Ex Parte Wong

Patent Trial and Appeal Board

Sep 22, 2016

13471207 (P.T.A.B. Sep. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/471,207 05/14/2012
74365 7590 09/26/2016
Slater Matsil, LLP
17950 Preston Road, Suite 1000
Dallas, TX 75252
FIRST NAMED INVENTOR
Marcus Wong
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.
HW 83438511US01 4522
EXAMINER
MALINOWSKI, WALTER J
ART UNIT PAPER NUMBER
2496
NOTIFICATION DATE DELIVERY MODE
09/26/2016 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):
uspatent@huawei.com
docketing@slatermatsil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCUS WONG
Appeal2015-005397 1
Application 13/471,207
Technology Center 2400
Before JOHNNY A. KUMAR, JOHN P. PINKERTON,
and SCOTT E. BAIN, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b).
We have reviewed Appellant's arguments in the Appeal Brief and
Reply Brief, and the Examiner's response to Appellant's arguments. We
concur with Appellant's contention the Examiner erred in rejecting
independent claims 1, 11, 18, and 24 under 35 U.S.C. § 103(a) because
Walker '705 2 does not teach or suggest "wherein an access point nonce is at
1 Appellant identify Futurewei Technologies, Inc. as the real party in
interest. App. Br. 2.
2 US 2004/0006705 Al; Jan. 8, 2004.
Appeal2015-005397
Application 13/471,207
least a portion of the system time," as recited in claim 1, and as similarly
recited in claims 11, 18, and 24. 3 App. Br. 8-18; Reply Br. 1-3.
Citing paragraph 8 of Walker '705, the Examiner finds Walker '705
teaches "[ t ]he access point (beacon initiator 1 Oc) may generate a beacon
with a beacon timestamp field containing a copy of the timer
synchronization function (TSP) 16 and nonce (N) 1 7." Ans. 5. The
Examiner also finds this teaching of Walker '705 "can be interpreted, under
Broadest Reasonable Interpretation as wherein the access point nonce is a
timestamp of the beacon or probe response, respectively." Id.
Although we agree with the Examiner that paragraph 8 of Walker
'705 teaches "[t ]he beacon initiator lOc [which may be an access point] may
generate a beacon with a beacon timestamp field containing a copy of the
timer synchronization function (TSP) 16 and nonce (N) 17," we do not agree
that this portion of Walker '705 teaches the disputed limitation.
First, the Examiner's position regarding the broadest reasonable
interpretation is misplaced. During examination, claim terms (not prior art
terms) are given their broadest reasonable interpretation consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369, (Fed.
Cir. 2004). Second, we agree with Appellant that "the beacon time stamp
field of Walker '705 is not a system time" as recited in the claims. App. Br.
9-10; Reply Br. 2. As Appellant argues, and we agree, paragraph 8 of
Walker '705 teaches the timer synchronization function TSP 16 "is a
common notation of time" and is most analogous to Appellant's claimed
system time. Id. Appellant further argues, and we agree, Walker does not
3 Although Appellant makes other arguments in the Briefs, we do not
address them because we find this issue is dispositive.
2
Appeal2015-005397
Application 13/471,207
teach or suggest that nonce 17 is at least a portion of TSP 16. App. Br. 1 O;
Reply Br. 2-3.
Accordingly, we agree with Appellant the Examiner's finding that
Walker '705 teaches the disputed limitation is in error because it is not
supported by a preponderance of the evidence. See In re Caveney, 761 F.2d
671, 674 (Fed. Cir. 1985) (Examiner's burden of proving non-patentability is
by a preponderance of the evidence); see also In re Warner, 379 F.2d 1011,
1017 (CCPA 1967) ("The Patent Office has the initial duty of supplying the
factual basis for its rejection. It may not, because it may doubt that the
invention is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.")
Thus, we do not sustain the rejection of claims 1, 11, 18, and 24. For
the same reasons, we do not sustain the rejection of claims 2-10, 12-17, 19-
23, and 25-28, which depend variously from claims 1, 11, 18, and 24 and
are not separately argued.
DECISION
We reverse the Examiner's decision rejecting claims 1-28.
REVERSED
3