Ex Parte Adireddy et al

Patent Trial and Appeal Board

Oct 2, 2014

11528203 (P.T.A.B. Oct. 2, 2014)

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.
11/528,203 09/27/2006 Srihari Adireddy SIL.0094US
(D-06-200-07)
6073
21906 7590 10/03/2014
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
NGO, CHUONG A
ART UNIT PAPER NUMBER
2645
MAIL DATE DELIVERY MODE
10/03/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SRIHARI ADIREDDY and BRIAN D. GREEN

Appeal 2012-005043
Application 11/528,203
Technology Center 2600
____________

Before JAMES T. MOORE, JOHN A. JEFFERY, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

Opinion Concurring filed by JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4–11, 13–16, and 26.
1
We have jurisdiction under
35 U.S.C. § 6(b).

1
Although the Appeal Brief’s “Status of Claims” section omits claims 4, 7,
10, 11, and 13 (App. Br. 5), the Examiner nonetheless finally rejected these
claims. See Final Rej. mailed Mar. 21, 2011, at 1 (noting that claims 1, 2, 4–
11, 13–16, and 26 are rejected on the PTOL-326 form). Accord Advisory
Action mailed June 3, 2011, at 1 (confirming this status in Item 7). See also
Final Rej. 3 (indicating that the Examiner maintains the rejection of claim 11
(among other dependent claims) in paragraph 4). Because the present appeal
was taken from that final rejection (see Notice of Appeal filed June 20,
Appeal 2012-005043
Application 11/528,203
2
We reverse.

STATEMENT OF THE CASE
Appellants’ invention is directed to a technique that includes
receiving data communicated in a frame over a wireless network and
processing the data through a filter. A response of the filter is changed
during the processing. See Abstract.
Claim is 1 illustrative, with key disputed limitations emphasized:
1. A method comprising:

receiving data communicated in a frame over a wireless network, the
data comprising data associated with a first data type and data
associated with a second data type; and

processing the data communicated in the frame through a filter, the
processing comprising:

filtering the data associated with the first data type using a first
frequency response for the filter; and

filtering the data associated with the second data type using a second
frequency response different from the first frequency response for the
filter.

The Examiner relies on the following as evidence of unpatentability:
Haapoja US 2003/0114128 A1 June 19, 2003
Kott US 2004/0013122 A1 Jan. 22, 2004
Murakami US 2005/0058232 A1 Mar. 17, 2005
Berger US 2006/0023696 A1 Feb. 2, 2006

2011), all finally-rejected claims are before us. Accordingly, we present the
correct claim listing here for clarity.
Appeal 2012-005043
Application 11/528,203
3

THE REJECTIONS
1. The Examiner rejected claims 1, 5, 8, 9, 14, and 26 under 35
U.S.C. § 102(e) as anticipated by Berger. (Ans. 4–6.)
2

2. The Examiner rejected claims 2, 6, 7, 10, 15, and 16 under 35
U.S.C. § 103(a) as unpatentable over Berger and Murakami. (Ans.
6–8.)
3. The Examiner rejected claims 4 and 13 under 35 U.S.C. § 103(a)
as unpatentable over Berger and Kott. (Ans. 8–9.)

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (App. Br. 9–18) and the Reply Brief (Reply
Br. 1–5) that the Examiner has erred. We have also reviewed the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken (Final Rej. 4–8), and the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 4–13).
We highlight and amplify certain teachings and suggestions of the
references as follows.

THE REJECTION OF CLAIM 11
We first address a procedural issue. The Examiner provides notice
that claim 11 is rejected. Final Rejection 1. But apart from merely
indicating that claim 11 is rejected on the Form PTOL-326, nowhere in the

2
Throughout this opinion, we refer to the Appeal Brief filed October 10,
2011, the Examiner’s Answer mailed December 7, 2011, and the Reply
Brief filed February 7, 2012.
Appeal 2012-005043
Application 11/528,203
4
Final Rejection nor the Answer does the Examiner articulate a ground for
rejection for this claim.
The Examiner articulated a basis for the rejection of claim 11 in the
First Office Action, dated July 23, 2009. In light of the outcome of the
decision below, any procedural error in this regard is harmless.

