Ex Parte Jung et al

Patent Trial and Appeal Board

Mar 28, 2013

10816364 (P.T.A.B. Mar. 28, 2013)

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.
10/816,364 03/31/2004 Edward K. Y. Jung SE1-0015-US 1688
80118 7590 03/29/2013
Constellation Law Group, PLLC
P.O. Box 220
Tracyton, WA 98393
EXAMINER
SURVILLO, OLEG
ART UNIT PAPER NUMBER
2442
MAIL DATE DELIVERY MODE
03/29/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EDWARD K. Y. JUNG and CLARENCE T. TEGREENE
____________

Appeal 2010-011471
Application 10/816,364
Technology Center 2400
____________

Before DENISE M. POTHIER, BRUCE R. WINSOR, and
GREGG I. ANDERSON, Administrative Patent Judges.

ANDERSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1 through 180. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention is described and claimed as a method and
system relating to mote networks having one or more sets of content
indexes. The content indexes include sensor, control and routing
information. All or portions of each set of content indexes are controlled or
“administered” by a corresponding set of motes. A second set of content
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indices and second set of motes are created and a combined, “federated,”
content index is created into an aggregated content index containing the
information from both the first and second content indexes using a gateway
mote included within the first set of motes. See generally Spec. 2, para. 5;
See Drawings Figs. 2-4
Claim 1, with parentheticals added, is illustrative:
1. A method comprising:
(a) creating a plurality of first-administered content indexes for a first
set of motes;
(b) aggregating the plurality of first-administered content indexes of
the first set of motes into an aggregated content index using a gateway mote
included within the first set of motes;
(c) creating one or more second-administered content indexes for a
second set of motes;
(d) obtaining at least a part of the second-administered content
indexes of the second set of motes; and
(e) creating a federated index from the aggregated content index
aggregated by the gateway mote and at least a part of the one or more
second-administered content indexes.

THE REJECTIONS
1. The Examiner rejected claims 1, 2-5, 8, 9, 11, 12, 14, 16, 19-21,
23, 25, 31-39, 42-46, 48, 50-53, 56, 57, 59, 60, 62, 64, 67-69, 71, 73, 79-87,
90-94, 96, 98-101, 104, 105, 108-112, 114-117, 119-122, 125, 126, 129-131,
133, 135, 137, 138, 140, 142, 144-147, 150, 151, 154-156, 158, 160, 162,
163,1 65, 167, 169-172, 175, and 176 under 35 U.S.C. § 103(a) as
unpatentable over Mulgund (US 2002/016175 A1; Oct. 31, 2002)
(“Mulgund”) in view of Bennett (US 5,615,367, Mar. 25, 1997) (“Bennett”)
in further view of Samuel Madden et al., The Design of an Acquisitional
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Query Processor for Sensor Networks, SIGMOD 2003, June 9-12, 2003, pp.
1-14, (“Madden I”). Ans. 9-40.
1

2. The Examiner rejected claims 6, 7, 54, and 55 under 35 U.S.C. §
103(a) as being unpatentable over Mulgund in view of Bennett in further
view of Madden I in further view of Chiloyan (US 7,165,109 B2, filed Jan.
12, 2001)(“Chiloyan”). Ans. 40-41.
3. The Examiner rejected claims 10, 13, 15, 17, 18, 22, 24, 40, 41, 49,
58, 61, 63, 65, 66, 70, 72, 88, 89, 97, 113, 118, 132, 134, 136, 139, 141, 143,
157, 159, 161, 164, 166, and 168 under 35 U.S.C. § 103(a) as being
unpatentable over Mulgund in view of Bennett in further view of Madden I
in further view of Kung (US 2005/0021724 A1, Jan. 27, 2005 (filed June 19,
2004 and claiming priority to Provisional App. No. 60/485,544, filed July 7,
2003)(“Kung”). Ans. 41-61.
4. The Examiner rejected claims 26 and 74 under 35 U.S.C. § 103(a)
as being unpatentable over Mulgund in view of Bennett in further view of
Madden I and in further view of Chiloyan. Ans. 58.
5. The Examiner rejected claims 27-30 and 75-78 under 35 U.S.C. §
103(a) as being unpatentable over Mulgund in view of Bennett in further
view of Madden I and in further view of Godlewski (US 6,421,354 B1, July
16, 2002)(“Godlewski”). Ans. 59-60.
6. The Examiner rejected claims 47 and 95 under 35 U.S.C. § 103(a)
as being unpatentable over Mulgund in view of Bennett in further view of

