Ex Parte Jung et al

Patent Trial and Appeal Board

Jun 25, 2014

10844564 (P.T.A.B. Jun. 25, 2014)

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.
10/844,564 05/12/2004 Edward K.Y. Jung SE1-0017-US 6669
80118 7590 06/25/2014
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
SURVILLO, OLEG
ART UNIT PAPER NUMBER
2442
MAIL DATE DELIVERY MODE
06/25/2014 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 2011-009831
Application 10/844,564
Technology Center 2400
____________

Before MAHSHID D. SAADAT, BRUCE R. WINSOR, and
CATHERINE SHIANG, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-24 and 26-33.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Claim 25 has been canceled.
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STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to the transmission of at least a part of
one or more mote-addressed content logs. The mote-addressed content log
has at least one associated device identifier (Spec. 3:14-16). A mote is
typically composed of sensors, actuators, computational entities, and/or
communications entities, and is typically understood to be a semi-
autonomous computing, communication, and sensing device (Spec. 7: 15-
18).
Exemplary independent claims 1, 14, 27, and 28 read as follows:
1. A method comprising:
transmitting multiple mote-addressed content logs having
multiple entries, each of the multiple mote-addressed content
logs having at least one associated device identifier.

14. A system comprising:
a mote coupled with a device having at least one
associated device identifier; and
means for transmitting multiple mote-addressed content
logs having multiple entries, each of the multiple mote-
addressed content logs having at least one associated device
identifier.

27. A system comprising:
a mote; and
means for transmitting at least a part of one or more
mote-addressed content logs having multiple entries and at least
one associated device identifier and a network address of a
mote where each mote-addressed content log was created, said
means for transmitting being disposed proximate to said mote.

28. A system, comprising:
at least one mote-addressed content log having at least
one of a device-identifier-associated sensing/content log and a
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device-identifier-associated routing/spatial log of a mote-
appropriate device of a mote, the log having multiple log
entries; and
at least one reporting entity resident on the mote, said at
least one reporting entity configured to report at least a part of
said at least one mote-addressed content log.

Applied Prior Art
The Examiner relies on the following prior art in rejecting the claims:
Mulgund US 2002/0161751 A1 Oct. 31, 2002
Regli US 2005/0141706 A1 June 30, 2005

Samuel Madden et al., TAG: A Tiny AGregation Service for Ad-Hoc
Sensor Networks, 2002 (hereinafter “Madden TAG”).
Sam Madden et al., TinyDB: In-Network Query Processing in TinyOS,
September 2003 (hereinafter “TinyDB”).
Alec Woo et al. A Transmission Control Scheme for Media Access in
Sensor Networks, July 2001 (hereinafter “Woo”).
Philip Levis et al., Mate: A Tiny Virtual Machine for Sensor
Networks, 2002 (hereinafter “Levis”).

The Examiner’s Rejections
Claims 2, 5, 7-10, 15, 18, 20, 22, 23, 27, 32, and 33 stand rejected
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. (See Ans. 9-10).
Claim 33 stands rejected under 35 U.S.C. § 112, second paragraph, as
indefinite. (See Ans. 10-11).
Claims 14-24, 26, 27, and 31 are newly rejected in the Answer under
35 U.S.C. § 112, second paragraph, as being indefinite. (See Ans. 4-8).
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Claims 1, 3-11, 14-24, and 32 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Mulgund and Madden TAG. (See Ans. 11-16).
Claims 12, 13, and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mulgund, Madden TAG, and Regli. (See Ans. 16-
18).
Claims 27-31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mulgund, Madden TAG, and Woo. (See Ans. 18-21).
Claims 2 and 33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mulgund, Madden TAG, TinyDB, and Levis. (See Ans.
22-25).

