INNOVATIVE SONIC CORPORATION

Patent Trials and Appeals Board

Jul 10, 2020

14080179 - (D) (P.T.A.B. Jul. 10, 2020)

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.
14/080,179 11/14/2013 Yu-Hsuan Guo 1291-221.101 6460
106622 7590 07/10/2020
Blue Capital Law Firm, P.C.
650 Town Center Drive, Suite 1530
Costa Mesa, CA 92626
EXAMINER
ELHAG, MAGDI
ART UNIT PAPER NUMBER
2641
NOTIFICATION DATE DELIVERY MODE
07/10/2020 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@bluecapitallaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YU-HSUAN GUO
____________

Appeal 2019-002680
Application 14/080,179
Technology Center 2600
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

HOWARD, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3–6, 8–12, 14–16, and 18–20, which constitute
all of the claims pending in this application. Claims 2, 7, 13, and 17 have
been cancelled. Final Act. 2.2 We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Innovative
Sonic Corporation. Appeal Br. 2.
2 We refer to the Specification filed Nov. 14, 2013 (“Spec.”); Final Office
Action mailed June 5, 2018 (“Final Act.”); Appeal Brief filed Oct. 2, 2018
Appeal 2019-002680
Application 14/080,179

3
We affirm in part.
THE INVENTION
The disclosed and claimed invention is directed “to wireless
communication networks, and more particularly, to methods and apparatuses
for proximity service discovery in a wireless communication system.”
Spec. ¶ 2.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for proximity service discovery in a wireless
communication system, the method comprising:
receiving, by a second user equipment (UE), a discovery
signal sent from a first UE for discovering or being discovered,
wherein the discovery signal includes a Public Land Mobile
Network (PLMN) identity and a first indication to indicate an
application or service in the first UE which is using proximity
service discovery; and
transmitting, from the second UE, a discovery check
signal to an access network, which is operatively connected to
the second UE, in response to the discovery signal to find an
identity in the application or service corresponding to the first
UE,
wherein the discovery check signal includes the first
indication and the PLMN identity received from the first UE; and
receiving, by the second UE, a response signal that the
access network sends in response to receiving the discovery
check signal from the second UE, wherein the response signal
includes a discovery result and the discovery result includes the
identity in the application or service corresponding to the first
UE.

(“Appeal Br.”); Examiner’s Answer mailed Dec. 20, 2018 (“Ans.”); and the
Reply Brief filed Feb. 15, 2019 (“Reply Br.”).
Appeal 2019-002680
Application 14/080,179

4

REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Name Reference Date
Mallik et al.
(“Mallik”)
US 2011/0258313 A1 Oct. 20, 2011
3GPP TR 22.803
V1.0.1
3rd Generation Partnership Project;
Technical Specification Group SA;
Feasibility Study for Proximity
Services (ProSe) (Release 12)
Aug. 2012

REJECTIONS
Claims 1, 3–6, 8–12, 14–16, and 18–20 stand rejected under pre-AIA
35 U.S.C. § 112, paragraph 2, as indefinite for failing to particularly point
out and distinctly claim the subject matter which the inventor regards as the
invention. Final Act. 7.
Claims 1, 3–6, 8–12, 14–16, and 18–20 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Malik and 3GPP TR 22.803 V1.0.1.
Final Act. 9.

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant.

Appeal 2019-002680
Application 14/080,179

5
Section 112, Second Paragraph, Rejection
Claim 1 recites “transmitting, from the second UE, a discovery check
signal to an access network, which is operatively connected to the second
UE, in response to the discovery signal to find an identity in the application
or service corresponding to the first UE” and “receiving, by the second UE,
a response signal that the access network sends in response to receiving the
discovery check signal from the second UE, wherein the response signal
includes a discovery result and the discovery result includes the identity in
the application or service corresponding to the first UE” (emphases added).
The Examiner concludes that “it is unclear” what is meant by “an identity in
the application or service corresponding to the UE.” Final Act. 8.
According to the Examiner, the “specification does not provide sufficient
disclosure to explain what is meant by said limitation.” Id.
Appellant argues that the disputed limitations are clear and “supported
by at least Paragraphs [0099]–[0115] of the present application.” Appeal
Br. 8. According to Appellant, the Specification provides “examples of
specific information that can be included in the first signaling for the
discovery purposes.” Id.
We are persuaded by Appellant’s arguments. “A claim is indefinite if,
when read in light of the specification, it does not reasonably apprise those
skilled in the art of the scope of the invention.” Amgen, Inc. v. Hoechst
Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003). “As the
statutory language of ‘particular[ity]’ and ‘distinct[ness]’ indicates, claims
are required to be cast in clear – as opposed to ambiguous, vague, indefinite
– terms. It is the claims that notify the public of what is within the
Appeal 2019-002680
Application 14/080,179