1
Throughout this opinion, we refer to (1) the Appeal Brief filed April 23,
2010 (“App. Br.”); (2) the Examiner’s Answer mailed July 12, 2010
(“Ans.”); and (3) the Reply Brief filed August 12, 2010 (“Reply Br.”).
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Madden I and in further view of Regli (US 2005/0141706 A1, June 30,
2005)(“Regli”). Ans. 60-61.
7. The Examiner rejected claims 102, 103, 106, 123, 124, 127, 148,
149, 152, 173, 174, and 177 under 35 U.S.C. § 103(a) as being unpatentable
over Mulgund in view of Bennett in further view of Madden I and in further
view of Nelson (US 2004/0122849 A1, June 24, 2004)(“Nelson”). Ans. 61-
64.
8. The Examiner rejected claims 107, 128, 153, and 178 under 35
U.S.C. § 103(a) as being unpatentable over Mulgund in view of Bennett in
view of Madden I and in further view of Samuel Madden et al., TAG: a Tiny
Agregation Service for Ad-Hoc Sensor Networks, 2002, pp. 1-14 (“Madden
II”). Ans. 64-69.
9. The Examiner entered a new ground of rejection on appeal and
rejected claims 108-128 and 154-178 under 35 U.S.C. § 112, ¶ 2, as
indefinite. Ans. 3-7.
10. The Examiner withdrew rejection of claims 108-128 and 154-178
under 35 U.S.C. § 112, ¶ 1, as failing to comply with the written description
requirement. Ans. 7.

ISSUES
2

1. Under § 103, has the Examiner erred in rejecting claims 1, 2-5, 8, 9, 11,
12, 14, 16, 19-21, 23, 25, 31-39, 42-46, 48, 50-53, 56, 57, 59, 60, 62, 64, 67-

2
Appellants filed a Supplemental Reply Brief on October 6, 2011, to bring
to our attention the adequate notice requirements discussed in In re Jung,
637 F.3d 1356 (Fed. Cir. 2011). We find the rejections made by the
Examiner gave adequate notice to Appellants to determine whether to
continue prosecution and to counter the rejections.
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69, 71, 73, 79-87, 90-94, 96, 98-101, 104, 105, 108-112, 114-117, 119-122,
125, 126, 129-131, 133, 135, 137, 138, 140, 142, 144-147, 150, 151, 154-
156, 158, 160, 162, 163,1 65, 167, 169-172, 175, and 176 by finding that
Mulgund in view of Bennett in further view of Madden I teach or suggest:
(i) “aggregating the plurality of first-administered content indexes of the first
set of motes into an aggregated content index using a gateway mote included
within the first set of motes” and (ii) “creating a federated index from the
aggregated content index aggregated by the gateway mote and at least a part
of the one or more second-administered content indexes”?
2. Did the Examiner err in rejecting claims 108-128 and 154-178
under 35 U.S.C. § 112, ¶ 2, as indefinite?

ANALYSIS
Claims 1, 2-5, 8, 9, 11, 12, 14, 16, 19-21, 23, 25,
31-39, 42-46, 48, 50-53, 56, 57, 59, 60, 62, 64, 67-69, 71, 73, 79-87, 90-94,
96, 98-101, 104, 105, 108-112, 114-117, 119-122, 125, 126, 129-131, 133,
135, 137, 138, 140, 142, 144-147, 150, 151, 154-156, 158, 160, 162, 163,1
65, 167, 169-172, 175, and 176

