Ex Parte Stein

Patent Trial and Appeal Board

Sep 20, 2017

12849565 (P.T.A.B. Sep. 20, 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.
12/849,565 08/03/2010 Robert C. Stein BCS05036 8095
43471 7590 09/22/2017
ARRTS2 F.ntp.mrisp.s T ! C
EXAMINER
Legal Dept - Docketing
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TRAN, NAM T
HORSHAM, PA 19044 ART UNIT PAPER NUMBER
2452
NOTIFICATION DATE DELIVERY MODE
09/22/2017 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):
arris. docketing @ arris .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT C. STEIN
Appeal 2017-005405
Application 12/849,5651
Technology Center 2400
Before JOHN A. JEFFERY, MARC S. HOFF, and JASON J. CHUNG,
Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1, 3—9, 11—17, and 19—24.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellant’s invention is a computer-implemented method, or
computer system, in which a home network registers an application with a
NetManager, and provides a handler to the NetManager to control discovery
of desired devices or services for the application. When the NetManager
1 The real party in interest is ARRIS Enterprises.
2 Claims 2, 10, and 18 have been cancelled. App. Br. 11, 13, 15.
Appeal 2017-005405
Application 12/849,565
discovers a device or service, the method creates an object instance of
NetManager for the device or service, and accesses a standard interface for
the device or service through the object instance of NetModule. See
Abstract.
Claim 1 is illustrative of the claims on appeal:
A computer-implemented method, comprising:
registering an application with a NetManager that serves
a home network, wherein the registering comprises:
sending a request to register the application to the
NetManager, and
receiving a response from the NetManager, the response
including an indication of a successful registration;
providing a handler to the NetManager, wherein the
handler controls discovery of one or more non-audio/visual
devices or services associated with the application;
receiving an event notification from the NetManager
when the NetManager discovers a device or service that is one
of the one or more non-audio/visual devices or services;
creating an object instance of NetModule for the device
or service; and
accessing a standard interface for the device or service by
posting an XML document to the device or service using an
interface of the object instance of NetModule.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Cashman et al.
Jared
Park et al.,
Ramsay
US 2007/0288975 Al
US 2008/0077650 Al
US 2010/0088732 Al
US 2010/0293264 Al
Dec. 13, 2007
Mar. 27, 2008
Apr. 8,2010
Nov. 18,2010
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Application 12/849,565
Claim 1, 3—9, 11—17, and 19-243 stand rejected under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement.
Claims 1, 3—9, 11—17, and 19-24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Park, Ramsay, Jared, and Cashman.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed July 28, 2016), the Reply Brief (“Reply Br.,” filed Feb. 9,
2017), and the Examiner’s Answer (“Ans.,” mailed Dec. 9, 2016) for their
respective details.
ISSUES
1. Does the specification provide written description support for the
claim limitation “non-audio/visual devices or services”?
2. Does the combination of Park, Ramsay, Jared, and Cashman teach
or suggest sending a request to register the application to the NetManager?
3. Does the combination of Park, Ramsay, Jared, and Cashman teach
or suggest receiving a response from the NetManager, the response
including an indication of a successful registration?
PRINCIPLES OF LAW
Under the written description requirement of 35 U.S.C. § 112, the
disclosure of the application relied upon must reasonably convey to one of
ordinary skill in the art that, as of the filing date of the application, the
inventor had possession of the later-claimed subject matter. Vas-Cath Inc. v.
3 The Appeal Brief refers to “claims 1—24” as standing rejected on both
grounds of rejection. App. Br. 6, 8. The Claims Appendix and the
Examiner’s Answer make clear, however, that claims 2, 10, and 18 have
been cancelled. Id. at 11, 13, 15.
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Application 12/849,565
Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). Although, “the meaning
of terms, phrases, or diagrams in a disclosure is to be explained or
interpreted from the vantage point of one skilled in the art, all the limitations
must appear in the specification.” Id. The Specification need not describe
the claimed subject matter in exactly the same terms as used in the claims,
but it must contain an equivalent description of the claimed subject matter.
Id.
ANALYSIS
§ 112, FIRST PARAGRAPH REJECTION
The Examiner concludes that Appellant lacks written description
support for “non-audio/visual devices or services associated with the
application.” In the Examiner’s view, “[tjhere is a demand for a method and
system to allow an application in an OCAP home network to discover other
devices and services on the home network” fails to support the claim
