Ex Parte Procopio

Patent Trial and Appeal Board

Oct 16, 2017

12448620 (P.T.A.B. Oct. 16, 2017)

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.
12/448,620 01/05/2010 Roberto Procopio 10633.0489 6368
22852 7590 10/18/2017
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
CHOU, ALAN S
ART UNIT PAPER NUMBER
2451
NOTIFICATION DATE DELIVERY MODE
10/18/2017 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):
regional-desk @ finnegan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERTO PROCOPIO
Appeal 2016-006333
Application 12/448,6201
Technology Center 2400
Before JOHN A. EVANS, SCOTT B. HOWARD, and SCOTT E. BAIN,
Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 25, 26, 28, 36—38, and 46—54, which constitute all of the claims
pending in this application. Claims 1—24, 27, 29-35, and 39-45 have been
cancelled. App.Br. 2—22 (Claims App’x). We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 Appellant identifies Telecom Italia S.p.A. as the real party in interest.
App. Br. 2.
Appeal 2016-006333
Application 12/448,620
THE INVENTION
The disclosed and claimed invention is directed to remotely
monitoring user appliances.
Claim 25, reproduced below with the relevant claim language
emphasized, is illustrative of the claimed subject matter:
25 A method for operating a server of a communication
system, the communication system comprising at least one user
appliance and a monitoring device that is capable of being
adapted to perform a remote monitoring of the at least one user
appliance through intermediation of the server, the at least one
user appliance being associated with a respective list of
attributes, wherein each attribute corresponds to a
predetermined set of values which the attribute may potentially
embody, the method performed by the server comprising:
1) receiving the attributes and the corresponding
predetermined sets of values associated with the at least one user
appliance from at least one user appliance, the attributes and the
corresponding predetermined sets of values being preconfigured
at the user appliance;
2) storing at the server the received attributes and the
corresponding predetermined sets of values; and
3) sending said attributes and corresponding predetermined
sets of values to the monitoring device as part of a self-learning
process for the monitoring device.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Gu
Rahman
Moyer US 2002/0103898 A1 Aug. 1, 2002
US 6,892,230 B1 May 10, 2005
US 2005/0193201 A1 Sept. 1, 2005
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Application 12/448,620
REJECTIONS
Claims 25, 26, 28, 36—38, and 46—54 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Moyer in view of Rahman and
Gu. Final Act. 2—12.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant.
Based on the current record, we are not persuaded by Appellant’s arguments
regarding then pending claims, and we incorporate herein and adopt as our
own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Act. 2—12), and (2) the reasons and
rebuttals set forth in the Examiner’s Answer in response to Appellant’s
arguments (Ans. 2-4). We incorporate such findings, reasons, and rebuttals
herein by reference unless otherwise noted. However, we highlight and
address specific findings and arguments for emphasis as follows.
Appellant argues the Examiner erred in finding Gu teaches an
“appliance being associated with a respective list of attributes, wherein each
attribute corresponds to a predetermined set of values which the attribute
may potentially embody,” as recited in claim 25. App. Br. 13—17; Reply Br.
3—7. More specifically, Appellant argues “Gu discloses automatic dynamic
self-configuring of devices in ad hoc peer networking, particularly Universal
Plug and Play (UPnP).” App. Br. 13 (emphasis omitted). Appellant further
argues that Gu teaches providing current values, not all potential values as
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Application 12/448,620
recited in claim 1. App. Br. 14—15 (citing Gu 9:42-44, 9:62—67, 15:8—13).
Moreover, Appellant argues storing limited information is not sufficient:
Indeed, storing limited information, such as only a default
value and a current value, is contradictory to the claimed
requirement, for example, of sending said attributes and
corresponding predetermined sets of values to the monitoring
device “as part of a self-learning process for the monitoring
device.” As explained in Appellant’s Specification, this self-
learning process permits the monitoring device, for example, to
store the entire set of data “in a structured way, in a suitably
designed database, in order to be subsequently able to visualize
them to the user through a suitable user interface.” Spec, at
20[:]6-14. In addition, the self-learning process the monitoring
device can “exploit [the entire set of data] so as to be informed
