Ex Parte PilkingtonDownload PDFPatent Trial and Appeal BoardApr 16, 201813899059 (P.T.A.B. Apr. 16, 2018) Copy Citation 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. 2 Appeal2018-001850 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 3 Appeal2018-001850 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 4 Appeal2018-001850 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 5 Appeal2018-001850 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. 6 Appeal2018-001850 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 7 Copy with citationCopy as parenthetical citation