Ex Parte Zhang et al

Patent Trial and Appeal Board

Apr 3, 2017

13520303 (P.T.A.B. Apr. 3, 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.
13/520,303 07/02/2012 Qingshan Zhang LUTZ 201488US01 4600
48116 7590 04/05/2017
FAY STTARPF/T TTf’F.NT
EXAMINER
1228 Euclid Avenue, 5th Floor LAMONT, BENJAMIN S
The Halle Building
Cleveland, OH 44115-1843 ART UNIT PAPER NUMBER
2461
NOTIFICATION DATE DELIVERY MODE
04/05/2017 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):
docketing @ faysharpe.com
ipsnarocp @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte QINGSHAN ZHANG,
SONGWEI MA, and GANG LIU1
Appeal 2016-000387
Application 13/520,303
Technology Center 2400
Before JOSEPH L. DIXON, JOHNNY A. KUMAR, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—12 and 14. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Alcatel Lucent as the real party in interest (App. Br. 1).
Appeal 2016-000387
Application 13/520,303
Exemplary Claim
Claims 1 and 6 are illustrative of the invention and read as follows:
1. A method for providing an inter-domain service,
comprising:
subscribing, via a user equipment agent, to a service
provided by at least one domain other than the domain to which
the user equipment agent belongs;
acquiring, via the user equipment agent, information for
accessing the subscribed service from the domain to which the
user equipment agent belongs;
accessing, via the user equipment agent, the subscribed
service through the at least one other domain, directly based on
the acquired information, without going through the domain to
which the user equipment agent belongs,
wherein the domain to which the user equipment agent
belongs is a mobile network domain and the other domain is a
fixed network domain, and
wherein user information in the mobile network is hidden
from the fixed network.
6. An apparatus for providing an inter-domain service,
comprising:
a service subscription unit for subscribing a service
provided by at least one domain other than the domain to which
the apparatus belongs,
wherein the service subscription unit is included in an
Operation Support System (OSS);
an information acquisition unit for acquiring information
for accessing the service from the domain to which the
apparatus belongs; and
a service accessing unit for accessing the subscribed
service through said at least one other domain directly, based on
the acquired information, without going through the domain to
which the apparatus belongs.
2
Appeal 2016-000387
Application 13/520,303
The Rejections
Claims 6—12 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112
(pre-AIA), second paragraph, as being indefinite. Final Act. 4—6.
Claims 1,3,4, and 14 are rejected under pre-AIA 35 U.S.C. § 102(e)
as being anticipated by Kant.2 Final Act. 6—10.
Claim 2 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Kant in view of Melaku.3 Final Act. 11.
Claim 5 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Kant in view of Ansari.4 Final Act. 12.
Claims 6, 8, 9, and 11 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Kant in view of Fijolek.5 Final Act. 12—15.
Claim 7 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Kant in view of Fijolek and further in view of Melaku.
Final Act. 15—16.
Claim 10 and 12 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Kant in view of Fijolek and further in view of
Ansari. Final Act. 17.
ANALYSIS
The § 112, 2nd paragraph rejection
The Examiner rejected claims 6—12 for failing to comply with § 112,
second paragraph. The Examiner finds:
The following claim limitations have been interpreted
under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
2 U.S. Patent App. Pub. No. 2010/0027533 A1 (Feb. 4, 2010).
3 U.S. Patent App. Pub. No. 2003/0074443 A1 (Apr. 17, 2003).
4 U.S. Patent App. Pub. No. 2010/0202450 A1 (Aug. 12, 2010).
5 U.S. Patent No. 7,107,326 B1 (Sept. 12, 2006).
3
Appeal 2016-000387
Application 13/520,303
paragraph: service subscription unit, information acquisition
unit, service accessing unit, service subscription providing unit,
and information providing unit. They are interpreted as means-
plus-function limitations because they use the generic
placeholder “unit” coupled with functional language without
reciting sufficient structure to achieve the function.
Furthermore, the generic placeholder is not preceded by a
structural modifier.
However, the specification fails to disclose the
corresponding structure of each means-plus-function limitation
cited above.
For example, the specification teaches a “service
subscription unit” in Fig. 3 of the specification, but fails to
provide an algorithm, flowchart, code, or structure capable of
performing the function of “subscribing to a service provided
by at least one other domain from a domain it belongs to” (lines
2-3 of claim 6). In paragraph 73 of the pre-grant publication,
the specification reads “the service subscription unit may
acquire introduction information on related IPTV services from
the mobile network, and provide the information to the user, an
as to subscribe IPTV service(s) in accordance with preferences
of users”. Paragraph 73 does not provide the structure of how
to subscribe to a service in another domain (i.e. the function of
the service subscription unit). Instead, it merely provides
additional functionality of the service subscription unit.
Similarly, there is a lack of structure provided for
information acquisition unit, service accessing unit, service
subscription providing unit, and information providing unit.
Final Act. 4—5.
The Appellants contend:
The terms service subscription unit, information acquisition
unit, service accessing unit, service subscription providing unit,
and information providing unit would be interpreted by one of
ordinary skill in the art as components that may be
implemented using processors, programmed computers, or the
like (software implemented by hardware). . . .
4
Appeal 2016-000387
Application 13/520,303
. . . One of ordinary skill in the art would understand that
hardware is required to perform the functionality recited in
claims 6-10 and interpret claims 6-10 to sufficiently describe
the structure required to carry out such functionality. Such
language does not constitute means-plus-function language to
be fleshed out through reference to the disclosure, but instead
indicates with specificity physical elements capable of
