Ex Parte Hassan et al

Patent Trial and Appeal Board

Sep 11, 2017

11899350 (P.T.A.B. Sep. 11, 2017)

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.
11/899,350 09/05/2007 Amer A. Hassan 320768.02 7044
69316 7590 09/13/2017
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
EBRAHIM, ANEZ C
ART UNIT PAPER NUMBER
2467
NOTIFICATION DATE DELIVERY MODE
09/13/2017 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):
u sdocket @ micro soft .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, THOMAS W. KUEHNEL,
and DEYUN WU1
Appeal 2017-003712
Application 11/899,350
Technology Center 2400
Before ALLEN R. MacDONALD, MICHAEL M. BARRY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Microsoft Technology
Licensing, LLC. See Appeal Br. 2
Appeal 2017-003712
Application 11/899,350
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—6, 24—33, and 35—37. Claims 7—23 and 34 have been cancelled. App. Br.
20-23. We have jurisdiction under 35 U.S.C. § 6(b).2
Representative Claim
Representative claims 1 and 3 under appeal read as follows (emphasis,
formatting, and brackets added):
1. A method for accessing, by a wireless client computing
device configured to communicate via a wireless access point that is
separate from the client computing device, a spectrum, where the
wireless client computing device includes at least one processor and
memory, the method comprising:
[A.] receiving, by the wireless client computing device in
response to auctioning of the spectrum by a spectrum
provider that is separate from the wireless client
computing device and the wireless access point, an offer
to access the spectrum,
[i.] where the auctioning comprises sending the offer,
[ii.] where the offered access is subject to one or more
constraints,
[iii.] where the auctioning is initiated by the spectrum
provider as opposed to the wireless client
computing device; and
2 “The Patent Trial and Appeal Board shall—(1) on written appeal of an
applicant, review adverse decisions of examiners upon applications for
patents pursuant to section 134(a). . .” 35 U.S.C. § 6(b)(1).
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[B.] responding, by the wireless client computing device, to the
offer,
[i.] where the responding comprises the wireless client
computing device performing one of
[a.] accepting the offer,
[b.] rejecting the offer, and
[c.] countering the offer.
3. The method of claim 1, where the one or more constraints
comprise at least an amount of acceptable spectrum interference.
Rejections
The Examiner rejected claims 1, 2, 4, 5, 25, 26, 28, 30, 32, 33, and 35
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Calisti et al. (US 2009/0191858 Al; published July 30, 2009) and Buddhikot
et al. (US 2006/0083205 Al; published. April 20, 2006).3
The Examiner rejected claims 3, 27, and 34 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Calisti, Buddhikot ’205, and
Buddhikot et al. (US 2008/0108365 Al; published May 8, 2008).4
The Examiner rejected claims 6, 31, and 37 under 35 U.S.C. § 103(a)
as being unpatentable over Calisti, Buddhikot ’205, and Gazdzinski et al.
(US 2005/0100076 Al; published May 12, 2005).5
3 Separate patentability is not argued for claims 2, 4, 5, 25, 26, 28, 30, 32,
33, and 35. Except for our ultimate decision, these claims are not discussed
further herein.
4 Separate patentability is not argued for claims 27 and 34. Except for our
ultimate decision, these claims are not discussed further herein.
5 Separate patentability is not argued for claims 6, 24, 29, 31, 36, and 37.
Rather, these claims are argued by reference to the arguments for claims 1,
3
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Application 11/899,350
The Examiner rejected claims 24, 29, and 36 under 35 U.S.C. § 103(a)
as being unpatentable over Calisti, Buddhikot ’205, and Asher et al. (US
2005/0222914 Al; published Oct. 6, 2005).
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
Did the Examiner err in rejecting claim 3 as being obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.* * * 6
25, and 32. App. Br. 17—18. Thus, the rejections of these claims turn on our
decision as to claim 1. Except for our ultimate decision, these claims are not
discussed further herein.
6 Appellants present a number of general arguments (App. Br. 5—10) labelled
as “Response to Examiner’s Comments” (App. Br. 5). These general
arguments are not specifically directed to any particular claim rejection. In
an ex parte appeal, this Board does not review Examiner comments, but
rather the adverse decision of the Examiner (35 U.S.C. § 6(b)(1)).
Therefore, we treat these general arguments only to the extent they are
applicable to the rejection of claim 1.
