Ex Parte Jiang et al

Board of Patent Appeals and Interferences

May 1, 2007

10699452 (B.P.A.I. May. 1, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte FRANCES JIANG, GOPAL KUMAR, APARAJITA MISRA, and
GANAPATHY SUNDARAM
____________________

Appeal 2007-0036
Application 10/699,452
Technology Center 2600
____________________

Decided: May 1, 2007
____________________

Before: HOWARD B. BLANKENSHIP, JAY P. LUCAS, and MARC S.
HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection
of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
Appellants’ invention relates to a method of indicating to a wireless
data communication service subscriber the time delay associated with
gaining access to the wireless network.
Appeal 2007-0036
Application 10/699,452

An understanding of the invention can be derived from a reading of
exemplary independent claim 1, which is reproduced below:
1. A method of communication comprising:
in response to a request for service, transmitting at least one
message comprising existing delay information corresponding
with an estimated delay length associated with accessing the
service through an open loop network.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ament US 2004/0105436 A1 Jun. 3, 2004
Buford US 5,945,948 Aug. 31, 1999
Bender US 6,366,779 B1 Apr. 2, 2002

The rejections as presented by the Examiner are as follows:
1. Claims 1, 2, 5-11, and 14-17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ament and Bender.
2. Claims 3, 4, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ament, Bender, and Buford.
Appellants contend that the claimed subject matter would not have
been obvious. The Examiner contends that each of the two groups is
properly rejected.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this decision. Arguments that Appellants could have made but chose not to
2
Appeal 2007-0036
Application 10/699,452

make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2004).1
We affirm.
ISSUES
Have Appellants shown that the Examiner has failed to establish a
prima facie case of obviousness, because no reference of record teaches
transmitting delay information “corresponding with an estimated delay
length” as required by independent claims 1 and 10?
Have Appellants shown that the Examiner has failed to establish a
prima facie case of obviousness, because no reference of record teaches that
the estimated delay length comprises at least one time interval between a
first instant corresponding with a received autonomous service request
generated at a predefined moment in time and a second instant
corresponding with granting service access, as required by dependent claims
3 and 12?
Have Appellants shown that the Examiner has failed to establish a
prima facie case of obviousness, because no reference of record teaches that
the predefined moment in time comprises at least one of a periodic and an
aperiodic instant, as required by dependent claims 4 and 13?

1 Appellants have not presented any substantive arguments directed
separately to the patentability of the dependent claims or related claims in
each group, except as will be noted in this opinion. In the absence of a
separate argument with respect to those claims, they stand or fall with the
representative independent claim. See In re Young, 927 F.2d 588, 590, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991). See also 37 C.F.R. § 41.37(c)(1)(vii).

3
Appeal 2007-0036
Application 10/699,452

FINDINGS OF FACT
Appellants invented a method of indicating a delay to a subscriber
seeking to gain network access (Specification 4: 7-8).
The method calls for transmitting at least one message comprising
existing delay information corresponding with an estimated delay length
associated with accessing the (network) service through an open loop
network (Specification 9: 3-4, 17-23; Fig. 3).
The estimated delay length may comprise at least one time interval
between a first instant corresponding with a received autonomous service
request generated at a predefined moment in time and a second instant
corresponding with granting service access (Specification 7: 16-18).
The predefined moment in time comprises at least one of a periodic
and an aperiodic instant (Specification 7: 18-19).
Ament describes a system and method for controlling the service
engagement in a data bus system that transmits at least one message
comprising existing delay information corresponding with a delay length
associated with accessing the (network) service (para. [0043]).
Ament teaches a delay length comprising a time interval between a
first instant corresponding with a received service request and a second
instant corresponding with granting service access (para. [0043]).
Bender teaches a method and apparatus for rapid assignment of a
traffic channel in digital cellular communication systems, including
accessing a service through an open loop network (col. 1, ll. 42-44; col. 2, ll.
59-61; col. 4, ll. 24-28).
4
Appeal 2007-0036
Application 10/699,452

Buford teaches an autonomous service request generated at a
predefined moment in time, the predefined moment in time comprising a
“periodic instant” (col. 17, ll. 63-65). Buford teaches sending successive
requests with a “given time” between each one (col. 17, l. 65).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See
also In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984). The Examiner can satisfy this burden by showing that some
objective teaching in the prior art or knowledge generally available to one of
ordinary skill in the art suggests the claimed subject matter. In re Fine, 837
F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if this initial
burden is met does the burden of coming forward with evidence or argument
shift to the Appellants. Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See
also Piasecki, 745 F.2d at 1472, 223 USPQ at 788. Thus, the Examiner
must not only assure that the requisite findings are made, based on evidence
of record, but must also explain the reasoning by which the findings are
deemed to support the Examiner’s conclusion.
Our reviewing court states that “claims must be interpreted as broadly
as their terms reasonably allow.” In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989). Our reviewing court further states that “the
words of a claim ‘are generally given their ordinary and customary
meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312, 75 USPQ2d 1321,
1326 (Fed. Cir. 2005) (en banc)(internal citations omitted). The “ordinary
5
Appeal 2007-0036
Application 10/699,452

and customary meaning of a claim term is the meaning that the term would
have to a person of ordinary skill in the art in question at the time of the
invention, i.e., as of the effective filing date of the patent application.” Id. at
1313, 75 USPQ2d at 1326. The description in the specification can limit the
apparent breadth of a claim in two instances: (1) where the specification
reveals a special definition given to a claim term by the patentee that differs
from the meaning it would otherwise possess; and (2), where the
specification reveals an intentional disclaimer, or disavowal, of claim scope
by the inventor. Id. at 1316, 75 USPQ2d at 1329.
References within the statutory terms of 35 U.S.C. § 102 qualify as
prior art for an obviousness determination only when analogous to the
claimed invention. In re Clay, 966 F.2d 656, 658, 23 USPQ2d 1058, 1060
(Fed. Cir. 1992). Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
inventor's endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved. In re Deminski, 796
F.2d 436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986); see also In re Wood,
599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979) and In re Bigio,
381 F.3d 1320, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004).

