Ex Parte Jung et al

Patent Trial and Appeal Board

Jun 25, 2014

10816082 (P.T.A.B. Jun. 25, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/816,082 03/31/2004 Edward K. Y. Jung SE1-0012-US 9452
80118 7590 06/25/2014
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
HUYNH, NAM TRUNG
ART UNIT PAPER NUMBER
2645
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 2011-000383
Application 10/816,082
Technology Center 2600
____________

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 1-26. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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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 indexes (Spec. 2:18-19). The mote-
addressed content index has at least one of a sensing index, a content index,
or a routing/spatial index of a mote-appropriate device of a mote (Spec. 3:1-
3). 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. 6:
15-18).
Exemplary independent claim 1, and dependent claims 2, 3, and 4
read as follows:
1. A method comprising:
transmitting at least a part of one or more mote-addressed
content indexes, the one or more mote-addressed content indexes
including at least one of a mote-addressed sensing index or a mote-
addressed control index.

2. The method of claim 1, wherein said transmitting at least
a part of one or more mote-addressed content indexes further
comprises:
transmitting at least a part of at least one of a mote-addressed
sensing index or a mote-addressed control index, the at least one of
the mote-addressed sensing index or the mote-addressed control index
including at least one of a sensing information or a control
information other than data collected by a mote.

3. The method of claim 1, wherein said transmitting at least
a part of one or more mote-addressed content indexes further
comprises:
transmitting at least a part of a mote-addressed routing/spatial
index.

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4. The method of claim 1, wherein said transmitting at least
a part of one or more mote-addressed content indexes further
comprises:
transmitting at least a part of at least one of a mote-addressed
sensing index or a mote-addressed control index, the at least one of
the mote-addressed sensing index or the mote-addressed control index
including at least one of:
a sensing information or a control information other than data
collected by a mote, and including at least one of:
a format used to query one or more devices contained within a
mote,
a control function associated with one or more devices
contained within a mote, or
a feedback format associated with a feedback provided by one
or more devices contained within a mote.

Applied Prior Art
The Examiner relies on the following prior art in rejecting the claims:
Mulgund US 2002/0161751 A1 Oct. 31, 2002
Chin US 2004/0090326 A1 May 13, 2004
Eschenauer US 2005/0140964 A1 June 30, 2005

Brett Warneke, et al. (hereinafter Warneke), Ultra-Low Power
Communication Logic Circuits for Distributed Sensor Networks, EECS 241,
UC Berkeley, Spring 1998.

The Examiner’s Rejections
Claims 1-4, 9, 12-15, 20, and 23-26 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Mulgund and Warneke. 1

1 Although not before us on appeal, in case of further prosecution, we direct
the Examiner’s attention to the fact that claims 12-23 include limitations that
appear to invoke the provisions of 35 U.S.C. § 112, sixth paragraph, but are
unsupported by specific algorithms disclosed in the Specification. As such,
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Claims 5-8 and 16-19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mulgund, Warneke, and Chin.
Claims 10, 11, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mulgund, Warneke, and Eschenauer.

Appellants’ Contentions
1. With respect to the rejection of claim 1, Appellants argue that
the combination of Mulgund and Warneke is improper because:
(a) The cited portions of Mulgund describing “a Data Table List 30”
do not disclose the recited feature of “transmitting . . . one of a mote-
addressed sensing index or a mote-addressed control index” (App. Br. 22-
23);
(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. 25-26 and 29-30);
(c) Warneke includes no teachings related to “transmitting from a
mote across a mote network one or more mote-addressed content indexes”
(App. Br. 26-27); and
(d) The Examiner’s proposed combination is based on “mere
conclusory statements” (App. Br. 30-31), changes the principle of operation

these claims would be subject to rejection under 35 U.S.C. § 112, second
paragraph as indefinite. We further direct the Examiner’s attention to the
fact that at least claim 12 appears to be a single means claim, i.e., where a
means recitation does not appear in combination with another recited
element of means, and is thus subject to an undue breadth rejection under 35
U.S.C. § 112, first paragraph. See In re Hyatt, 708 F.2d 712, 714-715, 218
USPQ 195, 197 (Fed. Cir. 1983).

