Ex Parte KNECKT et al

Patent Trials and Appeals Board

Jul 14, 2017

13735413 - (D) (P.T.A.B. Jul. 14, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/735,413 01/07/2013 Jarkko KNECKT 800.0816.U1 (US) 5157
10948 7590 07/18/2017
Harrington & Smith, Attorneys At Law, LLC
4 Research Drive, Suite 202
Shelton, CT 06484
EXAMINER
MIAN, OMER S
ART UNIT PAPER NUMBER
2461
NOTIFICATION DATE DELIVERY MODE
07/18/2017 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):
USPTO@hspatent.com
Nokia. IPR @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JARKKO KNECKT, MIKA KASSLIN,
and ENG HWEE ONG
Appeal 2017-000154
Application 13/735,4131
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—8 and 17—20, which are all of the claims pending
in this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Nokia Technologies
Oy. App. Br. 1.
2 Claims 9—16 have been canceled. App. Br. 2.
Appeal 2017-000154
Application 13/735,413
INVENTION
Appellants’ application relates to wireless network discovery
protocols and procedures. App. Br. 1. Claim 1 is illustrative of the appealed
subject matter and reads as follows:
1. A method comprising:
receiving at least one probe request received frame from
at least one reporting access point;
processing information contained in the at least one
received probe request received frame to determine at least two
access points of a selected set of access points that should
respond to a probe request frame transmitted by a station; and
sending at least one response transmission order frame to
the at least two access points, the response transmission order
frame containing information for use by the at least two access
points in sending probe response frames to the station.
REJECTIONS3
Claims 1, 2, 5, 6, 17, and 19 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over the combination of Eran et al. (US
2004/0063455 Al; Apr. 1, 2004) (“Eran”) and Masuda et al. (US
2009/0190553 Al; July 30, 2009) (“Masuda”).
Claims 3 and 7 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Eran, Masuda, and Sharma et al. (US
2009/0106473 Al; Apr. 23, 2009) (“Sharma”).
Claims 4 and 8 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Eran, Masuda, and Huseth (US
2007/0297421 Al; Dec. 27, 2007).
3 In the Answer, the Examiner withdrew the rejection of claims 1—8 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Ans. 2.
2
Appeal 2017-000154
Application 13/735,413
Claims 18 and 20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Eran, Masuda, and Halasz et al. (US
2006/0013398 Al; Jan. 19, 2006) (“Halasz”).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions the Examiner has erred. We disagree with Appellants’
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur with the
conclusions reached by the Examiner. We highlight the following additional
points.
Rejection of Claims 1 and 3—8
In rejecting claim I for obviousness, the Examiner found Eran teaches
or suggests all of the recited limitations, except that a subsequent access
point response is a probe response. Final Act. 4—5. The Examiner relied on
Masuda for the teaching of a probe response. Id. at 5 (citing Masuda 47,
Fig. 6); Ans. 13 (citing Fig. 6, 175, 177).
Appellants contend the Examiner erred because the combined
teachings of Eran and Masuda do not teach or suggest the “processing” and
“sending” steps recited in claim 1. App. Br. 9—14. Appellants first argue
that in making the rejection the Examiner “improperly mixed” the handover
process shown in Figure 3 of Eran with the different method shown in
Figure 2A of Eran. App. Br. 9.
Appellants do not provide a persuasive basis for their argument. It is
well settled that mere attorney arguments and conclusory statements, which
3
Appeal 2017-000154
Application 13/735,413
are unsupported by factual evidence, are entitled to little probative value. In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence).
Moreover, the Examiner explained that Figure 3 shows what happens
subsequent to Figures 2A and 2B “in greater detail.” Ans. 11. Because
Appellants do not address or persuasively rebut the Examiner’s findings in
the Reply Brief, we are not persuaded that the Examiner erred in relying on
Figures 2A and 3 of Eran in rejecting claim 1.
Appellants next argue Eran’s Figure 2A “teaches away” from the
disputed limitations recited in claim 1. App. Br. 10. In Appellants’ view,
Eran’s Figure 2A teaches the selection of a single access point, API,
whereas claim 1 requires determining at least two access points that should
respond to a probe request frame. App. Br. 10—11.
