Time Warner Cable Enterprises LLC

Patent Trials and Appeals Board

Dec 10, 2021

2020001243 (P.T.A.B. Dec. 10, 2021)

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.
14/877,130 10/07/2015 Don Gunasekara TWC15-09(14-56) 6100
156874 7590 12/10/2021
Armis Intellectual Property Law, LLC
P.O. Box 1564
Westborough, MA 01581
EXAMINER
MARCELO, MELVIN C
ART UNIT PAPER NUMBER
2463
NOTIFICATION DATE DELIVERY MODE
12/10/2021 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):
chris.lutz@armisiplaw.com
docket@armisiplaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DON GUNASEKARA,
LAXMAN NALLANI, and AHMED BENCHEIKH
____________

Appeal 2020-001243
Application 14/877,130
Technology Center 2400
____________

Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU, and
SHARON FENICK, Administrative Patent Judges.

BOUDREAU, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 6, 7, 9, 12, 16–21, and 24–34,
which are all of the pending claims. Claims 5, 8, 10, 11, 13–15, 22, and 23
have been cancelled. Appeal Br. 64–68 (Claims App.). We have
jurisdiction under 35 U.S.C. § 6(b)(1).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Time Warner Cable Enterprises LLC
as the real party in interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Appellant’s invention relates to a user-operated communication
device identifying wireless networks available for use in a geographical
region by broadcasting a network discovery request message and receiving
response messages. See Spec. 1–2, 36.
Claims 1, 12, 16, 21, and 25 are independent. Claim 1, reproduced
below, is illustrative of the subject matter on appeal:
1. A method comprising:
at a communication device operated by a user:
generating a network discovery request message,
the network discovery request message indicating attributes of
different types of networks to which the user of the
communication device desires to establish a wireless
communication link;
initiating wireless broadcast of the network
discovery request message in a wireless network environment,
the network discovery request message received by a non-
beacon-generating wireless access point in the wireless network
environment; and
receiving a network discovery response message
from the non-beacon-generating wireless access point, the
network discovery response message including network identity
information associated with the non-beacon-generating wireless
access point, the network discovery response message further
including signal strength information indicating a wireless signal
strength at which the non-beacon-generating wireless access
point received the network discovery request message.
Appeal Br. 63 (Claims App.).
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REJECTIONS
The Examiner rejects claims 1–4, 6, 7, 12, 16, 17, 19–21, 24–29,
and 34 under 35 U.S.C. § 103 as being unpatentable over Xie,2 Jeong,3 and
Lagnado.4 Final Act. 5–16.
The Examiner rejects claims 9 and 18 under 35 U.S.C. § 103 as being
unpatentable over Xie, Jeong, Lagnado, and Applicant’s Admitted Prior Art
(“AAPA”).5 Final Act. 16.
The Examiner rejects claims 30, 32, and 33 under 35 U.S.C. § 103 as
being unpatentable over Xie, Jeong, Lagnado, and Hara.6 Final Act. 17–18.
The Examiner rejects claim 31 under 35 U.S.C. § 103 as being
unpatentable over Xie, Jeong, Lagnado, Hara, and Zinchenko.7 Final
Act. 18.
OPINION
A. Rejection of Claims 1–4, 6, 7, 12, 16, 17, 19–21, 24–29, and 34 as
Obvious over Xie, Jeong, and Lagnado
Claims 1–3, 7, 12, 16, 17, 20, 21, and 25
With respect to claim 1, the Examiner relies upon Lagnado for the
recited “network discovery request message indicating attributes of different

2 Xie et al., US 2016/0249287 A1, published Aug. 25, 2016.
3 Jeong et al., US 2015/0139010 A1, published May 21, 2015.
4 Lagnado, US 2005/0239463 A1, published Oct. 27, 2005.
5 The Examiner cites page 4, lines 1–7 of the Specification as AAPA.
Whether that disclosure in the Specification is admitted prior art is a
disputed issue, which we address below.
6 Hara et al., US 2015/0257062 A1, published Sept. 10, 2015.
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types of networks to which the user of the communication device desires to
establish a wireless communication link.” Final Act. 6 (citing Lagnado ¶¶ 2,
12–13; Abstr.; Figs. 1A–B). Specifically, the Examiner cites Lagnado’s
disclosure of “wireless devices continually transmit[ting] probe requests to
determine whether there are any wireless networks with which the wireless
device can communicate,” the probe requests “contain[ing] information
about the type of network the wireless device desires to communicate with.”
Lagnado ¶ 2. The Examiner further cites Lagnado’s disclosure of a
“requested list of wireless networks [that] is a list of networks with which
the user of the wireless device . . . is willing to associate.” Id. ¶ 18 (cited at
Ans. 3–4); see Final Act. 6. The requested list of wireless networks
comprises attributes of the wireless networks and may, for example, include
both infrastructure networks and ad-hoc networks. Lagnado ¶ 18.
Appellant argues that Lagnado’s probe request includes information
about a single type of wireless network with which the wireless device
desires to communicate, as opposed to “attributes of different types of
networks” as claimed. Appeal Br. 20–21. According to Appellant, “there is
no evidence that the wireless device in Lagnado even supports different
types of networks.” Id. at 21. Appellant then argues that Lagnado’s
“requested list in paragraph 18 has nothing to do with being sent in a
network discovery request message,” but rather “is stored in the user
equipment and is used by the user equipment to select a network after it is
known which networks are available for use.” Reply Br. 34–35.