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of components being modified (App. Br. 31-35), and renders the modified
components unsatisfactory for their intended purposes (App. Br. 35-37).
2. Appellants further argue with respect to claim 2 that the prior
art fails to disclose the transmission of at least one of a mote-addressed
sensing index or a mote-addressed control index, including at least one of a
sensing information or a control information other than data collected by a
mote (App. Br. 37-39).
3. With respect to claim 3, Appellants argue that the prior art fails
to disclose the transmission of at least part of a mote-addressed
routing/spatial index (App. Br. 40-42).
4. Appellants also argue that with respect to claim 4, the prior art
fails to disclose the transmission of at least one of a format used to query one
or more devices contained within a mote, a control function associated with
one or more devices contained within a mote, or a feedback formation
associated with a feedback provided by one or more devices contained
within a mote (App. Br. 43-45).
5. Appellants separately argue the patentability of dependent
claims 13-15, repeating the arguments presented with respect to claims 2-4
(App. Br. 48-54), allowing these claims to stand or fall with dependent
claims 2-4, respectively.
6. Appellants argue the patentability of independent claims 12, 23
and 24, repeating the arguments presented with respect to claim 1, and the
patentability of the remaining dependent claims based on the reasons
asserted for their respective base claims (App. Br. 37, 46-48, and 55-58),
allowing these claims to stand or fall with representative claim 1.

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The Examiner’s Findings
Claim 1
The Examiner finds Mulgund teaches a number of nodes (e.g., A-C)
each having indices or tables (e.g., 27A-C) for storing data associated with
sensors residing in the node (Ans. 3-4, see also Mulgund, Node Data Table
of Fig. 4 and ¶ 42). The Examiner finds that the Node Data Table embodies
a content index in that it is a data structure for storing data, and it is a
sensing index in that it contains data associated with sensors. The data is
transmitted in response to an interrogation of the sensing node by the
database server (Ans. 9-10).
We further observe that both sensor output data and information
regarding the structure and nature of the sensor output data can be retrieved
by interrogating the node with which the sensor is associated (Mulgund, ¶¶
29-30). Such retrieval would require the data to be transmitted from the
sensing node to the database server making the request. Giving claim 1 its
broadest reasonable interpretation, the Examiner further finds that Mulgund
transmits content indexes, or tables (Ans. 3-4, 9-10).
The Examiner concludes that although Mulgund does not explicitly
disclose the sensing nodes as motes, it does disclose that the sensing nodes
comprise computational devices ranging in complexity from small
embedded platforms to fully-fledged PCs (Ans. 5 (citing Mulgund ¶ 26)).
The Examiner further relies upon Warneke for its disclosure of the use of
motes as sensing nodes, and for its explicit disclosure of the advantages of
doing so (Ans. 10-11).
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Claim 2
The Examiner finds that the prior art discloses the claimed
transmission of sensing information other than data collected at a mote as
Mulgund’s transmission of data in the Node Data Table that contains the
type of sensor data known to originate from the node (Ans. 14). The
Examiner further finds Mulgund teaches that the database server can
interrogate the node to determine what type of information it provides (id.
(citing Mulgund ¶ 42)). Since sensor data is different from information
about the type of sensor data available, Mulgund teaches transmitting
sensing information other than data collected by the mote, as claimed.
Claim 3
The Examiner finds that Mulgund’s disclosure of the transmission of
links obtained from a node meets the recited transmission of at least part of a
mote-addressed routing/spatial index (Ans. 15). We further understand the
Examiner’s position to be based on comparing Mulgund’s table with
Appellants’ disclosure that routing/spatial index “typically contains a listing
of mote-network addresses of those motes directly accessible from mote 200
and such directly accessible motes’ spatial orientations relative to mote 200
and/or some other common spatial reference location (e.g., GPS)” (Spec.
11:6-8). The Examiner relies on Mulgund’s paragraphs 38 and 61 for using
a Links Table containing Node Addresses to identify the nodes at each end
of each link (¶ 38), and populating the Links Table by visiting each node in
the network and querying the node to obtain its link information (¶ 61). The
Examiner concludes that the prior art teaches the claimed transmission of at
least part of a mote-addressed routing/spatial index because the link
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information includes node addresses identifying nodes at each end of a link
(Ans. 15).
Claim 4
The Examiner finds that Mulgund’s disclosure of the transmission of
the Node Data Table meets the claimed transmission of at least one of a
format used to query one or more devices contained within a mote, a control
function associated with one or more devices contained within a mote, or a
feedback format associated with a feedback provided by one or more devices
contained within a mote (Ans. 15-16).

