Ex Parte Hassan et al

Patent Trial and Appeal Board

Aug 23, 2018

14517273 (P.T.A.B. Aug. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/517,273 10/17/2014
69316 7590 08/27/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
FIRST NAMED INVENTOR
Amer A. Hassan
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.
355675-US-NP 7024
EXAMINER
SHAHEED, KHALID W
ART UNIT PAPER NUMBER
2643
NOTIFICATION DATE DELIVERY MODE
08/27/2018 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):
usdocket@microsoft.com
chriochs@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMER A. HASSAN and ANDREI JEFREMOV
Appeal2018-002571
Application 14/517 ,273
Technology Center 2600
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision, which includes a rejection of claims 18 and 19 that is
before us. 2,3 We have jurisdiction under 35 U.S.C. § 6(b). Claim IO was
1 Appellants identify the real party in interest as Microsoft Technology
Licensing, LLC. App. Br. 3. Microsoft Technology Licensing, LLC is the
Applicant for the instant patent application. Bib. Data Sheet.
2 Because the Examiner withdrew a rejection of claims 1-9, 11, 12, and 21
under 35 U.S.C. § 101 (see Ans. 3), that rejection is not before us. Thus,
only the rejection of claims 18 and 19 under§ 102(a)(l) is before us.
3 Although the Examiner indicates in the Non-Final Action that claim 10 is
pending, see Non-Final Act. 1, 6, Appellants indicate claim 10 is cancelled,
see Amendment 4 (Claims App'x) (July 28, 2016). Accordingly, for clarity,
we indicate here claim 10 is cancelled, and deem the Examiner's error in this
regard harmless.
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Application 14/517,273
cancelled, and claims 13-17 and 20 were indicated as containing allowable
subject matter.
We affirm and enter a new ground of rejection.
CLAIMED SUBJECT MATTER
Appellants' invention relates to a wireless signal quality indicator.
Spec., Title. According to one embodiment, a signal quality of a wireless
signal is based on errors detected in the wireless signal. Spec. ,r,r 70-72,
Fig. 5. The signal quality is further "independent of a detected signal
strength, e.g., independent of [a received signal strength indicator (RSSI)]
for the wireless signal." Spec. ,r 72. Claim 18 is representative and
reproduced below:
18. A computer-implemented method comprising:
detecting errors in data communicated via a wireless
signal;
characterizing a signal quality of the wireless signal based
on the detected errors and independent of a signal strength of the
wireless signal and independent of a received signal strength
indicator (RS SI) value for the wireless signal; and
outputting an indication of the signal quality.
Moreover, on the record before us, we presume that the Examiner did
not reject 20. Despite the Examiner indicating in the Non-Final Action's
coversheet that claim 20 is rejected, Non-Final Act. 1, and that claim 20 is
rejected under 35 U.S.C. § 102(a)(l), id. at 7, claim 20 does not appear in
the body of the rejection, id. at 7-8. The Examiner further indicates claim
20 is objected to as being dependent upon a rejected base claim, but would
be allowable if rewritten in independent form. Id. at. 8. Accordingly, based
on the record before us, we presume that the Examiner did not reject claim
20, but objected to claim 20.
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Application 14/517,273
REJECTION
Claims 18 and 19 stand rejected under 35 U.S.C. § I02(a)(l), as being
anticipated by Hassan '629 (US 2014/0143629 Al; May 22, 2014). 4 Non-
Final Act. 7-8.
OPINION
New Ground of Re} ection under 3 5 US. C. § 112 (b)
We enter a new ground of rejection of claims 18-20 under 35 U.S.C.
§ 112(b), pursuant to our authority under 37 C.F.R. § 4I.50(b). The
statutory provision 35 U.S.C. § 112(b ), reads as follows: "The specification
shall conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the inventor or a joint inventor
regards as the invention." The primary purpose of the definiteness
requirement of§ 112(b) is to ensure that the claims are written in such a way
that they give notice to the public of the extent of the legal protection
afforded by the patent, so that interested members of the public, e.g.,
competitors of the patent owner, can determine whether or not they infringe.
All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d 774, 779-
80 (Fed. Cir. 2002). As such, a claim is invalid for indefiniteness if a person
of ordinary skill in the art, when reading the claim in light of the
4 See supra n. 2.
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specification, would not understand the scope of the claim. See Allen Eng 'g
Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1348 (Fed. Cir. 2002).
According to Appellants' Specification, Figure 5 depicts method steps
in some implementations of Appellants' invention "for generating a signal
quality indicator based on errors detected in wireless signal[s]." Spec. ,r 70.
The disclosed method includes characterizing "a signal quality of the
wireless signal based on the detected errors" such that the characterization is
"independent of a detected signal strength, e.g., independent of an RSSI for
the wireless signal." Spec. ,r 72 (emphasis added). Thus, a wireless signal's
RSSI is an example of a detected signal strength.
Claim 18 recites characterizing a wireless signal's signal quality
"independent of a signal strength of the wireless signal and independent of a
received signal strength indicator (RSSI) value for the wireless signal." We
find that characterizing the wireless signal's signal quality independent of
the wireless signal's signal strength adds ambiguity to the claim when read
in the light of the Specification. Notably, the recited wireless signal's signal
strength is not a detected signal strength, but simply the wireless signal's
signal strength absent any detection. Put another way, claim 18 may be
understood to recite the signal quality is characterized independent of the
signal strength itself, not a measure or indicator of the signal strength.
Moreover, claim 18 recites characterizing a signal quality independent
of both the wireless signal's signal strength and the received wireless
signal's RSSI value. Appellants' Specification discloses that a wireless
