Ex Parte Venkatachalam et al

Patent Trial and Appeal Board

Mar 23, 2015

11788606 (P.T.A.B. Mar. 23, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MUTHAIAH VENKATACHALAM
and KAMRAN ETEMAD
____________

Appeal 2012-002526
Application 11/788,606
Technology Center 2600
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J.
HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1–15 and 20–26, which are all the claims pending in the
application. Claims 16–19 were cancelled during prosecution. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The claimed invention on appeal relates generally to broadband
wireless access networks, and more particularly, to the use of a multicast
connection identifier in a WiMAX network. (Abstract).
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Application 11/788,606

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Representative Claim
Independent claim 1 is representative of the rejected claims on appeal:
1. A method comprising:

enabling a mobile station in a broadband wireless access
network to access a selected one of a plurality of content
channels by accessing a server to browse a directory of
listings of sessions of content channels, indicate to the server
the session the mobile station wishes to join, and receive a
multicast connection identifier from a server that is pushed to
the mobile station without the mobile station making a further
transmission.
(Contested limitations underlined and emphasized).

Rejection
Claims 1–15 and 20–26 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of Sinnarajah
(US 2008/0076348 A1; Mar. 27, 2008), Klappert (US 2010/0333138 A1;
Dec. 30, 2010), and Lee (US 2008/0013538 A1; Jan. 17, 2008).

Grouping of Claims
Based on Appellants’ arguments, we decide the appeal on the basis of
representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2004).
1

1
Appellants filed a Notice of Appeal on June 28, 2011. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex Parte
appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the
2004 version of the Board Rules last published in the 2011 edition of Title
37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to

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Application 11/788,606

3
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. (App. Br. 10–11; Reply Br. 1–3). We disagree with Appellants’
arguments, and we adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken, and (2) the
reasons and rebuttals set forth in the Answer in response to Appellants’
arguments. (Ans. 4–14). However, we highlight and address specific
findings and arguments for emphasis in our analysis below:
Regarding the contested claim 1 limitation:
receive a multicast connection identifier from a server that is
pushed to the mobile station without the mobile station making
a further transmission,
Appellants contend, inter alia:
There is no suggestion of responding to the individual
channel selection by pushing a multicast connection identifier.
With the claimed invention, you get a multicast connection
identifier by doing nothing more than asking for a program.
Lee never tells you how to get a multicast connection
identifier. Lee, paragraph 8, is cited, but the first line simply
says that a multicast connection identifier can be used, but does
not say how you get it. It indicates that a multicast connection
identifier "is allocated to each predetermined multicast group."
This certainly does not suggest that you get a multicast
connection identifier by simply requesting a particular channel.
The third line says that joining of the connection
identifier means that members of the multicast group were
assigned to CID for multicast transmission. But, again, this

the appeal. See also Manual of Patent Examining Procedure (MPEP)
8
th
ed., Rev. 8, July 2010.
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4
suggests that you join the group, not that you ask for a channel.
The next line says that if a base station receives a packet from
with a destination of a predetermined multicast address, the
base station transmits the packet to the multicast group using
the connection identifier allocated to the group. But, again, this
has nothing to do with asking for a program and receiving a
multicast connection identifier. It simply suggests that the
multicast identifiers are preassigned.
(App. Br. 10–11).
The Examiner disagrees: “There is no requirement in the claim that
the multicast identifier is received based on or in response to a channel
selection as argued by the appellant. Lee clearly discloses that a multicast
identifier is received at the mobile station (see [0008]).” (Ans. 14).
This appeal turns upon claim construction. At the outset, we agree
with the Examiner (id.) that Appellants are arguing limitations that are not
expressly claimed. We conclude the plain language of claim 1 does not
require the “multicast connection identifier” to be pushed to the mobile
station in response to the indication “to the server the session the mobile
station wishes to join . . . .”
As an initial matter of claim construction, we particularly note the
statements of intended purpose recited in method claim 1: (1) “enabling a
mobile station in a broadband wireless access network to access a selected
one of a plurality of content channels . . . .” Under a broad but reasonable
interpretation, we conclude the access of a content channel by a mobile
station is not positively recited as actually occurring. (2) We further observe
Appellants merely claim “the session the mobile station wishes to join . . . .”
(Claim 1, emphasis added). The plain meaning of “wish” is a desire
generally attributed to a human as a mental act. Regardless, we broadly but
reasonably construe both the former “enabling” statement and the latter
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statement regarding “the session the mobile station wishes to join . . . .” as
statements of intended purpose.
Our reviewing court guides: “[a]n intended use or purpose usually
will not limit the scope of the claim because such statements usually do no
more than define a context in which the invention operates.” Boehringer
Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345
(Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the
claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a
statement of intended use or purpose can appear elsewhere in a claim. Id.
Here, under a broad but reasonable interpretation, we conclude the
contested intended steps or acts of method claim 1 are not positively recited
as actually being executed and performed. Thus a question arises as to how
much patentable weight, if any, should be accorded to the statements of
intended purpose recited in method claim 1.
Turning to the contested claim 1 negative limitation (“without the
mobile station making a further transmission”), we find Appellants’ cited
support in the Specification (App. Br. 7, referring to Fig. 2, element 518;
Spec. 14, ll. 2–5), does not identify “descri[ption of] a reason to exclude the
relevant limitation.” Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d
1344, 1351 (Fed. Cir. 2012) ("Negative claim limitations are adequately
supported when the specification describes a reason to exclude the relevant
limitation. Such written description support need not rise to the level of
disclaimer. In fact, it is possible for the patentee to support both the
inclusion and exclusion of the same material."). See also MPEP 2173.05(i)
(“Any negative limitation or exclusionary proviso must have basis in the
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original disclosure . . . . The mere absence of a positive recitation is not
basis for an exclusion.”).
We have considered all of Appellants’ proffered support. (App.
Br. 7). We observe communication 518 (Fig. 2), is depicted as a single-
direction arrow labeled: “MBS contents (sent on multicast CID).”
However, we observe communications 502 and 512 between mobile station
102 and MBS server 113 are depicted as bidirectional arrows which do not
appear to preclude further transmission from mobile station 102, much less a
“descri[ption of] a reason to exclude the relevant limitation.” Santarus, 694
F.3d at 1351.
Further, we observe the Specification describes the pushing of data
(cf. with claim 1 “pushed to the mobile station”) with respect to Figure 3, not
Figure 2: “Finally, in the third case where MCIDs are allocated and pushed
to the MS directly from the MBS controller, the flow is shown in Figure 3.”
(Spec. 14, ll. 18–20, emphasis added). Nor does page 14 of the
Specification (lines 2–5), as cited by Appellants (App. Br. 7), provide a
description of a reason to exclude the relevant limitation:
Then the contents are sent on the IP multicast address at 516 to
the MBS agent/base station, and, finally, the MBS contents are
sent on the multicast CID to the MS as indicated at 518.
After considering the evidence, we find the aforementioned cited
support (App. Br. 7) does not affirmatively provide a “reason to exclude the
relevant limitation” under the controlling Santarus test articulated by the
Court of Appeals for the Federal Circuit. See Santarus, 694 F.3d at 1351.
For these reasons, it is also unclear how much patentable weight, if any,
should be given to the contested negative limitation (“without the mobile
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station making a further transmission”), which was added by amendment
during prosecution. Cf. with original Claim 1, Spec. 19.
2