With respect to claims 1, 2-5, 8, 9, 11, 12, 14, 16, 19-21, 23, 25, 31-
39, 42-46, 48, 50-53, 56, 57, 59, 60, 62, 64, 67-69, 71, 73, 79-87, 90-94, 96,
98-101, 104, 105, 108-112, 114-117, 119-122, 125, 126, 129-131, 133, 135,
137, 138, 140, 142, 144-147, 150, 151, 154-156, 158, 160, 162, 163,1 65,
167, 169-172, 175, and 176, Appellants argue two limitations from
illustrative claim 1 as the claimed features not shown in the combination of
Mulgund, Bennett and Madden I, styled as clauses 1(b) and 1(e) of claim 1.
App. Br. 31-37. No other limitation of the preceding claims is separately
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argued on appeal. We will therefore focus our analysis on those same
clauses.
Clause 1(b) of claim 1 is as follows: “[A]ggregating the plurality of
first-administered content indexes of the first set of motes into an aggregated
content index using a gateway mote included within the first set of
motes….”
The Examiner cites to Mulgrund as showing this feature. Ans. 9
(citing Mulgrund, ¶¶ [0062], [0026], [0005], [0025]). Appellants respond
and assert that Mulgund fails to teach or suggest clause 1(b). App. Br. 36
(citing Mulgund, ¶ [0062]).
The Examiner finds that Mulgund teaches retrieving information
stored at a node.
3
The Examiner further finds that the information includes
an identity of each of the sensing nodes as well as any metadata about each
node. Ans. 9. At Figure 2, the information, in the form of sensor data from
a node, is made available to, i.e., retrievable from a knowledge base 18 from
a node. Id. (Mulgund, ¶ [0026], ll. 11-17). The information is then used to
form a relational database. Id. (citing Mulgund, Fig. 3 and Fig. 4, Abstract,
¶¶ [0005], [0025]).
Appellants assert Mulgund states “visiting a node involves retrieving
the information stored at the node, and updating the local database." App.
Br. 36 (citing Mulgund, ¶ [0062]). In Appellants’ view, this teaching is
different from two emphasized parts of clause 1(b): 1) first administered

3
The Examiner found that the nodes of Mulgund were the same as the motes
of the claims. Ans. 12. This finding is not disputed by Appellants. We will
use the terminology from Mulgund unless otherwise indicated.
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content indexes; and 2) using a gateway mote included within the first set of
motes. Id.
On the record before us, we find no error in the Examiner’s rationale
for finding Mulgund teaches clause 1(b). The Abstract of Mulgund, relied
on by the Examiner (Ans. 9), discloses, among other things, a method and
system for aggregating into a relational database model (e.g., an aggregated
content index) the state of an ad hoc network comprised of uniquely
addressable distributed sensor nodes. Additionally, Figure 4 cited by the
Examiner (Ans. 9) teaches various nodes (e.g., A-C) each have indices or
tables (e.g., 27A-C) that are aggregated into an aggregated content index
(e.g., Nodes 20 and Data Table list 30). See Mulgund, ¶ 0042; Fig. 4. The
Mulgund system has at least a first set and second set of motes as shown in
Figure 1 (two sets of nodes 2).
Appellants’ conclusory argument that Mulgund lacks any showing of
“first-administered content indexes” is insufficient to overcome the prima
facie showing of the Examiner on this feature. Ans. 9. The Examiner’s
reliance on Mulgund’s Figure 3 is well founded. Figure 3 shows sensor data
being aggregated at a node. Giving the claim its broadest reasonable
interpretation, content indexes, or tables, are updated in Mulgund. In
Mulgund, the network modeling agent visits a first sensor node, queries the
node at the top of a stack for a list of current links to the node at the top,
compares the list of current links to a list of historical links to the node at the
top of the stack and updates the historical link and historical node
information. Mulgund, ¶ [0007]. The Examiner relied on this cited portion
of Mulgund in his rejection. Ans. 10.
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Appellants specifically argue that Mulgund does not teach using a
gateway mote included within the first set of motes also recited in clause
1(b). App. Br. 36. The Examiner does not use the teachings of Mulgund to
show this feature but instead relies on Madden I. Ans. 71-72. We agree
with the Examiner. The rejection, to the extent it is needed to show a
gateway mote, relies on Madden I. Ans. 11. Specifically, Madden I teaches
an aggregated content index using a gateway mote (e.g., a shared, local
location or single-node where joins are between storage points on the same
node are allowed)or, in the Examiner’s words, the gateway mote is at the
root of a routing tree, which interacts directly with a base station. Id. (citing
Madden I, Fig. 1; §3.1 ¶4, see also Madden I § 2.2). The Examiner has
provided a reasonable basis for this finding, and Appellants have not
rebutted it with any persuasive argument or evidence.
The second disputed clause is clause 1(e) of claim 1. Clause 1(e) is as
follows: “[C]reating a federated index from the aggregated content index
aggregated by the gateway mote and at least a part of the one or more
second-administered content indexes….”
The Examiner uses Bennett in combination with Mulgund teach this
feature. Ans. 10-11. Appellants assert neither Mulgund, Bennett nor
Madden I teaches or suggests the “text” of clause 1(e) of Applicants’ claim
1. App. Br. 36.
While noting Mulgund “inherently teaches” a “federated index”, the
Examiner specifically relies on Bennett as expressly teaching a federated
index in showing the creation of a design document from first and second
tables, each table containing an index. Ans. 10-11 (citing Bennett, Summary
of the Invention, Fig. 5A). The Examiner finds the person of ordinary skill
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in the art would modify the network of Mulgund for aggregating sensor data
into a relational database by creating a federated index from the aggregated
content index of Bennett. Id.
Appellants pull quotes from each of the three references exactly as
cited by the Examiner. The quoted language is summarized here as relevant
to the analysis. Mulgund teaches visiting a node, retrieving information
stored there and updating the local database. App. Br. 36 (citing Mulgund, ¶
[0062]). Bennett teaches design documents linked together different tables,
so that information stored in separate tables appears to the user to come from
one place. Id. (citing Bennett, Summary). Madden I teaches two storage
points are joined on the same node, when sensor tupples, i.e., rows of data in
a table, arrive at the storage point, they are joined with table rows already
present. Id. (citing Madden I, § 3.1, ¶4).
The primary argument made by Appellants is that the “direct
quotations” pulled from the references are very different from clause 1(e).
App. Br. 37. The test of whether a reference teaches a claim limitation is not
whether the exact language is present but rather whether the limitation
istaught or suggested by the prior art when the claim language is given its
broadest reasonable interpretation in light of the specification. Further, we
are not aware of any particular definition of “federated index”
4
which would
cause us to construe the language in claim 1 any differently than its ordinary
meaning. Appellants provide none.
Appellants underscore certain language from clause 1(e), including
“second-administered content indexes.” The importance of underscoring, if

