Ex Parte Joshi

Patent Trial and Appeal Board

Apr 24, 2017

13279174 (P.T.A.B. Apr. 24, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/279,174 10/21/2011 Venkatesh Joshi 84268745 5903
56436 7590 04/26/2017
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
MORLAN, ROBERT M
ART UNIT PAPER NUMBER
2475
NOTIFICATION DATE DELIVERY MODE
04/26/2017 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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VENKATESH JOSHI
Appeal 2017-002607
Application 13/279,1741
Technology Center 2400
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 21—44, which constitute all the claims pending in this application
(Final Act. 1). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 The real party in interest identified by Appellant is ARUBA NETWORKS,
INC. Appeal Br. 3.
Appeal 2017-002607
Application 13/279,174
STATEMENT OF THE CASE
Appellant’s disclosed “Embodiments of the invention relate to
methods of transitioning voice clients among wireless networks.” Spec. | 8.
Claims 21 and 28, which are illustrative, read as follows:
21. A computer implemented method, comprising:
receiving, at a network monitor including one or more
hardware processors, one or more beacon frames including load
elements that characterize WiFi access point loads for associated
WiFi access points;
determining that a WiFi access point load of the WiFi
access point loads exceeds a threshold load; and
in response to a determination that the WiFi access point
load of the WiFi access point loads exceeds the threshold load,
transmitting a message from the network monitor to a WiFi
access point of the WiFi access points, wherein the WiFi access
point is associated with the WiFi access point load, wherein the
message comprises an instruction to cause the WiFi access point
to send a transition management message to a subset of voice
clients, wherein the subset of voice clients includes all idle voice
clients associated with the WiFi access point, and wherein the
transition management message comprises an instruction to
cause an idle voice client of the idle voice clients to transition to
another WiFi access point.
28. The method of claim 21, wherein the message
comprises the instruction to cause the WiFi access point to send
the transition management message only to voice clients that are
idle and not to voice clients that are not idle.
Claims 28, 36, and 44 stand rejected under 35 U.S.C. § 112, first
paragraph,2 as failing to comply with the written description requirement.
See Final Act. 2—3.
2 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Feahy-Smith America Invents Act of 2011. See, e.g.,
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Application 13/279,174
Claims 21—24, 26, 29—32, 34, 37-40, and 42 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Zou et al. (US 2011/0250891
Al; Oct. 13, 2011) andHasse (US 2005/0208950 Al; Sept. 22, 2005).
See Final Act. 4—17.
Claims 25, 27, 33, 35, 41, and 43 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Zou, Hasse, and IEEE Standard for
Information technology — Telecommunications and information exchange
between systems — Local and metropolitan area networks — Specific
requirements; Part 11: Wireless LAN Medium Access Control (MAC) and
Physical Layer (PHY) Specifications, Amendment 2: Fast Basic Service Set
(BSS) Transition, IEEE Std. 802. llr, 2008. See Final Act. 17—21.
Rather than repeat the arguments here, we refer to the Briefs
(“Appeal Br.” filed Mar. 18, 2016; “Reply Br.” filed Dec. 1, 2016) and the
Specification (“Spec.” filed Oct. 21, 2011) for the positions of Appellant and
the Final Office Action (“Final Act.” mailed Sept. 21, 2015) and Examiner’s
Answer (“Ans.” mailed Oct. 5, 2016) for the reasoning, findings, and
conclusions of the Examiner. Only those arguments actually made by
Appellant have been considered in this decision. Arguments that Appellant
did not make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
ISSUES
The dispositive issues presented by Appellant’s arguments are as
follows:
Final Act 2, 3.
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Does the Examiner err in finding “the message comprises the
instruction to cause the WiFi access point to send the transition management
message only to voice clients that are idle and not to voice clients that are
not idle,” as recited in claim 28, is unsupported by Appellant’s written
description?
Does the Examiner err in finding the combination of Zou and Hasse
teaches or suggest “a determination that the WiFi access point load of the
WiFi access point loads exceeds the threshold load,” as recited in claim 21?3
ANAFYSIS
Rejection under 35 U.S.C. § 112, 1st paragraph
The Examiner finds the phrase “the message comprises the instruction
to cause the WiFi access point to send the transition management message
only to voice clients that are idle and not to voice clients that are not idle,” as
recited in claim 28, is not supported by Appellant’s Specification because
“[t]he [Specification teaches sending the message to idle voice clients
attached to the access point, but does not limit the message to only the idle
voice clients.” Final Act. 2 (emphasis in original). The Examiner explains
“Appellant’s [Specification does not provide a reason to exclude the subject
matter[,] does not describe alternate features (i.e. other station types[), and]
mentions nothing other than idle voice clients.” Ans. 4.