REJECTION UNDER § 102
The Examiner has rejected claims 1, 5, 8, 9, 14, and 26 under 35
U.S.C. § 102(e) as anticipated by Berger. The Examiner finds that Berger
discloses a method for communicating data in separate small blocks, or
packets, which the Examiner finds comprise a first data type and a second
data type. (Ans. 4–5.)
The Examiner also finds that Berger describes handling both packet-
switched data and circuit-switched data through hub 20, as illustrated in
Figure 1 of Berger. Citing ¶ 33 of Berger, the Examiner finds that Berger
discloses processing the data through a filter to separate voice signals from
data traffic. Id.
Appellants argue that the Examiner erred in rejecting claims 1, 5, 8, 9,
14, and 26 under 35 U.S.C. § 102(e) as anticipated by Berger as Berger fails
to disclose “receiving data communicated in a frame over a wireless
network, the data comprising data associated with a first data type and data
associated with a second data type,” as set forth in claim 1. (App. Br. 10.)

Appeal 2012-005043
Application 11/528,203
5
CLAIM INTERPRETATION
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
“The transitional term ‘comprising’ . . . is inclusive or open-ended and
does not exclude additional, unrecited elements or method steps.” Georgia-
Pacific Corp. v. U.S. Gypsum Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999)
(citing MPEP § 2111.03 (6th ed. 1997)). “A drafter uses the term
‘comprising’ to mean ‘I claim at least what follows and potentially more.’”
Vehicular Techs. Corp. v. Titan Wheel Int’l, Inc., 212 F.3d 1377, 1383 (Fed.
Cir. 2000).
Appellants’ preamble recites “comprising” . . . data communicated in
“a frame” comprising a first data type and a second data type, as set forth in
claim 1. Similarly, Claim 9 recites an apparatus “comprising” “a frame”. . .
the frame comprising data associated with a first data type and a second data
type.
It is well settled that the article “a” means “one or more” where, as
here, the claim contains the transitional phrase, “comprising.” KCJ Corp. v.
Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). But “[w]hen
the claim language and specification indicate that ‘a’ means one and only
one, it is appropriate to construe it as such even in the context of an open-
ended ‘comprising’ claim.” Harari v. Lee, 656 F.3d 1331, 1341 (Fed. Cir.
2011).
On this record, we conclude that the latter narrower construction of “a
frame” applies. According to Appellants’ Specification, “both packet and
circuit switched data may be communicated in the same frame.” See Spec.
¶ 18.
Appeal 2012-005043
Application 11/528,203
6
Consequently, we interpret Appellants’ claims as requiring that two
different types of data be communicated in the same frame. Based upon that
interpretation, we find that the Examiner’s position that the Berger
disclosure “would be using some kind of data frame” (Ans. 9) to be
insufficient as a foundation upon which to base the Examiner’s assertion that
Berger discloses two different types of data within the same frame.
Addressing the Examiner’s reliance upon the filtering within Berger
to separate voice signals from data traffic (Ans. 5), we find that the relied-
upon disclosure describes filtering analog voice signals for separation from
data traffic. See Berger ¶ 28.
We find that this disclosure of filtering further buttresses our finding
that Berger fails to disclose the transmission of two data types within the
same frame, as set forth in independent claims 1 and 9.
We, therefore, find that the Examiner erred in rejecting claims 1, 5, 8,
9, 14, and 26 under 35 U.S.C. § 102(e) as anticipated by Berger.

REJECTIONS UNDER § 103
The Examiner has rejected claims 2, 6, 7, 10, 15, and 16 under 35
U.S.C. § 103(a) as unpatentable over Berger and Murakami, claims 4 and 13
under 35 U.S.C. § 103(a) as unpatentable over Berger and Kott, and we
presume claim 11 under 35 U.S.C. § 103(a) as unpatentable over Haapoja
and Murakami.
(Ans. 6–9.)
We find that Haapoja, Murakani and Kott do not address the
insufficiency we note above with respect to Berger. Consequently, we find
the Examiner erred in rejecting claims 2, 4, 6, 7, 10, 11, 13, 15, and 16 under
§ 103.
Appeal 2012-005043
Application 11/528,203
7

CONCLUSION
The Examiner erred in rejecting claims 1, 2, 4–11, 13–16, and 26.

ORDER
The Examiner’s decision rejecting claims 1, 2, 4–11, 13–16, and 26 is
reversed.
3

REVERSED

3
We note that Appellants’ Notice of Appeal filed June 20, 2011
encompassed all remaining claims in their application. (“Applicant hereby
appeals to the Board of Patent Appeals and Interferences from the last
decision of the examiner.”) Notwithstanding the failure of Appellants to
enumerate claims 4, 7, 10, 11, and 13 as appealed, or to submit particular
arguments for those claims, we reverse the Examiner’s rejections of those
claims in our Opinion above.
JEFFERY, Administrative Patent Judge, CONCURRING:

