Ex Parte Carrion-Rodrigo

Board of Patent Appeals and Interferences

Jul 23, 2012

10875584 (B.P.A.I. Jul. 23, 2012)

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.
10/875,584 06/25/2004 Immaculada Carrion-Rodrigo 39700-774001US/NC40318US 1202
64046 7590 07/23/2012
MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C
ONE FINANCIAL CENTER
BOSTON, MA 02111
EXAMINER
BRANDT, CHRISTOPHER M
ART UNIT PAPER NUMBER
2617
MAIL DATE DELIVERY MODE
07/23/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte IMMACULADA CARRION-RODRIGO
____________________

Appeal 2010-004110
Application 10/875,584
Technology Center 2600
____________________

Before SCOTT R. BOALICK, THOMAS S. HAHN, and JENNIFER S.
BISK, Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004110
Application 10/875,584
2
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3, 4, 6-11, 13, 14, 16-21, 23-28, 30-32, 34-39, and 41-
45. Claims 2, 5, 12, 15, 22, 29, 33, and 40 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant’s invention relates to sending a request to a node on a
computer network and determining, at the node, network identity
information. Abstract. Claim 1, reproduced below with emphasis added, is
illustrative of the claimed subject matter:
1. A method, comprising:
receiving a request at a node, said request comprising a part of
network identity information, wherein said part of network identity
information comprises at least one of network characteristic
information and network operator information; and
determining, at said node, a plurality of network identity
information, each of said plurality of network identity information
containing said part of network identity information, each of said
plurality of network identity information identifying a respective one
of a plurality of networks.

THE REJECTIONS
1. Claims 1, 3, 4, 6-11, 13, 14, 16-21, 23-25, 30-32, 34-38, and 41-45 stand
rejected under 35 U.S.C. § 103(a) as obvious over Kuan (US
2003/0221006 A1; Nov. 27, 2003) and Jeong (US 2006/0092888 A1;
May 4, 2006). Ans. 3-11.
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2. Claims 26-28 and 39 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kuan, Jeong, and 3GPP (3GPP TS 24,234 V1.0.0, 3rd
Generation Partnership Project; Technical Specification Group Core
Network; 3GPP System to WLAN Interworking; UE to Network
Protocols; Stage 3 (Release 6), December 2003, pp. 1-19). Ans. 11-12.

THE CONTENTIONS
The Examiner finds that Kuan “substantially discloses the claimed
invention but fail[s] to explicitly teach a plurality of network identify
information identifying a respective plurality of networks containing said
part of network identify information.” Ans. 6. The Examiner cites Jeong as
teaching this limitation. Id.
Appellant argues that none of the references disclose the limitations:
(1) “a plurality of network identity information, each of said plurality of
network identity information containing said part of network identity
information, each of said plurality of network identity information
identifying a respective one of a plurality of networks” and (2) “wherein said
part of network identity information comprises at least one of network
characteristic information and network operator information.” App. Br. 13-
19; Reply Br. 8-9.1

ISSUE
Under § 103, has the Examiner erred in rejecting the claims by finding
that Kuan and Jeong collectively would have taught or suggested (1) “a

1 Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived
(see 37 C.F.R. § 41.37(c)(1)(vii)).
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plurality of network identity information, each of said plurality of network
identity information containing said part of network identity information,
each of said plurality of network identity information identifying a
respective one of a plurality of networks” and (2) “wherein said part of
network identity information comprises at least one of network
characteristic information and network operator information”? See App.
Br. 15.

