Ex Parte Mitjana

Board of Patent Appeals and Interferences

Sep 24, 2010

10793091 (B.P.A.I. Sep. 24, 2010)

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.
10/793,091 03/04/2004 Enric Mitjana GR01P12911 6736
24131 7590 09/24/2010
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
HARPER, KEVIN C
ART UNIT PAPER NUMBER
2462
MAIL DATE DELIVERY MODE
09/24/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ENRIC MITJANA
____________

Appeal 2009-007241
Application 10/793,091
Technology Center 2400
____________

Before ROBERT E. NAPPI, JOHN C. MARTIN, and
JOSEPH F. RUGGIERO, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007241
Application 10/793,091

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1-8 and 10, which are all of the pending claims. Claim 9 has been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed February 7, 2007) and the Answer
(mailed June 26, 2007) for the respective details. We have considered in this
decision only those arguments Appellant actually raised in the Brief. Any
other arguments which Appellant could have made but chose not to make in
the Brief are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

Appellant’s Invention
Appellant’s invention relates to identifying and/or using substations
with specific functions in an ad-hoc network in which at least one of the
substations in the ad-hoc network offers the specific functions to other ones
of the substations. The capacity to execute a specific function is
communicated to the other substations, along with additional information
about the quality of service offered, by signaling. (See generally Spec. 8:8-
19).
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method for identifying and/or using substations with specific
functions in an ad-hoc network having at least two substations, the method
which comprises the steps of:
providing at least one substation offering a specific function;
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Application 10/793,091

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signaling by the at least one substation having the specific function at least
one of a capacity to execute the specific function and a corresponding
retransmission option to the other substations; and
communicating additional information about a quality of service of the
specific function offered with the signaling.

The Examiner’s Rejections
The Examiner’s Answer cites the following prior art references:
Larsen US 2001/0036810 A1 Nov. 1, 2001
(filed Dec. 5, 2000)
Cansever US 6,678,252 B1 Jan. 13, 2004
(filed Oct. 28, 1999)
Meier US 2005/0078647 A1 Apr. 14, 2005
(eff. filed Oct. 30, 1992)
Claims 1-8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Larsen in view of Cansever.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Larsen in view of Cansever and Meier.

ISSUES
Based on Appellant’s contentions, as well as the findings and
conclusions of the Examiner, the pivotal issues before us are whether the
Examiner erred in determining
a) the obviousness to the ordinarily skilled artisan of combining
the quality of service communication teachings of Cansever with the
communication relay service teachings of Larsen, and
b) the resultant combination of Cansever and Larsen satisfies the
requirements of the appealed claims.

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Application 10/793,091

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PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C.
§ 103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). Furthermore,
“there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness” . .
. . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim,
for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
Claims 1-8
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claims 1 and 7, Appellant’s arguments initially focus on the
alleged deficiency of the applied Larsen and Cansever references in
disclosing the communication of additional information about the quality of
service of a specific function offered by the signaling of one substation to
other substations as claimed. In particular, Appellant contends (App. Br. 21-
24) that the Cansever reference, relied upon by the Examiner as providing a
teaching of the quality of service feature, merely discloses the
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communication of general quality of service information from one node to
another across a network, e.g., the quality of service associated with various
available communication path links through the network. In Appellant’s
view (App. Br. 18-19), Cansever’s communication of quality of service
information of a communication path is not the same as the communication
of the quality of service of a specific offered function as claimed, since the
signal path quality may be acceptable, but the quality of service of the
specific function over the path may be lower than required.
In reviewing the Examiner’s stated position in the Answer, we find no
error in the Examiner’s analysis of the disclosures of the applied prior art.
Initially, we find no error in the Examiner’s identification (Ans. 3, 6) of the
communication relay service offered by a network substation to other
network substations disclosed by Larsen as corresponding to the claimed
specific offered function (¶¶ [0012]-[0014], [0020]-[0024]). Further, while
Larsen does not explicitly disclose the communication of quality of service
information associated with the identified communication relay service
function, we find no error in the Examiner’s application (Ans. 4, 6) of the
quality of service communication teachings of Cansever to Larsen. As
described by Cansever, quality of service information of relay services is
exchanged between mobile stations in a network to determine whether
communication links through a node are acceptable (Fig. 3; col. 4, ll. 16-55).
Further, we agree with the Examiner (Ans. 6) that both Larsen (¶ [0022])
and Cansever (col. 4, ll. 23-27; col. 6, ll. 49-54) disclose that the specific
function of relaying information among nodes in a network is directly
related to the quality of service of the signal connection path.
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With the above discussion of the Larsen and Cansever references in
mind, we do not agree with Appellant’s argued position, as we find
Appellant’s arguments to be not commensurate with the scope of
independent claims 1 and 7. To whatever extent Appellant may have
intended to preclude the communicated quality of service information from
being that which is associated with the communication signal path, as
disclosed by both Larsen and Cansever, no such requirement appears in the
broadly stated language of independent claims 1 and 7. Such arguments by
Appellant improperly attempt to narrow the scope of the claim by implicitly
adding disclosed limitations which have no basis in the claim. See In re
Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
We also find to be without merit Appellant’s contention that the
communication between the substations in Larsen is “passive” signaling as
opposed to the “active” signaling set forth in the claims. According to
Appellant (App. Br. 24-26), the claimed substation signaling is intended to
refer to information which is “emitted regularly and repeatedly” by the
substations to continuously provide information to the ad-hoc network
(Spec. 22:11-15). Again, we find Appellant’s arguments not commensurate
with the scope of independent claims 1 and 7, as we find no language
directed to regular and/or continuous signaling of information between
substations. Further, to whatever extent the language of independent claims
1 and 7 may be interpreted as requiring “active” signaling as argued by
Appellant, we agree with the Examiner (Ans. 7) that the mobile station
signaling in Larsen in which the mobile stations develop and broadcast their
own gradients over the network (¶¶ [0021], [0023]) would be considered by
an artisan as being “active” signaling.
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Lastly, Appellant’s arguments (App. Br. 26-28) to the contrary
notwithstanding, we find that the Examiner’s stated position (Ans. 4, 7)
provides a valid articulated line of reasoning with a rational underpinning to
support the legal conclusion of obviousness for the proposed combination of
Cansever with Larsen. See KSR, 550 U.S. at 418. We agree with the
Examiner’s finding that, although Larsen discloses the provision of a
communication relay function that is related to a quality of service
requirement (¶ [0022]), the broadcasting of such a quality of service
requirement among the plurality of stations in the network as taught by
Cansever (col. 4, ll. 16-55) in order to allow an end station to find a suitable
communication path would be recognized by the artisan as an obvious
enhancement to the system of Larsen.
For the above reasons, we sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of independent claims 1 and 7, as well as dependent claims 2-6 and
8, not separately argued by Appellant.

Independent claim 10
We also sustain the Examiner’s obviousness rejection of independent
claim 10 in which the Examiner has added Meier to the combination of
Larsen and Cansever to address the “hop” number communication feature of
this claim. Appellant has made no separate arguments for the patentability
of claim 10 but, instead, has relied upon arguments made with respect to
independent claims 1 and 7, which arguments we have found to be
unpersuasive as discussed supra.

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Application 10/793,091

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CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1-8 and 10 for obviousness
under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s decision rejecting claims 1-8 and 10 under
35 U.S.C. § 103(a).
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)(v) (2009).

AFFIRMED

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LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480