rather than returning a network identification code (which
identifies a particular network-not a particular device). Br. 7-8.
In rejecting claim 1, the Examiner finds, inter alia, Kadambi discloses
receiving a query from a network control device requesting that a remote
network device provide a network identification code stored within the
remote network device. Final Act. 5 (citing Kadambi, col. 6, 11. 43-59;
col. 7, 11. 52---61; and Figure 4); see also Ans. 12-13. Kadambi is generally
directed to establishing a virtual channel between a local network device and
a remote network device. Kadambi Abstract. Kadambi discloses "[i]n order
for VC functionality to be enabled, the VC Handshake may be initiated from
both link partners. Each device that is capable of generating VC frames may
initiate a VC Handshake by sending a VC REQUEST frame." Kadambi,
col. 6, 11. 37--41.
2014 ("Ans."); and the Final Office Action ("Final Act."), mailed on
October 30, 2013, from which this Appeal is taken.
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Application 13/332,812
Figure 4 of Kadambi, as identified by the Examiner (see, e.g., Final
Act. 5-6), is illustrative and is reproduced below:
LOCAL LINK
DEVICE "A"
Sends VC Request
Sends VC RESUME
+ local Device
CapabiHty Ust
Local Enables
VC Mode
Fig. 4
REMOTE LINK
DEVICE "B"
Sends VC ACK +
Remote Devlce
Capability list
Remote Enables
VC Mode
Fi!.mre 4 illustrates the VC three-wav handshake nrocess accordirn.! to
'-' el _._ '-'
an embodiment of Kadambi. Kadambi, col. 4, 1. 35. As shown in Figure 4,
a Local Link Device A (i.e., the claimed network control device) sends a
request to Remote Link Device B (i.e., the claimed remote network device.)
The Examiner finds, and we agree, as part of the VC Handshake protocol of
Kadambi, the remote device responds to the VC REQUEST from a local
device with an acknowledgement (VC ACK) comprising a source address
(SA) of the remote device. Ans. 13 (citing Kadambi, col. 6, 11. 43-59, col. 7,
11. 52---61 ). The Examiner further finds, and we agree, the source address
corresponds to the claimed network identification code. Ans. 13. Thus, we
agree with the Examiner that Kadambi discloses a remote network device
receiving a request from a local link device (i.e., network control device)
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Application 13/332,812
requesting, inter alia, that the remote network device provide a network
identification code stored within the remote network device (i.e., the source
address).
Regarding Appellants' argument that the source address identifies a
particular device, rather than a particular network (see Br. 7-8), we are
unpersuaded of Examiner error. As the Examiner explains, the
embodiments in Appellants' Specification that involve the use of a network
identification code are non-limiting. Ans. 13 (citing Spec. i-fi-158, 158). The
Examiner finds "[ t ]he broadest reasonable interpretation of 'network
identification code,' therefore, is not necessarily restricted exclusively to
identifying a network or sub-network." Id.; see also In re Am. A cad. of Sci.
Tech. Ctr., 367 F. 3d 1359, 1364 (Fed. Cir. 2004) quoting In re Bass, 314
F.3d 575, 577 (Fed. Cir. 2002) ("'[T]he PTO must apply the broadest
reasonable meaning to the claim language, taking into account any
definitions presented in the specification."').
As Appellants concede, the source address in Kadambi is an IP
address. Br. 8. The Examiner finds, and we agree, in addition to identifying
a particular device, an IP address also identifies the network and sub-
network with which a network device is connected. Ans. 14 (citing Mogul
et al., RFC 950, Internet Standard Subnetting Procedure, 1985, available at
www.rfc-editor.org/rf c/rf c950.txt) (describing an IP address format as:
). Accordingly, we
agree with the Examiner that the source address of Kadambi provides
network identification information (i.e., the claimed network identification
code). See Ans. 14.
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Additionally, Appellants argue Kadambi discloses a connection by a
remote device with a local device, but that a connection is different from the
claimed registration of the remote device with the local device. Br. 8; see
also Final Act. 6. Further, Appellants dispute the Examiner's finding that
Kadambi discloses registration with a network control device by use of the
VC handshake process. Br. 8. Instead, Appellants assert, "[t]he VC
handshake is simply a protocol that allows network devices to determine
whether another network device is 'VC capable."' Br. 8. By contrast,
registration "infers recognition by a network control device of a remote
network device via a previous-performed registration process." Br. 8-9.
Appellants conclude, therefore, Kadambi fails to disclose "setting a flag
within the remote network device indicating that the remote network device
has successfully registered with the network control device," as recited in
claim 1. Br. 8.
Contrary to Appellants' arguments, the Examiner finds "the claimed
invention speaks entirely in the same terms as disclosed by Kadambi.
Namely, registration involves one device requesting identification from
another device, such identification being provided, and acknowledgement of
the reception of the identification being provided in return." Ans. 15. Thus,
the Examiner finds Kadambi's "'VC Functionality Enabled' register, once
set, is just another way of saying that successful registration has occurred."