6
protections of the patent, and what is not.” In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014).
Here, the claim language recites an “identity in the application or
service corresponding to the first UE.” Appellant’s Specification describes
that “signaling may be used to… find an identity in a specific application or
service corresponding to the first UE and/or the second UE.” Spec. ¶ 99
(emphasis added). The “specific information” that is transmitted to the
network includes “(a) A cell identity… (b) A PLMN identity… (c) A global
cell identity.” Id. ¶¶ 100–103. Then, “the information… could be used to
identify the UE to save the complexity of new identity design and new
identity allocation procedure. Based on information… the identity and
location of the UE can be known by other UEs or the network.” Id. ¶ 116
(emphases added).
In light of this disclosure in the Specification, the Examiner does
not sufficiently explain why the claimed “identity in the application or
service corresponding to the first UE” is indefinite. We agree with
Appellant that the claim, based on the claim language (i.e., “identity in the
application or service corresponding to the first UE”) and in light of
Appellant’s Specification (i.e., information can be “used to identify the UE”
such that “the identity and location of the UE can be known”), is sufficiently
clear.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112,
paragraph 2, rejection of claims 1, 3–6, 8–12, 14–16, and 18–20.
Appeal 2019-002680
Application 14/080,179

7

Section 103 Rejection
Claims 1, 3–5, 11, 12, 14, and 19
Claim 1 recites a method comprising
receiving, by a second user equipment (UE), a discovery signal
sent from a first UE for discovering or being discovered, wherein
the discovery signal includes a Public Land Mobile Network
(PLMN) identity and a first indication to indicate an application or
service in the first UE which is using proximity service discovery;
transmitting, from the second UE, a discovery check signal to an
access network, which is operatively connected to the second UE,
in response to the discovery signal to find an identity in the
application or service corresponding to the first UE,
. . .
and receiving, by the second UE, a response signal that the access
network sends in response to receiving the discovery check signal
from the second UE, wherein the response signal includes a
discovery result and the discovery result includes the identity in the
application or service corresponding to the first UE.
Claim App. 12 (emphasis added).
The Examiner finds that Mallik’s peer/PHY discovery to detect other
devices in its vicinity teaches sending a discovery signal and a discovery
check signal to find an identity in the application or service corresponding to
a UE. Final Act. 9–11 (citing Mallik ¶¶ 39, 41, 47, Fig. 3). The Examiner
also finds that Mallik’s identifying device 120x and services offered teaches
receiving a response signal that includes the identity in the application or
service corresponding to the UE. Final Act. 11 (citing Mallik ¶¶ 31, 35–36,
43, Fig. 3).
Appellant argues that “Mallik fails to teach the need for Device Y to
transmit PLMN identity to Device X in proximity detection signal and also
Appeal 2019-002680
Application 14/080,179

8
fails to teach the need for Device X to report the received PLMN identity to
the directory agent.” Appeal Br. 10. According to Appellant, “Mallik
discloses that device x transmits the device ID/service ID to the network for
the network to identify a service for requesting match . . . and the network
sends a notification to inform Device X and Device Y to initiate peer
discovery.” Id.; see also Reply Br. 6–7. Appellant argues that, in Mallik,
“the notification is transmitted before peer discovery and is not transmitted
due to reception of the results of peer discovery.” Reply Br. 7; see also
Reply Br. 8.
We are persuaded by Appellant’s argument as the Examiner has not
identified sufficient evidence or provided sufficient explanation as to how
the combination of Mallik and 3GPP TR 22.803 V1.0.1 teaches (1) a second
UE receiving a discovery signal from a first UE, (2) the second UE
transmitting a discovery check signal to an access network in response to the
discovery signal from the first UE, and (3) the second UE receiving a
response signal from the access network in response to transmitting the
discovery check signal.
For example, the cited sections of Mallik disclose “[d]irectory agent
. . . perform[ing] P2P registration of devices and . . . maintain[ing] a list of
active P2P requests from those devices,” and “send[ing] a notification of the
match to device 120x.” Mallik ¶¶ 35–36. In Mallik, the devices “may
[then] perform peer discovery in response to receiving the matching
notifications from directory agent.” Id. ¶ 37 (emphasis added). In other
words, in Mallik, the directory agent notifies the devices prior to peer
discovery, and peer discovery is in response to receiving the notifications
from the directory agent.
Appeal 2019-002680
Application 14/080,179