To the extent that these general arguments attempt to incorporate by
reference (App. Br. 5, 7, 9) the prior reply filed August 23, 2015 by the
Appellants, these arguments do not comply with the 37 C.F.R. § 41.37
(c)(l)(iv) ([T]he brief shall contain “[t]he arguments of appellant with
respect to each ground of rejection, and the basis therefor, with citations of
the statutes, regulations, authorities, and parts of the Record relied on.”).
We review based solely on the arguments presented in the Briefs.
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1
Appellants contend the Examiner erred in rejecting claim 1 because:
[T]he Examiner responded to Applicants’ argument that Calisti
is not directed to spectrum auctioning ... by claiming that the
argument is not persuasive and then by pointing out that
Buddhikot teaches spectrum auctioning (FOA, pg. 12, lines
9-13). Appellants agree that Buddhikot discusses aspects of
spectrum auctioning but also maintain that Calisti is not
directed to spectrum auctioning at all.
App. Br. 5 (emphasis added).
We disagree. Although Appellants provide numerous additional
pages of argument to support why Calisti is not directed to spectrum
auctioning, we fail to see the relevance of this line of argument (or
Examiner’s response thereto) as the Appellants explicitly agreed (see above)
that Buddhikot ’205 discloses aspects of spectrum auctioning. That the
Examiner may have erred as to Calisti, by mistakenly finding it also
discloses spectrum auctioning, is not sufficient alone to show the rejection is
in error given the Examiner’s finding (Final Act 12) that Buddhikot ’205
teaches spectrum auctioning.
2
Appellants also contend the Examiner erred in rejecting claim 1
because:
Buddhikot actually teaches a Spectrum Information and
Management (“SPIM”) Server 310 that allocates and leases
spectrum to a Radio Access Network (“RAN”) Manager 315
(11 [0037]-[0038]), neither of which is a client device such as
mobile device 340.
App. Br. 8.
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We disagree. Appellants attack Buddhikot ’205 singly for lacking a
teaching (a client device) that the Examiner relied on a combination of
references to show. Particularly, the Examiner points to Calisti for this
limitation. Final Act. 3. It is well established that one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 413, 426
(CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants argue a finding the Examiner never made. This form of
argument is unavailing to show Examiner error.
3
Appellants further contend the Examiner erred in rejecting claim 1
because:
Buddhikot’s FIG. 8 does not teach what the Examiner alleges.
Instead, “FIG. 8 depicts a high level skeleton diagram of an
embodiment of a Spectrum Lease (SPEL) Protocol” (1 [0063]).
But this SPEL protocol is not used by Buddhikot’s client device
340 or the like.
App. Br. 10.
We disagree. Again, Appellants attack Buddhikot ’205 for lacking a
teaching (protocol used by Buddhikot’s client device) that the Examiner did
not rely on the reference to show. As to claim 1, the Examiner only finds
that Buddhikot ’205’s auctioning comprises sending an offer broadcast in
response to auctioneer initiated auctioning of the spectrum. Final Act. 4.
This argument does not identify an error in the actual basis of the rejection
of claim 1.
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4
Appellants contend the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
[N]o combination of the [items (i)—(x)] listed by Calisti teach or
suggest an offer in response to auctioning spectrum, as
encompassed by claim 1.
App. Br. 12 (emphasis added).
We disagree. As we discuss above, Appellants agreed Buddhikot
’205 discloses aspects of spectrum auctioning. Each reference cited by the
Examiner must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole. See Merck, 800 F.2d at 1097.
5
Appellants also contend the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
[Buddhikot ’205] fails to teach an offer in response to a
spectrum provider auctioning spectrum, as encompassed by
claim 1.
App. Br. 12 (emphasis added).
We disagree. Again, Appellants attack Buddhikot ’205 singly for
lacking a teaching (an offer in response to a spectrum provider auctioning
spectrum) that the Examiner relied on a combination of references to show.
Particularly, the Examiner relies on Calisti for an offer in response to a
provider auction (Final Act. 3 4) and Buddhikot ’205 for spectrum
auctioning (as discussed above).