We are not persuaded by Appellants’ “teaching away” argument
because Appellants have not identified where Eran actually criticizes,
discredits, or otherwise discourages the disputed limitation. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Indeed, Appellants
acknowledge Eran teaches a second access point: “manager 30 may appoint
a new access point to communicate with the mobile station.” App. Br. 12
(citing Eran 148) (emphasis added). Appellants, however, argue Eran does
not teach that the communication between the new access point and the
mobile station would comprise transmitting a probe response, as claim 1
requires. Id. That argument is insufficient to persuade us that Eran teaches
away from determining at least two access points that should respond to a
probe request frame.
4
Appeal 2017-000154
Application 13/735,413
Appellants further argue Eran does not teach “at least two access
points” responding to a “probe request frame transmitted by a station.”
App. Br. 9-12. In particular, Appellants argue Figure 2 A of Eran teaches
determining only one access point, and not “at least two access points” as
claim 1 requires. App. Br. 9—12; Reply Br. 2—3. In response to the
Examiner’s reliance on Eran’s Figure 3 as teaching the second access point,
Appellants argue “there is no disclosure that this communication between
the new access point and the mobile station would comprise transmitting a
probe response, which a person skilled in the art understands as being a
response to a probe request.” App. Br. 12. Appellants further argue Masuda
does not teach responses from subsequent APs being probe responses. App.
Br. 15.
Appellants’ arguments are not persuasive. The Examiner found that,
in Eran, manager 30 (BSSMGR) receives a probe request with received
signal strength indication (RSSI) that is transmitted by an access point, API.
Ans. 7. The Examiner found this probe request with RSSI is equivalent to
the limitation “probe request received frame,” recited in claim 1. Id. The
Examiner found, based on at least the information in the probe request with
RSSI from API, together with the probe request with RSSI from AP2, the
manager 30 determines that API and AP2 are the two access points that are
in the range of and able to communicate with the station. Id. The Examiner
further found manager 30 determines at least one access point that will
respond first. Id. The Examiner explained this response is, at least, in form
of data response 79. Id. (citing Eran Fig. 2B). The Examiner further found,
based on the functionality of determining RSSI for every uplink packet, at
least one other access point is selected to respond in the form of data
5
Appeal 2017-000154
Application 13/735,413
response 79. Id. The Examiner found such responses are determined at least
partially based on receiving a probe request because it is only after the probe
request message that messages are sent in the uplink direction. Id. at 10-11.
The Examiner also found Masuda teaches “a probe response message being
the very first message from all potential target APs after the probe request
message.” Ans. 17 (citing Masuda Fig. 6,1175).
Appellants argue in rebuttal that “[a] person skilled in the art would
not consider DATA RESPONSE or ASSOC RESPONSE as a response to a
PROBE REQUEST” because “[tjhose messages relate to different
procedures.” Reply Br. 4. Appellants, however, provide insufficient basis
for this argument. It is well settled that mere attorney arguments and
conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. Geisler, 116 F.3d at 1470; see also
Pearson, 494 F.2d at 1405 (attorney argument is not evidence). Appellants
acknowledge Figure 6 and paragraph 177 of Masuda teach receiving probe
responses from more than one AP (App. Br. 16), and Appellants do not
address the Examiner’s specific findings regarding paragraph 175 of Masuda
(see Reply Br. 13). In sum, Appellants present insufficient persuasive
explanation or objective evidence to rebut the Examiner’s findings.
Moreover, Appellants attack the prior art references individually, even
though the Examiner relied on the combination of Eran and Masuda as
teaching or suggesting the disputed features. Final Act. 4—6, Ans. 5—22. In
particular, the Examiner cites, Masuda, not Eran, as teaching probe
responses. Final Act. 5; In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)) (“The test for
6
Appeal 2017-000154
Application 13/735,413
obviousness is what the combined teachings of the references would have
suggested to those having ordinary skill in the art.”).
Appellants next contend the Examiner erred in combining Eran with
Masuda because Eran’s access points operate in the same operating channel,
while Masuda’s access points operate in different operating channels. App.
