Ex Parte Lee et al

Patent Trial and Appeal Board

Apr 11, 2018

13367588 (P.T.A.B. Apr. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/367,588 02/07/2012 Ki-Ho Lee
76277 7590 04/13/2018
IP LEGAL SERVICES, LLC
P.O. Box 651325
Sterling, VA 20165
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
801.0040 4091
EXAMINER
CELANI, NICHOLAS P
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
04/13/2018 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):
email@iplsllc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KI-HO LEE and JONG-HO PARK
Appeal2017-009685
Application 13/367,588
Technology Center 2400
Before JOHN A. JEFFERY, CATHERINE SHIANG, and
SCOTT B. HOWARD, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-5 and 8-20. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants' invention is a machine to machine (M2M) service
providing system. In one aspect, a M2M managing server provides either
inactivation timer information or M2M server access period timer
information according to a terminal's enrollment status. See generally
Abstract; Spec. i-fi-176-79; Fig. 4. Claim 1 is illustrative:
1 Appellants identify the real party in interest as KT Corp. App. Br. 3.
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Application 13/367 ,588
1. A machine to machine (M2M) service providing system
compnsmg:
a location registration server configured to receive a
location registration request from a M2M terminal and transmit
a location registration response to the M2M terminal, thereby
temporarily allowing the M2M terminal to access a mobile
communication network; and
a M2M managing server configured to provide a M2M
service to a plurality of M2M terminals, the M2M managing
server configured to (i) receive an access request from the M2M
terminal through the mobile communication network, (ii)
determine whether the M2M terminal which has transmitted the
access request is enrolled for the M2M service when the access
request is received, and (iii) individually provide timer
information for traffic control, in response to the received
access request, to the M2M terminal which has transmitted the
access request according to an enrollment status determination,
wherein if the M2M terminal is determined to be
unenrolled for the M2M service,
the M2M managing server is configured to individually
provide inactivation timer information, in response to the
received access request, to the unenrolled M2M terminal which
has transmitted the access request such that the unenrolled
M2M terminal sets up an inactivation timer based on the
inactivation timer information provided from the M2M
managing server, wherein the inactivation timer information
includes an inactivation timer value to be used to set up the
inactivation timer for restricting (i) a transmission of location
registration requests to the location registration server and (ii)
an access to the mobile communication network; and
wherein if the M2M terminal is determined to be enrolled
for the M2M service,
the M2M managing server is configured to individually
provide M2M server access period timer information, in
response to the received access request, to the M2M terminal
enrolled for the M2M service of the M2M management server.
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Application 13/367 ,588
THE REJECTIONS
The Examiner rejected claims 1, 3-5, 8-13, and 15-20 under 35
U.S.C. § 103 as unpatentable over Luft (US 2010/0002582 Al, published
Jan. 7, 2010 ("Luft '582")), Florkey (US 2007/0224997 Al, published Sept.
27, 2007), Hoeksel (US 2010/0146117 Al, published June 10, 2010), and R.
Droms, Dynamic Host Configuration Protocol, Network Working Grp.,
Request for Comments 2131 (Mar. 1997) ("DHCP"). Final Act. 3---6. 2
The Examiner rejected claim 2 under 35 U.S.C. § 103 as unpatentable
over Luft '582, Florkey, Hoeksel, DHCP, and Wifvesson (US 2008/0095361
Al, published Apr. 24, 2008). Final Act. 18-19.
The Examiner rejected claim 14 under 35 U.S.C. § 103 as
unpatentable over Luft '582, Florkey, Hoeksel, DHCP, and Cupala (US
2010/0318913 Al, published Dec. 16, 2010). Final Act. 19-20.
The Examiner rejected claims 1, 3-5, 12, 13, and 15-18 under 3 5
U.S.C. § 103 as unpatentable over Luft '582, Florkey, Hoeksel, DHCP, and
Chu (US 2010/0315980 Al, published Dec. 16, 2010) or Luft (US
2010/0057485 Al, published Mar. 4, 2010) ("Luft '485"). Final Act. 20-21.
THE OBVIOUSNESS REJECTION OVER LUFT '582, FLORKEY,
HOEKSEL, AND DHCP
The Examiner finds that Luft '582 discloses the recited location
registration and managing servers, where the managing server individually
2 Throughout this opinion, we refer to (1) the Final Rejection mailed
September 15, 2016 ("Final Act."); (2) the Appeal Brief filed February 14,
2017 ("App. Br."); (3) the Examiner's Answer mailed May 4, 2017
("Ans."); and (4) the Reply Brief filed July 5, 2017 ("Reply Br.").
