10171525 (B.P.A.I. May. 14, 2012)

Ex Parte Basilier et al

Board of Patent Appeals and InterferencesMay 14, 2012

10171525 (B.P.A.I. May. 14, 2012)

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. 10/171,525 06/12/2002 Henrik Basilier 4740-115 9768 24112 7590 05/14/2012 COATS & BENNETT, PLLC 1400 Crescent Green, Suite 300 Cary, NC 27518 EXAMINER LIN, KENNY S ART UNIT PAPER NUMBER 2478 MAIL DATE DELIVERY MODE 05/14/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte HENRIK BASILIER and ANDERS LUNDSTROM ____________________ Appeal 2010-001799 Application 10/171,525 Technology Center 2400 ____________________ Before HOWARD B. BLANKENSHIP, THU A. DANG, and CAROLYN D. THOMAS, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2010-001799 Application 10/171,525 2 I. STATEMENT OF THE CASE Appellants have filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(1) (hereinafter “Request”) on April 30, 2012 for reconsideration of our Decision mailed February 28, 2012 (hereinafter “Decision”) with respect to claims 1 and 9 (Request 2-4). The Decision affirmed the Examiner’s rejections of claims 1-8 as being directed to non-statutory subject matter under 35 U.S.C. § 101; of claims 1-5, 9-13, and 17-20 over Appellants’ Admitted Prior Art (AAPA) and Coppola under 35 U.S.C. § 103(a); and of claims 6-8 and 14-16 over AAPA, Coppola and Warrier (Decision 17) under 35 U.S.C. § 103(a). We have reconsidered our Decision of February 28, 2012 regarding the rejection of claims 1 and 9 over AAPA and Coppola (Request 2), in light of Appellants’ comments in the Request, and we find Appellants have not identified any points misapprehended or overlooked by the Board in our Decision therein. We decline to change our Decision for the reasons discussed infra. II. ISSUE The issue we address on this Request is whether Appellants have identified that the Board has misapplied the relevant law and misapprehended the Appellants’ argument by concluding that AAPA in view of Coppola would have at least suggested “an application layer” for “generating adaptation control directives associated with signaling messages” as recited in claim 1 and similarly recited in claim 9. Appeal 2010-001799 Application 10/171,525 3 III. ANALYSIS Appellants contend that “the decision of the Board rests on a clearly erroneous finding of fact regard the admitted prior art” because “the Board held that the admitted prior art discloses ‘an application layer containing an application for communicating with a remote device and for generating adaptation control directives associated with signaling messages…’” (Request 2). In particular, Appellants contend that “[a]s used in the claims, the phrase ‘wireless adaptation control directives’ refer to directives or instructions sent from an application layer above a session control protocol (SCP) layer to a wireless adaptation layer below the SCP layer” (id.). According to Appellants, “[t]he purpose of the wireless adaptation control directives is to control how associated signaling messages are transmitted over a wireless network” (id.). However, although Appellants contend that “[t]he purpose of the wireless adaptation control directives is to control how associated signaling messages are transmitted over a wireless network” (id.), such contention is not commensurate in scope with the recited language of the claims. That is, the claims do not define as to what “adaptation control directives” are to mean, include or represent, except that they are “associated with signaling messages” and are generated by the “application layer” (claim 1, and similarly recited claim 9). Accordingly, we gave “adaptation control directives” its broadest reasonable interpretation as commands or data generated by an application layer that is associated with signalling messages. Since an “application layer” is a layer that provides commands/data associated with communication/signalling messages, in our Decision we Appeal 2010-001799 Application 10/171,525 4 found AAPA to disclose “an application layer … for generating adaptation control directives associated with signaling messages” (Decision 11). As to Appellants’ argument that the claim requires that the “directives or instructions [be] sent from an application layer above a session control protocol (SCP) layer to a wireless adaptation layer below the SCP layer” (Request 2), as we noted in our Decision, “Appellants appear to be arguing that AAPA and Coppola individually do not anticipate the claimed invention” when “[t]he test for obviousness is not what each reference shows but what the combined teachings would have suggested to one of ordinary skill in the art” (Decision 13). As set forth in our Decision, “[w]e find Coppola discloses ‘a wireless adaptation layer [WAL] to control wireless communication resources’ responsive to commands or data, such as ‘wireless adaptation control directives’” (Decision 12). Accordingly, in our Decision, we agreed with the Examiner that “‘one of ordinary skill in the art would have known that … commands or data generated by applications/programs (i.e. from application layer) intended to control physical devices are encoded and passed down … to the physical device in the physical layer’” (id. (quoting Ans. 13)) and found that “it would have been obvious that commands or data, such as wireless adaptation control directives, from the application layer to the WAL would have passed through the SCP layer therebetween” (id.). That is, one of ordinary skill in the art would have found it obvious to apply AAPA’s application layer that provides directives relating to signaling messages to control Coppola’s WAL that determines how associated signaling messages are transmitted over the wireless network. Thus, in response to Appellants’ contention that “[t]he purpose of the wireless Appeal 2010-001799 Application 10/171,525 5 adaptation control directives is to control how associated signaling messages are transmitted over a wireless network” (Request 2), as set forth in our Decision, we found that AAPA in view of Coppola would have at least suggested such “adaptation control directives” (Decision 13). Accordingly, contrary to Appellants’ contention that “the decision of the Board rests on a clearly erroneous finding of fact regard the admitted prior art” (Request 2), we relied on the combined teachings and what the combination would have suggested, and we found no error in the Examiner’s conclusion of unpatentability of claims 1 and 9 over AAPA and Coppola (Decision 14-15). Thus, we do not agree that we misapplied the relevant law and misapprehended the Appellants’ argument by finding that AAPA in view of Coppola would have suggested “an application layer” for “generating adaptation control directives associated with signaling messages” as recited in claim 1 and similarly recited in claim 9. Accordingly, Appellants’ Request does not persuade us to modify our Decision. Therefore, we find Appellants’ argument unavailing. IV. CONCLUSION We have carefully considered the arguments raised by Appellants in the Request for Rehearing, but the argument is not persuasive that our original Decision was in error. We are still of the view that the invention set forth in claims 1 and 9 is unpatentable over the applied prior art based on the record before us in the original appeal. This Decision on Appellants’ Request for Rehearing is deemed to incorporate our earlier Decision (mailed February 28, 2012) by reference. See 37 C.F.R. § 41.52(a)(1). Appeal 2010-001799 Application 10/171,525 6 V. DECISION We have granted Appellants’ request to the extent that we have reconsidered our Decision of February 28, 2012, but we deny the request with respect to making any changes therein. REHEARING DENIED peb