4
A dictionary definition of “federated” is: united in an alliance or federation.
http://www.merriam-webster.com/dictionary/federated.
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any, is not explained. Appellants make no argument that would persuasively
overcome the showing made by the Examiner. App. Br. 37.
The Examiner has met the burden of showing the feature of clause
1(e) is taught by the prior art. The Examiner’s findings that Bennett’s
Figure 5A shows two indexes joined into a “federated index” is reasonable
given the breadth of the claim language. Ans. 10. The two tables of
Bennett, or the sensor data stored in Mulgund’s nodes, are content indexes in
the sense of the claim language and the information, or content, is joined
together by a gateway mote as described in Madden I. See Ans. 10-11.
Additionally, Figure 1, which is relied up by Examiner (Ans. 9), teaches two
sets of nodes or motes (e.g., left and right clusters), further suggesting that
the data from each set is combined through access points 6 and within
database 12. See Bennett, ¶ 0020; Fig. 1.That the exact “text” of claim 1,
found in either clause 1(b) or 1(e), is not in these references is of no import.
We also find that the disclosures of Mulgund, Bennett and Madden I all
relate to sensor networks and/or relational databases.
In summary, as discussed above, Appellants argue the express
recitations of claim 1 are not present in the references cited. App. Br. 37.
This argument is not persuasive. Appellants argue that the “factual
conclusions” reached by the Examiner based on the references are
unsupported by evidence. Id. Appellants misapprehend the difference
between fact finding and conclusions. The Examiner relies on the evidence
of the references and made findings based thereon. Ans. 10-11. The
findings are supported by the references and are not overcome by
Appellants’ arguments. Appellants also argue the references are not
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combinable to meet the features of claim 1. Again, no specific argument is
made, and we find the unsupported conclusion unpersuasive.
The remaining claims in this grouping, claims 2-5, 8, 9, 11, 12, 14, 16,
19-21, 23, 25, 31-39, 42-46, 48, 50-53, 56, 57, 59, 60, 62, 64, 67-69, 71, 73,
79-87, 90-94, 96, 98-101, 104, 105, 108-112, 114-117, 119-122, 125, 126,
129-131, 133, 135, 137, 138, 140, 142, 144-147, 150, 151, 154-156, 158,
160, 162, 163,1 65, 167, 169-172, 175, and 176 are discussed below but are
not separately argued. Their patentability is dependent on the patentability
of claim 1. Having found no error with the Examiner’s findings on claim 1
as being obvious under § 103(a), we find no error in the Examiner’s findings
on obviousness as to the remainder of this group of claims.
Claims 2-5, 8, 9,11, 12, 14, 16, 19-21, 23, 25, 31-39, 42-46, 48,50-53,
56, 57,59, 60, 62, 64, 67-69, 71, 73, 79-87, 90-94, 96, 98-101, 104, and 105

