Ex Parte Joseph et al

Patent Trial and Appeal Board

Sep 28, 2017

12911707 (P.T.A.B. Sep. 28, 2017)

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.
12/911,707 10/25/2010 Dinakaran Joseph RSW920060186US2
(264DIV)
1733
46320 7590
CRGO LAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
EXAMINER
HUYNH, KHOA B
ART UNIT PAPER NUMBER
2462
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DINAKARAN JOSEPH, JON K. FRANKS,
CHRISTOPHER N. FREEMAN, SIVARAM GOTTIMUKKALA,
JASON P. HAWRYSZ, LAP T. HUYNH, and BARRY MOSAKOWSKI
Appeal 2016-005039
Application 12/911,707
Technology Center 2400
Before JOHN P. PINKERTON, CARL L. SILVERMAN and
KAMRAN JIVANI, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Pursuant to Appellants’ Request for Rehearing (“Request” or “Req.
Reh’g”) under 37 C.F.R. § 41.52(a)(1), Appellants request a rehearing of our
Decision of March 21, 2017 (“Decision” or “Dec.”) in which we (1)
affirmed the Examiner’s rejection of claims 4, 5, and 7 on the ground of
nonstatutory obviousness-type double patenting, (2) affirmed the Examiner’s
rejection of claims 4 and 5 for failing to comply with the written description
requirement under 35U.S.C. § 112, first paragraph, and (3) reversed the
Examiner’s rejection of claims 4, 5, and 7 under 35 U.S.C. § 103(a).
Appeal 2016-005039
Application 12/911,707
INTRODUCTION
Appellants assert that in finding “there is no disclosure within the four
comers of Appellants’ specification that the IP network shown in Figure 1 is
a terrestrial network,” the Board “overlooked the broader argument of
Appellants at pages 4 and 5 of the Appeal Brief that the art of record
demonstrates that an IP network may be a ‘terrestrial network’ and that
Appellants’ disclosure clearly shows an IP network.” Req. Reh’g 2—3.
After quoting the referenced paragraph at pages 4—5 of the Appeal Brief,
Appellants argue the Board does not appear to have considered the teachings
of Figure 1 in connection with the Rest reference. Id. at 3. Appellants also
argue that “in view of the teachings of Rest and those of Figure 1 of
Appellants’ specification ... a terrestrial network is taught by Appellants’
specification even though Appellants’ specification does not state that the IP
network shown in Figure 1 is a terrestrial network.” Id. at 3^4. Appellants
further argue it is the ‘“teachings’ of a specification that ‘count,’” and “it is
further the opinion of the Appellants that a ‘terrestrial network’ is taught by
Figure 1 of Appellants’ specification as evidenced by the teaching of the art
of record that an IP network may be a terrestrial network.” Id. at 4.
ANALYSIS
We are not persuaded by Appellants’ arguments. First, what
Appellants refer to as the “broader argument”—that the art of record
demonstrates that an IP network may be a “terrestrial network” and that
Appellants’ disclosure clearly shows an IP network—was not overlooked.
To the contrary, the argument was specifically mentioned on both pages 4
and 5 of the Decision. In particular, on page 4 of the Decision, the argument
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Appeal 2016-005039
Application 12/911,707
was paraphrased by stating “Appellants also argue paragraph 101 of Rest
teaches an IP network can be a terrestrial network, as shown in Figure 1 of
the Specification.”
Second, although we agree with Appellants’ argument that it is the
‘“teachings’ of a specification that ‘count’” with respect to the written
description requirement of § 112, first paragraph, the argument is not
persuasive here because, as we found in the Decision, “there is no disclosure
within the four comers of Appellants’ Specification that the IP network
shown in Figure 1 is a terrestrial network.” Dec. 5. Paragraph 15 of
Appellants’ Specification describes Figure 1 as a schematic illustration of a
heterogeneous network that can include “an IP network 110” and “an SNA
network 120.” As Appellants’ acknowledge, “Appellants’ specification does
not state that the IP network shown in Figure 1 is a terrestrial network.”
Req. Reh’g 3^4. Furthermore, Appellants’ evidence that “an IP network
may be a terrestrial network” is not in the Specification, but in the Rest
reference. See Rest 1101.
Third, Appellants have not cited any authority to support their
argument that the disclosure in the prior art Rest reference that an IP
network “may be” a terrestrial network can provide written description
support for Appellants’ claimed “first and second different terrestrial
communications networks of differing terrestrial network types,” as recited
in claim 4.1 See App. Br. 10 (Claims App’x). We are also not aware of any
such authority.
1 We note originally filed claim 4 recited “first and second different
communications networks of differing network types.” See Spec. 15.
Pursuant to an amendment filed by Appellants on Sept. 20, 2014, this
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Application 12/911,707
Thus, for these reasons, we are not persuaded by Appellants’
arguments because the disclosure of Appellants’ Specification does not
“reasonably convey[] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” See Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc).
DECISION
Accordingly, upon granting the Request to the extent we have
reconsidered the Decision in view of the arguments presented in the
Request, we deny the Request and make no changes to the Decision.
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).
REHEARING DENIED
limitation was amended to recite “first and second different terrestrial
communications networks of differing terrestrial network types.”
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