Ex Parte Park

Patent Trial and Appeal Board

Dec 20, 2018

13730987 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/730,987 12/29/2012
50889 7590 12/25/2018
KACVINSKY DAISAK BLUNI PLLC
430 Davis Drive, Suite 150
Morrisville, NC 27560
FIRST NAMED INVENTOR
Minyoung Park
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.
P47457-4188 3099
EXAMINER
AUNG,SAI
ART UNIT PAPER NUMBER
2416
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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):
inteldocs _ docketing@cpaglobal.com
Intel @kdbfirm.com
docketing@kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MINYOUNG PARK
Appeal 2018-002117
Application 13/730,987 1
Technology Center 2400
Before ERIC B. CHEN, MATTHEW R. CLEMENTS, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-30, which constitute all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 Appellant identifies Intel Corporation as the real party in interest.
App. Br. 3.
Appeal 2018-002117
Application 13/730,987
STATEMENT OF THE CASE
The Claimed Invention
Appellant's invention relates to wireless communication systems and,
specifically, communicating a "number of pages and a number [ ofJ blocks
per page" in a hierarchical data structure of a traffic indication map ("TIM").
Spec. ,r 1. In the disclosed embodiments, an access point broadcasts a
bitmap to notify the connected stations that data is buffered at the access
point and awaits access/download by one or more stations. Id. ,r,r 3-8;
Fig. 1 A. The access point sometimes changes the quantity of bitmap
elements and informs the stations of the new quantity so they correctly read
these elements. Id.
Claims 1, 7, 14, 21, 25, and 28 are independent. Claim 7 is illustrative
of the invention and the subject matter of the appeal, and reads as follows:
7. A device comprising:
a memory; and
a medium access control logic comprising a processor to
access the memory to generate a frame comprising a traffic
indication map element,
wherein the traffic indication map element comprises
more than one fields, wherein at least one of the fields
comprises a page count, wherein the page count is a value
indicative of a number of pages in a hierarchical structure for an
entire bitmap of stations associated with an access point for
which the access point may buffer data and at least one of the
fields comprises a block count, wherein the block count is a
value indicative of a number of blocks associated with each
page in the hierarchical structure.
App. Br. 33 (Claims App.).
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Application 13/730,987
The Rejections on Appeal
Claims 7-12, 21-23, 25, 26, 28, and 29 stand rejected under 35 U.S.C.
§ I02(e) as anticipated by Ghosh et al. (US 2013/0229959 Al; filed June 14,
2012; published Sept. 5, 2013) ("Ghosh-I"). Final Act. 3-9 (May 19, 2016).
Claims 1-5 and 14--16 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Ghosh-I and Seok (US 2011/0038291 Al; Feb. 17, 2011).
Final Act. 10-15.
Claims 6, 13, 17-20, 24, 27, and 30 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Ghosh-I, Seok, and Ghosh et al.
(US 2013/0294261 Al; Nov. 7, 2013) ("Ghosh-2"). Final Act. 15-18.
Claims 1-30 stand rejected on the ground of obviousness-type double
patenting over claims 1, 6, 11, 15, 20, and 22 of U.S. Patent 9,237,481 and
in view of Ghosh-I and Seok. Non-Final Act. 4--11 (Mar. 10, 2016); Final
Act. 21 ("[ d]ouble patenting rejection is also sustained because the applicant
fails to file a terminal disclaimer").
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments presented in this appeal. Arguments which Appellant could have
made but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv). On the record before us, we are persuaded the Examiner
erred in rejecting claims 1---6, 14--20, and 25-30 (i.e., the "method" and
"instructions" claims on appeal). We are not persuaded of error, however,
regarding the remaining claims 7-13 and 21-24 (i.e., the "device" claims),
and we adopt as our own the findings and reasons set forth in the rejections
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Application 13/730,987
of those claims and in the Examiner's Answer. We provide the following
for highlighting and emphasis.
We first address, in Section A below, the prior art rejections of the
"device" claims 7-13 and 21-24 (of which claims 7 and 21 are
independent). In Section B, we address the prior art rejections of the
"method" or "instructions" claims 1---6, 14--20, and 25-30. Finally, in
Section C, we address the double-patenting rejection.
A. Prior Art Rejections of Claims 7-13 and 21-24
1. Claims 7-12 and 21-23 (Anticipation by Ghosh-I)
Appellant argues the Examiner erred in finding Ghosh- I discloses
"the traffic indication map element comprises ... fields, wherein at least one
of the fields comprises a page count [that] is a value indicative of a number
of pages ... for an entire bitmap of stations associated with an access point,"
as recited in independent claim 7. App. Br. 17-21; Reply Br. 22-28.
Appellant contends that although Ghosh- I illustrates a page count value
"Np'' representing the number of pages in a block of data, Np is not in any
"field" as required by claim 7. App. Br. 18-20 ( citing Ghosh- I Fig. 8).
Rather, Appellant contends, page count value Np merely is a "label [in the
drawing] so the reader can follow discussions [in Ghosh- I] of the positions
of stations in TIM segments." Id. at 20. Although we agree with the thrust
of Appellant's argument, we do not find the Examiner erred regarding
claim 7 (and similar claims 8-12 and 21-23, as discussed below).