signal's RSSI value is an example of a wireless signal's detected signal
strength, which further indicates the wireless signal's signal strength recited
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Application 14/517,273
in claim 18 is not necessarily a detected signal strength. Thus, it is unclear
whether the characterizing of the wireless signal's signal quality is
independent of the wireless signal's signal strength ( 1) as such, absent a
detection, or (2) as detected (e.g., an indicator or measure of the signal
strength).
To the extent Appellants intend the claim to require characterizing the
signal quality independent of the signal itself, it is unclear how a signal
quality can be determined independent of a signal strength. Appellants' only
disclosure of characterizing the signal quality relates to using detected errors
(e.g., error rate or number of errors). See Spec. ,r,r 70-76. However, the
error rate or number of errors depends, at least in part, on the signal strength.
Therefore, even if Appellants' invention characterizes a signal quality based
on detected errors and independent of a signal quality's indicator or
measurement, such a characterization is not independent of the signal
strength itself. Furthermore, to the extent Appellants intend the claim to
require characterizing the single quality independent of a signal quality's
indicator or measurement, claim 18 's recitation that the characterizing step is
independent of an RSSI value does not appear to further limit claim 18,
which would already require independence from any signal strength
indicator value.
Accordingly, we find the disputed key limitation indefinite because it
is amenable to at least two plausible claim constructions discussed above.
See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008) (precedential);
see also MANUAL OF PATENT EXAMINING PROCEDURE (MPEP)
§ 2173.0S(b) (9th ed. Rev. 08.2017, Jan. 2018) (citing Miyazaki).
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Rejection under 35 USC§ 102(a)(l)
If a claim is subject to two interpretations and one interpretation
would render the claim unpatentable over the prior art, the proper course of
action is to enter both a§ 112(b) rejection and a prior art rejection based on
an interpretation of the claim. Ex parte Ionescu, 222 USPQ 537 (BPAI
1984); see Ex parte Saceman, 27 USPQ 2d 1472, 1474 (BPAI 1993); MPEP
§ 2173.06.
On this record, we see no error in the Examiner's rejection of claim 18
under 35 U.S.C. § 102(a)(l) as being anticipated by Hassan '629 based on
an interpretation that the characterizing of a wireless signal's signal quality
is independent of a detected wireless signal's signal strength. In the
rejection, the Examiner finds that Hassan '629 discloses every recited
element of independent claim 18 including, among other things,
characterizing a wireless signal's signal quality based on detected errors in
data communicated via the wireless signal, and independent of a detected
signal strength of the wireless signal, and independent of a received signal
strength indicator (RSSI) value for the wireless signal (hereinafter the
"disputed limitation"). Non-Final Act. 3--4, 7-8 ( citing Hassan '629 ,r,r 22,
41--42, 51, 73-74); Ans. 4--8 (additionally citing Hassan '629 ,r,r 28, 46, 60,
64, 83-88, 108).
Despite Appellants' arguments to the contrary, App. Br. 15-18 (citing
Hassan '629 ,r,r 22, 42, 50-51, 73), Appellants do not address the
Examiner's findings in the Answer that paragraphs 46 and 64 of Hassan
'629 disclose the disputed limitation, Ans. 4--5. See Reply Br. 2. We see no
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error in the Examiner's finding that paragraphs 46 and 64 of Hassan '629
disclose the disputed limitation.
Hassan '629 is directed to detecting characteristics of a wireless
access point. Hassan '629, Abstract. Hassan '629's detection device
receives a wireless signal. Id. ,r 39. Hassan '629 discloses determining a
signal strength of the wireless signal and inspecting the wireless signal for
errors. Id. ,r,r 41--42. Hassan '629 further discloses characterizing the
source of the wireless signal. Id. ,r 46. According to Hassan '629, "if the
signal strength is low and/or data errors are high, the source can be
characterized as providing a low quality wireless signal at the location." Id.
(emphasis added). We emphasize "and/or" here, for Hassan '629 discloses
characterizing the source as providing a low quality wireless signal based on
only low signal strength, only high data errors, or both. Moreover,
paragraph 64 of Hassan '629 discloses that the "signal quality can be
determined based on various factors, such as signal strength, a number of
data errors in the signal, and so forth," which further discloses basing signal
quality on high data errors. Thus, Hassan '629 's characterization of a
wireless signal's signal quality based on only a high number of data errors
(the claimed "detected errors [in data communicated via the wireless
signal]") is independent of a detected signal strength of the wireless signal,
and independent of a received RSSI value for the wireless signal. Therefore,
the Examiner's finding in this regard has at least a rational basis that has not
been persuasively rebutted.
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Accordingly, we sustain the rejection of claim 18 and claim 19, which
depends directly from claim 18, and was not separately argued with
particularity. See App. Br. 18.
DECISION
We affirm the Examiner's decision to reject claims 18 and 19 under
35 U.S.C. § 102(a)(l).
We enter a new ground of rejection for claims 18-20 under 35 U.S.C.
§ 112(b).
Regarding the affirmed rejection(s), 37 C.F.R. § 4I.52(a)(l) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
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Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b )(1 ), in order to preserve the right to
seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejection, the effective date of the affirmance is deferred until
conclusion of the prosecution before the Examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§§ 41.50(±), 4I.52(b).
AFFIRMED
37 C.F.R. § 4I.50(b)
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