Assuming arguendo our reviewing court may give full patentable
weight to the aforementioned contested statements of intended use and the
claimed but unsupported negative limitation (claim 1), on this record, we are
not persuaded the Examiner’s claim interpretation is overly broad,
unreasonable, or inconsistent with the Specification.
3

We note Appellants fail to cite to a specific teaching in the cited
reference(s) that directly contravenes the recited negative limitation. We
further observe Appellants’ Specification describes: “The MS [Mobile
Station] gets the MCIDs and content IDs TLVs which contain the IDs for the
MBS logical media channels within the multicast CID.” (Spec. 16, ll. 16–
18). Given this description in Appellants’ Specification, we find the
Examiner’s proffered combination of references, particularly the close
similarity with Lee (¶ 8), at least suggests, and thus renders obvious, the
claimed reception of a multicast connection identifier from a server that is
pushed to the mobile station. See Lee:

2
In the event of further prosecution of this application, we leave it to the
Examiner to consider a rejection of at least claim 1 under 35 U.S.C. §112,
first paragraph, written description, regarding the contested negative
limitation. Although the Board is authorized to reject claims under 37
C.F.R. § 41.50(b), no inference should be drawn when the Board elects not
to do so. See Manual of Patent Examining Procedure (MPEP) 1213.02.

3
Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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[0008] Secondly, a multicast connection identifier (ID) method
can be used. According to this method, a connection ID (CID)
is allocated to each predetermined multicast group. Subscriber
stations that are members of each multicast group join in this
CID. Here, the joining of the CID means that members of a
multicast group are assigned a CID used for multicast
transmission under the IEEE 802.16/Wibro environment. If a
base station receives a packet with a destination of a
predetermined multicast address, the base station transmits the
packet to the multicast group by using the CID allocated to the
multicast group. The packet transmitted this way is transferred
to all subscriber stations joining in this CID, and this is
performed by one transmission of the packet.

Even assuming arguendo (without deciding) that Lee’s paragraph
eight indicates “a multicast connection identifier ‘is allocated to each
predetermined multicast group,’” as urged by Appellants (App. Br. 10–11),
instead of being requested, our reviewing court guides it is irrelevant that the
prior art and the present invention may have different purposes. See Nat'l
Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir.
2004) “Obviousness is not to be determined on the basis of purpose alone.”
In re Graf, 343 F.2d 774, 777 (CCPA 1965). It is sufficient that references
suggest doing what an applicant did, although the applicant’s particular
purpose was different from that of the references. In re Heck, 699 F.2d
1331, 1333 (Fed. Cir. 1983) (citing In re Gershon, 372 F.2d 535, 539
(CCPA 1967)).
This reasoning is applicable here. Although Appellants urge that Lee
at paragraph 8 “certainly does not suggest that you get a multicast
connection identifier by simply requesting a particular channel” (App. Br.
11), we note claim 1 is silent regarding any mention of getting a multicast
connection identifier by simply “requesting a particular channel.” (Id.). As
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pointed out by the Examiner (Ans. 14), and as previously discussed, we
conclude the plain language of claim 1 does not require the “multicast
connection identifier” to be pushed to the mobile station in response to the
indication “to the server the session the mobile station wishes to join . . . .”
Although Appellants paraphrase the language of claim 1 in the Briefs
to impute intended meanings, it is the claims that measure the invention. See
SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985)
(en banc).
For the aforementioned reasons, we are not persuaded of error
regarding the Examiner’s underlying factual findings and ultimate legal
conclusion of obviousness. On this record, we find the preponderance of
evidence supports the Examiner’s position as articulated in the Answer (4–
14). Accordingly, we sustain the § 103 rejection of representative
independent claim 1. The remaining grouped claims on appeal fall with
claim 1.
DECISION
We affirm the Examiner’s decision rejecting claims 1–15 and 20–26
under § 103(a).
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.
§ 41.50(f).
AFFIRMED

ACP