7 Zinchenko et al., US 2017/0250763 A1, published Aug. 31, 2017.
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We are unpersuaded by Appellant’s argument. Lagnado discloses that
a wireless device may support different types of networks in that its
requested list of networks may include different types of networks, such as
infrastructure networks and ad-hoc networks. Lagnado ¶ 18. We agree with
the Examiner that Lagnado’s disclosure of probe requests communicating
the type of network a wireless device desires to communicate with and that a
wireless device may support different types of networks teaches or at least
suggests a “network discovery request message indicating attributes of
different types of networks to which the user of the communication device
desires to establish a wireless communication link” as claimed. See Final
Act. 6; Ans. 3–4.
Appellant further argues that “it would not make sense for a
communication device to send attributes of multiple different networks to a
non-beacon generating wireless access point because the receiving wireless
access point [of] Lagnado also would not know which of the wireless
networks the communication device would like to connect [to].” Appeal
Br. 21 (noting that the Examiner relies upon Xie for the “non-beacon-
generating wireless access point” recited in claim 1 (see Final Act. 5–7)); see
Reply Br. 7.
We best understand Appellant’s argument to be that Lagnado’s
network discovery request message indicating attributes of different types of
networks is incompatible with Xie’s non-beacon-generating wireless access
point. We are unpersuaded because we agree with the Examiner that
Lagnado discloses the communication device soliciting responses from
access points that match the desired attributes and connecting to a network
having attributes matching those requested. See Ans. 4; Lagnado ¶¶ 19–21
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(“wireless device 12 attempts to associate with the first wireless network on
the matched list,” where the matched list “may be arranged in any desirable
order,” for example “arranged based on a user defined priority as specified
in the requested list”).
The Examiner relies upon Xie, the primary reference, for the
communication device’s network discovery request message being “received
by a non-beacon-generating wireless access point” as recited in claim 1.
Final Act. 5–7 (citing Xie Fig. 1 (Step S1: “the wireless AP does not
broadcast its SSID”)). The Examiner relies upon Jeong for a “network
discovery response message further including signal strength information
indicating a wireless signal strength at which the . . . wireless access point
received the network discovery request message” as recited in claim 1, and
for further limitations related to the signal strength information in claims 2
and 3. Id. at 5, 7–8 (citing Jeong Figs. 2, 4; ¶ 57 (probe response frame
including uplink received signal strength information); Table 2). The
Examiner finds that it would have been obvious to one of ordinary skill in
the art to combine Xie with Jeong’s technique of including signal strength
information in the network discovery response message. Id. at 5; Ans. 4–5.
Appellant argues that Jeong’s wireless access point regularly
broadcasts beacon frames and “provides feedback of signal strength to
communication devices that are informed of its SSID.” Appeal Br. 22, 24,
26; see Reply Br. 8. According to Appellant, Xie has no reason to include
signal strength information in the network discovery response message
because “a mobile communication device in Xie would not expect a wireless
access point to measure a signal strength of a received network discovery
request because the mobile communication device is not informed of a
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presence of the wireless access point in Xie.” Appeal Br. 22, 24; see Reply
Br. 8–9, 11–13. As discussed above, however, the Examiner relies upon
Xie, not Jeong, for the recited “non-beacon-generating wireless access
point.” See Final Act. 5–7; Ans. 5. We best understand Appellant’s
argument to be that measuring a signal strength of a received network
discovery request and returning the measured signal strength with an SSID is
incompatible with Xie’s non-beacon-generating wireless access point which
“hides its SSID.” Appeal Br. 22, 24; Reply Br. 8, 11, 13. We are
unpersuaded because Appellant does not provide any reason why an access
point as per the Examiner’s proposed combination of Xie and Jeong could
not measure a signal strength of a received network discovery request
message even in the absence of an SSID, and we do not otherwise discern
any error in the Examiner’s mapping.
With respect to independent claims 12, 16, 21, and 25 and dependent
claim 17, Appellant makes arguments that we have addressed above with
respect to claims 1–3. Compare Appeal Br. 49–54, 59, 61; Reply Br. 34–39,
with Appeal Br. 20–26.
Appellant provides no separate arguments for dependent claims 7
and 20.