Appellants’ Contentions
1. With respect to the newly presented grounds of rejection of
claims 14-24, 26, 27, and 31 under 35 U.S.C. § 112, second paragraph,
Appellants argue there is support for the claimed “means for transmitting,”
and cite portions of the drawing Figures and/or Specification they believe
disclose the structure corresponding to the various means-plus-function
limitations of the claims (Reply Br. 4-8).
2. With respect to the rejection of claim 1, Appellants argue that
the combination of Mulgund and Madden TAG is improper because:
(a) The cited portions of Mulgund describing the transmission of
information involving multiple events collected from multiple sensors do not
disclose the recited feature of “transmitting multiple mote-addressed content
logs having multiple entries, each of the multiple mote-addressed content
logs having at least one associated device identifier” (App. Br. 40-47);
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(b) The Examiner’s proposed combination is “through the lens of
Applicant’s application” and therefore, based on impermissible hindsight,
personal knowledge, or Official Notice (App. Br. 47-48 and 53-54);
(c) Madden TAG includes no teachings related to “transmitting
multiple mote-addressed content logs having multiple entries, each of the
multiple mote-addressed content logs having at least one associated device
identifier” (App. Br. 48-53); and
(d) The Examiner’s proposed combination is based on “mere
conclusory statements” (App. Br. 54-56).
3. Appellants argue the patentability of dependent claims 3-13 and
32 based on the reasons asserted for base claim 1 (App. Br. 56), allowing
these claims to stand or fall with claim 1.
4. With respect to dependent claim 32, Appellants argue the prior
art fails to disclose the transmission of multiple mote-addressed content logs
wherein the content logs indicate a network address of a mote where each
mote-addressed content log was created (App. Br. 56-66).
5. Appellants argue the patentability of independent claim 14 by
repeating the arguments presented with respect to claim 1, and the
patentability of dependent claims 15-24 and 26 based on the reasons asserted
for their respective base claims (App. Br. 66-82), allowing these claims to
stand or fall with representative claim 1.
6. With respect to the rejection of claim 27, Appellants argue the
combination of Mulgund, Madden TAG, and Woo is improper because:
(a) The cited portions of Mulgund describing Sensor Data Table 24
including a composite primary key of the identity of the node address does
not disclose the recited feature of “means for transmitting at least a part of
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one or more mote-addressed content logs having multiple entries and at least
one associated device identifier and a network address of a mote where each
mote addressed content log was created” (App. Br. 83-90);
(b) The Examiner’s proposed combination is “through the lens of
Applicant’s application” and therefore, based on impermissible hindsight,
personal knowledge, or Official Notice (App. Br. 90-91 and 99-100);
(c) Madden TAG and Woo include no teachings related to “means for
transmitting at least a part of one or more mote-addressed content logs
having multiple entries and at least one associated device identifier and a
network address of a mote where each mote addressed content log was
created” (App. Br. 91-99); and
(d) The Examiner’s proposed combination is based on “mere
conclusory statements” (App. Br. 100-102).
7. Appellants argue the patentability of dependent claim 31 based
on the reasons asserted for base claim 27 (App. Br. 102-103), allowing this
claim to stand or fall with claim 27.
8. Appellants argue the patentability of independent claim 28,
repeating the arguments presented with respect to claim 27, and the
patentability of dependent claims 29 and 30 based on the reasons asserted
for their respective base claims (App. Br. 103-123), allowing these claims to
stand or fall with representative claim 27.
9. Appellants argue the patentability of dependent claims 2 and 33
based on the reasons asserted for base claim 1 (App. Br. 124), allowing these
claims to stand or fall with claim 1.