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Application 13/367 ,588
provides "inactivation timer information" associated with a negative
acknowledgement (NACK) signal to a terminal responsive to a received
access request such that the terminal sets up an inactivation timer based on
this information. Final Act. 3--4; Ans. 7-10. Although the Examiner
acknowledges that Luft '5 82 managing server does not provide M2M
service to plural M2M terminals, the Examiner cites Hoeksel for teaching
that feature. Final Act. 5. The Examiner also acknowledges that Luft '582
does not determine terminal enrollment status, but cites Florkey for teaching
this feature. Final Act. 4--5.
The Examiner further acknowledges that the modified Luft '5 82
system does not provide the recited server access period timer information,
but cites DHCP for teaching that providing a "lease" for a client to access a
particular network address for a limited time responsive to a request is
known in the art. Final Act. 5---6. Based on these collective teachings, the
Examiner concludes that the claim would have been obvious. Final Act. 3-
6.
Appellants argue that the Examiner's reliance on Luft '5 82 is
misplaced because Luft '5 82 's user devices ( 1) select autonomously their
own randomized backoff times responsive to receiving a NACK broadcast
from a relay station, and (2) postpone access attempts for those randomized
times. App. Br. 11-12; Reply Br. 5---6. As such, the relay station's NACK
signal is a network congestion notification and, therefore, does not include a
backoff timer value, let alone the recited timer information. App. Br. 12;
Reply Br. 5-6.
Appellants also contend that not only does Florkey's storing customer
subscriptions and service profiles fail to teach or suggest a relationship
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between enrollment status and the recited timer information transmissions,
the Examiner did not explain sufficiently why skilled artisans would have
combined Luft '582 and Florkey. App. Br. 12-13; Reply Br. 6-7.
Appellants add that modifying Luft '5 82 such that the relay station provides
timer information to the user devices, as the Examiner proposes, would
change Luft '5 82 's principle of operation or destroy its intended function.
App. Br. 13-14; Reply Br. 8-9.
Appellants add that Hoeksel and DHCP also do not teach or suggest a
relationship between enrollment status and the recited timer information
transmissions because each M2M device in Hoeksel determines a network
access time based on received load information, and DHCP merely provides
a framework for passing configuration information to network hosts. App.
Br. 13; Reply Br. 7.
ISSUES
I. Under§ 103, has the Examiner erred in rejecting claim 1 by finding
that Luft '582, Florkey, Hoeksel, and DHCP collectively would have taught
or suggested an M2M managing server configured to (1) individually
provide inactivation timer information to an unenrolled M2M terminal, and
(2) individually provide M2M access period timer information to an enrolled
M2M terminal, where both functions are responsive to a received access
request?
II. Is the Examiner's proposed combination of the cited references
supported by articulated reasoning with some rational underpinning to
justify the Examiner's obviousness conclusion?
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ANALYSIS
We begin by noting that independent system claim 1 recites, in
pertinent part, two "wherein" clauses that each specify a particular
condition, namely if the M2M terminal is determined to be unenrolled or
enrolled for a M2M service, respectively. These two determinations are
directed to the two possibilities of determining a terminal's enrollment
status, namely whether it is enrolled or not: indeed, these are the only two
possibilities. Independent method claim 13 recites commensurate
limitations.
These possibilities are nevertheless conditional limitations that need
not be satisfied to meet a method claim with these limitations, such as
independent claim 13. See MANUAL OF p ATENT EXAMINING PROCEDURE
(MPEP) § 2111.04(II) (9th ed. Rev. 08.2017, Jan. 2018) (citing Ex parte
Schulhauser, No. 2013-007847 (PTAB Apr. 28, 2016) (precedential)). But
since one condition must occur from the recited determination, only one
condition need be satisfied to meet the claim-not both. Therefore, to the
extent that Appellants contend that both recited conditions must be satisfied
to meet claim 13 (see App. Br. 15; Reply Br. 10), such arguments are not
commensurate with the scope of that claim for that reason alone.
Nevertheless, for the reasons below, we are unpersuaded of error in the
Examiner's rejection of claim 13 even if both recited conditions had to be
satisfied to meet the claim (which they do not).
System claim 1, however, is construed differently. The broadest
reasonable interpretation of an apparatus claim with structure that performs a
function, which only needs to occur if a condition precedent is met, still
requires structure for performing the function should the condition occur.
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Schulhauser at 14--15. Therefore, our interpretation of apparatus claim 1
differs from method claim 13 because the structure, namely the M2M
managing server configured to perform the recited functions, is present in
the system regardless of whether the condition is met and the function is
actually performed.
Despite this distinction, we nevertheless see no error in the
Examiner's reliance on Luft '582 in the rejection of claim 1, essentially for
the reasons stated by the Examiner. Ans. 7-10. To be sure, mobile devices
(UEs) determine their own randomized access postponement time intervals
responsive to receiving a NACK signal from relay station 112. See Luft
'582 i-fi-f 125, 127; Figs. 5, 5A. But because the NACK signal triggers the
terminals' setting up their respective inactivation timers, the data in this
signal is at least associated with inactivation timer information. Accord Ans.