For the foregoing reasons, we are not persuaded that Appellant has
shown error in the Examiner’s rejection of claims 1–3, 7, 12, 16, 17, 20, 21,
and 25. Accordingly, we sustain the Examiner’s § 103 rejection of claims
1–3, 7, 12, 16, 17, 20, 21, and 25 as obvious over Xie, Jeong, and Lagnado.
Claim 4
Appellant argues that the cited prior art fails to teach or suggest
“generating a subsequent network discovery request message in response to
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detecting that a signal strength of wireless communications received from
the first non-beacon-generating wireless access points are below a threshold
level” as recited in claim 4. Appeal Br. 29; Reply Br. 17.
The Examiner finds that “Xie teaches that the mobile terminal can
move to different locations.” Ans. 5 (citing Xie ¶ 44); see Final Act. 8.
According to the Examiner, Xie’s “mobile terminal can be [handed off] from
one location to another location where the current signal strength drops
below a threshold level when moving away from the current location” and
“the subsequent network discovery request message is the subsequent probe
request in Xie to discover[] a non-beacon-generating access point at a new
location.” Ans. 5.
We are persuaded of Examiner error for the reasons argued by
Appellant. As Appellant points out, paragraph 44 of Xie, cited by the
Examiner, discusses “different locations” in the context of using LED
lighting devices to “present . . . light signals at different locations” to
indicate functions being performed by a Wi-Fi terminal and access point, so
that a user may monitor network activities at the different locations. See
Reply Br. 16–17. The Examiner fails to provide sufficient evidence for the
finding that Xie’s mobile terminal generates a subsequent probe request in
response to a signal strength dropping below a threshold level.
Accordingly, we do not sustain the Examiner’s § 103 rejection of
claim 4 as obvious over Xie, Jeong, and Lagnado.
Claims 6, 19, 24, and 34
The Examiner relies upon Xie for a “network discovery response
message includ[ing] information indicating attributes of types of different
networks supported by the non-beacon-generating wireless access point” as
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recited in claim 6, and for similar claim limitations recited in claims 19, 24,
and 34. Final Act. 8, 11, 13, 15–16 (citing Xie ¶ 29). Specifically, the
Examiner cites Xie’s disclosure of a probe response frame including
information on service or type of service provided by the Wi-Fi network of
the wireless access point. Xie ¶ 29. The Examiner also cites Xie’s
disclosure of an increased “number of Wi-Fi networks in living and working
environments,” such as smart home systems, Internet of things (“IOT”), and
sensor network systems. Xie ¶ 6 (cited at Ans. 7, 11).
Appellant argues that Xie’s probe response frame indicates “network
type or service type of a single network supported by the wireless access
point,” as opposed to multiple networks as claimed. Appeal Br. 30, 38; see
id. at 55, 60; Reply Br. 18, 29–30, 40. According to Appellant, “there is no
indication that any wireless access point in Xie or Jeong even supports
multiple wireless networks.” Appeal Br. 30.
We are unpersuaded by Appellant’s argument. Xie discloses multiple,
different types of Wi-Fi networks in a living or working environment, which
we find teaches or suggests an access point supporting different types of
networks. Xie ¶ 6. Thus, we agree with the Examiner that Xie’s disclosure
of multiple types of Wi-Fi networks within a living or working environment
and a probe response frame including information on service or type of
service provided by the wireless access point’s Wi-Fi network teaches or at
least suggests a network discovery response message including information
indicating attributes of different types of networks supported by the wireless
access point. See Ans. 7, 11.
Accordingly, we sustain the Examiner’s § 103 rejection of claims 6,
19, 24, and 34 as obvious over Xie, Jeong, and Lagnado.
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Claims 26–28
The Examiner relies upon Jeong for a “second network discovery
response message further including signal strength information indicating a
signal strength at which the second . . . wireless access point received the
network discovery request message from the communication device,” as
recited in claim 26, as well as for further limitations related to the “second
wireless signal strength” in claims 27 and 28. Final Act. 14–15 (citing Jeong
Fig. 2; ¶¶ 42, 57; Table 2). Specifically, the Examiner cites Jeong’s
disclosure of a communication device receiving response frames from
multiple access points (Jeong Fig. 2) and selecting the access point with the
best link quality (id. ¶ 42). Final Act. 14–15.
Appellant repeatedly argues that Jeong does not recite multiple non-
beacon-generating wireless access points. Appeal Br. 32, 35–36; Reply
Br. 27. That argument is not persuasive because, as discussed above, the