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6
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
Appellants point out that the “rationale to support a
conclusion that the claim would have been obvious is that all
the claimed elements were known in the prior art and one
skilled in the art could have combined the elements as claimed
by known methods with no change in their respective functions,
and the combination yielded nothing more than predictable
results to one of ordinary skill in the art” (KSR v. Teleflex, 550
U.S. at 12, 82 USPQ2d at 1395; underlining added). “If any of
these findings cannot be made, then this rationale cannot be
used to support a conclusion that the claim would have been
obvious to one of ordinary skill in the art” (MPEP §2143;
underlining added). Accordingly, because the Examiner’s
proposed combination would require changes to the
functionality of Calisti, the Examiner’s rationale cannot
properly be used to support a conclusion of obviousness.
App. Br. 13 (emphasis added). Additionally Appellants argue “the KSR
Court held that a permissible combination must be made “with no change in
their respective functions.” Reply Br. 9.
We disagree. First, no such “no change” quotation appears in KSR.
The Court’s closest statement is the quotation:
For over a half century, the Court has held that a “patent for a
combination which only unites old elements with no change in
their respective functions . . . obviously withdraws what is
already known into the field of its monopoly and diminishes the
resources available to skillful men.” Great Atlantic & Pacific
Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152,
71 S.Ct. 127, 95 L.Ed. 162 (1950).
KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 415-16 (2007) (ellipsis in
original). Second, this quotation is a not a mandate that shows the only way
to demonstrate a claim is obvious. Rather it is exemplary as the Court
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follows it with further examples. Third, Appellants overlook the Court’s
explicit statement:
The principles underlying these cases are instructive
when the question is whether a patent claiming the combination
of elements of prior art is obvious. When a work is available in
one field of endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability. For the
same reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using
the technique is obvious unless its actual application is beyond
his or her skill.
KSR, 550 U.S. at 417 (emphasis added). Contrary to the premise of
Appellants’ argument that no change is permitted, the KSR Court explicitly
contemplates otherwise (i.e., “variations”).
7
Appellants also contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Appellant submits that such a change in function [of Calisti]
would yield unpredictable results—that is, it is unknown what
would occur if Calisti’s connection characteristics negotiations
where modified with Buddhikot’s spectrum auctioning.
Reply Br. 9.
We disagree. Although Appellants assert a change in function of
Calisti would yield unpredictable results, we do not find where Appellants
have provide support for this assertion. Rather, we find Appellants’
assertion to be conclusory. Such unsupported attorney argument, is entitled
to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
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8
Appellants contend that the Examiner erred in rejecting claim 3 under
35 U.S.C. § 103(a):
First, the client-originated spectrum requests of
Buddhikot365 fail to teach a client receiving an offer to access
spectrum, as encompassed by claim 1.
App. Br. 16 (emphases omitted).
Second, Buddhikot365 teaches a client initiating a
request for spectrum by sending a spectrum request to a base
station, as detailed above. But this is essentially opposite of an
auctioneer-initiated auctioning of spectrum in which a spectrum
provider sends an [sic] spectrum offer to a client, as
encompassed by claim 1.
Thus, as understood by those skilled in the art,
Buddhikot365 fails to teach a client receiving a spectrum offer
in response to auctioneer-initiated auctioning of spectrum, as
encompassed by claim 1.
App. Br. 16 (emphases omitted).
We disagree. Appellants attack Buddhikot ’365 singly for lacking a
teaching (limitations “as encompassed by claim 1”) that the Examiner relied
on a combination of other references to show. Particularly, the Examiner
points to Calisti and Buddhikot ’205 for these claim 1 limitations. Final Act.
3^4. Again, Appellants argue findings the Examiner never made.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1—6, 24—33, and
35—37 as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1—6, 24—33, and 35—37 are not patentable.
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DECISION
The Examiner’s rejections of claims 1—6, 24—33, and 35—37 are
affirmed.7
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)(iv).
AFFIRMED
7 As the Examiner has shown that all the claims are unpatentable, we do not
also reject Appellants’ claims 1—6, 24—33, and 35—37 under 35 U.S.C. § 101
as not being directed to patent eligible subject matter. However, should
there be further prosecution of these claims; the Examiner’s attention is
directed to our following concern.
Appellants’ claims appear to focus on the abstract idea of auctioning
spectrum. We find relevant the Court’s decision in Alice Corp. Pty. Ltd. v.
CLSBankInt’l, 134 S. Ct. 2347 (2014) and any subsequent agency
guidance. The Supreme Court in Alice set forth a two-part test to determine
compliance of a claim with § 101. The Court held that a mere instruction to
implement an abstract idea on a computer cannot impart patent eligibility.
134S. Ct. at 2357-59.
11