7 (noting that Luft '582's NACK signal functions as a randomized backoff
timer and, therefore, inactivation timer information). Appellants'
contentions to the contrary are not commensurate with the scope of the
claim.
Nor do Appellants persuasively rebut the Examiner's finding that a
server could also send the underlying result of NACK processing to the
devices to postpone accesses for a random time period in lieu of the devices
themselves so interpreting the NACK. Ans. 10. As the Examiner explains,
this variation effectively moves interpretation processing of the NACK
command from the devices to the server-an obvious variation. Id.
We also see no error in the Examiner's finding that a particular timer
value could be transmitted along with the NACK, particularly given DHCP's
teaching that a server's transmitting such timer values to clients in the form
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of"leases" is well known in the art. See Final Act. 6 (citing DHCP 19).
That a server in Luft '582's may not be required to provide timer
information to user devices as Appellants contend (see App. Br. 12) does not
mean that it cannot do so. Nor have Appellants shown that the prior art
discredits, discourages, or otherwise teaches away from the Examiner's
proposed enhancement to Luft '5 82-an enhancement that is at least an
obvious variation in light of the cited references' collective teachings. See
Ans. 10, 14--15. In short, the Examiner's proposed enhancement to Luft
'5 82 uses prior art elements predictably according to their established
functions-an obvious improvement. See KSR Int 'l Co. v. Teleflex, Inc., 550
U.S. 398, 417 (2007).
To the extent that the Examiner's proposed modification is uniquely
challenging to ordinarily skilled artisans or otherwise beyond their skill,
there is no persuasive evidence on this record to prove such a contention.
And to the extent that the proposed modification would impermissibly
change Luft '5 82 's principle of operation or destroy its intended function as
Appellants contend (App. Br. 13-14; Reply Br. 8-9), here again, there is no
persuasive evidence on this record to prove such a contention apart from
attorney argument that has little probative value. See In re Geisler, 116 F .3d
1465, 1470 (Fed. Cir. 1997); see also Enzo Biochem, Inc. v. Gen-Probe, Inc.,
424 F.3d 1276, 1284 (Fed. Cir. 2005) ("Attorney argument is no substitute
for evidence.").
We are also unpersuaded of error in the Examiner's reliance on
Florkey for the limited purpose for which it was cited, namely merely to
show that it is known to determine whether devices are enrolled for certain
services before providing those services (Final Act. 4--5; Ans. 11 }-a
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determination that is at least suggested by Florkey's storing and maintaining
customer subscriptions and service profile information for routing purposes
in paragraph 16.
Nor are we persuaded of error in the Examiner's reliance on Hoeksel
and DHCP for the limited purposes for which the references were cited,
namely Hoeksel for teaching that it is known for an M2M server to provide
M2M service to clients, and DHCP merely to show that providing a "lease"
for a client to access a particular network address for a limited time
responsive to a request is known in the art. Final Act. 5---6. Appellants'
arguments regarding the cited references' individual shortcomings (App. Br.
11-15; Reply Br. 4--8) do not show nonobviousness where, as here, the
rejection is based on the cited references' collective teachings. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
On this record, we see no error in the Examiner's reliance on the
collective teachings of these references for at least suggesting (1)
individually providing inactivation timer information to an unenrolled M2M
terminal, and (2) individually providing M2M access period timer
information to an enrolled M2M terminal, where both functions are
responsive to a received access request. Moreover, the Examiner's proposed
combination of the cited references is supported by articulated reasoning
with some rational underpinning to justify the Examiner's obviousness
conclusion.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 3-5, 8-13, and 15-20 not argued separately with
particularity.
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THE OBVIOUSNESS REJECTIONS OF CLAIMS 2 AND 14
We also sustain the Examiner's obviousness rejections of claims 2 and
14. Final Act. 18-20. Because these rejections are not argued separately
with particularity, we are not persuaded of error in these rejections for the
reasons previously discussed.
THE REMAINING REJECTION
Because our decision is dispositive regarding patentability of all
appealed claims based on the foregoing prior art references, we need not
reach the merits of the Examiner's decision to also reject claims 1, 3-5, 12,
13, and 15-18 as obvious over Luft '582, Florkey, Hoeksel, DHCP, and Chu
or Luft '485 (Final Act. 20-21). See Beloit Corp. v. Valmet Oy, 742 F.2d
1421, 1423 (Fed. Cir. 1984) (approving ITC's determination based on a
single dispositive issue, and not reaching other issues not decided by the
lower tribunal).
CONCLUSION
The Examiner did not err in rejecting claims 1-5 and 8-20 under
§ 103.
We do not reach the Examiner's obviousness rejection of claims 1, 3-
5, 12, 13, and 15-18 as obvious over Luft '582, Florkey, Hoeksel, DHCP,
and Chu or Luft '485.
DECISION
We affirm the Examiner's decision to reject claims 1-5 and 8-20.
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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)(l )(iv).
AFFIRMED
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