Ex Parte Pilkington

Patent Trial and Appeal Board

Apr 16, 2018

13899059 (P.T.A.B. Apr. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/899,059 05/21/2013
37945 7590 04/18/2018
DUKEW. YEE
YEE AND AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Adam J. Pilkington
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.
GB920120030US 1 9448
EXAMINER
CHOUDHURY, AZIZUL Q
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
04/18/2018 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM J. PILKINGTON
Appeal2018-001850
Application 13/899,059
Technology Center 2400
Before JOHNNY A. KUMAR, NORMAN H. BEAMER, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 8-12, 15-19, and 22-25. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies the real party in interest as International Business
Machines Corporation. App. Br. 2.
Appeal2018-001850
Application 13/899,059
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention relates to "mediating
access to a computer network." Spec. 1:7-8. 2 The Specification explains
that mediating access to a computer network may include "identifying a user
who wishes to access the computer network, obtaining quality of service
data specific to the user, generating a token comprising the quality of service
data and providing an output derived from the token to the user." Abstract.
Exemplary Claim
Independent claim 8 exemplifies the claims at issue and reads as
follows:
8. A data processing system for mediating access to a
computer network, the data processing system comprising a
processor device, a memory device and a computer network
access device, the data processing system configured to:
identify, by the data processing system, a user who
wishes to access the computer network;
obtain, by the data processing system, quality of service
data specific to the user;
generate, by the data processing system, a token
comprising the quality of service data;
create, by the data processing system, an output derived
from the token for the user;
2 This decision uses the following abbreviations: "Spec." for the
Specification, filed May 21, 2013; "Final Act." for the Final Office Action,
mailed January 9, 2017; "Adv. Act." for the Advisory Action, mailed
April 13, 2017; "App. Br." for the Appeal Brief, filed July 6, 2017; "Ans."
for the Examiner's Answer, mailed November 16, 2017; and "Reply Br." for
the Reply Brief, filed December 13, 2017.
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Application 13/899,059
receive, by the data processing system, a request from the
user for access to a network gateway component of the
computer network;
provide, by the data processing system, access to the
computer gateway component to the user according to the token
comprising the quality of service data specific to the user who
wishes to access the computer network; and
check, by the data processing system, that the request
received from the user to access the computer gateway
component is derived from the output provided to the user.
App. Br. 14 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence ofunpatentability, the Examiner relies on the following
prior art:
Zhang et al. ("Zhang") US 7,328,274 B2
Proctor et al. ("Proctor") US 7 ,554,987 B2
Wu et al. ("Wu") US 8,379,630 B2
The Re} ections on Appeal
Feb. 5,2008
June 30, 2009
Feb. 19, 2013
Claims 8-11 and 15-18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wu and Zhang. Final Act. 3-5; Ans. 2.
Claims 12, 19, and 22-25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wu, Zhang, and Proctor. Final Act. 6-9; Ans. 2.
ANALYSIS
We have reviewed the rejections of claims 8-12, 15-19, and 22-25 in
light of Appellant's arguments that the Examiner erred. Based on the record
before us and for the reasons explained below, we concur with Appellant's
contention that the Examiner erred in finding that the cited portions of Wu
and Zhang teach or suggest checking that a user request for network access
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Application 13/899,059
"is derived from" an "output provided to the user" according to independent
claims 8 and 15.
The§ 103 (a) Rejection of Claims 8-11 and 15-18
Appellant argues that the Examiner erred in rejecting claims 8 and 15
because Wu and Zhang do not teach or suggest a "'check' being made with
respect to (1) a 'request' received from a user in combination with (2) an
'output' provided to a user." App. Br. 7; see Reply Br. 3--4. In particular,
Appellant contends that "Wu's alleged 'check' is only with respect to a
single item - the 'request signal' - to see if this same 'request signal' can be
sent." App. Br. 8; see Reply Br. 3. According to Appellant:
checking a request signal to see if it is allowed or not does not
establish prima facie obviousness regarding the 'derived from'
aspects of the claimed 'check' step/action, where there are two
objects/items that are part of the 'check' - a 'request' received
from a user and an 'output' provided to a user (i.e., bilateral
information provided to as well as received from a user is used
for the 'check').
App. Br. 8.
In addition, Appellant contends that: ( 1) "Zhang describes that traffic
is discarded if 'traffic' sent to or from a service 'exceeds the limit' specified
in the 'provisioning scheme'"; and (2) "[a] 'request' received from a user
and an 'output' provided to the user are not used to determine whether or not
to discard traffic." App. Br. 9. Appellant asserts that in Zhang "[t]here is no
'derived from' checking that is performed to see if a 'request' received from
