13994868 (P.T.A.B. Oct. 25, 2018)

Ex Parte Pasotti et al

Patent Trial and Appeal BoardOct 25, 2018

13994868 (P.T.A.B. Oct. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/994,868 10/28/2013 47382 7590 10/29/2018 Patti & Malvone Law Group, LLC One North LaSalle St., 44th Floor Chicago, IL 60602 FIRST NAMED INVENTOR Marco Pasotti 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. 807938 US/ALU-128 9062 EXAMINER TSEGA YE, SABA ART UNIT PAPER NUMBER 2467 NOTIFICATION DATE DELIVERY MODE 10/29/2018 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): info@pattimalvonelg.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 MARCO P ASOTTI, PAOLO DI PRISCO, GIULIANO CORBETTA, GIORGIO BARZAGHI, FRANCESCO VODOLA, GIUSEPPE DEBLASIO, MARZIO GEROSA, LUCA SALGARELLI, and FRANCESCO GRINGOLI Appeal2018-003580 Application 13/994, 868 1 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. Â§ 134(a) from the Examiner's final rejection of claims 1-15, which are all of the claims pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 According to Appellants, the real party in interest is Alcatel-Lucent. App. Br. 3. Appeal2018-003580 Application 13/994,868 INVENTION Appellants' application relates to packet radio transmission. Spec. 1. Claim 1 is illustrative of the appealed subject matter and reads as follows ( emphasis added): 1. A method of transmitting packets wherein said packets are comprised in a plurality of flows comprising frames, each flow comprising a corresponding plurality of flow characteristics comprising at least a committed information rate value and a class of service, the method comprising: controlling admission of incoming flows; mapping frames contained in admitted flows into fragments; inserting a plurality of fragments having the same class of service into a queue; obtaining the committed information rate value corresponding to said queue; identifying a bandwidth available for transmission of said queue according to said obtained committed information rate value; defining an order of transmission for the queue based on the class of service of the queue and the identified bandwidth; generating a plurality of cells of the same size from a plurality of fragments; distributing the plurality of cells between a plurality of individual transmission channels according to the order defined for transmission REJECTIONS Claims 1-5 and 15 stand rejected under 35 U.S.C. Â§ I03(a) as obvious over the combination of Wu et al. (US 2007/0189169 Al; published Aug. 16, 2007) ("Wu") and Park et al. (US 2007/0019599 Al; published Jan. 25, 2007) ("Park"). Final Act. 2. 2 Appeal2018-003580 Application 13/994,868 Claims 6-11 stand rejected under 35 U.S.C. Â§ I03(a) as obvious over the combination of Wu, Park and Wang et al. (US 7,737,870 Bl; published June 15, 2010) ("Wang"). Final Act. 6. Claims 12 and 13 stand rejected under 35 U.S.C. Â§ I03(a) as obvious over the combination of Park, Wang and Kuhl et al. (US 2003/0118052 Al; published June 26, 2003) ("Kuhl"). Final Act. 10. Claim 14 stands rejected under 35 U.S.C. Â§ I03(a) as obvious over the combination of Wu, Park, Wang, and Strong et al. (US 2008/0056192 Al; published Mar. 6, 2008) ("Strong"). Final Act. 13. ANALYSIS Appellants contend the Examiner erred because the cited portions of Wu do not teach the disputed limitation "inserting a plurality of fragments having the same class of service into a queue." App. Br. 10. Appellants argue that, as described in the Specification, a "fragment" is distinct from a packet and a frame. Id. In rejecting the claims, the Examiner mapped Wu's packets to the recited "fragments." Final Act. 3 ( citing Wu ,r,r 21, 26, 27, 29). In response to Appellants' specific argument regarding the term "fragment," the Examiner concluded "Applicant employs broad language, which includes the use of word, and phrases which have broad meanings in the art." Ans. 9. The Examiner provided a definition for the claim term "fragment," defining it as "a small part broken or separated off something." App. Br. 10. The Examiner, however, did not provide the source of, or any rationale for, the definition. See id. 2 2 "[T]he use of [ two similar but different] terms in close proximity in the same claim gives rise to an inference that a different meaning should be 3 