about the values taken by the attributes of the user appliance 130,
to set the attributes of the user appliance 130 to desired values or
to check the current values taken by the attributes of the user
appliance 130 at a definite moment.” Id.
App. Br. 16—17.
The Examiner finds Gu teaches the disputed claim limitation. Final
Act. 5—6. Specifically, the Examiner finds Gu teaches at least two
predetermined set of values which the attribute may embody, the default
value and the current value:
Gu teaches: in a UPnP device environment (see column 5 line
30-40]), assigning template for plurality of preset attributes in a
service state table (see column 9 line 60-67) and store
predetermined set of values such as variable, type, legal values,
default value, current values in form of a table representing
current, electrical, mechanical and logical state of the device (see
column 9 line 60-67 and column 15 line 54-65).
Final Act. 5 (emphasis added); see also Adv. Act. 2 (“Gu teaches the use of
a Service State Table with attributes corresponds to a predetermined set of
values which the attribute may potentially embody (see column 9 line 60—
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Application 12/448,620
67). Gu teaches use of Service State Table with a list of variables, or
predetermined set of values, such as Legal Value, Default Value, and
Current value. Gu teaches the default value (see column 15 line 54-65), or a
predetermined set of values which the attribute may potentially embody as
claimed.”).
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad, of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)). Under this standard, we interpret claim terms
using “the broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant’s
specification.” In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997).
However, we will not read limitations from the specification into the claims.
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also Phillips v.
AWHCorp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (enbanc) (“[Although
the specification often describes very specific embodiments of the invention,
we have repeatedly warned against confining the claims to those
embodiments. . . . [Cjlaims may embrace ‘different subject matter than is
illustrated in the specific embodiments in the specification.’” (citations
omitted)).
Appellant’s arguments are premised on a construction of
“predetermined set of values which the attribute may potentially embody”
that requires not just some, but all potential values. See App. Br. 16—17;
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Reply Br. 3-4. That is, according to Appellant, the disputed language recited
in claim 25
does not seek to encompass only a few—or a subset—of the
values to be taken by an attribute in a user appliance. Instead,
the claims require that “each attribute corresponds to a
predetermined set of values which the attribute may potentially
embody,” i.e. all of the values for the attribute.
Reply Br. 3. We disagree. Although the claim recites “a predetermined set
of values which the attribute may potentially embody,” the claim does not
explicitly say “all values.” Instead, the claim language simply requires a set
of predetermined values, the broadest reasonable interpretation of which
encompasses some, but not all potential values.
The Specification sections cited by Appellant do not require a
narrower claim construction. Similar to the language in claim 25, there is
nothing in the cited section of the Specification (18:14—24, 20:6—14) that
states the list of attributes must include all potential values. As with claim
25, noticeably missing from the Specification are words that require a full or
complete list of all potential values. Because Appellant’s arguments are not
commensurate with the scope of the claims, they are unpersuasive. See In re
Self, 671 F.2d 1344, 1348 (CCPA 1982).
The Examiner specifically identifies at least two potential values, the
default value and the current value. Final Act 5; Adv. Act. 2; Ans. 2.
Accordingly, we agree with the Examiner that, applying the broadest
reasonable interpretation, Gu teaches the disputed limitation.2
2 Because we find Gu teaches the disputed limitation, Appellant’s argument
that Moyer and Rahman do not teach it are moot. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425
(CCPA 1981).
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Accordingly, we sustain the Examiner’s rejection of claim 25, along
with the rejections independent claims 36 and 46, which are argued on the
same grounds, and dependent claims 26, 28, 37, 38, and 47—54, which are
not argued separately. See App. Br. 18.
DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 25, 26, 28, 36—38, and 46—54.
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). See
37 C.F.R. §41.50(f).
AFFIRMED
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