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The Examiner’s Findings
Claim 1
The Examiner finds Mulgund teaches a network of sensing nodes each
containing one or more sensors, whereby data collected by the sensors are
periodically retrieved (Ans. 11-12 (citing Mulgund, ¶¶ 25, 41, and 62)). The
Examiner further finds the disclosed nodes are analogous to the claimed
motes, in that they are small embedded platforms having one or more
sensors (¶ 26); the data is stored in Sensor Data Tables 24, which are
indexed by node address, timestamp, and sensor number (¶ 41); and the
Sensor Data Tables embody content logs in that they are data structures for
storing sensor data. The Examiner also finds Mulgund’s sensor number “n”
is analogous to the claimed device identifier (Ans. 11), but further relies on
Madden TAG to more explicitly disclose content logs including a sensor ID
[device identifier] (Ans. 12 (citing page 3, col. 1, ¶ 4)).
Claim 27
The Examiner finds Mulgund teaches a network of sensing nodes each
containing one or more sensors, whereby data collected by the sensors is
periodically retrieved (Ans. 18 (citing ¶¶ 25, 37, 41, and 62; Fig. 3)). The
disclosed nodes are analogous to the claimed motes, in that they are small
embedded platforms having one or more sensors (¶ 26). The data is stored
in Sensor Data Tables 24, which are indexed by node address, timestamp,
and sensor number (¶ 41). The Examiner also finds that the node address
constitutes the network address of the mote where the content log was
created, as claimed (Ans. 18). The Examiner additionally relies on Madden
TAG to disclose content logs including a sensor ID [device identifier] (Ans.
18-19 (citing page 3, col. 1, ¶ 4)). Woo is cited for its disclosure of the
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details of a TinyOS application wherein the sensor component periodically
transmits collected data toward a base station over a multi-hop network
(Ans. 19 (citing section 2.1 Networking Component Stack)).
Claim 32
The Examiner finds Mulgund teaches a network of sensing nodes each
containing one or more sensors, and including Sensor Data Tables 24
[content logs], which are indexed by node address, timestamp, and sensor
number (Ans. 16 (citing ¶¶ 37 and 41; Fig. 3)). We observe the node
address constitutes the network address of the mote where the content log
was created, as claimed because the disclosed nodes are analogous to the
claimed motes, in that they are small embedded platforms having one or
more sensors (¶ 26).
Issues on Appeal
Has the Examiner erred in rejecting claims 2, 5, 7-10, 15, 18, 20, 22,
23, 27, 32, and 33 as failing to comply with the written description
requirement?
Has the Examiner erred in rejecting claims 14-24, 26, 27, 31, and 33
as indefinite?
Has the Examiner erred in rejecting claims 1-24 and 26-33 as obvious
over various combinations of Mulgund, Madden TAG, Regli, Woo, TinyDB,
and Levis?

ANALYSIS
We have reviewed the Examiner’s rejection in light of the Appellants’
contentions that the Examiner has erred. We agree with the Examiner’s
conclusions with respect to the rejections under §§ 112 and 103.
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Appellants’ Reply Brief (filed Oct. 6, 2011), brings to our attention
the adequate notice requirements discussed in In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011). We find the rejections made by the Examiner give
adequate notice to Appellants to determine whether to continue prosecution
and to counter the rejections. See 35 U.S.C. § 132(a).

35 U.S.C. § 112, first paragraph Rejection
Appellants have failed to present arguments traversing the rejections
of claims 2, 5, 7-10, 15, 18, 20, 22, 23, 27, 32, and 33 under 35 U.S.C.
§ 112, first paragraph. (See App. Br. 10, n.1). Accordingly, Appellants have
waived appeal as to these rejections, see 37 C.F.R. § 41.37(c)(1)(iv), and we
summarily sustain the rejection of claims 2, 5, 7-10, 15, 18, 20, 22, 23, 27,
32, and 33 under 35 U.S.C. § 112, first paragraph.

