Ex Parte Swaminathan et al

Patent Trial and Appeal Board

Jan 23, 2018

13777382 (P.T.A.B. Jan. 23, 2018)

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.
13/777,382 02/26/2013 Arvind Swaminathan 120870US 3937
15055 7590 01/25/2018
Patterson & Sheridan, L.L.P.
Qualcomm
24 Greenway Plaza, Suite 1600
Houston, TX 77046
EXAMINER
WONG, WARNER
ART UNIT PAPER NUMBER
2469
NOTIFICATION DATE DELIVERY MODE
01/25/2018 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):
qu alcomm @ pattersonsheridan .com
PAIR_eOfficeAction@pattersonsheridan.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARVIND SWAMINATHAN,
SRINIVASAN BALASUBRAMANIAN, and ROHIT TRIPATHI
Appeal 2017-001839
Application 13/777,382
Technology Center 2400
Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
KRISTEN L. DROESCH, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—6, 9—16, and 19—22. Claims 1—22 are all the claims pending in this
application. Claims 7, 8, 17, and 18 are objected to as being dependent upon
a rejected base claim. The Examiner indicates claims 7, 8, 17, and 18
“would be allowable if rewritten in independent form including all of the
limitations of the base claim and any intervening claims.” (Final Act. 8). In
the Advisory Action, mailed on April, 18, 2016 (after the Final Action), the
Examiner indicates the request for reconsideration has been considered but
does not place the application in condition for allowance. The Examiner
reaffirms the aforementioned status of the claims in the Advisory Action.
Appeal 2017-001839
Application 13/777,382
We have jurisdiction over rejected claims 1—6, 9-16, and 19—22 under
35 U.S.C. § 6(b).
We Affirm.
STATEMENT OF THE CASE
Introduction
Appellants’ invention “relates to wireless communications and, more
particularly, to techniques for identifying different groups of subscribers
accessing a network through a single entity, such as a software-enabled
access point (softAP).” (Spec. 11).
Representative Claim
1. A method for wireless communications, comprising:
establishing at least one wireless wide area network (WWAN)
connection for one or more wireless local area network
(WLAN) clients, wherein each WLAN client belongs to one of
a plurality of subscriber groups; and
[L] monitoring use of each WWAN connection for each
subscriber group of the plurality of subscriber groups.
(Contested limitation L emphasized).
Rejections
A. Claims 1—4, 9-14, and 19—22 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and
suggestions of Bhanage et al. (US 2013/0094486 Al, published Apr.
18, 2013) (hereinafter “Bhanage”) in view ofNavda et al. (US
2012/0026992 Al, published Feb. 2, 2012) (hereinafter “Navda”).
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B. Claims 5 and 15 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of
Bhanage, Navda, and Gundavelli et al. (US 2013/0223421 Al,
published Aug. 29, 2013) (hereinafter “Gundavelli”).
C. Claims 6 and 16 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of
Bhanage, Navda, and Spencer et al. (US 2012/0192258 Al, published
July 26, 2012) (hereinafter “Spencer”).
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv). We highlight and address specific findings
and arguments for emphasis in our analysis below.
Rejection A of Independent Claim 1 under § 103(a)
Issue: Under pre-AIA 35 U.S.C. § 103(a), did the Examiner err by
finding the cited combination of Bhanage and Navda teaches or suggests
contested limitation:
[L] monitoring use of each WWAN connection for each
subscriber group of the plurality of subscriber groups[,\
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within the meaning of representative claim l?1 (Emphasis added).2
Contested Limitation L — Representative Claim 1
In the Final Action (4), the Examiner finds the contested step L of
monitoring is taught or suggested by Bhanage flflf 38 and 43):
monitoring use of each WWAN connection for each subscriber
group of the plurality of subscriber groups (para. 43, monitoring
the UL air-time utilization of the slice used by each ISP,
identified by the slicelD, para. 38).