a user is derived from an 'output' provided to the user, as claimed." Reply
Br. 4. Appellant also asserts that "the synergistic interplay between the
'request' and the 'output' -where a check is made as to whether one is
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Application 13/899,059
derived from the other - is not described per the combined teachings of the
cited references." Reply Br. 3.
The Examiner finds that Wu teaches: (1) transmitting a signal based
on a token; (2) "[t]he signal can be a request signal (request based on [an]
output which is based on [a] token)"; and (3) "a wireless terminal (via user)
may or may not be allowed to send" a request signal based on a token
because the request signal "is checked to see if it is allowed or not." Final
Act. 10; Adv. Act. 2; Ans. 4. Further, the Examiner finds that Zhang
teaches: (1) a user's request for a service "can be subject to limits by the
service"; (2) a "system monitors a user's request and assesses if traffic
exceeds the limit, and if it does, the traffic can be discarded"; and (3) "[t]his
monitoring and discarding of traffic from the service (output based on user's
request) is equivalent to the claimed 'check', keeping in mind that the
service request corresponds to the user." Adv. Act. 2; Ans. 4.
Based on the record before us, we agree with Appellant that the
Examiner has not adequately explained how the cited portions of Wu and
Zhang teach or suggest checking that a user request for network access "is
derived from" an "output provided to the user" according to claims 8 and 15.
In Wu, the wireless terminal does not check whether it is allowed to send a
request signal based on a token. See, e.g., Wu 11: 15-12:2, 12:35-13:26,
Figs. 11, 13. Instead, the wireless terminal sends that request signal without
any check and does so to seek permission to later send a traffic (data) signal
during an appropriate time period. See id. 10:44--13:26, Figs. 10-13.
Permission to send the traffic (data) signal may be granted or denied. Id.
11:34--40, 11:55-58, 11:62---64, 12:55-61, 13:11-14, 13:19-22, Figs. 11, 13.
And a denial may result in the wireless terminal losing a token, depending
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Application 13/899,059
on whether the request signal was based on a non-persistent token or a
persistent token. Id. 11 :34--42, 11 :55-12:2, 12:55-63, 13: 11-26, Figs. 11,
13. Wu does not discuss the criteria for granting or denying permission to
send a traffic (data) signal. Id. 11:15-12:2, 12:35-13:26, Figs. 11, 13.
In Zhang, the determination whether a user's request for a service exceeds
a predetermined provisioning parameter does not depend on an "output
provided to the user." See, e.g., Zhang 5:18---6:27, Figs. 3-6.
Because Examiner has not adequately explained how the cited
portions of Wu and Zhang teach or suggest the disputed limitation in
claims 8 and 15, we do not sustain the§ 103(a) rejection of these
independent claims. 3,4
3 In the event of continued prosecution, the Examiner should consider a
rejection of independent claims 8 and 15 under 35 U.S.C. § 103(a) based in
part on US Patent Application Publication 2011/0055547 Al to Lee et al.,
which the Examiner cited in related Application 14/487,390.
4 In the event of continued prosecution, the Examiner should also consider
(1) the applicability of 35 U.S.C. § 112 i-f 6 to the respective limitations in
the independent claims, e.g., claim 8's "check" limitation and claim 15's
"checking" limitation, and (2) whether under 35 U.S.C. § 112 i-f 2 the
Specification discloses adequate corresponding structure, e.g., a suitable
algorithm, for accomplishing the functions assigned to each means-plus-
function limitation. See, e.g., Advanced Ground Info. Sys., Inc. v. Life360,
Inc., 830 F.3d 1341, 1349-50 (Fed. Cir. 2016); Williamson v. Citrix Online,
LLC, 792 F.3d 1339, 1348-54 (Fed. Cir. 2015) (en bane in relevant part);
EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 624
(Fed. Cir. 2015). For a means-plus-function limitation, a patent
specification "must disclose adequate corresponding structure to perform all
of the claimed functions." Media Rights Techs., Inc. v. Capital One Fin.
Corp., 800 F.3d 1366, 1374 (Fed. Cir. 2015); see Williamson, 792 F.3d
at 1351-52.
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Application 13/899,059
Claims 9-11 depend directly from claim 8, while claims 16-18
depend directly from claim 15. For the reasons discussed regarding the
independent claims, we do not sustain the§ 103(a) rejection of these
dependent claims.
The§ 103(a) Rejection of Claims 12, 19, and 22-25
Claims 12, 22, and 23 depend directly or indirectly from claim 8,
while claims 19, 24, and 25 depend directly or indirectly from claim 15. On
this record, the Examiner has not shown how the additionally cited Proctor
reference overcomes the deficiency in Wu and Zhang discussed above for
claims 8 and 15. Hence, we do not sustain the § 103 (a) rejection of
claims 12, 19, and 22-25.
Because this determination resolves the appeal with respect to
claims 8-12, 15-19, and 22-25, we need not address Appellant's other
arguments regarding Examiner error. See, e.g., Beloit Corp. v. Valmet Oy,
742 F.2d 1421, 1423 (Fed. Cir. 1984) (explaining that an administrative
agency may render a decision based on "a single dispositive issue").
DECISION
We reverse the Examiner's decision to reject claims 8-12, 15-19,
and 22-25.
REVERSED
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