Ex Parte Vannithamby et al

Patent Trial and Appeal Board

Sep 21, 2018

13994474 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/994,474 06/14/2013
47795 7590 09/25/2018
TROP, PRUNER & HU, P.C.
1616 S. VOSS RD., SUITE 750
HOUSTON, TX 77057-2620
FIRST NAMED INVENTOR
Rath Vannithamby
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.
ITL.2529US (P39340) 9504
EXAMINER
HARLEY, JASON A
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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):
tphpto@tphm.com
Inteldocs _ docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RATH V ANNITHAMBY, MARUTI GUPTA, ALI T. KOC,
and JING ZHU
Appeal2018-003131
Application 13/994,474 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. § 134(a) from the Examiner's final
rejection of claims 1-29, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 According to Appellants, the real party in interest is Intel Corp. App. Br.
3.
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Application 13/994,474
INVENTION
Appellants' application relates to differentiating fixed devices from
mobile devices in mobile broadband networks. Spec. Title. Claim 1 is
illustrative of the appealed subject matter and reads as follows:
1. A method comprising:
automatically determining whether a device m a
broadband wireless machine-to-machine network is a fixed
device that never moves; and
if the device is a fixed device determining whether the
device's identifier space can be expanded, and if so, increasing
the identifier space, and assigning an identifier to indicate that
the device is a fixed device using a message exchange over an air
interface.
REJECTIONS
Claims 1-5, 7, 10, 12-16, 18, 20, 21, and 23-25 stand rejected under
35 U.S.C. § I03(a) as unpatentable over the combination of Lee et al. (U.S.
2010/0240356 Al; publ. Sept. 23, 2010) ("Lee") and Hamalainen et al. (U.S.
2009/0111476 Al; publ. Apr. 30, 2009) ("Hamalainen"). Final Act. 3.
Claims 5, 7, 10, and 18 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Lee, Hamalainen, and Kim (U.S.
2010/0238909 Al; publ. Sept. 23, 2010). Final Act. 7.
Claim 6 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
the combination of Lee, Hamalainen, and Ganor (U.S. 2004/0219908 Al;
publ. Nov. 4, 2004). Final Act. 9.
Claims 8, 22, and 26 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Lee, Hamalainen, and Cooke et al.
(U.S. 2003/0093441 Al; publ. May 15, 2003) ("Cooke"). Final Act. 10.
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Application 13/994,474
Claims 9, 17, and 27 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Lee, Hamalainen, and Dommety et al. (U.S.
2006/0104247 Al; publ. May 18, 2006) ("Dommety"). Final Act. 11.
Claims 11, 19, and 28 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Lee, Hamalainen, and Mizutani et al.
(U.S. 2007 /0064 731 Al; pub 1. Mar. 22, 2007) ("Mizutani"). Final Act. 12.
Claim 29 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over the combination of Lee, Hamalainen, and Tapola (U.S. 2004/0059792
Al; publ. Mar. 25, 2004). Final Act. 13.
ANALYSIS
We have reviewed the rejections of claims 1-29 in light of
Appellants' arguments that the Examiner erred. We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments Appellants could have made, but chose not to make, in the
Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants' arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer (Ans. 3-9) and in the Final Office Action from which
this appeal was taken (Final Act. 3-16). We provide the following
explanations for emphasis.
Appellants argue claims 1--4, 12-16, 20, 21, and 23-25 as a group
(App. Br. 6), and we choose claim 1 as representative of the group. See
37 C.F.R. § 4I.37(c)(l)(iv).
Appellants argue the Hamalainen reference does not teach or suggest
identifying a device as a fixed device or adding and expanding the identifier
space, as claim 1 requires. App. Br. 6.
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Application 13/994,474
Regarding the disputed limitation "fixed device that never moves,"
Appellants' arguments do not persuade us of error. We agree with the
Examiner that Hamalainen teaches "user equipment may be fixed." Final
Act. 3 (citing Hamalainen ,r 23). We find combining Hamalainen's teaching
with Lee's teaching of determining whether a terminal is stationary (Lee
,r 4 7), teaches or suggests the disputed limitation "a fixed device that never
moves," as recited in claim 1. Final Act. 3--4. Appellants have not
presented sufficient persuasive argument or objective evidence to rebut the
Examiner's findings.