Claims 2-5, 8, 9, 11, 12, 14, 16, 19-21, 23, 25, 31-39, 42-46, 48, 50-
53, 56, 57, 59, 60, 62, 64, 67-69, 71, 73, 79-87, 90-94, 96, 98-101, 104, and
105 depend either directly or indirectly from claim 1. Appellants argue
patentability of all these claims based on the patentability of claim 1.
Having found no error in the Examiner’s findings on claim 1, we find no
error in the rejection of the dependent claims.
Claims 108, 129, 154, 179, and 180
Independent claim 108 is a system claim written in parallel language
to claim 1. Corresponding clauses to 1(b) and 1(e) of claim 1 are argued on
the same basis as was done with claim 1. App. Br. 40-47.
Independent claim 129 is a method claim similar to claim 1. The
corresponding clauses to clauses 1(b) and 1(e) of claim 1, now styled 129(a)
and 129(c), are argued. App. Br. 50, 54.
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Independent claim 154 is a system claim similar to claims 1 and 129.
The corresponding clauses to clauses 1(b) and 1(e) of claim 1, now styled
154(a) and 154(c), are argued. App. Br. 57, 62.
Independent claim 179 is a system claim written in parallel language
to claim 1. Corresponding clauses to 1(b) and 1(e) of claim 1, now styled
179(b) and 179(c), are argued on the same basis as was done with claim 1.
App. Br. 67, 70.
Independent claim 180 is a system claim written in parallel language
to claim 1. Corresponding clauses to 1(b) and 1(e) of claim 1, now styled
180(b) (ii) and 180(c), are argued on the same basis as was done with claim
1. App. Br. 67, 70.
Appellants present no new argument over what was presented in
connection with claim 1 regarding claims 108, 129, 154, 179, and 180. For
reasons already stated in connection with claim 1, we find no error in the
Examiner’s rejection of claims 108, 129, 154, 179, and 180.
Claims 109-112, 114-117, 119-122, 125, and 126
Claims 109-112, 114-117, 119-122, 125, and 126 depend either
directly or indirectly from claim l08. Appellants’ sole argument for
patentability is based on claim 108. App. Br. 47-48. Having found no error
with the Examiner’s findings on claim 108 (Ans. 9-10, 32), we find no error
in the Examiner’s rejection of claims 109-112, 114-117, 119-122, 125,
and126.
Claims 130, 131, 133, 135, 137, 138, 140, 142, 144-147, 150, and
151.
Claims 130, 131, 133, 135, 137, 138, 140, 142, 144-147, 150, and 151
depend either directly or indirectly from claim 129. Appellants’ sole
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argument for patentability is based on claim 129. App. Br. 56. Having
found no error with the Examiner’s findings on claim 129 (Ans. 34-36,
which follows the rationale of the rejection of claim 1), we find no error in
the Examiner’s rejection of claims 130, 131, 133, 135, 137, 138, 140, 142,
144-147, 150, and 151.
Claims 155, 156, 158, 160, 162, 163, 165, 167, 169-172, 175, and
176.
Claims 155, 156, 158, 160, 162, 163, 165, 167, 169-172, 175, and 176
depend either directly or indirectly from claim 154. Appellants’ sole
argument for patentability is based on claim 154. App. Br. 64. Having
found no error with the Examiner’s findings on claim 154 (Ans. 34-36, 38),
we find no error in the Examiner’s rejection of claims 155, 156, 158, 160,
162, 163, 165, 167, 169-172, 175, and 176.
Claims 6, 7, 54, and 55
Claims 6, 7, 54, and 55 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mulgund in view of Bennett and Madden I, and
further in view of Chiloyan. Claims 6, 7, 54, and 55 depend either directly
or indirectly from claim 1 and, though the grounds for rejection differ, are
not separately argued beyond the arguments already made in regard to claim
1. App. Br. 80-81. Their patentability is dependent on the patentability of
claim 1. Having found no error with the Examiner’s findings on claim 1 as
being obvious under § 103(a), we find no error in the Examiner’s findings
on obviousness as to claims 6, 7, 54, and 55.

