Ex Parte Sampath et al

Patent Trial and Appeal Board

Aug 2, 2016

13247144 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/247,144 09/28/2011
23696 7590 08/04/2016
QUALCOMM INCORPORATED
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
FIRST NAMED INVENTOR
Hemanth Sampath
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.
103221U3 4269
EXAMINER
LIU, TIJNG-JEN
ART UNIT PAPER NUMBER
2473
NOTIFICATION DATE DELIVERY MODE
08/04/2016 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):
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte HEMANTH SAMPATH, SIMONE MERLIN,
MAARTEN MENZO WENTINK, and
SANTOSHPAULABRAHAM
Appeal2015-002252
Application 13/247,144
Technology Center 2400
Before LARRY J. HUME, CATHERINE SHIANG, and
NATHAN A. ENGELS, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-26, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
Appeal2015-002252
Application 13/247,144
STATEMENT OF THE CASE
Introduction
The disclosed and claimed invention relates to wireless
communications. See generally Spec. 1. Claim 1 is exemplary:
1. A method of wireless communication, comprising:
receiving a frame comprising an indicator signifying that the
frame is unsolicited, the frame further comprising first and second
fields; and
identifying a most recent communication having fields that
match the first and second fields.
Zhang
Seok
References and Rejections
US 2012/0051246 Al
US 2012/0063439 Al
Mar. 1, 2012
Mar. 15,2012
Claims 1-21, 23, and 25 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1-26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhang and Seok.
ANALYSIS
The Rejection under 35 U.S.C. § 112, Second paragraph
The Examiner finds claim 1 (and similarly, claims 2-21, 23, and 25)
merely "discloses a broken system that fails to communicate," which is only
a part of Appellants' invention. See Ans. 3--4; 23-24.
Appellants contend the claims are appropriate and comply with the
applicable statute. See App. Br. 7-8; Reply Br. 2.
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Appeal2015-002252
Application 13/247,144
Claims must "particularly point[] out and distinctly claim[] the subject
matter which the applicant regards as his invention." 35 U.S.C. § 112,
second paragraph.
[W]e read§ 112, i-f2 to require that a patent's claims, viewed in
light of the specification and prosecution history, inform those
skilled in the art about the scope of the invention with
reasonable certainty. The definiteness requirement, so
understood, mandates clarity, while recognizing that absolute
precision is unattainable. The standard we adopt accords with
opinions of this Court stating that "the certainty which the law
requires in patents is not greater than is reasonable, having
regard to their subject-matter."
Nautilus, Inc. v. Biosig Instruments, Inc, 134 S.Ct. 2120, 2129 (2014
(citations omitted)). Further, "[t]he standard of indefiniteness is somewhat
high; a claim is not indefinite merely because its scope is not ascertainable
from the face of the claims." Amgen, Inc. v. Hoechst Marion Roussel, Inc.,
314 F.3d 1313, 1342 (Fed. Cir. 2003)
Appellants have the better position here. For example, the
Specification provides that the disclosed method is suitable for "various
broadband wireless communication systems, including communication
systems that are based on an orthogonal multiplexing scheme." Spec. i1 40.
Because the Examiner has not provided any evidence to show the
claims do not particularly point out and distinctly define the metes and
bounds of the subject matter of Appellants' invention, we reverse the
Examiner's rejection of claims 1-21, 23, and 25 under 35 U.S.C. § 112,
second paragraph.
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Appeal2015-002252
Application 13/247,144
The Obviousness Rejection
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
conclusion that the Examiner erred in finding Zhang and Seok collectively
teach "receiving a frame comprising an indicator signifying that the frame is
unsolicited, the frame further comprising first and second fields; and
identifYing a most recent communication having fields that match the first
and second fields," as recited in independent claim 1 (emphasis added). 1 See
App. Br. 9-11; Reply Br. 2--4.
The Examiner cites numerous paragraphs and figures from Zhang for
supposedly teaching the italicized claim limitation. See Ans. 7-10, 24--30.
While the cited Zhang portions include some key words from the italicized
claim limitation, the Examiner does not adequately explain, and we do not
see how such cited portions teach "identifying a most recent communication
having fields that match the first and second fields," as required by the
claim.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner's rejection of claim 1, and corresponding dependent
claims 2--4, 15, 16, 21, and 22 for similar reasons.
Each of independent claims 5, 9, 13, and 14 recites a claim limitation
that is substantively the same as the disputed limitation of claim 1. See
claim 5, 9, 13, and 14. Therefore, for similar reasons, we do not sustain the
1 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
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Appeal2015-002252
Application 13/247,144
Examiner's rejection of independent claim 5, 9, 13, and 14, and
corresponding dependent claims 6-8, 10-12, 17-20, and 23-26.
DECISION
We reverse the Examiner's decision (i) rejecting claims 1-21, 23, and
25 under 35 U.S.C. § 112, second paragraph, and (ii) rejecting claims 1-26
under 35 U.S.C. § 103.
REVERSED
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