Appellant contends paragraphs 8 and 18 of the Specification, “which
indicate that the ‘BSS Transition Management Request frame [is sent] to pi
3 Appellant’s arguments present additional issues for claim 21. However,
because the identified issue is dispositive of the appeal, we do not reach the
additional issues.
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Application 13/279,174
associated voice clients which are idle,’ clearly provide support for sending
the BSS Transition Management Request frame to only all of the associated
voice clients which are idle.” Appeal Br. 8 (emphasis in original). In
particular, paragraph 8 of the Specification provides a meaningful distinction
between voice clients that are idle and those inherently not idle. Reply Br. 3.
Appellant further contend paragraph 3 of the Specification provides a reason
to exclude non-idle voice clients because paragraph 3 of the Specification
describes maintaining a high Quality of Service (QoS), and handing off non-
idle voice clients “inherently may negatively impact QoS.” Reply Br. 3.
We agree with the Examiner. The limitation “only” idle voice clients
does not appear in the claims as originally filed, but rather was added during
prosecution. Compare Spec. 5—6 (original claims), with Amendment after
Final Rejection 2—5 (Jan. 26, 2015) (amended claims). The language at
lines 2—3 of claim 28 recites “to send the transition management message
only to voice clients that are idle and not to voice clients that are not idle”
(Appeal Br. 29 (Claims App’x) (emphasis added)). The ordinary meaning of
“only,” which is consistent with claim 28, is “adverb ... 1 a : as a single
fact or instance and nothing more or different. . . b : solely, exclusively.”
Merriam-Webster’s Collegiate Dictionary 812 (10th ed. 1999). Sending a
transition management message to “only” voice clients that are idle is
sending the transition management message exclusively to idle voice clients,
and not to voice clients that are not idle — a negative limitation.
It is well settled that negative limitations are permissible forms of
expression to define the scope of a claimed invention. See generally Animal
Legal Defense Fund v. Quigg, 932 F.2d 920, 923 (Fed. Cir. 1991). But the
mere absence of a positive recitation in the original disclosure is not basis to
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exclude the limitation. MPEP § 2173.05. Rather, “[njegative claim
limitations are adequately supported when the specification describes a
reason to exclude the relevant limitation.” Santarus, Inc. v. Par
Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (emphasis
added). “The ‘reason’ required by Santarus is provided, for instance, by
properly describing alternative features of the patented invention.” Inphi v.
Netlist, Inc., 805 F.3d 1350, 1356 (Fed. Cir. 2015) (emphasis added).
We agree with Appellant that paragraphs 8 and 18 the Specification
support sending a message to voice clients which are idle. See Appeal Br.
7—8; Reply Br. 2—3. However, Appellant has not provided sufficient
evidence and/or a persuasive line of technical reasoning explaining why
sending a message to non-idle voice clients would result in handing off non-
idle voice clients (see Reply Br. 3) and therefore providing a reason to
exclude non-idle voice clients. Moreover, paragraphs 8 and 18 of the
Specification do not provide a meaningful distinction between idle and non-
idle voice clients providing a reason that sending a message to “all
associated voice clients which are idle” would preclude also sending the
message to non-idle voice clients. Therefore, we are not persuaded by
Appellant’s arguments.
We find the original disclosure does not reasonably convey such a
reason for exclusion. Therefore, the disclosure does not “‘clearly allow
persons of ordinary skill in the art to recognize that [the inventor] invented
what is claimed.”’ Ariad Pharmaceuticals v. Eli Lilly and Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (enbanc) (quoting Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1562—63 (Fed. Cir. 1991)). “[W]hilethe description
requirement [of § 112] does not demand any particular form of disclosure, or
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that the specification recite the claimed invention in haec verba, a
description that merely renders the invention obvious does not satisfy the
requirement.” Id. at 1352 (citations omitted). Therefore, to the extent that
Appellant contends that the recited negative limitation would have been
obvious from the original disclosure, such a contention is unavailing in light
of Ariad. Accordingly, Appellant has not persuaded us the Examiner erred
in rejecting claim 28 as unsupported by the written description of
Appellant’s Specification. For the foregoing reasons, we sustain the
rejections of (1) claim 28; and (2) claims 36 and 44, which recite limitations
substantially similar to that argued regarding claim 28 and were not
separately argued with particularity (see Appeal Br. 7—8).