In the after-final Advisory Action (2) (mailed April 18, 2016), the
Examiner further explains the basis for the rejection of contested monitoring
step L:
On p. 7, it is understood by the Applicant that Bhanage
describes “monitoring the UL air-time utilization of the slice
used by each ISP”. In Bhanage para. 31, it further describes
“Different groups of users can have different slices”. Hence
for a wireless Internet Service Provider (ISP), which of course
is connected to internet, aka WAN, hence a WWAN
connection, equivalent to “each WWAN connection” in claim
1. Note that claim 1 limitation “at least 1 WWAN connection
for one or more WLAN clients” can require either one or more
WWAN connections.
1 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris, 111
F.3d 1048, 1054 (Fed. Cir. 1997). See Spec. 1 81 (“the disclosure is not
intended to be limited to the examples and designs described herein, but is to
be accorded the widest scope consistent with the principles and novel
features disclosed herein.”).
2 We note “WWAN” is an acronym for “Wireless Wide Area Network.”
“WLAN” is an acronym for “Wireless Local Area Network.”
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Para. 28-29 & fig. 1 of Bhanage clearly shows clients X-Cl &
X-C2 used the shared AP (ie. WLAN) to wirelessly connect to
the internet via ISP-X (ie. WWAN connection #1) using slice
(percentage) of shared AP usage, whereas other clients Y-Cl &
Y-C2 used shared AP (WLAN) to connect to ISP-Y (WWAN
connection #2) using another slice (percentage) of shared AP
usage.
The Examiner asserts that he does not need to interpret the
above argued claimed language as the example provided for
argument in p. 8, but rather more broadly as in the Office
Action. Furthermore, fig. 1 of Bhanage closely resemble that of
fig. 5 of application, also shown for argument on p. 8.
(emphasis added).
Regarding contested step L of claim 1, Appellants contend “the cited
passages, and Bhanage as a whole, are silent with regard to monitoring
use of a wide-area network connection for subscriber groups.” (App. Br.
8) (emphasis added). Referring to Bhanage’s Figure 1 and associated
description, Appellants acknowledge that “having a device served by an ISP
connect to a WFAN does imply that the device is connected via the WLAN
to a WAN (i.e., the Internet).” (App. Br. 9) (emphasis added). However,
Appellants urge that “monitoring usage of the WFAN side of the connection
is not equivalent to monitoring usage of the WAN side of the connection.”
(App. Br. 9) (emphasis added).
Appellant submits that, as pointed out by the Examiner,
Bhanage describes monitoring of a local-area network
connection for use by ISPs (see Bhanage, paras. [0021], [0031],
and [0043]). Bhanage, however, does not describe monitoring
use of a wide-area network, and certainly does not teach or
suggest “monitoring use of each WWAN connection for each
subscriber group of the plurality of subscriber groups” as
recited in claim 1 and similar subject matter in claims 11
and 21-22.
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(App. Br. 9).
The Examiner disagrees, and adopts a broader claim interpretation:
the above argued claim features “monitoring use of each
WWAN connection for each subscriber group of plurality of
subscriber groups” can be broadly interpreted as NOT how it is
being argued. The above argument in the Appeal inserted words
“side” such that it calls for monitoring AT the WLAN side as
opposed to the WWAN side, which is not interpreted this way.
Again, the Examiner interpreted above argued
claimed features as: monitoring use of each of plural WWAN
connections (= Internet Service Provider (ISP) X’s usage & ISP
Y’s usage) for each subscriber group of plurality of subscriber
groups (=individual ISPs each hav[ing] its own group of users).
This is very clearly expressed in Bhanage para. 30-31 and
the corresponding figure 1[.]
(Ans. 3) (emphasis added).
Thus, the Examiner adopts a broader claim interpretation of
“WWAN” (Wireless Wide-Area Network), as recited in original claim l.3
As correctly indicated by the Examiner (Ans. 3), claim 1 is silent regarding
the argued word “side.” See App. Br. 9. We further note claims 1—21 are
original claims (having no amendments). Only independent computer-
readable medium claim 22 was added by amendment.
Turning to the evidence, we reproduce Bhanage’s Figure 1 below
illustrating “a diagram of a single wireless access point emulating multiple
virtual access points for clients from different internet service providers
according to an embodiment of the invention.” (Bhanage 121).
3 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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Bhanage’s Figure 1 is depicted above.
