Ex Parte Del Prado Pavon et al

Board of Patent Appeals and Interferences

Aug 16, 2012

10534418 (B.P.A.I. Aug. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAVIER DEL PRADO PAVON and
SAI SHANKAR NANDAGOPALAN
____________________

Appeal 2010-001209
Application 10/534,418
Technology Center 2600
____________________

Before: JOSEPH L. DIXON, THU A. DANG, and JAMES R. HUGHES,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON THE REQUEST FOR REHEARING

Appeal 2010-001209
Application 10/534,418

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STATEMENT OF CASE
Appellants appealed under 35 U.S.C. § 134 from a rejection of claims
1-9, 13-21, 26, and 27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirmed the rejection of claims 1-9, 13-21, 26, and 27.
Appellants filed a request for rehearing and maintain there are 3 different
issues presented for rehearing. (Req. for Reh'g 1).

The claims are directed to a wireless data communications system.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A Hybrid Controller (HC) for an IEEE 802.11 wireless
data communications system supporting quality of service
(QoS) enhancements, comprising:

a Station Management Entity (SME) within the HC; and

a Media Access Control (MAC) SubLayer
Management Entity (MLME) within the HC and
communicably coupled both to the SME and to MLMEs
for wireless stations (WSTAs) participating in the IEEE
802.11 wireless data communications system,

wherein responsive to a schedule change for one of the
participating WSTAs, the SME within the HC generates a
request primitive for transmission to the MLME within the HC,
and wherein the request primitive includes a Schedule Element.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ho US 2003/0081547 A1 May 1, 2003
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Sai Shankar and Sunghyun Choi, QoS Signaling for Parameterized
Traffic in IEEE 802.11e Wireless LANs, Proceedings of the First
International Workshop on Advanced Internet Services and Applications
(AISA), 67-83 (2002) (hereinafter "Sai Shankar").

REJECTION
Claims 1-9, 13-21, 26, and 27 stand rejected under 35 U.S.C §103(a)
as being unpatentable over Ho and Sai Shankar.

ANALYSIS
We will address Appellants' three points of contention in the order
presented in the Request for Rehearing.
Appellants' first point of contention is that the Board of Patent
Appeals and Interferences ("Board") relied upon new grounds of rejection
and the Board has failed to meet the requirements of 37 CFR § 41.50 (b) that
call for the new grounds to be so designated by the Board. (Req. for Reh'g
2-3). Appellants contend that the Board introduced and relied upon three
new grounds of rejection without properly designating them as new grounds
of rejection and that Appellants are entitled to reopened prosecution and/or
request rehearing in order to satisfy administrative due process with respect
to this matter. (Req. for Reh'g 2). Since Appellants have had an opportunity
to request rehearing and identify points misapprehended or overlooked by
the Board in our Decision on Appeal mailed May 31, 2012 ("Decision"), we
find no lack of due process for Appellants. Furthermore, the three issues and
findings that Appellants contend are problematic to Appellants each pertain
to the Board's claim interpretation and factual findings with respect to what
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Application 10/534,418

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is or is not present in Appellants' Specification to support any interpretation
of the claimed subject matter.
In our Decision, we found that neither the Examiner nor Appellants
had provided any detailed analysis or discussion of claim interpretation
during the prosecution history while each party had ample opportunity to
clarify the appropriate claim interpretation, but each party chose not to
present any express and specific discussion thereto. Accordingly, we
provided our construction of Appellants’ representative claim 1 in order to
properly determine the meaning and scope of the claim in evaluating both
the Examiner’s rejection and Appellants’ arguments. (See Dec. 5-6).
We find that our claim interpretation does not rise to the level of a
new ground of rejection. We find that claim interpretation is the first step in
any meaningful analysis and application of prior art teachings to a claimed
invention. To require claim interpretation or reference to Appellants'
Specification to properly interpret a claimed invention to be designated as a
new grounds of rejection would frustrate the purpose of the Administrative
Procedures Act (APA) and any judicial review in a patent matter. The issue
of claim interpretation is a preliminary matter prior to application of the
prior art to the properly interpret claimed inventions without which any
meaningful review is not possible. Therefore, we find Appellants' cursory
citation to In re Stepan Co., 660 F.3d 1341 (Fed. Cir. 2011) and In re
Leithem, 661 F.3d 1316 (Fed. Cir. 2011), without any further meaningful
discussion and comparison, to be unpersuasive that the Board's claim
interpretation rises to the level of a new ground of rejection.
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In In re Leithem, the Court recognizes that Board need not recite and
agree with the Examiner’s rejection in haec verba to avoid issuing a new
ground of rejection and states:
Under the Act [APA], an applicant for a patent who appeals a
rejection to the Board is entitled to notice of the factual and
legal bases upon which the rejection was based. 5 U.S.C.
§ 554(b)(3). The Board's rules are in accord and provide that
when the Board relies upon a new ground of rejection not relied
upon by the examiner, the applicant is entitled to reopen
prosecution or to request a rehearing. See 37 C.F.R.
§ 41.50(b). The Board need not recite and agree with the
examiner's rejection in haec verba to avoid issuing a new
ground of rejection. "[T]he ultimate criterion of whether a
rejection is considered 'new' in a decision by the [B]oard is
whether [applicants] have had fair opportunity to react to the
thrust of the rejection." In re Kronig, 539 F.2d 1300, 1302-03
(CCPA 1976) (holding no new ground of rejection when the
Board relied on the same statutory basis and the same reasoning
advanced by the examiner).