I join the majority’s reversing the Examiner’s rejections for the
reasons indicated in the opinion except for claim 11. Although I concur in
the result regarding claim 11, I would reverse the Examiner’s rejection of
that claim for different reasons.
As the majority indicates, the Examiner does not articulate a ground
for rejection for this claim in the Examiner’s Answer or Final Rejection
mailed March 21, 2011. Rather, the Examiner merely indicates that claim
11 is rejected on the Final Rejection’s accompanying Form PTOL-326
without further explanation.
Although the Examiner indicates in paragraph 4 of the Final Rejection
that the rejection of claim 11 is maintained (Final Rej. 3), it is unclear from
this statement on what ground the claim was rejected. That the Examiner
includes claims rejected on both anticipation and obviousness grounds in
this statement only underscores the ambiguity in this regard.
The Examiner, however, has a duty to give notice of the rejection with
sufficient particularity to give Appellants a fair opportunity to respond to
that rejection. See 35 U.S.C. § 132(a). As the Federal Circuit indicates:

[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.
That section is violated when a rejection is so uninformative
that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.

Appeal 2012-005043
Application 11/528,203
2
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (internal citations and
quotation marks omitted).
On this record, I find that the Examiner failed to satisfy 35 U.S.C.
§ 132 by failing to (1) state the reasons for the rejection, and (2) provide
information and references useful in judging the rejection’s propriety. By
not satisfying the requisite burden of production to justify the rejection of
claim 11 under § 132, the Examiner failed to establish a prima facie case.
Accordingly, I would reverse the rejection of claim 11 solely on that basis.
To be sure, the Examiner articulated a basis for rejecting claim 11 in
the Non-Final Rejection mailed July 23, 2009 as the majority indicates. At
that time, the Examiner rejected then-pending claims 1–16 as obvious over
two prior art references: Haapoja and Murakami. See Non-Final Rej.
mailed July 23, 2009, at 3–5. In that rejection, the Examiner relied
principally on Haapoja for teaching the limitations of claim 11. See id. at 5.
That rejection was maintained in the subsequent Final Rejection. See Final
Rej. mailed Dec. 31, 2009, at 3–6.
After a subsequent Request for Continued Examination (RCE) was
filed amending various claims, the Examiner rejected the amended claims
over different grounds and different combinations of prior art references that
are at issue in this appeal, namely anticipation and obviousness rejections
based on Berger, Murakami, and Kott. See Non-Final Rej. mailed Oct. 21,
2010, at 3–6. Although the Examiner indicated that claim 11 was rejected
on the PTOL-326 form accompanying the Non-Final Rejection, the
Examiner did not articulate the grounds for that rejection. A similar
omission appears in the subsequent Final Rejection mailed March 21, 2011
from which this appeal was taken.
Appeal 2012-005043
Application 11/528,203
3
The majority finds that in light of the Examiner’s articulated basis for
rejecting claim 11 in the first Office Action mailed July 23, 2009 and the
outcome of the majority’s decision that reverses the Examiner’s rejections,
the Examiner’s procedural error is deemed to be harmless. Maj. Op. 4. In
reaching this conclusion, however, the majority presumes that the Examiner
intended to reject claim 11 over Haapoja and Murakami as indicated in the
first Office Action. Id. at 6.
But the Examiner’s originally-articulated grounds of rejection shifted
considerably after the claims were amended via the RCE as noted above.
Given this shift, I cannot say whether the Examiner intended to maintain the
obviousness rejection of claim 11 over Haapoja and Murakami. That the
Examiner considered Appellants’ arguments regarding claim 11 moot in
view of the new grounds of rejection on page 2 of the October 21, 2010
Non-Final Rejection suggests that the Examiner did not intend to maintain
the earlier rejection over Haapoja and Murakami. In any event, rather than
speculate in this regard, I would reverse the Examiner’s rejection as simply
failing to satisfy 35 U.S.C. § 132.
That said, this is not a case where the limitation of claim 11 is
commensurate with a limitation in another claim on appeal such that the
panel could reasonably presume the Examiner’s intention based on that
similarity, and treat claim 11 accordingly based on that presumption. Nor is
this a case involving an obvious typographical error on the Examiner’s part
such that the Examiner’s intent can nevertheless be reasonably ascertained
despite such an error and the claims treated accordingly. Rather, this is a
case where the Examiner’s originally-articulated grounds in rejecting the
claims shifted considerably from those articulated on appeal. In this
Appeal 2012-005043
Application 11/528,203
4
circumstance, I cannot presume the Examiner’s intent regarding claim 11,
nor does this record clarify that ambiguity.
Therefore, I join my colleagues in reversing the Examiner’s rejections
for the reasons indicated in the opinion, but would reverse the rejection of
claim 11 solely under § 132.

lv