35 U.S.C. § 112, second paragraph Rejections
Claim 33
Appellants have failed to present arguments traversing the rejection of
claim 33 under 35 U.S.C. § 112, second paragraph. (See App. Br. 10, n.1).
Accordingly, Appellants have waived appeal as to these rejections, see
37 C.F.R. § 41.37(c)(1)(iv), and we summarily sustain the rejection of claim
33 under 35 U.S.C. § 112, second paragraph.
Claims 14-24, 26, 27, and 31
The Examiner entered a new rejection for claims 14-24, 26, 27, and
31 under 35 U.S.C. § 112, second paragraph, as being indefinite (Ans. 4-8).
With respect to Appellants’ contention 1, the Examiner finds that
claim elements “means for transmitting,” “means for deriving,” and “means
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for decoding” are means plus function limitations that invoke 35 U.S.C.
§ 112, sixth paragraph (Ans. 5), but that 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 respective function.
Appellants argue that the required corresponding structure is
“implicitly or inherently set forth in the written description of the
specification” (Reply Br. 4 and 6-7). Appellants also cite various passages
in the Specification and drawing Figures (Reply Br. 4-8).
For a computer-implemented means-plus-function claim limitation
invoking 35 U.S.C. § 112, sixth paragraph, the corresponding structure for
performing a specific function is required to be more than simply a general
purpose computer or microprocessor. In re Katz Interactive Call Processing
Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011). In such an
instance, the structure corresponding to a 35 U.S.C. § 112, sixth paragraph
claim limitation for a computer-implemented function must include the
algorithm needed to transform the general purpose computer or
microprocessor disclosed in the Specification. Aristocrat Technologies
Australia Pty Ltd. V. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir.
2008); Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir.
2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed.
Cir. 1999).
We have reviewed the Specification and citations thereto made by
Appellants in analyzing their position that the claims are sufficiently
definite, when the Specification is consulted, to overcome the rejections.
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We find that the Specification lacks the required description of structure to
support the functions claimed.
The entire Specification is drafted with a disclosure of various
functions but minimal reference to structure, i.e., algorithms that perform the
described functions. The drawing figures likewise depict boxes describing
functionality without adequate disclosure of the structure to perform the
functions. Additionally, Appellants have pointed out no specific structures
to support the claimed functions, but instead have cited entire paragraphs or
entire drawing Figures. Appellants’ citation of “electrical circuitry resident
within a mote,” “computer system of a gateway,” “Application Specific
Integrated Circuits (ASICs),” “Field Programmable Gate Arrays (FPGAs),”
“digital signal processors (DSPs),” “microprocessor configured by a
computer program,” etc. (Reply Br. 6 and 8), likewise fails to provide
adequate corresponding structure because no associated algorithm is
disclosed.
Furthermore, Appellants’ disclosure at pages 40-42 of the
Specification, and specifically the disclosure that “each function and/or
operation within such block diagrams, flowcharts, or examples can be
implemented, individually or collectively, by a wide range of hardware,
software, firmware, or virtually any combination thereof” (Spec. 41:7-10),
and that “designing the circuitry and/or writing the code for the software
and/or firmware would be well within the skill of one of ordinary skill in the
art in light of this disclosure” (Spec. 41: 19-21), gives further evidence that
the claims could be fairly construed as encompassing every conceivable
structure for performing the claimed functions.
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Accordingly, the rejection of claims 14-24, 26, 27, and 31 is
sustained.