In re Leithem, 661 F3d at 1319. We find the disqualification of the
declaration in In re Stepan Co. and the Board's finding of new facts
concerning the scope and content of the prior art in In re Leithem to both be
directed to a change of the thrust of the rejection distinguishable over our
mere preliminary step of claim interpretation. We find that our preliminary
claim interpretation does not rise to the level of a new ground rejection since
the claim language along with the Specification were present throughout
prosecution before both parties. We found that the claimed invention is
broader than Appellants or the Examiner may have interpreted. (Dec. 5-6).
Therefore, we find Appellants' argument to be unpersuasive that the Board
entered a new grounds of rejection pursuant to the requirements of 37 CFR
§ 41.50(b).
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Appellants do not explain how the Board's claim interpretation
changed the thrust of the rejection based upon the prior art teachings. We
disagree with Appellants' assertion that the panel's explanation of claim
interpretation is a new rationale, much less a new rationale or position
warranting a new ground of rejection. For the reasons set forth in the
Decision and above, we disagree with Appellants' contention that the panel
presented new rationale or positions warranting any new ground of rejection.
Therefore, Appellants' argument is not persuasive that the Board
misapprehended or overlooked any points in our original decision.

With respect to Appellants' second point, Appellants contend that
"t]he Board has construed the 'wherein' clause of independent ] claim 1
improperly and it has failed to give the clause any weight in ] patentability
analysis and determination." (Req. for Reh'g 4) (emphasis omitted). We
disagree with Appellants' contention that the Board failed to give the clause
any weight in patentability analysis and determination, as we previously
stated:
Even if we, arguendo, ascribe some weight to the
previously discussed wherein clause, we find that Sai Shankar
teaches or at least would have fairly suggested the well-known
use of primitives in a QoS based system "to provide some level
of predictability and control beyond the current IP 'best efforts'
service" (Ans. 8) as suggested by the Examiner. We further
agree with the Examiner that Sai Shankar teaches a scheduling
entity (SE). (Ans. 8; Sai Shankar at 76).
(Decision 6). Therefore, Appellants' argument is not persuasive that the
Board misapprehended or overlooked any points in our original decision.
Appellants further contend that the Board misapprehends the interpretation
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of the "wherein" clause of claim 1 as non-functional descriptive material and
a statement of intended use. (Req. for Reh'g 5). We disagree with
Appellants and find that our Decision stated that: "We further note that
Appellants have not identified any express definition for the 'request
primitive' or the 'schedule element' which would structurally change the
hybrid controller to differentiate representative claim 1 over the proffered
combination of Ho and Sai Shankar." (Decision 5). Appellants have not
identified any point which the Board misapprehended or overlooked and
have not identified any express definition for the "request primitive" or the
"schedule element" which would structurally change the hybrid controller to
differentiate representative claim 1 over the proffered combination of Ho
and Sai Shankar. Therefore, Appellants' argument is not persuasive that the
Board misapprehended or overlooked any points in our original decision.

With respect to Appellants' third point, Appellants contend that:"t]he
Board has failed to apprehend of the patentability] differences of the
limitations in the 'wherein' clause of independent ] claim 1 over the
combined teachings of the references." (Req. for Reh'g 6) (emphasis
omitted). Appellants provide a detailed analysis of the claimed invention
and prior art teachings with respect to the Examiner's position as set forth in
the Examiner's Answer and Final Rejection. (Req. for Reh'g 6-9.) As noted
at page 4 of our Decision, "Appellants have not filed a Reply Brief to
respond to the Examiner's further clarifications with respect to the teachings
of Sai Shankar are concerning primitives." Appellants' contention is more
appropriate for a filing of a Reply Brief (which Appellants elected not to
file) and does not show any points misapprehended or overlooked in our
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original decision based upon the administrative record at the time of the
decision. Therefore, Appellants' argument is not persuasive that the Board
misapprehended or overlooked any points in our original decision.

CONCLUSIONS OF LAW
Appellants have not shown that the Board misapprehended or
overlooked any points in our decision in affirming the rejection of
independent claim 1 over obviousness.

DECISION
For the above reasons, we have granted Appellants request to the
extent that it has been considered, but have declined to modify our original
decision affirming the Examiner’s rejection of claims 1-9, 13-21, 26, and 27
based upon Appellants' arguments.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REQUEST FOR REHEARING - DENIED

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