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Claims 10, 13, 15, 17, 18, 22, 24, 40, 41, 49, 58,
61, 63, 65, 66, 70, 72, 88, 89, 97, 113, 118, 132, 134, 136, 139, 141,
143, 157, 159, 161, 164, 166, and 168

Claims 10, 13, 15, 17, 18, 22, 24, 40, 41, 49, 58, 61, 63, 65, 66, 70,
72, 88, 89, 97, 113, 118, 132, 134, 136, 139, 141, 143, 157, 159, 161, 164,
166, and 168 are dependent either directly or indirectly on claims 1, 108,
129, or 154. Appellants sole separate argument for patentability is based on
their claim that Kung is not prior art. Kung was filed on June 18, 2004,
which is after the filing date of the Appellants’ application (March 31,
2004). Although Kung claims the benefit of an earlier filed provisional
application ("Kung Provisional"), Appellants argue that they are unable to
locate the exact portions in the Kung Provisional relied upon by the
Examiner to reject the aforementioned claims.
5
App. Br. 81.
We disagree and find Kung qualifies as prior art. That is, the Kung
Provisional Number 60/485,544, filed July 7, 2003, provides adequate
written description support for the portion of Kung relied upon by the
Examiner. See Ans. 42 (discussing spatial information in ¶ 0036).
So long as Kung properly claims benefit under 35 U.S.C. § 119(e) to a
provisional application, the effective filing date is the filing date of the
provisional application for any subject matter which are fully supported
under the first paragraph of 35 U.S.C. § 112 by the provisional application.
See MPEP § 2136.03 III. The Examiner understands the need for support in
the provisional application. Ans. 74.

5
The Kung Provisional is available in the public PAIR system. This
argument was not repeated in the Reply Brief. We find that Appellants had
fair notice of the content in the Kung Provisional.
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The feature in question, represented in claim 10, includes the
following language: “at least one of a mote-addressed routing/spatial index
from a reporting entity at a mote of the first set of motes.” The Examiner
asserts support is present in ¶ [0036] of Kung and in the Kung Provisional.
The Kung Provisional claims a method comprising receiving information
from the sensing node wherein the sensing node comprises GPS sensor. Ans.
74 (citing Kung Provisional, claim 32
6
). The Examiner adds that it is well
known in the art that a GPS sensor is a Global Positioning System device
that communicates the latitude, longitude, altitude or x, y, z coordinates of
the sensor node. Id. He maintains the Kung Provisional application fully
supports this subject matter relied on in the Kung publication. Id.
In their Reply Brief, Appellants do not argue that ¶ [0036] of Kung
does not show the spatial index feature. The Appellants do not argue the
Kung Provisional GPS sensor disclosure in claim 32 is inadequate support
under 35 U.S.C. § 112. Finally, they do not argue that they did not have
notice of or review the Kung Provisional. We therefore find the Examiner’s
reliance on the GPS disclosure of the Kung Provisional in claim 32 as
supporting ¶ [0036] of Kung is reasonable.
On this record, we do not find that the Examiner erred in finding the
Kung Provisional was prior art and that Kung and the Kung Provisional
supported the rejection. Appellants make no other arguments with regard to
claims 10, 13, 15, 17, 18, 22, 24, 40, 41, 49, 58, 61, 63, 65, 66, 70, 72, 88,
89, 97, 113, 118, 132, 134, 136, 139, 141, 143, 157, 159, 161, 164, 166, and
168. We find no error in the Examiner’s rejection of the claims.