Examiner relies upon Xie, not Jeong, for the recited “non-beacon-generating
wireless access point[s].” See Final Act. 5–7; Ans. 6.
Appellant further argues that “it is not clear or obvious how a non-
beacon generating wireless access point would measure a network discovery
request message in a manner as recited by the claimed invention if it does
not send out any beacons.” Reply Br. 23. That argument is similar to the
argument made with respect to claims 1 and 2 discussed above, and is
unpersuasive for the same reasons.
We agree with the Examiner that the combined references teach or
suggest a “second network discovery response message received from a
second non-beacon-generating wireless access point . . . the second network
discovery response message further including signal strength information
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indicating a signal strength at which the second non-beacon-generating
wireless access point received the network discovery request message from
the communication device” as claimed. See claim 26; Final Act. 5–7,
14–15.
Accordingly, we sustain the Examiner’s § 103 rejection of claims
26–28 as obvious over Xie, Jeong, and Lagnado.
Claim 29
Claim 29 recites “using roaming support information received in the
network discovery response message to determine which of multiple non-
beacon-generating wireless access points to establish a wireless
communication link.” The Examiner finds, and we agree, that Jeong
discloses “provid[ing] roaming support information such as ‘list of neighbor
access points to be roamed’ in the response frame as part of the quality
parameters . . . where the user equipment selects the access point from a
plurality of access points in consideration of the quality parameters.” Ans. 6
(citing Jeong ¶¶ 42, 72); see Final Act. 15.
Appellant argues that the cited disclosure of Jeong provides “no
indication of using roaming support information received in a network
discovery response message to determine which of multiple non-beacon-
generating wireless access points to establish a wireless communication
link.” Appeal Br. 37 (emphases omitted); Reply Br. 28.
Appellant’s argument essentially consists of quoting a portion of
Jeong cited by the Examiner and concluding that it fails to teach or suggest
the claim limitation. See Appeal Br. 37. That argument amounts to no more
than reciting the claim language and alleging that the cited prior art
references are deficient, which are not separate arguments for patentability
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of the claims. See 37 C.F.R. § 41.37(c)(1)(iv) (2018) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.”).
Accordingly, we sustain the Examiner’s § 103 rejection of claim 29 as
obvious over Xie, Jeong, and Lagnado.
Summary of Claims Rejected over Xie, Jeong, and Lagnado
We sustain the Examiner’s § 103 rejection of claims 1–3, 6, 7, 12, 16,
17, 19–21, 24–29, and 34 as obvious over Xie, Jeong, and Lagnado.
We do not sustain the Examiner’s § 103 rejection of claim 4 as
obvious over Xie, Jeong, and Lagnado.
B. Rejection of Claims 9 and 18 as Obvious over Xie, Jeong, Lagnado,
and AAPA
Claim 9 recites that “the network discovery request message indicates
that the communication device is passpoint enabled to support passpoint
handoffs.” Claim 18 recites a similar limitation. The Examiner cites page 4,
lines 1–7 of the Specification as Applicant’s Admitted Prior Art, finding that
“Applicant admits that passpoint is a known standard Hotspot 2.0 on page 4,
lines 1-7.” Final Act. 16; see Ans. 7, 11.
Appellant argues that “there is no indication or admission in the
subject application that the prior art discloses the limitations of generating a
network discovery request to notify a non-beacon-generating wireless access
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point that the communication device of the claimed invention is passport
enabled” and that the Examiner “uses the claimed invention as well as novel
aspects disclosed in the subject application as a basis to reject itself.”
Appeal Br. 40–41, 56–57; Reply Br. 31, 42.
A statement by an applicant in the specification or made during
prosecution identifying the work of another as “prior art” is an admission
which can be relied upon for both anticipation and obviousness
determinations, regardless of whether the admitted prior art would otherwise
qualify as prior art under the statutory categories of 35 U.S.C. § 102.
Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed.
Cir. 2003). Here, the relevant portion of the Specification states:
Additionally or alternatively, the network discovery
request generated by the user-operated communication device
can include information can further indicate whether the
communication device is passpoint (such as Hotspot 2.0)
enabled. In such an instance, assuming that the network
discovery request indicates that the communication device is
passpoint enabled, the non-beacon generating wireless access
point produces the network discovery response message to