manipulating and transmitting data. Thus, sufficient structure
exists and the claims do not invoke 35 U.S.C. §112, sixth
paragraph.
App. Br. 11-12.
In the present case, as an initial matter of claim construction, we agree
with the Examiner that the various labeled “unit[s]” recited multiple times in
apparatus claim 6 are “nonce” words, under a broad but reasonable
interpretation. Our reviewing court guides:
The standard is whether the words of the claim are
understood by persons of ordinary skill in the art to have a
sufficiently definite meaning as the name for structure.
Greenberg [v. Ethicon Endo-Surgery, Inc.], 91 F.3d [1580,]
1583 [(Fed. Cir. 1996)]. When a claim term lacks the word
“means,” the presumption can be overcome and § 112, para. 6
will apply if the challenger demonstrates that the claim term
fails to “recite sufficiently definite structure” or else recites
“function without reciting sufficient structure for performing
that function.” Watts [v. XL Systems, Inc.], 232 F.3d [877,] 880
[(Fed. Cir. 2000)].
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015).
Here, Appellants appear to have replaced the term “means for” with
the “nonce” word “unit. . . configured to [perform function],” thereby
connoting a generic “black box” for performing the recited functions.
Therefore, a question arises as to whether Appellants have established in the
Specification (or by other evidence entered into record) that the recited
5
Appeal 2016-000387
Application 13/520,303
labeled “units” for performing the various functions recited in apparatus
claim 6 would have been understood by persons of ordinary skill in the art to
have a sufficiently definite meaning as the name for a specific structure
capable ofperforming the intended functions.
Regarding apparatus claims generally, our reviewing court guides the
patentability of an apparatus claim “depends on the claimed structure, not on
the use or purpose of that structure.” Catalina Marketing Int 7., Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). For computer-
implemented inventions, our reviewing court
has consistently required that the structure disclosed in the
specification be more than simply a general purpose computer
or microprocessor. E.g., Aristocrat Techs. Austl. Pty Ltd. v.
Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (citing
WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339 (Fed.
Cir. 1999)). We require that the specification disclose an
algorithm for performing the claimed function. Net Money IN,
Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008).
The algorithm may be expressed as a mathematical formula, in
prose, or as a flow chart, or in any other manner that provides
sufficient structure. Noah [Sy.v., Inc. v. Intuit Inc.], 675 F.3d
[1302,] 1312 [(Fed. Cir. 2012)] (citing Finisar Corp. v.
DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)).
Williamson, 792 F.3d at 1352.
Appellants’ Specification fails to describe sufficient structure
corresponding to the contested “nonce” words, which each recite a (labeled)
unit configured to perform a function, and thus we agree with the Examiner
that it should be considered as means-plus-function claim terms under pre-
AIA § 112, sixth paragraph, such that claims 6—12 are indefinite under
35 U.S.C. § 112, second paragraph. Because we find there is no structure in
the Specification corresponding to the means-plus-fimction limitation in the
6
Appeal 2016-000387
Application 13/520,303
claims, the claims are invalid as indefinite. See Atmel Corp. v. Info. Storage
Devices, Inc., 198 F.3d 1374, 1378—79 (Fed. Cir. 1999) (citing In re
Donaldson, 16 F.3d 1189, 1195 (Fed. Cir. 1994) (enbanc)). “Structure
disclosed in the specification qualifies as ‘corresponding structure’ if the
intrinsic evidence clearly links or associates that structure to the function
recited in the claim.” Williamson, 792 F.3d at 1352 (citing B. Braun Med.,
Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)). “[T]he fact that
one of skill in the art could program a computer to perform the recited
functions cannot create structure where none otherwise is disclosed.”
Williamson, 792 F.3d at 1351 (citing Function Media, L.L.C. v. Google, Inc.,
708 F.3d 1310, 1319 (Fed. Cir. 2013)).
The §102 rejection
Claims 1,3,4, and 14 are rejected under § 102(e) over Kant.
Appellants contend that Kant does not disclose “wherein user information in
the mobile network is hidden from the fixed network,” as recited in claim 1.
App. Br. 6—7.
The Examiner has provided a comprehensive response on pages 2
through 4 of the Answer. We have reviewed this response and concur with
the Examiner’s findings and conclusions. 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 set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief. Ans. 2-4.
In the Reply Brief, the Appellant contends:
The Specification of the present application mentions hiding
twice (paragraphs 78 and 85 of Published Application). These
sections of the Specification read on the manner in which
information in a mobile network is hidden from a fixed
7
Appeal 2016-000387
Application 13/520,303
network. A review of these sections of the Specification along
with the claims, as is the normal course of action when reading
an application, would not lead to one of ordinary skill in the art
improperly reading portions of the Specification into the claims
but would instead result in a properly informed reader, capable
of judging for himself whether the application was novel in
light of the current state of the art.
Reply Br. 3.
We decline Appellants’ invitation to read limitations from the
Specification into the claims. “During prosecution . . . the PTO gives claims
their ‘broadest reasonable interpretation.’” In re Bigio, 381 F.3d 1320, 1324
(Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).
“Moreover, limitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
The §103 rejections
Regarding claims 6 and 11, although Appellants raise additional
arguments for patentability (App. Br. 9—10), we find that the Examiner has
rebutted each and every one of those arguments supported by sufficient
evidence. Ans. 4—5. Therefore, we adopt the Examiner’s findings and
underlying reasoning, which are incorporated herein by reference.
DECISION
The Examiner’s rejections of claims 1—12 and 14 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
8