Ex Parte ENOMOTO et al

Patent Trial and Appeal Board

Oct 5, 2018

14780267 (P.T.A.B. Oct. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/780,267 09/25/2015
2292 7590 10/10/2018
BIRCH STEW ART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
FALLS CHURCH, VA 22042-1248
FIRST NAMED INVENTOR
Masayuki ENOMOTO
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.
1152-0437PUS1 5867
EXAMINER
TRANDAI, CINDY HUYEN
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
10/10/2018 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASA YUKI ENOMOTO and
MASAFUMI ARAMOTO
Appeal2018-002405 1
Application 14/780,267
Technology Center 2600
Before CARLA M. KRIVAK, ADAM J. PYONIN, and
NABEEL U. KHAN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
decision of the Examiner rejecting pending claims 6, 7, 9--11, and 13. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 SHARP KABUSHIKI KAISHA is identified as the real party in interest.
App. Br. 1
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Application 14/780,267
STATEMENT OF THE CASE
Introduction
The Application is directed to providing "a mobile communication
system in which a communication source UE [(User Equipment)] efficiently
discovers a communication target UE and performs notification and a
mobile communication provider provides direct communication between the
UEs or to the UEs when data is transmitted and received in [proximity
services]." Spec. ,r 15.
Claims 6, 7, 9--11, and 13 are pending; of these, claims 6, 9, 10, and
13 are independent. App. Br. 3. Claim 6 is reproduced below for reference
(formatting and emphases added):
6. A User Equipment (UE) comprising: transmitting and
receiving circuitry that: 2
transmits, to a core network, a request message for
requesting authorization of establishment of a direct
communication path between the UE and a proximity UE,
wherein the proximity UE is positioned in proximity to the UE;
and
in response to the request message, receives,from the core
network, information indicating that the establishment of the
direct communication path has been authorized,
wherein the information includes at least an IP
address and frequency information,
wherein the IP address and the frequency
information are used for performing direct communication with
the proximity UE positioned in proximity to the UE,
2 In the event of further prosecution, the Examiner may wish to consider
whether the claim is indefinite for reciting a hybrid of system and method
limitations. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377,
1384 (Fed. Cir. 2005) (when a claim recites both a system and a method for
using that system, it may be unclear whether infringement occurs).
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Application 14/780,267
after the information including at least the IP address and
the frequency information is received, the UE initiates a
discovery procedure of the proximity UE, and
after the discovery procedure is completed, the UE
performs direct communication with the proximity UE using the
established direct communication path.
The Examiner's Rejection
Claims 6, 7, 9--11, and 13 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Montemurro (US 2011/0082939 Al; Apr. 7, 2011)
and Varoglu (US 2014/0219194 Al; Aug. 7, 2014). Final Act. 2.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. Arguments Appellants could have made but chose not to make
are deemed to be waived. See 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv). We are not
persuaded of reversible error; we adopt the Examiner's findings and
conclusions as our own, to the extent consistent with our analysis herein.
A. Points Raised in the Answer
Preliminarily, Appellants contend "the Examiner's Answer has
changed the basic thrust of the rejection, giv[ing] rise to a new ground of
rejection." Reply Br. 2 (quotations omitted). We note review of an
Examiner's failure to designate a rejection as a new ground is not an
appealable matter; rather, any request must be made by petition to the
Technology Center Director overseeing the Examiner's Art Unit. 37 C.F.R.
§ 4I.40(a). Appellants, furthermore, "respond[] to the undesignated new
grounds of rejection, in accord with 37 CPR 41.39, so that the Appeal may
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Application 14/780,267
proceed in consideration of Appellants' arguments with respect to the
undesignated new grounds." Reply Br. 2.
Thus, as this is a petitionable matter and not before us and Appellants
have addressed the "undesignated new grounds of rejection," we do not
reach the issue of whether the Examiner's Answer includes an undesignated
new grounds of rejection.
B. Authorization
Appellants argue the combination of Montemurro and Varoglu fails to
teach or suggest the claim limitation "in response to the request message,
receives, from the core network, information indicating that the
establishment of the direct communication path has been authorized." See
App. Br. 9. Particularly, Appellants contend "Montemurro provides no
means for per-device authorization (and thus power consumption efficiency)
of a direct communication path" (App. Br. 10) as "[ a ]n agreement to
connect, received by one wireless terminal from another wireless terminal, is
not authorization from a core network to establish a direct communication
path between a UE and a proximity UE as the present claims require" (Reply
Br. 5) ( emphasis omitted).
We are not persuaded the Examiner errs. Claim 6 recites that the UE
receives a notification from the core network, and this notification includes
information indicating the direct communication has been authorized. 3
Montemurro, similarly, teaches the UE will receive "a connect response
3 We note the Specification does not include the phrase "has been
authorized," however, the Specification does explain that the UE is notified