Bhanage’s paragraph 29 provides a detailed description of Figure 1
depicted above:
Embodiments of the invention have a split access point
(SplitAP) architecture that employs wireless network
virtualization. FIG. 1 illustrates a diagram of a single wireless
access point emulating multiple virtual access points for clients
from different internet service providers according to an
embodiment of the invention. As shown in the diagram 100 of
FIG. 1, the AP 101 of an ISP-X and the AP 102 of an ISP-Y
can be combined into a shared AP 103 for both ISP-X and
ISP-Y using the SplitAP architecture in accordance with
embodiments of the invention.
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Bhanage’s paragraph 30 further describes Figure 1, in pertinent part:
As shown in FIG. 1, virtual access points supported by most
commodity AP hardware emulate the functionality of two
different physical APs (ISP-X, ISP-Y) with a single physical
AP, thus allowing use of the client MAC protocols and
hardware unchanged. Programmability is in the setup to
allowing a person deploying the hardware to allocate different
UL air-time quotas for each of the ISPs at the shared access
points. Isolation across groups of wireless users of the ISPs is
provided through air-time control at the clients based on the
information provided by the SplitAP controller running at the
AP.
Bhanage’s paragraph 31 (emphasis added) is also reproduced in
pertinent part below, explaining that within the Bhanage reference, the terms
“groups” or “slices” are used interchangeably:
The use of the phrase slice refers to the resources allocated to
that group of users belonging to a single ISP. Different
groups of users can have different slices. For example, the
slices can each have different bandwidth allocations. The terms
groups or slices will now be used interchangeably in further
discussion. SplitAP will enforce fairness in UL air-time usage
across slices, thus allowing individual ISPs to appropriately
share the underlying WLAN hardware and the corresponding
channel.
We note Bhanage’s paragraph 43 provides the only mention of
monitoring: “monitoring the current UL [(upload)] air-time utilization for
the slice, [(interchangeable with ‘group’ 131)] which is available through
the SplitAP client reports and appropriately controlling Cv/;«,//>” (emphasis
added).
In the Reply Brief (5) (emphasis added), Appellants direct our
attention to Figure 2 and paragraphs 35 and 36 of Bhanage, and contend:
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The shared AP has a connection port connected to a shared
backhaul to link all of the client groups (i.e., the clients) on the
shared AP to the shared backhaul (see Ibid.). Thus, the clients
monitor and report their uplink WLAN usage to the AP,
which monitors that WLAN usage and assigns slice weights
to the clients. However, neither the clients nor the AP monitor
the usage of the shared backhaul, which is the only WAN
connection shown in Bhanage.
Appellants further urge that “Appellants’] usage of the [(unclaimed])
word ‘side’ in the Appeal Brief is immaterial to the argument that Appellant
advances. Appellant’s argument is that while Bhanage describes
monitoring usage of WLAN connections for each ISP of a plurality of
ISPs, Bhanage is silent with regard to monitoring usage of a wide-area
network (WAN) connection or a wireless wide-area network (WWAN)
connection.” (Reply Br. 5) (emphasis added).
Regarding the secondary Navda reference, Appellants urge:
Navda does not remedy the deficiencies noted in Bhanage
above. Navda teaches using mobile devices and a cloud server
cooperatively to provide Internet access to client computing
devices (see Navda, Abstract). One client acts as a Wi-Fi access
point and manages striping of requests and responses, for
transmission via the mobile devices and delivery to the original
requester (Ibid.). However, Navda is silent regarding
monitoring of a wide-area network for usage.
(Reply Br. 5).
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We reproduce Figure 2 of Bhanage below, depiciting “a diagram
showing the functionalities of a single wireless access point emulating
multiple virtual access points and of a client according to an embodiment of
the invention.” (Bhanage 122).
Figure 2 of Bhanage is depicted above.
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Application 13/777,382
The Supreme Court guides that the ultimate issue of obviousness is a
question of law that turns upon four underlying factual determinations: (1)
the scope and content of the prior art, (2) the level of ordinary skill in the
art,4 (3) the differences between the claimed invention and the prior art, and
(4) objective indicia of nonobviousness. See Graham v. John Deere Co.,
383 U.S. 1, 17—18 (1966), as reaffirmed by KSR Int 7 Co. v. Teleflex Inc.,
550 U.S. 398, 406 (2007). In KSR, the Supreme Court further guides that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416.