9
In another example, “the device 120x may first perform peer/PHY
discovery to detect other devices in its vicinity,” and “then report the
received signal strength and a device ID and/or a service ID of each detected
device along with a P2P request to directory agent 140.” Mallik ¶ 47.
However, in this example, although Mallik’s notification takes place after
peer discovery, it is the directory agent that receives the notification. There
is no teaching of a transmission of a response signal from the access network
to the second UE. There is also no teaching that this response signal is in
response to a discovery check signal, which is in response to a discovery
signal. We agree with Appellant that Mallik’s notification “is not
transmitted due to reception of the results of peer discovery,” as required by
the claim. Reply Br. 7; see Reply Br. 8.
Therefore, we agree with Appellant that the Examiner’s finding that
the combination of Mallik and 3GPP TR 22.803 V1.0.1 teaches the disputed
limitations is in error because it is not supported by a preponderance of the
evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (The
Examiner’s burden of proving unpatentability is by a preponderance of the
evidence.); see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The
Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not, because it may doubt that the invention is patentable,
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.”).
Accordingly, we are constrained on the record before us to reverse the
Examiner’s § 103 rejection of claim 1, as well as claims 3–5, 11, 12, 14, and
19, which are not separately argued. See Appeal Br. 10.
Appeal 2019-002680
Application 14/080,179

10
Claims 6, 8–10, 15, 16, 18, and 20
Claim 6 recites a second user equipment (UE) for proximity service
discovery comprising:
a processor installed in the control circuit;
. . .
wherein the processor is configured to execute a program code
stored in the memory to:
receive a discovery signal sent from a first UE for discovering or
being discovered, wherein the discovery signal includes a Public
Land Mobile Network (PLMN) identity and a first indication to
indicate an application or service in the first UE which is using
proximity service discovery;
transmit a discovery check signal to an access network, which is
operatively connected to the second UE, in response to the
discovery signal to find an identity in the application or service
corresponding to the first UE,
. . .
and receive a response signal that the access network sends in
response to receiving the discovery check signal from the second
UE, wherein the response signal includes a discovery result and
the discovery result includes the identity in the application or
service corresponding to the first UE.
Emphasis added. Appellant presents the same arguments as presented with
respect to claim 1, above. Appeal Br. 10.
Our reviewing court has held that nonfunctional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004); In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that when
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
Appeal 2019-002680
Application 14/080,179

11
terms of patentability); King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any
new and unobvious functional relationship between the printed matter and
the substrate.’”) (citations omitted); see also Ex parte Nehls, 88 USPQ2d
1883, 1889 (BPAI 2008) (precedential) (“[T]he nature of the information
being manipulated does not lend patentability to an otherwise unpatentable
computer-implemented product or process.”); Ex parte Mathias, 84 USPQ2d
1276, 1279 (BPAI 2005) (informative), aff’d, 191 F. App’x 959 (Fed. Cir.
2006) (“[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art.”);
Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative), aff’d,
No. 2006-1003 (Fed. Cir. June 12, 2006) (Rule 36) (“Nonfunctional
descriptive material cannot render nonobvious an invention that would have
otherwise been obvious.”). Although we will not disregard any claim
limitations and will assess the claimed invention as a whole, we will follow
the Federal Circuit’s guidance from the Gulack decision and will “not give
patentable weight to printed matter absent a new and unobvious functional
relationship between the printed matter and the substrate.” In re Lowry,
32 F.3d 1579, 1582 (Fed. Cir. 1994) (discussing Gulack). Here, we consider
that the claimed “response signal that the access network sends” (including
“a discovery result” including “the identity in the application or service
corresponding to the first UE” that the second UE is “configured to . . .
receive”) is directed to nonfunctional descriptive material that should not be
given patentable weight.
“The first step of the printed matter analysis is the determination that
the limitation in question is in fact directed toward printed matter.” In re
Appeal 2019-002680
Application 14/080,179

