Ex Parte Shanbhag

Board of Patent Appeals and Interferences

Sep 29, 2010

10289767 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VYANKATESH SHANBHAG
_____________

Appeal 2009-006745
Application 10/289,767
Technology Center 2400
____________

Before MARC S. HOFF, CAROLYN D. THOMAS,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006745
Application 10/289,767

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-12, 14, and 15. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

INVENTION
Appellant’s claimed invention is directed to a wireless content switch
125 which replaces the radio priority in the data packet with a new radio
priority which is based on the quality of service parameters, as well as the
type of service parameter. See Spec. 9:11-16; Fig. 1.
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method of transmitting data packets to a wireless client, said
method comprising:
receiving a data packet for a particular wireless client;
determining a quality of service parameter associated with the
wireless client;
determining a type of service parameter associated with the data
packet;
selecting a new radio priority for the data packet from a radio priority
table based on the type of service and quality of service parameters; and
replacing an original radio priority with the new radio priority.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Appeal 2009-006745
Application 10/289,767

3
Haumont WO 00/10357 Feb. 24, 2000
Mizell US 6,760,344 B2 Jul. 6, 2004
The following rejections are before us for review:
1. The Examiner provisionally rejected claims 1-4 on the ground of
non-statutory obviousness-type double patenting as being unpatentable over
claims 1-5 of copending US Patent Application No. 10/289,638.
2. The Examiner rejected claims 1-8 under 35 U.S.C. § 102(b) as
being anticipated by Haumont.
3. The Examiner rejected claims 9-12, 14, and 15 under 35 U.S.C. §
103(a) as being unpatentable over Mizell in view of Haumont.

ISSUES
The pivotal issue is whether Haumont teaches the limitation of:
“selecting a new radio priority for the data packet . . . based on the type of
service” as recited in claim 1.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

Appeal 2009-006745
Application 10/289,767

4
ANALYSIS
Obviousness-Type Double Patenting Rejection
On the record before us, addressing the Examiner’s provisional
rejections would be premature. See Ex Parte Moncla, 95 USPQ2d 1884,
1885 (BPAI 2010) (precedential). We therefore do not reach the Examiner’s
provisional obviousness-type double patenting rejections of claims 1-4.

Anticipation Rejection
Appellant argues, inter alia, that Haumont does not teach determining
a type of service (ToS) parameter (Br. 9). Appellant argues that Haumont
redefines the use of ToS bits and does not use them for purposes related with
ToS (Br. 9).
We are persuaded by Appellant’s argument. Haumont redefines the
type of service bits because ToS is “not in common use nowadays” (pg.
22:22-30). Thus, Haumont does not teach determining a type of service, let
alone “selecting a new radio priority for the data packet . . . based on the
type of service” as recited in claim 1.
For the above reason, we will reverse the Examiner’s rejection of
claim 1 and for similar reasons the rejections of claims 2-8.

Obviousness Rejection
Appellant argues (Br. 12), inter alia, that Haumont does not teach or
suggest selecting a new radio priority and replacing an original radio priority
Appeal 2009-006745
Application 10/289,767

5
with the new radio priority “comprising a type of service parameter and a
quality of service parameter” as recited in claim 9.
We agree with Appellant’s argument based on the same reasoning as
articulated supra. Accordingly, we will also reverse the Examiner’s
rejection of claim 9 and for similar reasons the rejections of claims 10-12,
14, and 15. We note that the additional reference of Mizell does not cure the
above cited deficiency.

ORDER
The decision of the Examiner to reject claims 1-12, 14, and 15 is
reversed.

REVERSED

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