We have addressed the first Graham factor above (“the scope and
content of the prior art”) regarding Bhanage. Regarding “the scope and
content” of the secondary Navda reference, the Examiner finds and
concludes:
Navda also describe[s] internet access by different clients
via an Wi-Fi access point, further describing:
AP establishing a WWAN (fig. 1 & abstract, para. 5 &
11, AP 100 connects to clients, enabling them internet access
via WWAN 112).
It would have been obvious to one with ordinary skill in
the art at the time of invention by applicant to specify that the
4 Regarding Graham factor two, in determining the level of skill in the art,
various factors may be considered, including “type of problems encountered
in the art; prior art solutions to those problems; rapidity with which
innovations are made; sophistication of the technology; and educational
level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579
(Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus.,
Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). Here, we find the ordinary level
of skill in the art at the time of Appellants’ invention would have been an
artisan possessing an undergraduate electrical or computer engineering
degree.
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Application 13/777,382
AP of Bhanges [sic] to be clearly connected to the internet by
use of a WWAN as in Navda.
The motivation for combining the teachings is that this
enables the advantage of implementing on-the-fly hotspot
(OWH) technique (para. 4-5).
(Final Act. 4) (emphasis added).
Navda’s Figure 1 is reproduced below “illustrating] an exemplary
embodiment, in simplified form, of an architectural framework for
implementing the OWH [(on-the-fly Wi-Fi hotspot 14)] technique.” Navda
115.
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Application 13/777,382
Navda (119) (emphasis added) describes figure 1 (depicted above), as
follows:
the tethered mobile devices 102 collectively serve as a WWAN
access gateway 130 (i.e., a gateway link that allows the Wi-Fi
AP client 100 and other clients 106 to access the cellular
WWAN 112, which subsequently serves as a gateway link to
the Internet 110). In other words, each mobile device 102 can
be used as a gateway which provides the Wi-Fi AP client 100
and other clients 106 with access to other computing devices on
the WWAN 112 including, but not limited to, the cloud server
104 which facilitates access to the Internet 110. The WWAN
access gateway 130 is hereafter simply referred to as a
“gateway.”
We observe Navda 150 monitors the energy use of each tethered
mobile device: “Upon the energy monitor which runs on each tethered
mobile device receiving the query over the WWAN (block 502), the energy
monitor responds by transmitting the residual battery life data for the device
to the cloud server over the WWAN (block 504).” (emphasis added).
In reviewing the record, we particularly note Appellants admit in the
Reply Brief (5) that in Bhanage, “the clients monitor and report their
uplink WLAN usage to the AP, which monitors that WLAN usage and
assigns slice weights to the clients.” (emphasis added).
Even assuming Appellants are correct that “neither the clients nor the
AP monitor the usage of the shared backhaul, which is the only WAN
connection shown in Bhanage” (Reply Br. 5; Bhanage Fig. 2), then the only
argued difference between Appellants’ representative claim 1 and Bhanage
is that the claimed monitoring is performed on a WWAN, instead of
monitoring a WLAN, as purportedly taught by Bhanage. (Graham factor (3)
— “the differences between the claimed invention and the prior art”).
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Thus, there are essentially two options, monitoring the WWAN or
monitoring the WLAN. We find both types of wireless networks are
familiar prior art elements, as evidenced by Navda (WWAN 1 6; Fig. 1,
WWAN 112) and Bhanage (WLAN 1 6).
Given the evidence cited by the Examiner (Final Act. 3—4), we find
this appeal and the legal conclusion of obviousness turn upon the question of
whether the claimed “improvement is more than the predictable use of prior
art elements according to their established functions.” KSR, 550 U.S. at 401.