12
Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015). Material is printed matter if
it is “claimed for what it communicates.” Id. at 850. The disputed limitation
of claim 6 (that the UE’s processor is configured to receive a signal that is a
response signal including a discovery result) pertains to the ability of the UE
to receive a signal with specific content. Therefore, the disputed claim
limitation is directed to printed matter. See id. at 848 (A claim limitation is
directed to printed matter “if it claims the content of information.”).
If a claim in a patent application claims printed material, “one must
then determine if the matter is functionally or structurally related to the
associated physical substrate, and only if the answer is ‘no’ is the printed
matter owed no patentable weight.” Distefano, 808 F.3d at 851. Here, the
claimed received response signal is not interrelated or explicitly used in the
claim—such as, by the UE using the received signaling to discover the
identity in the application or service corresponding to the first UE. Rather,
the received response signal is not functionally distinct from any other
received signal. Therefore, we find that the disputed claim limitation
constitutes nonfunctional descriptive material and is not entitled to
patentable weight. This is analogous to Curry, where we found the type of
data to be nonfunctional descriptive material when it “does not functionally
change either the data storage system or communication system used in the
method of claim 81.” 84 USPQ2d at 1274.
As recognized in Curry, “if the prior art suggests storing a song on a
disk, merely choosing a particular song to store on the disk would be
presumed to be well within the level of ordinary skill in the art at the time
the invention was made.” Id. at 1275. Choosing the content of the
signal/data that the claimed processor is able to receive is no different, in
Appeal 2019-002680
Application 14/080,179

13
that the content of the signal/data does not alter how the claimed processor
functions.
Because the signal in the last clause of claim 6 is nonfunctional
descriptive material, the broadest reasonable interpretation of a processor
“configured to execute a program code stored in the memory to . . . receive a
response signal that the access network sends in response to receiving the
discovery check signal from the second UE, wherein the response signal
includes a discovery result and the discovery result includes the identity in
the application or service corresponding to the first UE” as recited in claim 6
is broad enough to encompass a processor configured to execute program
code to receive any signal. The Examiner finds—and Appellant does not
dispute—that the processor in Malik is configured to receive data. See Final
Act. 11 (citing Malik ¶¶ 31, 35–36, 43–44, 47); Appeal Br. 9. Therefore,
Appellant has not persuaded us that the Examiner erred.3
Accordingly, we sustain the Examiner’s rejection of independent
claim 6, along with the rejection of dependent claims 8–10, 15, 16, 18, and
20, for which Appellant relies on the same arguments as discussed above for
claim 6. See Appeal Br. 10–11.
CONCLUSION
We reverse the Examiner’s § 112(b) rejection of claims 1, 3–6, 8–12,
14–16, and 18–20.
We affirm the Examiner’s § 103 rejections of claims 6, 8–10, 15, 16,
18, and 20.

3 Although Appellant argues claims 1 and 6 as a group (see Appeal Br. 9–
10), there is no inconsistency with our different treatment of the claims.
Claim 1 is a method that describes the actions of multiple devices. On the
other hand, claim 6 is directed solely to the second user equipment.
Appeal 2019-002680
Application 14/080,179

14
We reverse the Examiner’s § 103 rejection of claims 1, 3–5, 11, 12,
14, and 19.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
References/
Basis
Affirmed Reversed
1, 3–6, 8–
12, 14–16,
18–20
112(b) Indefiniteness 1, 3–6, 8–
12, 14–16,
18–20
1, 3–6, 8–
12, 14–16,
18–20
103 Mallik, 3GPP
TR 22.803
V1.0.1
6, 8–10,
15, 16, 18,
20
1, 3–5, 11,
12, 14, 19
Overall
Outcome
6, 8–10,
15, 16, 18,
20
1, 3–5, 11,
12, 14, 19

TIME PERIOD FOR RESPONSE
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.
§ 1.136(a)(1)(iv).

AFFIRMED- IN- PART