10025543 (B.P.A.I. Mar. 14, 2012)

Ex Parte Mizell et al

Board of Patent Appeals and InterferencesMar 14, 2012

10025543 (B.P.A.I. Mar. 14, 2012)

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. 10/025,543 12/18/2001 Jerry L. Mizell 14413RRUS01U 8303 7590 03/15/2012 Wei Wei Jang Haynes and Boone, LLP 901 Main Street Suite 3100 Dallas, TX 75202-3789 EXAMINER PATEL, JAY P ART UNIT PAPER NUMBER 2466 MAIL DATE DELIVERY MODE 03/15/2012 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 JERRY L. MIZELL, DAVID J. LAUSON, and PETER W. WENZEL ____________________ Appeal 2010-001139 Application 10/025,543 Technology Center 2400 ____________________ Before: LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and ANDREW J. DILLON, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-001139 Application 10/025,543 2 STATEMENT OF CASE The Patent Examiner rejected claims 1-16. The Appellants appeal therefrom under 35 U.S.C. Â§ 134(a). We have jurisdiction under 35 U.S.C. Â§ 6(b). INVENTION Claim 1, which follows, is illustrative of the claimed subject matter. 1. A method of processing data traffic in transit in a mobile telecommunication network, comprising: filtering a packet of data to determine an application associated therewith for processing the packet; and applying a service marking to the packet dependent on the application associated with the packet. REFERENCES AND REJECTIONS Chaskar Chow US 7,023,820 US 7,072,300 Apr. 4, 2006 Jul. 4, 2006 Claim 1-16 stands rejected under 35 U.S.C Â§103(a) as being unpatentable over Chaskar and Chow. DISCUSSION Based on the Appellants' arguments, we will decide the appeal of claims 1-16 on the basis of claim 1. See 37 C.F.R. Â§ 41.37(c)(1)(vii). Therefore, the issue before us follows. Did the Examiner err in finding that Chow discloses an application for processing a packet of data, as required by representative claim 1? "Both anticipation under Â§ 102 and obviousness under Â§ 103 are two- step inquiries. The first step in both analyses is a proper construction of the claims. . . . The second step in the analyses requires a comparison of the Appeal 2010-001139 Application 10/025,543 3 properly construed claim to the prior art." Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted). Here, we adopt the Examiner's construction of claim 1's "application." (Ans. 13-14.) We likewise adopt the finding of a teaching of the properly construed claim 1 in Chow. (Id. at 14-15.) The Appellants argue that the reference's "'policy information' is not equivalent to any of the identified examples" (App. Br. 3) in their Specification. "[A]lthough the specification often describes very specific embodiments of the invention," Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005), the U.S. Court of Appeals for the Federal Circuit "ha[s] repeatedly warned against confining the claims to those embodiments." Id. Here, the Appellants admit that their Specification merely contains "examples" (Appeal Br. 3) of an application and that their invention is "not limited to" (id.) these examples. Consequently, we agree with the Examiner "that the term 'application' is [not] limited to these enumerated examples." (Ans. 13.) Therefore, we conclude that the Examiner did not err in finding that Chow discloses an application for processing a packet of data, as required by representative claim 1. Appeal 2010-001139 Application 10/025,543 4 DECISION We affirm the rejection of claim 1 and that of claims 2-15, which fall therewith. No time for taking any action connected with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(1). See 37 C.F.R. Â§ 1.136(a)(1)(iv). AFFIRMED tkl