Based upon the evidence relied upon by the Examiner (Final Act. 3—
4), we find Appellants’ claimed invention is simply a modification of
familiar prior art practices (as taught or suggested by the cited references)
that would have merely realized a predictable result. (Claim 1). The
Supreme Court guides that the conclusion of obviousness can be based on
the interrelated teachings of multiple patents, the effects of demands known
to the design community or present in the marketplace, and the background
knowledge possessed by a person having ordinary skill in the art. KSR, 550
U.S. at 418. The skilled artisan is “a person of ordinary creativity, not an
automaton.” Id. at 420—21.
Applying this guidance here, we find an artisan possessing an
ordinary level of skill (see n.4, supra) would have known that if you can
monitor a WLAN for groups of users or subscribers (Bhanage 143), you can
also monitor a WWAN (Navda WWAN 112, Fig. 1) in a similar fashion,
with predictable results — thus rendering the claimed invention
obvious. Moreover, where “the problem is known, the possible approaches
to solving the problem are known and finite, and the solution is predictable
through use of a known option,” a solution that is obvious to try may indeed
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be obvious. Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir.
2008), citing KSR, 550 U.S. at 421. Our reviewing court further guides that
a finding of obviousness under the “obvious to try” standard “does not
require absolute predictability of success ... all that is required is a
reasonable expectation of success.'1'’ In re Kubin, 561 F.3d 1351, 1360 (Fed.
Cir. 2009) (quotingIn re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988)).
See also Manual of Patent Examining Procedure (MPEP) § 2143(I)(E)
(“‘Obvious to try’— choosing from a finite number of identified, predictable
solutions, with a reasonable expectation of success”).
Appellants nevertheless urge “the Examiner has failed to provide
sufficient rationale for the purported combination.” (App. Br. 10).
However, Appellants do not point to any evidence of record that shows
combining the Bhanage and Navda references in the manner proffered by the
Examiner (Final Act. 4) would have been “uniquely challenging or difficult
for one of ordinary skill in the art” or would have “represented an unobvious
step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Nor do Appellants provide any objective evidence of secondary
considerations (e.g., unexpected results —Graham factor 4, objective indicia
of nonobviousness), which our reviewing court guides “operates as a
beneficial check on hindsight.” Cheese Systems, Inc. v. Tetra Pak Cheese
and Powder Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). We find
the Examiner (Final Act. 4) has set forth sufficient “articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). See also 35
U.S.C. § 132(a).
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For at least these reasons, and based upon a preponderance of the
evidence, we are not persuaded of error regarding the Examiner’s ultimate
legal conclusion of obviousness regarding contested limitation L of
representative claim 1. Therefore, we sustain rejection A under § 103 of
representative independent claim 1. Grouped claims 2—4, 9-14, and 19—22
(not separately argued) fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Rejection B Under § 103 of Dependent Claims 5 and 15
Appellants urge the tertiary Gundavelli reference fails to teach the
monitoring step that we have fully addressed above regarding the rejection
of claim 1 over the combined teachings and suggestions of Bhanage and
Navda. (App. Br. 11). Thus, Appellants do not advance separate,
substantive arguments for dependent claims 5 and 15, which were rejected
separately under § 103 rejection B. Therefore, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
Rejection C Under § 103 of Dependent Claims 6 and 16
Appellants submit that the tertiary Spencer reference “does not
remedy the deficiencies noted in Bhanage and Navda above.” (App. Br. 12).
However, we find no deficiencies regarding Bhanage and Navda for the
reasons discussed above regarding claim 1. Appellants do not advance
separate, substantive arguments for dependent claims 6 and 16, which were
rejected separately under § 103 rejection C. Therefore, such arguments are
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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Reply Brief
To the extent Appellants may advance new arguments in the Reply
Brief not in response to a shift in the Examiner’s position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief or are not responsive to arguments raised in the Examiner’s Answer
will not be considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
CONCLUSION
Based upon a preponderance of the evidence, and on this record, we
are not persuaded the Examiner erred in rejecting claims 1—6, 9-16, and
19-22 under pre-AIA 35 U.S.C. § 103(a), as being obvious over the
combined teachings and suggestions of the cited references.
DECISION
We affirm the Examiner’s decision rejecting claims 1—6, 9—16, and
19-22 under pre-AIA 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)(l)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED
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