ANALYSIS
The Examiner correctly shows where all the elements of claim 1
appear in the Ament and Bender prior art references. Ament does not
explicitly characterize the “waiting time” for a service (para. [0043]) as an
6
Appeal 2007-0036
Application 10/699,452

estimate. It is noted, however, that Appellants’ Specification also fails to
explicitly disclose the concept of an “estimated” delay length2, but rather
discusses delay as a “value to be expected by a subscriber” (Specification 9:
19-20)(emphasis added) and that such expected delay “might be modeled
using a delay distribution algorithm” (Specification 9: 21-22). The
Specification does not provide any special definition for the term
“estimated.” The Examiner explains that “the time to accomplish a
communication service can vary based on the communication conditions,
which can alter the throughput i.e. the more interference, the less the
throughput and therefore, the waiting time is an estimate.” (Answer 6: 3-6).
We agree with the Examiner that the variability of communication
conditions means that any delay length figure computed based on prior or
current communications is necessarily only an estimate of the delay length to
be expected prospectively. As a result, we agree with the Examiner that
Ament teaches transmitting a message containing “estimated” delay
information, as the term is commonly understood.
As conceded by the Examiner, Ament does not teach accessing a
service through an open loop network. Bender so teaches (col. 1, ll. 42-44;
col. 2, ll. 59-61; col. 4, ll. 24-28), and suggests that doing so enables the
rapid assignment of traffic channels (col. 4, l. 15).
Appellants assert that “the disclosures of the Ament and Bender
references are considerably different” (Br. 13: 13) and that they “were not
intended to be modified or combined, in a manner, as suggested by the

2 The word “estimated” does not appear in the text of the Specification. It
only appears in Figure 3 as the subscript of the term “Destimate.” It is further
noted that the details of Figure 3 are not explained in the Specification.
7
Appeal 2007-0036
Application 10/699,452

Examiner” (Br. 13: 14-15). Taking these assertions as an argument that
Ament and Bender constitute nonanalogous prior art, we find the argument
unpersuasive. Ament is directed to controlling service engagements for data
bus users, in order to control a large number of services and large volumes
of data (para. [0003]); Bender is directed to rapidly assigning traffic
channels to a plurality of mobile stations in a wide area high-speed packet
data cellular communication system (Abstract, lines 1-3). Appellants’
invention is directed to wireless (“cellular”) data communication, and
Appellants recognize that access delays for such communication are
undesirable (Specification 3: 24-29). It is clear that (at minimum) both
Ament and Bender are reasonably pertinent to the problem with which
Appellants are involved, i.e. the transmission of large amounts of data at
high rates and in a highly efficient manner, without undue delay.
With regard to claims 3 and 12, the Examiner concedes that Ament
does not teach a delay length comprising a time interval between a first
instant corresponding with a received autonomous service request generated
at a predefined moment in time, and a second instant corresponding with
granting service access. Buford teaches sending access requests, with a
given time between attempts (col. 17, ll. 64-65), and suggests that doing so
helps measure the signal from a subscriber unit (col. 18, ll. 3-5) and improve
the location estimate of a subscriber unit (col. 17, ll. 45-47). The access
requests of Buford are generated at a “predefined” moment in time, within
the common meaning of the term “predefined,” in that the phrase “given
time between attempts” means that the time of the succeeding attempt is
“predefined” once the preceding attempt has occurred. Appellants’ argument
8
Appeal 2007-0036
Application 10/699,452

that “predefined moment in time” must refer to a “certain defined instant of
absolute time rather than a relative time” (Br. 15: 1-2) is not supported by
the specification, which does not specify either absolute or relative time
(Specification 7: 16-18).
With regard to claims 4 and 13, Buford teaches that the predefined
moment in time comprises a “periodic instant” (col. 17, l. 65). Appellants
argue that Buford is silent with regard to periodic and/or aperiodic instants
of time (Br. 15: 17). Appellants’ Specification, however, offers no special
definition of “periodic instant” or “aperiodic instant.” As noted above,
Buford teaches sending access requests with a given time between attempts.
We understand “given time” to mean that the same amount of time passes
between each successive attempt, i.e. that requests occur at a periodic
interval.
Appellants further allege that Buford teaches away from the
Examiner’s proposed modification of the prior art, in that Buford “appears to
teach away from defined instants of time” (Br. 15: 22-23)(emphasis
original). In the absence of any special definition of the term “instant,” or
any further explanation of the reasons Buford is alleged to teach away from
the proposed modification, we are unpersuaded by Appellants’ statement.
9
Appeal 2007-0036
Application 10/699,452

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1-17. The rejection of those
claims is affirmed.

DECISION
The Examiner's rejection of claims 1-17 is Affirmed.
10
Appeal 2007-0036
Application 10/699,452

AFFIRMED

ELD

WILLIAMS, MORGAN & AMERSON
10333 RICHMOND, SUITE 1100
HOUSTON TX 77042
11