Regarding the second disputed conditional limitation "if the device is
a fixed device determining whether the device's identifier space can be
expanded, and if so, increasing the identifier space, and assigning an
identifier to indicate that the device is a fixed device using a message
exchange over an air interface," we agree with Appellants that the cited
portions of Hamalainen do not teach or suggest changing the size of the
identifier space. Rather, paragraphs 38, 39, and 42 of Hamalainen, cited by
the Examiner, teach changing the number of identifiers assigned. Reply
Br. 2. On the record before us, and in the absence of further explanation by
the Examiner, we do not agree that the broadest reasonable interpretation2 of
the limitation "size of the identifier space" includes the dynamic assignment
of identifiers taught in Hamalainen, such as by increasing the number of C-
RNTis assigned to RN in step 516 of Figure 5. Nor are we persuaded that
the disputed limitation would have been obvious to one of ordinary skill in
the art in light of the cited teachings of Lee and Hamalainen.
2 We give the claim its broadest reasonable interpretation consistent with the
Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Thus, we find the Examiner erred in finding the combination of Lee
and Hamalainen teaches or suggests the disputed limitation "increasing the
identifier space," as recited in claim 1.
We are constrained, however, by binding precedent not to give
patentable weight to the conditional limitation that begins "if the device is a
fixed device determining ... " in claim 1. Conditional steps in a method
claim need not be found in the prior art if, under the broadest reasonable
interpretation, the method need not invoke those steps. See Ex parte
Schulhauser, No. 2013-007847, 2016 WL 6277792 at *4 (PTAB April 28,
2016) (precedential) (holding "[t]he Examiner did not need to present
evidence of the obviousness of the remaining method steps of claim 1 that
are not required to be performed under a broadest reasonable interpretation
of the claim .... "; see also Ex parte Katz, No. 2010-006083, 2011 WL
514314, at *4--5 (BPAI Jan. 27, 2011). 3
Here, under the broadest reasonable interpretation, the method need
not invoke the conditional limitation of claim 1. The limitation would not be
invoked, for example, when it is determined the device is not fixed, or when
it is determined that a fixed device's identifier space cannot be expanded.
Therefore, under the binding precedent of Ex parte Schulhauser, we affirm
3 See also Cybersettle, Inc. v. Nat'! Arbitration Forum, Inc., 243 Fed. Appx.
603, 607 (Fed. Cir. 2007) (unpublished) ("It is of course true that method
steps may be contingent. If the condition for performing a contingent step is
not satisfied, the performance recited by the step need not be carried out in
order for the claimed method to be performed."); Applera Corp. v. Illumina,
Inc., 375 Fed. Appx. 12, 21 (Fed. Cir. 2010) (unpublished) (affirming a
district court's interpretation of a method claim as including a step that need
not be practiced if the condition for practicing the step is not met).
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the Examiner's§ 103(a) rejection of claim 1 and grouped dependent claims
2--4 and 12, not argued separately. See App. Br. 6-7. We also affirm the
Examiner's§ 103(a) rejections of claims 5-8, 10, and 11, which depend
from claim 1, and which Appellants argue are patentable for the same
reasons as claim 1. See App. Br. 7-8.
However, we reverse the Examiner's§ 103(a) rejection of
independent claims 13 and 21, because Schulhauser, as applied here, applies
only to method claims. We also reverse the Examiner's§ 103(a) rejection of
dependent claims 14--20 and 22-29, which stand with the independent
claims from which they depend.
Turning to dependent claim 9, Appellants argue Dommety does not
teach or suggest the disputed limitation "determining whether a lifetime can
be assigned to an identifier." App. Br. 7. Appellants' arguments are not
persuasive because they are conclusory and Appellants do not provide any
basis for them. Id. It is well settled that mere attorney arguments and
conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
( attorney argument is not evidence).
Accordingly, we sustain the Examiner's§ 103(a) rejection of
dependent claim 9.
DECISION
We affirm the Examiner's decision rejecting claims 1-12.
We reverse the Examiner's decision rejecting claims 13-29.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED-IN-PART
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