Issue on Appeal
Has the Examiner erred in rejecting claims 1-26 as being obvious over
various combinations of Mulgund, Chin, Eschenauer and Warneke?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We agree with the Examiner’s
conclusions with respect to the rejections under § 103.
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. 13). Appellants also filed a
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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With respect to the rejections of record, the final Office action
specifically puts Appellants on notice that the Examiner considered the
Node Data Table taught by Mulgund as corresponding to the claimed
content indexes, citing specific paragraphs from the Mulgund reference
which disclosed the functionality of the distributed sensor network in
general and the transmission of the Node Data Table in particular. The
Examiner asserts:
Mulgund teaches a method comprising: transmitting at least a
part of one or more sensor-addressed content indexes (Node
Data Table) (paragraph 42; the Node Data Table is transmitted
because the database server can interrogate the node to retrieve
it which implies that the table is transmitted by the node in
response to the interrogation.

Ans. 3. The Examiner similarly made explicit findings regarding the
elements disclosed by Mulgund and the other prior art of record, and
explained how the elements were interpreted as corresponding to the
respective features of the appealed claims (id. 4-7). As explained in In re
Jung, 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.
Moreover, in order to rebut a prima facie case of unpatentability,
Appellants are 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.”);
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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. 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 limitations.
Therefore, with respect to Appellants’ contentions 1a, 1c, and 2-4, we
observe that in each of the rejections of record, the Examiner has cited
specific portions of the prior art references, and provided an explanation as
to how the disclosed elements are interpreted as corresponding to the
features of the claims (see Ans. 10-16). The cited portions of the references
and the accompanying explanations collectively constitute the “objectively
verifiable evidence” which Appellants allege to be lacking.
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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’ contention 1b, as stated by the Examiner, the
proposed combination is based on the cited reference teachings and within
the level of ordinary skill in the art at the time the claimed invention was
made (Ans. 11 (citing In re McLaughlin 443 F.2d 1392, 1395, 170 USPQ
209, 212 (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)).
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 Warneke relied upon in the record before
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us disclose nothing other than prior art elements that perform their ordinary
functions to predictably result in a sensing network that utilizes sensors
having lower cost, power consumption, and smaller size. See KSR, 550 U.S.
at 417.
With respect to Appellants’ contention 1d, we further observe that the
Examiner has provided, in each case, proper motivation to combine which
was drawn directly from the respective references. In the case of claim 1,
the Examiner found that Warneke’s implementing the sensing nodes of a
distributed sensor network as millimeter scale sensing and communications
platforms called motes would offer the advantages of low cost, low power
consumption and small size (Ans. 4 (citing Warneke, pg. 1, col. 1, lines 8-
11)). Since low cost, low power consumption and small size are all
desirable qualities for a sensing node, this statement would have suggested
to an ordinarily skilled artisan to combine the references as proposed by the
Examiner.
The Examiner further reasoned that the proposed modification would
not change the principle of operation of the disclosed components, and
would not render the disclosed components unfit for their intended purpose
because the proposed combination is not based on bodily incorporation of
Warneke’s components into Mulgund’s system (Ans. 13-14 (citing In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981))).
Specifically, in this case, Mulgund teaches that the disclosed sensing nodes
comprise computational devices ranging in complexity from small
embedded platforms to full-fledged PCs (¶ 26). Warneke is relied upon
merely to show that the sensing nodes could be implemented as motes (pg.
1, col. 1, lines 1-8). Based on the Examiner’s valid articulated line of
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reasoning with some rational underpinning to support the conclusion of
obviousness, combining the references to achieve a distributed sensor
network including sensing nodes in the form of motes would in no way
change the principle of operation of either of the references, nor would it
render the respective devices unfit for their intended use.
In view of our analysis above, Appellants’ contentions have not
persuaded us of error in the Examiner’s findings and conclusion that claims
1-26 are obvious over various combinations of Mulgund, Warneke, Chin,
and Eschenauer.

CONCLUSIONS
On the record before us, we conclude that:
(1) the Examiner did not err in rejecting claims 1-4, 9, 12-15, 20, and
23-26 under 35 U.S.C. § 103(a) as being unpatentable over Mulgund and
Warneke;
(2) the Examiner did not err in rejecting claims 5-8 and 16-19 under
35 U.S.C. § 103(a) as being unpatentable over Mulgund, Warneke, and
Chin; and
(3) the Examiner did not err in rejecting claims 10, 11, 21, and 22
under 35 U.S.C. § 103(a) as being unpatentable over Mulgund, Warneke,
and Eschenauer.

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DECISION
The Examiner’s decision rejecting claims 1-26 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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