Br. 16-18.
We are not persuaded by Appellants’ arguments. “Under the correct
analysis, any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.” KSR at 420 (emphasis added). Here,
we find the Examiner’s proffered motivation (“in order to improve
compatibility of the invention and user experience”) provides a sufficient
rational underpinning because Masuda teaches performing a high-speed scan
operation for determining an optimal access point from among a plurality of
neighboring access points. Ans. 23. Thus, we find the Examiner set forth
sufficient “articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006). See also 35 U.S.C. § 132(a) (setting forth the notice requirement
for the Examiner to establish a prima facie case).
For these reasons, we are not persuaded the Examiner erred in finding
the combination of Eran and Masuda teaches or suggests the disputed
limitations of claim 1. Accordingly, we sustain the Examiner's 35 U.S.C.
§ 103(a) rejection of independent claim 1, as well as the Examiner's
35 U.S.C. § 103(a) rejection of independent claim 5, which Appellants
contend is patentable for the same reasons as claim 1. App. Br. 21—22. We
also sustain the Examiner’s obviousness rejection of dependent claims 3, 4,
7
Appeal 2017-000154
Application 13/735,413
and 6—8, for which Appellants make no separate, substantive arguments for
patentability. Id. at 22. Arguments not made are waived. See 37 C.F.R.
§ 41.37(c) (l)(iv).
Rejection of Claim 2
Claim 2 depends from claim 1 and further recites “processing
information contained in the at least one received probe request received
frame further comprises determining an order in which a station that
transmitted a probe request frame to the at least one reporting access point
should attempt to associate with the selected set of access points.” App.
Br. 33. In rejecting claim 2 for obviousness, the Examiner found Eran’s
selection of access points to respond to a mobile station teaches or suggests
the limitation “determining an order,” as recited in claim 2. Final Act. 7
(citing Eran 148).
Appellants acknowledge that Eran describes a method of selecting
access points, but argue that “[tjhere is a distinction between mere
‘selection’ versus ‘determining an order.’” App. Br. 21.
Appellants’ arguments are not persuasive. The Examiner concluded
that Eran’s teaching of “selecting a plurality of APs for the mobile station to
connect to in a one-by-one manner requires, at least inherently, requires
manager 30 to determine an order.” Ans. 24—25. We agree with the
Examiner’s conclusion because Eran’s selected access point is the AP with
the strongest RSSI for a given mobile station, to provide the best
communication with that mobile station. Eran 148. Eran’s manager 30
selects future APs based on the strength of the signal for every uplink packet
received, thus selecting the APs with the strongest RSSI measurements. Id.
Selecting APs with the strongest RSSI measurements at least suggests an
8
Appeal 2017-000154
Application 13/735,413
ordering of the APs according to the numerical values of their RSSI
measurements. Therefore, we are not persuaded the Examiner erred in
rejecting claim 2.
For these reasons, we are not persuaded that the Examiner erred in
finding the combination of Eran and Masuda teaches or suggests the
disputed limitations of dependent claim 2. Accordingly, we sustain the
35 U.S.C. § 103(a) rejection of dependent claim 2.
Rejection of Claims 17 and 19
Appellants contend the Examiner erred in rejecting independent claim
17 for the same reasons as claim 1. App. Br. 24. In particular, Appellants
contend the Examiner erred in rejecting claim 17 because the combination of
Eran and Masuda does not teach or suggest the limitations “receiving probe
response frames from at least two access points” and “examining the
received probe response frames to determine whether an order in which
probe response frames are received from the at least two access points has
been coordinated and that the station is recommended to attempt to
authenticate and associate to the access points according to the order in
which the probe response frames are received,” recited in claim 17. Id.
Appellants’ arguments are not persuasive because they are
conclusory, merely reciting the claim limitation, the teachings of Eran, and
stating that the two are not the same. See id.&t 24—26. Rule 41.37
“require[s] 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.” In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011). Appellants do not persuasively rebut the Examiner’s
findings.