Claim 7 is a "device" claim. Id. at 33. It is we11 established that
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Application 13/730,987
the patentability of an apparatus (device) claim ''depends on the claimed
structure, not on the use or purpose of that structure." Catalina Afarketing
Int'/., Inc. v. Coo/savings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002);
Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990) ("[ A Jpparatus claims cover what a device is, not what a device
does."). Further, "the recitation of a new intended use for an old product
does not make a claim to that old product patentable." In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted); Paragon Solutions,
LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).
The device recited in claim 7 comprises the following structural
elements: "memory, ... medium access control logic [and] a processor."
App. Br. 33. These are the only structural elements recited in the claim, and
Appe11ant does not contest that Ghosh-I discloses each of them. App. Br.
38---40. AJthough claim 7 further recites terms such as "frame," "map
element," "fields," and "page countt some of which Appellant argues are
not disclosed in Ghosh- I, these elements are recited in a manner that
describes what the claimed device is intended "to'' do, not as required
st1ucture of the device. App. Br. 33. For example, claim 7 recites "logic
comprising a process to access the rnemory to generate a frame." Id.
( ernphasis added). Accordingly, the "frame," "map element," "fields," and
"page count" claim elements are not, in our view, entitled to patentable
weight in claim 7. Appellant's argument, therefore, does not persuade us the
Examiner erred in rejecting independent claim 7.
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For the same reasons, we are not persuaded by Appellant's arguments
regarding independent claim 21, which also recites a "device" comprising
memory, control logic, and a processor, followed by intended-use elements.
We, therefore, sustain the anticipation rejection of claims 7 and 21.
For the same reasons, we also sustain the anticipation rejection of dependent
claims 8-12 and 22-23, which Appellant did not argue separately from their
respective independent claims 7 and 21.
2. Claims 13 and 24 (Obviousness over Ghosh-I, Seok, and Ghosh-2)
Appellant argues dependent claim 13 recites a bitmap control field
further distinguishing the "device" recited in base claim 7 over Ghosh- I, and
also over the added disclosures of Seok and Ghosh-2. App. Br. 25-27. We
are not persuaded, for the same reasons as discussed above regarding
claim 7. A "bitmap control field" as recited in claim 13 merely is an
element of the "frame" which the recited device is intended "to" generate. It
reflects an intended use of the claimed device, not a structural limitation.
See supra 4--5. Appellant has neither argued nor demonstrated that the
bitmap control field restricts the claimed device to any structure
distinguishing over the combination of Ghosh-1, Seok, and Ghosh-2.
Appellant further argues the Examiner erred in rejecting dependent
claim 24 for the same reasons as claim 21, and because Seok and Ghosh-2
do not cure the deficiencies of Ghosh-I regarding claim 21. App. Br. 28-30.
Because we are not persuaded of error regarding claim 21, Appellant's
argument regarding claim 24 also is unpersuasive.
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Accordingly, we sustain the obviousness rejection of dependent
claims 13 and 24.
B. Prior Art Rejections of Claims 1-6, 14-20, and 25-30
Independent claims 1 and 14 ( and their respective dependent claims
2-6 and 15-19) each recite a "method" comprising steps of generating
particular frames and fields, such as the TIM, page count, and bitmap
elements discussed above. Independent claims 25 and 28 (and their
respective dependent claims 26, 27, 29, and 30) each recite a "non-transitory
medium containing instructions" (i.e., software) to generate such frames and
fields. Accordingly, unlike in the "device" claims discussed above, the
generation of frames and fields recited in claims 1---6, 14--20, and 25-30 are
required steps in the "method" or "instructions," not merely an intended use.
Minton v. Nat'! Ass 'n of Sec. Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir.
2003) (process steps positively recited are entitled to patentable weight).
We first address Appellant's arguments regarding the Examiner's
anticipation rejection, followed by the arguments regarding obviousness.
1. Claims 25, 26, 28, and 29 (Anticipation by Ghosh-I)
Appellant argues the Examiner erred in finding Ghosh- I discloses
"the traffic indication map element comprises ... fields, wherein at least one
of the fields comprises a page count [that] is a value indicative of a number
of pages ... for an entire bitmap of stations associated with an access point,"
as recited in independent claim 25. Specifically, Appellant contends that
although Ghosh- I illustrates a page count value Np representing the number
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of pages for a bitmap, and also discloses "Grouping Parameter Set (Gr PS)
information" including some fields, neither of these features are a "field
comprising a page count." App. Br. 18-20; Reply Br. 23-24, 26-27.
Appellant also contends Ghosh-1 's page count number "Np (e.g. 4)," which
appears in Figure 8, merely is a label for explanatory purposes, not a
disclosure of any actual field or number generation in Ghosh- I. App. Br. 18,
20; Reply Br. 23-24, 27, 29-31; Ghosh Fig. 8. We agree with Appellant's
arguments.