ANALYSIS
Claim 1
Appellant’s arguments assert various “requirements” of the invention
that are allegedly missing from the cited prior art. However, as detailed
below, the asserted requirements are features that are not required by the
broadest reasonable interpretation of the claim language. Therefore, we are
not persuaded that the Examiner erred in rejecting claim 1 as obvious over
Kuan and Jeong.
First, Appellant argues that “certain embodiments of the invention
provide non-obvious advantages” not addressed by the cited prior art,
including “reducing the number of responses to a probe request frame
without limiting the request to one particular network, which is made by
providing a single, full length SSID.” App. Br. 15; Reply Br. 4. This
argument is irrelevant because none of the referenced advantages are
required by the claim language.
Second, Appellant argues that Jeong does not disclose the limitation
“a plurality of network identity information identifying a respective plurality
of networks.” App. Br. 16-17. Appellant asserts that because Jeong only
forwards requests to multiple networks when the original request contains a
Appeal 2010-004110
Application 10/875,584
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broadcast SSID, “the SSIDs in the response do not contain the SSID
contained in the request” and therefore “all responses contain the same SSID
and, thus, only identify one network.” App. Br. 17-18 (emphasis in original).
Thus, according to Appellant, Jeong teaches away from both recited
conditions “said plurality of network identity information containing said
part of network identity information” and “identifying a respective one of a
plurality of networks” being met simultaneously. App. Br. 17.
However, the claim language does not preclude a broadcast SSID
from qualifying as “network identity information.” Furthermore, nothing in
the claim requires that more than one network be identified. The claim
language explicitly requires only “identifying a respective one of a plurality
of networks.” The plain meaning of this language is that multiple networks
exist, as described by Jeong, and that one of those networks is identified.
Ans. 12-13 (citing Jeong ¶ 39, Table 2). Appellant does not point to any
explicit definition in the Specification that changes the plain meaning of the
claim terms in the limitation at issue or requires a more narrow reading of
any of the terms than construed by the Examiner. See generally App. Br. 14-
19; Reply Br. 8-9. In fact, the relevant terms, “plurality of network identity
information,” “part of network identity information,” and “network
characteristic information,” are not used in the Specification except in the
context of the claim language.
Third, Appellant argues that the combination of Kuan and Jeong fails
to teach the recited limitation “wherein said part of network identity
information comprises at least one of network characteristic information and
network operator information.” Specifically, Appellant asserts that “the
zero-length SSID described in Kuan cannot be interpreted to teach the ‘part
of network identity information’ because a zero-length SSID, by definition,
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Application 10/875,584
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contains no information” and “one of ordinary skill would recognize that this
cannot possibly be the case as ‘war driving’ is . . . at best an attack on a
network” and therefore does not equate to the claimed “network
characteristic.” App. Br. 18; Reply Br. 8. We are not persuaded by this
argument. Appellant has not cited to any language in the claim or in the
Specification that requires “part of network identity information” to convey
information in any particular manner. Thus, we find reasonable the
Examiner’s interpretation that the term can encompass information
conveyed by a zero-length SSID. Ans. 13. Similarly, we find reasonable the
Examiner’s interpretation of the term “network characteristic” to include
“war driving.” Id. And Appellant does not provide any persuasive evidence
or argument to support the assertion that one of ordinary skill at the time of
the invention would know otherwise or that a zero-length SSID cannot be
both “[N]etwork [I]dentity [I]nformation” and “[N]etwork [C]haracteristic.”
See generally App. Br. 18-19; Reply Br. 8-9.
Appellant also asserts that “there is no teaching or suggestion in Kuan
that the SSID itself includes anything more than an identifier” and thus
“Kuan fails to teach or suggest ‘at least one of network characteristic
information and network operator information.’” App. Br. 18. Appellant
adds that “the supported rates, the channels, etc., are incapable of identifying
a network, and therefore cannot themselves be considered ‘network identity
information.’” App. Br. 18-19. However, because we find reasonable the
Examiner’s broad interpretation of the relevant claim terms, we are not
persuaded that the claim language excludes the SSID and other information
described in Kuan from satisfying the claim limitation at issue.
Moreover, the Examiner concludes that Jeong also teaches the
limitation “wherein said part of network identity information comprises at
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least one of network characteristic information and network operator
information.” Ans. 13 (citing Jeong ¶ 14). In particular, the Examiner
explains that using the broadest reasonable interpretation of the claim terms,
“one may read Jeong’s frame body of the probe request frame as ‘part of
network identity information,’ . . . the channel/capability information is the
‘network characteristic information,’ and the BSSID is the ‘network operator
information.’” Ans. 13-14. Appellant does not respond to this determination.
See generally Reply Br.
For these reasons, we sustain the Examiner’s obviousness rejection of
claim 1.
Claims 3, 4, 6-11, 13, 14, 16-21, 23-25, 30-32, 34-38, and 41-45
Appellant states that the claims do not stand or fall together and
presents a separate section for each of the remaining claims rejected over
Kuan and Jeong. App. Br. 13, 19-42. However, Appellant does not provide
reasonably specific, substantive arguments for the separate patentability of
each claim. Instead, for each claim, Appellant states that the claims are
patentable for the same or similar reasons as recited for claim 1 “and further,
because it recites additional limitations that are not disclosed in the cited
art.” App. Br. 19-42; Reply Br. 9-17. Accordingly, for the reasons discussed
with respect to claim 1, we also sustain the Examiner’s rejection of claims 3,
4, 6-11, 13, 14, 16-21, 23-25, 30-32, 34-38, and 41-45.

Claims 26-28 and 39
Appellant also relies on the arguments made with respect to claim 1
for the separate obviousness rejection over the combination of Kuan, Jeong,
and 3GPP. App. Br. 43-47; Reply Br. 17-19. Thus, for the reasons discussed
above, we also sustain the rejections of claims 26-28 and 39.
Appeal 2010-004110
Application 10/875,584
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DECISION
The Examiner’s decision rejection claims 1, 3, 4, 6-11, 13, 14, 16-21,
23-28, 30-32, 34-39, and 41-45 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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