Id. (citing Kadambi, col. 9, 11. 23-57).
Generally, Appellants' claim 1 provides for a method of registering a
remote network device comprising: (i) receiving a query to provide a
network identification code; (ii) transmitting a response to the query
comprising the network identification code; and (iii) if an acknowledgement
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has been received, setting a flag indicating successful registration. We agree
with the Examiner's findings that Kadambi' s VC handshake process
discloses a method for registering comprising the receiving, transmitting,
and determining method-steps of claim 1. Final Act. 5---6 (citing Kadambi,
col. 1, 1. 60-col. 2, 1. 2; col. 6, 11. 29-34, 43-59; col. 7, 11. 52---col. 8, 1. 4;
Figures 4---6). In the absence of sufficient evidence or technical reasoning in
rebuttal, and the lack of a relevant limiting definition in Appellants'
Specification of the term registration, the Examiner broadly but reasonably
construes registration, consistent with the Specification, to encompass and
be disclosed by Kadambi's VC handshake process. See Brookhill-Wilk 1,
LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (the
meaning of a claim term may be determined by reviewing a variety of
sources including the claims themselves). Therefore, we are not persuaded
the Examiner erred by finding registration is disclosed by Kadambi' s VC
handshake process.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of independent
claim 1under35 U.S.C. § 102(b) and, for similar reasons, the rejection of
independent claims 5 and 9, which recite similar limitations and were not
argued separately. Additionally, we sustain the Examiner's rejections of
dependent claims 4, 8, and 12 under 35 U.S.C. § 102(b) and dependent
claims 3, 7, and 11 under 35 U.S.C. § 103(a), which were not argued
separately. See Br. 7-10.
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Claims 2, 6, and 10
Claim 2 depends from claim 1 and recites "determining whether the
remote network device has previously registered with the network control
device; and proceeding to transmit the response only if the remote network
device has not previously registered with the network control device."
Appellants contend Holeman teaches a "determination of whether a
registration process has been completed as a present registration process"
rather than whether a remote device has been previously registered, as
recited in claim 2. Br. 10. Further, Appellants argue the cited portion of
Holeman fails to teach a remote node that only responds to a registration
request if it has not previously registered. Br. 10. Appellants contend the
cited portion of Holeman merely describes how a remote node acts during
the registration process. Br. 10.
As an initial matter, we note that claim 2 recites a conditional
limitation-i.e., transmitting a response only if the remote device has not
previously registered with the network control device. Conditional steps
employed in a method claim need not be found in the prior art if, under the
broadest reasonable construction, the method need not invoke the steps. See
Ex parte Katz, 2010-006083, 2011 WL 514314, at *4 (BP AI 2011) (non-
precedential) (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004)). See also Cybersettle, Inc. v. Nat'l Arbitration Forum,
Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007) (unpublished) ("It is of
course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be
performed."). Accordingly, transmitting the response only if the remote
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network device has not previously registered with the network control
device need not be performed or taught by the prior art in the obviousness
analysis.
Nonetheless, the Examiner finds Holeman teaches both steps of claim
2. In particular, the Examiner explains Holeman discusses registration in the
past tense (similar to Appellants' claim language) and "states that the remote
node detects when it already has been registered with a network control
device." Ans. 16 (citing Holeman, col. 13, 11. 13-26). In particular, the
Examiner finds Holeman teaches determining whether the device has
previously registered with a network control device. Ans. 16 (citing
Holeman, col. 13, 11. 13-26 ("If remote node 106 determines that the
identifier information is processed, remote node 106 considers itself to be
identified by, and registered with base node 102 at step 514 and exits the
registration process.")). The Examiner explains Appellants' claim language
does not otherwise limit itself beyond a "registration that already has
occurred previously." Ans. 16. Accordingly, the Examiner determines
Holeman teaches determining whether the remote device has been
registered. Further, the Examiner finds if the remote device has not been
registered, Holeman teaches transmitting its response (i.e., identifier).
Ans. 16 (citing Holeman, col. 13, 11. 13-26, col. 14, 11. 26-35).
We are unpersuaded of Examiner error. As the Examiner finds,
Holeman's step of determining whether the remote node considers itself
registered the base node suggests determining whether a remote network
device processed the identifier information (the claimed "previously
registered") with a network control device, as recited in claim 2.
Additionally, as the Examiner explains, Holeman teaches exiting the
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registration process if the remote device has been registered (i.e., not
transmitting the response) and transmitting the response only when the
remote device has not registered. Ans. 16 (citing Holeman, col. 13, 13-26,
col. 14, 11. 26-35). Appellants do not persuasively rebut the Examiner's
findings.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of claim 2 under 35
U.S.C. § 103(a) and, for similar reasons, the rejection of claims 6 and 10,
which recite similar limitations and which were not argued separately. See
Br. 9-10.
DECISION
We affirm the Examiner's decision to reject claims 1-12.
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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