Rejection under 35 U.S.C. § 103(a)
The Examiner relies on Zou to teach determining a WiFi access point
load exceeds a threshold, as recited in claim 21. Final Act. 4—5 (citing
Zou 1131, 50-51); see also Ans. 5—9 (additionally citing Zou H 35, 45, 50).
The Examiner explains “if the system is overloaded, it will send a paging
message from the network, to the cell, to the idle device to cause it to
reselect.” Ans. 8; see also id. nn.l 1—13 (citing Zou H 35, 45, 50) (emphasis
omitted). The Examiner further explains “the system being overloaded
would be the system having a load that is above a threshold. However, Zou
specifically teaches use of thresholds in” paragraph 50 [of Zou]. Ans. 8 n. 11
(emphasis omitted).
Appellant argues, inter alia, that Zou does not teach or suggest a
determination that a WiFi access point load of WiFi access point loads
exceeds a threshold load. See generally Appeal Br. 13; Reply Br. 4—5.
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Accepting, arguendo, that Zou teaches determining that both system and
access network loads exceed a threshold, we nonetheless agree with
Appellant.
Zhou’s wireless communication “system” (Zou 33) teaches
including access points 215 (Zhou Fig. 2,133) that provide service within
microcells. “Moreover, when the system is overloaded, the speed factor
may be a secondary consideration” in redirection decisions. Zhou 45.
Although the Examiner asserts a paging message is sent from a network to a
cell if a system is overloaded (Ans. 8), the Examiner does not point to, nor
do we find, any teaching of Zhou of determining that an access point 215
from the system exceeds a threshold load. Therefore, Zhou’s overloaded
system alone (145) does not teach or suggest the disputed limitation.
Turning to Zhou’s access network (Zhou 49, 50), Zhou teaches an
example of an overall load being relatively high when a measured load on an
“access network or system” is above a predetermined threshold load.
However, we find nothing in Zhou that teaches a determination that a WiFi
access point load exceeds a threshold load. To be sure, Zhou (1 6) does
teach “access points or access networks” can provide wireless connectivity
to mobile units, but one of ordinary skill would not understand this
disclosure to suggest access points are the same as access networks,
particularly in light of Zhou’s teaching that “access network or system”
loads are above a predetermined threshold load (Tflf 49, 50), and that “[b]ase
stations or access points” provide wireless connectivity in a small area (1 6).
Therefore, the disclosure of Zhou’s access network load exceeding a
predetermined threshold load from paragraphs 49 and 50 does not teach or
suggest the disputed limitation.
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We find Appellant demonstrates that the Examiner errs in finding the
combination of Zou and Hasse teaches or suggests the disputed limitation of
claim 21. Accordingly, we do not sustain the rejections of (1) claim 21; (2)
independent claims 29 and 37, which include limitations substantially
similar to the disputed limitation (compare Appeal Br. 28 (Claims App’x),
with id. at 29—30, 32—33) and were rejected on substantially the same bases
as claim 21 (see Final Act. 9—10, 13—14); and (3) claims 22—27, 30-35, and
38-43,4 which variously depend from claims 21, 29, and 37 (see In re Fine,
837 F.2d 1071, 1076 (Fed. Cir. 1988) (“Dependent claims are nonobvious
under section 103 if the independent claims from which they depend are
nonobvious.”)).
DECISION
The decision of the Examiner to reject claims 28, 36, and 44 under
35 U.S.C. § 112, first paragraph, is affirmed.
The decision of the Examiner to reject claims 21—27, 29—35, and 37—
43 under 35 U.S.C. § 103(a) is reversed.
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). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
AFFIRMED-IN-PART
4 We note that Appellant incorrectly identifies claims 28, 36, and 44 as
rejected under 35 U.S.C. § 103(a). Compare Appeal Br. 23—25, with
Final Act. 26—27.
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