Appeal2018-003580 Application 13/994,868 We are persuaded that the Examiner erred. The Examiner's claim interpretation of "fragments," as recited in each independent claim on appeal, is overly broad, unreasonable, and inconsistent with the Specification. The Examiner's interpretation reads "fragments" out of the claims because, according to the Examiner, the recited "packets" themselves can be the recited "fragments." The Examiner's interpretation runs counter to existing claim construction principles. Bi con, Inc. v. Straumann Co., 441 F.3d. 945, 950 (Fed. Cir. 2006) (claims are interpreted with an eye toward giving effect to all terms in the claim); see Tex. Instruments Inc. v. U S. Int 'l Trade Comm 'n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (explaining claim language cannot be mere surplusage, an express limitation cannot be read out of the claim). 3 assigned to each ... That inference, however, is not conclusive; it is not unknown for different words to be used to express similar concepts, even though it may be poor drafting practice." Bancorp Services, L.L. C. v. Hariford Life Ins. Co., 359 F.3d 1367, 1373 (Fed. Cir. 2004) (citing Ethicon Endo-Surgery, Inc. v. US. Surgical Corp., 93 F.3d 1572, 1579 (Fed. Cir. 1996)). 3 When determining whether a claim is obvious under 35 U.S.C. Â§ 103, an Examiner must make "a searching comparison of the claimed invention- including all its limitations-with the teaching of the prior art." In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (emphasis added). Thus, "obviousness requires a suggestion of all limitations in a claim." CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974) (holding that to establish prima facie obviousness of a claimed invention, all the claim features must be taught or suggested by the prior art)). Accordingly, the Examiner must consider all claim limitations when determining patentabi1ity of an invention over the prior art See In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). See also MPEP Â§2143.03. 4 Appeal2018-003580 Application 13/994,868 Moreover, the Examiner's interpretation does not correspond with what and how Appellant describes the invention in the Specification, i.e., an interpretation that is "consistent with the specification." In re Smith Int 'l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017) (citation and internal quotation marks omitted). The Specification consistently describes packets and fragments differently and as separate elements. See, e.g., Spec. p. 5, 11. 12-23; see also Spec. 6, 11. 6-17, p. 12, 11. 18-24; see Reply Br. 3. For these reasons, the Examiner has not demonstrated that the cited references teach or suggest the disputed limitations of claim 1. 4 Accordingly, we reverse the Examiner's 35 U.S.C. Â§ 103(a) rejection of independent claim 1 and independent claim 15, which recites the "fragments" limitation in commensurate form. See App. Br. 18. We also reverse the Examiner's separateÂ§ 103(a) rejections of independent claims 6, 12, and 14, which also recite the claim term "fragments." Regarding the second-, third-, and fourth-stated rejections, on this record, the Examiner has not shown how the additionally cited secondary references overcome the aforementioned deficiencies of Wu and Park, in which the Examiner has not shown a teaching of Appellants' claimed "packets" and "fragments" as discrete features found in the reference(s), as discussed above regarding the first-stated rejection of claim 1. 4 Appellants raise additional arguments. Because the identified issue is dispositive of the appeal, we do not reach the additional arguments. See In re Hyon, 679 F.3d 1363, 1367 (Fed. Cir. 2012) (noting that affirmance of rejection of all claims underÂ§ 103(a) made it unnecessary to reach other grounds of rejection); Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (holding that by deciding a single dispositive issue, the ITC was not required to review other matters decided by the presiding officer). 5 Appeal2018-003580 Application 13/994,868 Because we reverse each independent claim on appeal, we also reverse all of the dependent claims, 2-5, 7-11, and 13, which stand with the independent claims from which they depend. DECISION We reverse the Examiner's decision rejecting claims 1-15. REVERSED 6