The Examiner finds "Ghosh- I ... explains the TIM ... Element to
include a Page Count Number or Np ... [r]epresent[ing] a number of Four
Pages, i.e., 810-1 to 810-4." Ans. 4 (citing Ghosh-I ,r 110; Fig. 8); see also
Final Act. 4, 19-20. The Examiner further finds that "Ghosh- I clearly
teaches a ... TIM element that comprise[ s] a field to indicate the Page
Count number (Np)." Id. (emphasis added).
As Appellant argues, however, the Examiner only identifies the TIM
bitmap's representative page count value of"Np (e.g. 4)" and not afield
comprising the page count value Np, as recited in claim 25. App. Br. 18, 20;
Reply Br. 23-24, 26-27, 29-31. Moreover, we have reviewed Ghosh- I
Figure 8 and its description, relied upon by the Examiner. We find nothing
that discloses the page count value Np is a generated value, e.g., as being
expressed by a field. Figure 8, reproduced below, is an illustration of a
"typical hierarchical TIM bitmap [that] may consist of 4 (e.g., Np) pages."
Ghosh ,r 110.
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Application 13/730,987
I • SUPPORTING MAX TBD STAs (e .. g. 8192)
UP TO 8 STM
ASSIGNED TO EACH
BLOCK FIG.8
.. 1
810-4
Ghosh- I Figure 8, reproduced above, illustrates the hierarchy of pages,
blocks, and sub-blocks within a typical TIM bitmap. Ghosh- I ,r,r 41, 110.
We agree with Appellant's assertion that the page count value Np is merely a
label within Figure 8 that indicates an example quantity of pages within this
TIM bitmap for explanatory purposes, not a field of the TIM bitmap
illustrated in Figure 8. App. Br. 18, 20; Reply Br. 23-24, 27, 29-31.
Accordingly, we are persuaded by Appellant's argument that the
Examiner erred in rejecting independent claim 25, and we do not sustain the
rejection of that claim. For the same reasons, we also do not sustain the
rejection of independent claim 28, which includes limitations commensurate
in scope with claim 25. We also do not sustain the rejection of the claims 26
and 29, which depend from claims 25 and 28, respectively.
2. Claims 1-5 and 14-16 (Obviousness over Ghosh-I and Seok)
Independent claims 1 and 14 recite limitations similar to the foregoing
disputed limitations of independent claims 25 and 28, and the Examiner
again relies on Ghosh- I as teaching those similar limitations of claims 1 and
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14. Ans. 5. For the same reasons described above regarding claims 25 and
28, we do not sustain the obviousness rejection of claims 1 and 14, and their
dependent claims 2-5, 15, and 16.
3. Claims 6, 17-20, 27, and 30 (Obviousness over
Ghosh-I, Seok, and Ghosh-2)
Dependent claims 6, 17-20, 27, and 30 incorporate the disputed
limitations of their respective base claims 1, 14, 25, and 28, and the
Examiner again relies on Ghosh- I as teaching those limitations as to claims
6, 17-20, 27, and 30. Final Act. 15-17 (adding Ghosh-2 only for the recited
features of claims 6, 17-20, 27, and 30). Accordingly, for the same reasons
as claims 1, 14, 25, and 28, we do not sustain the obviousness rejection of
claims 6, 17-20, 27, and 30.
C. Obviousness-Type Double Patenting Rejections of Claims 1-30
1. Claims 7-13 and 21-24
Appellant makes the same arguments regarding the double patenting
rejection as its arguments regarding the anticipation and obviousness
rejections, discussed above. Namely, Appellant argues the Examiner erred
in finding Ghosh- I's bitmap (Figure 8) teaches a field comprising a page
count. App. Br. 13-17; Reply Br. 12-21; see also Ans. 7-8 (applying
Ghosh-I and Seok).
As discussed above in Section A, however, claims 7 and 21, and their
dependent claims, are device claims. The elements disputed by Appellant
merely are intended uses of the device, and are not entitled to patentable
weight. See supra Section A.
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Application 13/730,987
Accordingly, we sustain the obviousness-type double patenting
rejection of claims 7 and 21, and their dependent claims 8-13 and 22-24 that
were not separately argued.
2. Claims 1-6, 14-20, and 25-30
As discussed above in Section B, independent claims 1, 14, 25, and 28
( and their dependent claims) are "method" or "instructions" claims, not
device claims. App. Br. 13-17; Reply Br. 12-21; see also Ans. 7-8
(applying Ghosh-I and Seok). Accordingly, for the reasons discussed
above, the disputed elements, including generating fields that comprise a
"page count," are entitled to patentable weight. As discussed above, we find
the Examiner erred in finding Ghosh-I (alone or in combination with Seok)
teaches or suggests generating fields comprising a page count. See supra
Section B.
Accordingly, we do not sustain the obviousness-type double patenting
rejection of claims 1, 14, 25, and 28, and their dependent claims 2---6, 15-20,
26, 27, 29, and 30.
DECISION
We affirm the Examiner's decision rejecting claims 7-13 and 21-24.
We reverse the Examiner's decision rejecting claims 1---6, 14--20, and
25-30.
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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 ). See 37 C.F.R.
§ 41.50(±).
AFFIRMED-IN-PART
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