6
The Examiner refers to claim 1, but in context meant claim 32.
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Claims 26 and 74
Claims 26 and 74 depend on dependent claims 25 and 73, which are in
turn dependent on claim 1. The Examiner’s rejection of claims 1, 25 and 73
is sustained. Appellants make no additional argument for patentability of
claims 26 and 74. App. Br. 82-83. Having found no error in the Examiner’s
findings on claims 1, 25, and 73 as being obvious under § 103(a), we find no
error in the Examiner’s findings on obviousness as to claims 26 and 74.
Claims 27-30 and 75-78
Claims 27-30 depend directly or indirectly on claim 25, which
depends on claim 1. Claims 75-78 depend either directly or indirectly on
claim 73, which depends on claim 1. The Examiner’s rejection of claims 1,
25 and 73 is sustained. Appellants make no additional argument for
patentability of claims 27-30 and 75-78. App. Br. 83. Having found no
error in the Examiner’s findings on claims 1, 25 and 73 as being obvious
under § 103(a), we find no error in the Examiner’s findings on obviousness
as to claims 27-30 and 75-78.
Claims 47 and 95
Claims 47 depends on claim 45 which depends on claim 1. Claim 95
depends directly from claim 93, which depends from claim 73 which
depends from claim 1. The Examiner’s rejection of claims 1, 45,and 73 has
been affirmed. Appellants make no additional argument for patentability of
claims 47 and 95. App. Br. 83. Having found no error in the Examiner’s
findings on claims 1, 45, and 73 as being obvious under § 103(a), we find no
error in the Examiner’s findings on obviousness as to claims 47 and 95.

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Claims 102, 103, 106, 123,124, 127, 148,149, 152, 173, 174, and 177.
Claims 102, 103 and 106 depend on claim 1. Claim 123, 124, and 127
depend on claim 108. Claims 148,149, and 152 depend on claim 129.
Claims 173, 174, and 177 depend on claim 154. The Examiner’s rejection
of claims 1, 108, 129, and 154 has been affirmed. Appellants make no
additional argument for patentability of claims 102, 103, 106, 123, 124, 127,
148, 149, 152, 173,174, and 177. App. Br. 84. Having found no error in the
Examiner’s findings on claims 1, 108, 129 and 154 as being obvious under
§103(a), we find no error in the Examiner’s findings on obviousness as to
claims 102,103, 106, 123, 124, 127, 148, 149, 152, 173, 174, and 177.
Claims 107, 128, 153, and 178
Claim 107 depends on claim 1. Claim 128 depends on claim 108.
Claim 153 depends on claim 129. Claim 178 depends on claim 154. The
Examiner’s rejection of claims 1, 108, 129 and 154 has been affirmed.
Appellants make no additional argument for patentability of claims 107,
128, 153, and 178. App. Br. 84-85. Having found no error in the
Examiner’s findings on claims 1, 108, 129, and 154 as being obvious under
§ 103(a), we find no error in the Examiner’s findings on obviousness as to
claims 107, 128, 153, and 178.
The Rejection of Claims 108-128 and 154-178
Under 35 U.S.C.§ 112, ¶ 2