language at issue. Ans. 3—6; See Spec. 14.
Appellant argues that the Examiner is not properly considering the
context of Appellant’s Disclosure. See App. Br. 6—7. Appellant’s
expression of a demand in the art follows immediately after a description of
what is known. “Even though OCAP HNEXT uses standard Universal Plug
and Play (UPnP) to discover devices on the home network, and to identify
the services offered by the devices, such services are limited to those defined
by the UPnP Audio/Visual Profile.” App. Br. 6—7, quoting Spec. 13. We
agree with Appellant, then, that the language in paragraph 4 refers to UPnP
devices not offering services defined by UPnP Audio/Video.
We do not agree with Appellant, however, that this disclosure
amounts to possession of the claim term “non-audio/visual devices or
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Application 12/849,565
services.” Negative claim limitations “are adequately supported when the
specification describes a reason to exclude the relevant limitation.” Inphi
Corp. v. Netlist, Inc., 805 F.3d 1350, 1355 (Fed. Cir. 2015) (quoting
Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)).
Appellant’s Specification does not articulate a reason to exclude devices that
are non-UPnP and also non-audio/video. Such devices represent a subset of
the devices and services encompassed by the phrase “non-audio/visual
devices or services.” On this record, we conclude that Appellant’s
Specification does not support a claim drawn to discovering a device or
service that is a non-UPnP non-audio/video device or service.
We conclude that the Examiner did not err in rejecting claims 1, 3—9,
11—17, and 19-24 under 35 U.S.C. § 112, first paragraph. We sustain the
Examiner’s rejection.
Obviousness Rejection
Appellant argues that the Examiner erred in rejecting the claims under
§ 103(a), because Park merely describes the first device receiving the
description of the device or service of the second device, and describes how
a predetermined application uses the plurality of objects. App. Br. 8. We
are not persuaded by Appellant’s argument.
The Examiner finds that Park discloses sending a request to register
an application to the NetManager, and receiving a response from the
NetManager, the response indicating an indication of a successful
registration. Final Act. 4—5, citing Park || 35, 48. By way of further
explanation, Park discloses a first device 110 as an OCAP home network
device according to an OCAP home networking extension, and a second
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Application 12/849,565
device 120 as a UPnP device. Park 133. The second (UPnP) device
provides a device description and a service description to the first (OCAP)
device via a control point. Park 134. The first device then refers to the
received device description and service description, thereby generating a
plurality of objects for implementing different functions related to the
service. Park 135. The Examiner finds that “first device 110” of Park, “of
which a NetManager is resident, refers to the received service or
‘application’ description of the second device 120.” Final Act. 4, citing Park
135.
The Examiner’s finding that the application (“service”) provided from
the second device corresponds to the application sought to be registered to
the NetManager in the claims stands unrebutted by Appellant.
We are also unpersuaded by Appellant’s emphasis on Park teaching
that “service driving unit 220 executing] a predetermined application
requiring a home network service.” App. Br. 9; Park 148. That disclosure
in Park is immediately followed by a re-emphasis that the service driving
unit “thus, uses the service provided from the second device 120.” Park
148. Park, thus, teaches taking action in response to communication from
the first device, i.e., using the service from the second device, and not
merely taking predetermined action. We agree with the Examiner’s finding
that the first device’s use of the service provided from the second device 120
corresponds to the claimed “indication of a successful registration.” See
Final Act. 5.
We find that the combination of Park, Ramsay, Jared, and Cashman
suggests all the limitations of independent claims 1, 3—9, 11—17, and 19-24.
Accordingly, we sustain the Examiner’s § 103(a) rejection.
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Application 12/849,565
CONCLUSION
1. The specification does not provide written description support for
the claim limitation “non-audio/visual devices or services.”
2. The combination of Park, Ramsay, Jared, and Cashman suggests
sending a request to register the application to the NetManager.
3. The combination of Park, Ramsay, Jared, and Cashman suggests
receiving a response from the NetManager, the response including an
indication of a successful registration.
ORDER
The Examiner’s decision to reject claims 1, 3—9, 11—17, and 19-24
under 35 U.S.C. §§ 112, first paragraph and 103(a) is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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