35 U.S.C. § 103 Rejections
As an initial matter, we note that Appellants have styled their
arguments as a challenge to the existence of a prima facie case of
unpatentability of the claims at issue (App. Br. 17-18).
With respect to the rejections of record, the Final Office Action
specifically puts Appellants on notice that the Examiner considered the
Sensor Data Table taught by Mulgund as corresponding to the claimed
content logs, citing specific paragraphs from the Mulgund reference that
disclose the functionality of the distributed sensor network in general and the
transmission of the Sensor Data Table in particular. (See Ans. 11-12
(“Mulgund teaches: transmitting multiple mote-addressed content logs
having multiple entries [periodically retrieving the information stored at
each of the plural nodes, the information involving multiple events collected
from multiple sensors] (¶¶ [0025], [0041], and [0062]”)). The Examiner
similarly made explicit findings regarding the elements disclosed by
Mulgund and the other prior art of record, and explained how the disclosed
elements were interpreted as corresponding to the respective features of the
appealed claims (Ans. 12-25). As explained in In re Jung, 637 F.3d 1356,
these findings and explanations would have put any reasonable Applicant on
notice of the Examiner’s rejection, and given them ample information with
which to counter the grounds of rejection, which is all that is required to
establish a prima facie case of unpatentability.
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Moreover, in order to rebut a prima facie case of unpatentability,
Appellant is required to distinctly and specifically point out the supposed
errors in the Examiner’s action as well as the specific distinctions believed
to render the claims patentable over the applied references. See 37 C.F.R.
§ 41.37(c)(vii) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”);
see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir.
1991) (“It is not the function of this court to examine the claims in greater
detail than argued by an appellant, looking for [patentable] distinctions over
the prior art.”).
Appellants have failed to do this. Instead, Appellants have merely
made general allegations that the claims define a patentable invention
because the Examiner has failed to establish a prima facie case of
unpatentability, without specifically articulating what gaps exist between the
cited references and the claims. In other words, Appellants’ contentions
against the rejections of record generally amount to a recitation of the claim
at issue, and a quotation of the Examiner’s statement of the rejection,
followed by a quotation of each of the cited portions of the prior art
references, and contending, without more, that the quoted language does not
meet the quoted claim language.
Therefore, with respect to Appellants’ contentions 2a, 2c, 3-5, 6a, 6c,
and 7-9, we observe that in each of the rejections of record, the Examiner
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has cited specific portions of the prior art references, and explained how the
disclosed elements are interpreted as corresponding to the features of the
claims (see Ans. 25-30). The cited portions of the references and the
accompanying explanations collectively constitute the “objectively
verifiable evidence,” which Appellants allege to be lacking.
Additionally, we are unpersuaded by Appellants’ above-noted
contentions because the test of whether a reference teaches a claim limitation
is not whether the exact language is present but rather whether the
limitations are taught or suggested by the prior art when the claim is given
its broadest reasonable interpretation in light of the Specification. Cf. In re
Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990) (citing Akzo N.V. v. U.S. Int’l
Trade Comm’n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir. 1986))
(interpretation of references “is not an ‘ipsissimis verbis’ test.”); Standard
Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir.
1991) (“[A] . . . reference . . . need not duplicate word for word what is in
the claims.” ).
Regarding Appellants’ contentions 2b and 6b, as stated by the
Examiner (Ans. 28), the proposed combinations are based on the reference
teachings and within the level of ordinary skill in the art at the time the
claimed invention was made. In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971). We are also cognizant that our reviewing courts have not
established a bright-line test for hindsight. However, in KSR, the U.S.
Supreme Court stated that “[a] factfinder should be aware, of course, of the
distortion caused by hindsight bias and must be cautious of argument reliant
upon ex post reasoning.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421
(2007) (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966)).
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Nevertheless, in KSR the Supreme Court also qualified the issue of hindsight
by stating that “[r]igid preventative rules that deny factfinders recourse to
common sense, however, are neither necessary under our case law nor
consistent with it.” KSR, 550 U.S. at 421. Consequently, we are satisfied
that the portions of Mulgund and Madden TAG (and Woo with respect to
independent claims 27 and 28) relied upon in the record before us disclose
nothing other than prior art elements that perform their ordinary functions to
predictably result in a sensing network that utilizes sensors in order to
generate and transmit multiple content logs having multiple entries and
including associated device identifiers. See KSR, 550 U.S. at 417.
Regarding Appellants’ contentions 2c and 6c, we further observe that
the Examiner provided, in each case, a rationale for combining the
references that was drawn directly from the respective references. For
example, the Examiner found that including a device identifier as taught by
Madden TAG in the sensing network taught by Mulgund would have
allowed one to easily distinguish between data signals originating from
different sensors (Ans. 12 (citing Mulgund ¶ 41 and Madden TAG page 3
col. 1 ¶¶ 2-4)). Since proper interpretation of any received sensor data
would require knowledge of the type of sensor that generated the data, this
statement would have suggested to an ordinarily skilled artisan to combine
the references as proposed by the Examiner.
In view of our analysis above, Appellants’ contentions have not
persuaded us of error in the Examiner’s findings and conclusion that claims
1-24 and 26-33 are obvious over various combinations of Mulgund, Madden
TAG, Regli, Woo, TinyDB, and Levis.

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DECISION
The Examiner’s decision rejecting claims 2, 5, 7-10, 15, 18, 20, 22,
23, 27, 32, and 33 under 35 U.S.C. § 112 first paragraph is affirmed.
The Examiner’s decision rejecting claims 14-24, 26, 27, 31, and 33
under 35 U.S.C. § 112 second paragraph is affirmed.
The Examiner’s decision rejecting claims 1-24 and 26-33 under
35 U.S.C. § 103(a) is affirmed.
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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