indicate one or more (passpoint) service providers and
corresponding wireless networks supported by the wireless
access point.
Spec. 4:1–7. There is no indication in the record that such disclosure is
attributable to the previous work of another or otherwise drawn from the
prior art. See, e.g., In re Nomiya, 509 F.2d 566, 571 (CCPA 1975) (holding
applicant’s labeling of two figures in the application drawings as “prior art”
to be an admission that what was pictured was prior art relative to
applicant’s improvement). We agree with Appellant that the portion of the
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Specification cited by the Examiner pertains to Appellant’s own disclosure
of their invention, rather than admitted prior art.
Accordingly, we do not sustain the Examiner’s § 103 rejection of
claims 9 and 18 as obvious over Xie, Jeong, Lagnado and AAPA.
C. Rejection of Claims 30, 32, and 33 as Obvious over Xie, Jeong,
Lagnado, and Hara
Claim 30 recites that “the communication device is operable to
determine a signal strength of receiving communications from the non-
beacon-generating wireless access point.” Claims 32 and 33 recite
limitations pertaining to detecting a signal strength of communications
received from a non-beacon-generating wireless access point and/or
determining other non-beacon-generating wireless access points available to
support a handoff. The Examiner cites Hara, finding that Hara “teaches that
the mobile terminal uses the reception level of the probe response frame as a
reference to determine the next base station/access point for handover.”
Ans. 8 (citing Hara ¶ 4) (determining an access point or base station for
handover based on the SNR of a beacon frame signal received from an
access point or the reception level of a probe response frame from a base
station); see Final Act. 17–18.
With respect to claims 30 and 32, Appellant argues that “there is no
indication that . . . the communication device in Hara is operable to
determine a signal strength of receiving communications from a non-beacon-
generating wireless access point, especially not in which the probe response
indicates a power level at which the base station received the probe request.”
Appeal Br. 43; see id. at 45.
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Appellant’s argument is not persuasive because, as discussed above,
the Examiner relies upon Xie, not Hara, for the recited “non-beacon-
generating wireless access point” (see Final Act. 5–7; Ans. 8) and upon
Jeong, not Hara, for a probe response indicating a signal strength or power
level at which the access point received the probe request (see Final
Act. 7–8). Although Appellant argues that beacon frames are periodically
transmitted in Hara (Reply Br. 33), we are unpersuaded because Appellant
attacks the references individually without consideration of what the
combined teachings would have suggested to one of ordinary skill in the art.
One cannot show nonobviousness by attacking references individually
where the rejection is based upon a combination of references. In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for obviousness is
what the combined teachings of the references would have suggested to one
of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
We agree with the Examiner that the combined teachings of Xie, Jeong, and
Hara would have rendered claims 30 and 32 obvious to one of ordinary skill
in the art. See Ans. 8.
Appellant’s argument with respect to claim 33 essentially consists of
quoting portions of Hara cited by the Examiner and concluding that they fail
to teach or suggest the claim limitation. See Appeal Br. 46–47. As
discussed above, that type of conclusory argument is unpersuasive, and we
discern no error in the Examiner’s conclusion regarding that claim. See
37 C.F.R. § 41.37(c)(1)(iv); Lovin, 652 F.3d at 1357.
Accordingly, we sustain the Examiner’s § 103 rejection of claims 30,
32, and 33 as obvious over Xie, Jeong, Lagnado and Hara.
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D. Rejection of Claim 31 as Obvious over Xie, Jeong, Lagnado, Hara,
and Zinchenko
Appellant provides no separate arguments for claim 31, which
depends from claim 30.
Accordingly, we sustain the Examiner’s § 103 rejection of claim 31 as
obvious over Xie, Jeong, Lagnado, Hara, and Zinchenko.
CONCLUSION
The Examiner’s rejections of claims 1–3, 6, 7, 12, 16, 17, 19–21,
and 24–34 under 35 U.S.C. § 103 are affirmed.
The Examiner’s rejections of claims 4, 9, and 18 under 35 U.S.C.
§ 103 are reversed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis Affirmed Reversed
1–4, 6, 7, 12,
16, 17, 19–21,
24–29, 34
103 Xie, Jeong,
Lagnado
1–3, 6, 7, 12,
16, 17, 19–21,
24–29, 34
4
9, 18 103 Xie, Jeong,
Lagnado,
AAPA
9, 18
30, 32, 33 103 Xie, Jeong,
Lagnado, Hara
30, 32, 33
31 103 Xie, Jeong,
Lagnado, Hara,
Zinchenko
31
Overall
Outcome
1–3, 6, 7, 12,
16, 17, 19–21,
24–34
4, 9, 18
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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)(1)(iv).
AFFIRMED IN PART