Claims 108-128 and 154-178 are newly rejected under 35 U.S.C. §
112, ¶ 2, as indefinite. The claims are all drafted as means plus function
format invoking 35 U.S.C. § 112, ¶ 6. The Examiner asserts the claims do
not particularly point out and specifically claim the subject matter in these
claims, because the required corresponding structures that perform these
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functions cannot be identified in the disclosure. Ans. 3. The Appellants
point to various parts of the Specification for support. Reply Br. 4-5.
As to claims 108 and 154, the Examiner starts with the legal premise
that the structure disclosed in the written description of the specification or
the prosecution history must be clearly linked or associated with the
functions recited in a means-plus-function claim limitation under 35 U.S.C.
§ 112, ¶ 6. Ans. 3. The Examiner finds the claim elements "means for
creating", "means for aggregating", and "means for obtaining" are means
plus function limitations that invoke 35 U.S.C. § 112, ¶ 6. Ans. 4. The
Examiner goes on to find the written description fails to clearly link or
associate a disclosed structure, material, or acts to the claimed function such
that one of ordinary skill in the art would recognize what structure, material,
or acts perform the claimed function. In addition, Appellants have failed to
state the corresponding structure on the record in the summary of claims 108
and 154. Ans. 4 (citing App. Br. 15-18).
Appellants do not dispute that the claims should be analyzed as means
plus function limitations under 35 U.S.C. § 112, ¶ 6. Rather, Appellants
argue the corresponding structure required is “implicitly or inherently set
forth in the written description of the specification.” Reply Br. 4.
Appellants point to the Specification for support. Id.(citing to the same
references in the Summary of the Invention); Reply Br. 5 (further citing to
¶¶ 0010-12, 0110-112 in Appellant’s publication, US Publication No.
2005/0227686 A1).
Ex parte Miyazaki, 89 USPQ2d 1207, 1217 (BPAI 2008) sets forth
how we approach means plus function claim language in the context of an
indefiniteness rejection.
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When an applicant has not given notice to the public that his or
her purely functional claim element is to be limited by the
application of 35 U.S.C. § 112, sixth paragraph, a first USPTO
concern is that the claim is indefinite under 35 U.S.C. § 112,
second paragraph. A second USPTO concern is that such
unlimited purely functional claiming may reasonably be
construed to encompass any and all structures for performing
the recited function, including those which are not what the
applicant invented.

Congress permitted the use of purely functional language in claims, but it
limited the breadth of such claim language by restricting its scope to the
structure disclosed in the specification and equivalents thereof. Ex parte
Miyazaki, 89 USPQ2d at 1216 (citing Valmont Indus., Inc. v. Reinke Mfg.
Co., 983 F.2d 1039, 1041-42, (Fed. Cir. 1993)). Further, the USPTO is
justified in using a lower threshold showing of ambiguity to support a
finding of indefiniteness under 35 U.S.C. § 112, ¶ 2. Ex parte Miyazaki, 89
USPQ2d at 1211-1212. The Applicants have an opportunity and a duty to
amend the claims during prosecution to more clearly and precisely define the
metes and bounds of the claimed invention and to more clearly and precisely
put the public on notice of the scope of the patent. Id.
We have reviewed the Specification and cites made by the Appellants
(Reply Br. 4-5) in analyzing their position that the claims are sufficiently
definite, when the specification is consulted, to overcome the rejection. We
find that the Specification fails to describe structure adequate to support the
functions claimed. The entire Specification is drafted with a disclosure of
function with minimal reference to structure. The drawing figures are all
boxes describing functionality without adequate structure. For example
Appellants point to item 990 of Figure 9 as support for “means for
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obtaining” of claim 108. Reply Br. 5. Item 990 is a “main frame” in a box,
nothing more. See Fig. 9.
Importantly, the generalizations made are exemplified by Appellants’
reliance on page 41 of the Specification, which relies on the discussion of
“electrical circuitry” to perform these functions. Reply Br. 5. However, in
the broadest possible terms, the “electrical circuitry” includes “hardware,
software, firmware, or any combination thereof . . . .” (Spec. 41). As such,
the means-plus-function limitation of a “means for obtaining at least a part
of the second-administered content indexes of the second set of motes” can
be nothing more than software. While this is alleged to be enough to
implement the main frame item 990 (Reply Br. 4-5), this is insufficient
disclosure of structure that corresponds to the recited means to make the
claims definite. The Examiner’s finding that there is no associated structure
has not been overcome by the generalities cited by Appellants. Similarly,
the means for aggregating, receiving, and creating clauses in independent
claim 154 have inadequate corresponding structure. We find no error of the
Examiner in rejecting the claims as indefinite under 35 U.S.C. § 112, ¶ 2.

CONCLUSION
The Examiner did not err in rejecting claims 1-180 under 35 U.S.C.
§ 103(a) or claims 108-128 and 154-178 under 35 U.S.C. § 112, ¶ 2.

ORDER
The Examiner’s decision rejecting claims 1-180 is affirmed.

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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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