of "connection permission" to establish the direct communication. Spec.
,r 217 (cited in App. Br. 4).
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Application 14/780,267
message [] acknowledging the selected service types and agreeing to
connect" in order to establish a peer to peer connection (i.e., a direct
communication path). Montemurro 76; see also Final Act. 2-3;
Montemurro Fig. 6. Montemurro teaches that the connect response message
is received from the core network, in response to a connect request message.
See Montemurro Figs. 6, 14, 15; ,r,r 73, 76 ("using the control point[] as an
intermediary service for these messages"); Final Act. 2; see also
Montemurro ,r,r 48--49. Appellants do not persuade us the disputed claim
limitation is distinguishable from the teachings of Montemurro.
C. IP Address and Frequency Information
Appellants argue Varoglu "does not, even in combination with cited
elements of Montemurro, disclose or make obvious the claimed
communication of IP address and frequency information from a core
network to a UE" as claimed. App. Br. 12 (emphasis omitted). Particularly,
Appellants contend "it is not clear from the Office Action's citations to
Montemurro that advertisement of multiple stations' capabilities necessarily
includes an IP address, to say nothing of frequency information," and
"[f]requency information appears to be unnecessary to Varoglu's disclosure,
and thus cannot supplement Montemurro's deficiency." App. Br. 11
( emphasis omitted); see also Reply Br. 11-12.
We are not persuaded the Examiner errs. We note the Specification,
as cited by the Appellants for support of the disputed limitation, states the
"bearer ID or the IP address" is communicated to the UE; the frequency is
"used for the direct communication" but is not described as part of the
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indicated information. App. Br. 4 (citing Spec. ,r 225). 4 In any event,
Appellants' Specification describes the frequency information as referring to
the communication technology used for direct communication, such as Wi-
Fi or Long Term Evolution cellular (each of which is allocated a different set
of frequencies). See Spec. ,r 4.
Montemurro discloses that different communication technologies
(such as Wi-Fi or Bluetooth), and thus different frequencies, can be used in
the direct communication. See Montemurro ,r,r 61, 68. Montemurro also
discloses the authorization from the core network includes service type
information. See Montemurro Fig. 12; ,r 69. Thus, Montemurro teaches or
suggests the frequency information and IP address is to be communicated in
the authorization from the core network. See Montemurro Figs. 12, 14, 15,
,r,r 61, 69, 76; Final Act. 2-3; Ans. 7-8. Further, Varoglu, as relied on by
the Examiner, teaches "WiFi P2P such as Wi-Fi direct using one or more
WLAN radio frequency bands in accordance with a wireless P2P / direct
technology [par. 26] and there is an IP address for each radio frequency band
(Par. 30)." Ans. 8 (emphasis omitted); see also Varoglu ,r,r 31, 33. We
agree with the Examiner that transmitting frequency information and an IP
address in the authorization indication is obvious in view of the combined
teachings of the cited references. See Final Act. 3; In re Keller, 642 F.2d
413,425 (CCPA 1981) ("[T]he test [for obviousness] is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.").
4 In the event of further prosecution, the Examiner may wish to consider
whether the Specification provides written description support for the claim
requirement of "the information includes at least an IP address and
frequency information."
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D. Discovery Procedure
Appellants argue the combination of cited references fails to teach or
suggest the claim 6 limitation "after the information including at least the IP
address and the frequency information is received, the UE initiates a
discovery procedure of the proximity UE," because Montemurro' s
"discovery procedure happens before the broadcast of the station capabilities
advertisement 1208." App. Br. 13 (emphasis omitted). Particularly,
Appellants contend Montemurro teaches "the 'WLAN P2P SERVICE
DISCOVERY' step 1102 occurs before the wireless terminal 302a receives
information ( e.g., IP address and frequency information) rather than after, as
the claims require." Reply Br. 6 ( emphasis omitted).
Claim 6 is an open-ended claim reciting "comprising," so that other
elements may be added and still form a construct within the scope of the
claim. Thus, we do not find Montemurro' s teaching a discovery step before
the authorization to be indicative of Examiner error. See Spec. ,r 160;
Montemurro ,r 74. Rather, the Examiner cites to a later step of Montemurro
for teaching the recited discovery step. See Ans. 9--10 ("Montemurro
teaches ... after the information including at least the IP address and the
frequency information is received ... [to] begin association and wireless
provisioning service (WPS) negotiation communications."); Final Act. 3;
Montemurro ,r,r 70, 72, 78; see also Spec. ,r 226. Appellants do not show the
Examiner errs by relying on this later messaging step. See App. Br. 12-14;
Reply Br. 5-7. Accordingly, we are not persuaded of Examiner error.
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CONCLUSION
We sustain the Examiner's rejection of independent claim 6.
Appellants advance no further argument for independent claims 9, 10, or 13,
or claims 7 and 11 dependent therefrom. See App. Br. 14. Accordingly, we
sustain the Examiner's rejection of claims 6, 7, 9--11, and 13 for the same
reasons discussed above.
DECISION
The Examiner's decision rejecting claims 6, 7, 9-11, and 13 is
affirmed.
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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