9
Appeal 2017-000154
Application 13/735,413
For these reasons, and those discussed above for claim 1, we are not
persuaded the Examiner erred in rejecting claim 17.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of independent claim 17, as well as the Examiner’s 35 U.S.C. § 103(a)
rejection of independent claim 19, which Appellants contend is patentable
for the same reasons as claim 17. App. Br. 27.
Rejection of Claims 18 and 20
Claim 18 recites:
18. The method of claim 17, where examining the received
probe response frame comprises examining a predetermined
field and, if the field is set, being informed that the access point
that transmitted the probe response frame recommends that the
station select a basic service set included in a neighbor list of
the probe response frame for authentication and association.
App. Br. 35 (emphasis added).
In rejecting claim 18 for obviousness, the Examiner found Halasz’s
neighbor list, transmitted in a probe response packet, teaches or suggests the
limitation “a basic service set included in a neighbor list of the probe
response frame for authentication,” recited in claim 18. Final Act. 13 (citing
Halasz, || 37, 49).
Appellants contend the cited sections of Halasz do not teach or
suggest the limitations of claim 18. App. Br. 28—29. Specifically,
Appellants argue:
[a] disclosure of determining a set of neighbor access points, by
monitoring Probe Response frames, and a parent access point
advertising a list of neighbor access points, and that a wireless
station can employ one or more factors, including but not
limited to, received strength indication (RSSI), channel quality,
load and data rate to determine which neighboring access point
it is likely to roam to next, is not a disclosure or suggestion of
10
Appeal 2017-000154
Application 13/735,413
examining a predetermined field in a received probe response
frame and, if the field is set, being informed that the access
point that transmitted the probe response frame recommends
that the station select a basic service set included in a neighbor
list of the probe response frame for authentication and
association as Appellant is claiming in claim 18.
App. Br. 29.
Appellants’ argument is conclusory, merely reciting the claim
limitation, the teachings of Halasz, and stating that the two are not the same.
Id. Rule 41.37 “require[s] 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.” Lovin, 652 F.3d at
1357. Accordingly, we are not persuaded by Appellant’s argument that the
Examiner erred in rejecting claim 18.
Moreover, as a matter of claim interpretation and in further support of
the Examiner's conclusion of obviousness, under the broadest reasonable
interpretation of claim 18, the conditional limitation beginning with “if the
field is set” may never occur. Conditional steps employed in a method claim
need not be found in the prior art if, under the broadest reasonable
interpretation, the method need not invoke those steps. See Ex parte
Schulhauser, No. 2013-007847, 2016 WL 6277792 at *4 (PTAB April 28,
2016) (precedential) (holding “[t]he Examiner did not need to present
evidence of the obviousness of the remaining method steps of claim 1 that
are not required to be performed under a broadest reasonable interpretation
of the claim . . . see also Ex parte Katz, No. 2010-006083, 2011 WL
514314, at *4—5 (BPAI Jan. 27, 2011). The Examiner, therefore, need not
present evidence establishing the obviousness of the conditional limitation
“if the field is set, being informed that the access point that transmitted the
11
Appeal 2017-000154
Application 13/735,413
probe response frame recommends that the station select a basic service set
included in a neighbor list of the probe response frame for authentication
and association” of claim 18, because the field is not required to be set under
the broadest reasonable interpretation of the claim.
Accordingly, we find Appellants’ argument that Halasz fails to teach
or suggest the conditional limitation unavailing because it is not
commensurate in scope with the broadest reasonable interpretation of
claim 18. See Schulhauser, Appeal 2013-007847, at *9.4
For these reasons, we are not persuaded the Examiner erred in finding
that the combination of Eran, Masuda, and Halasz teaches or suggests the
limitations of claim 18, and we sustain the 35 U.S.C. § 103(a) rejection of
dependent claim 18, as well as the 35 U.S.C. § 103(a) rejection of dependent
claim 20, which Appellants argue is patentable for similar reasons. App.
Br. 29.
DECISION
We affirm the decision of the Examiner rejecting claims 1—8
and 17—20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
4 In the event of further prosecution, we leave it to the Examiner to
determine whether claim 18 satisfies the definiteness requirements of 35
U.S.C. § 112, second paragraph. Although the Board is authorized to reject
claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the
Board elects not to do so. See MPEP § 1213.02.
12