Ex Parte HAO et al

Patent Trial and Appeal BoardMar 15, 2017

12730765 (P.T.A.B. Mar. 15, 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. 12/730,765 03/24/2010 Jack Jianxiu HAO 20090656 9808 25537 7590 VERIZON PATENT MANAGEMENT GROUP 1320 North Court House Road 9th Floor ARLINGTON, VA 22201-2909 EXAMINER OHBA, MELLISSA M ART UNIT PAPER NUMBER 2164 NOTIFICATION DATE DELIVERY MODE 03/17/2017 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): patents @ verizon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JACK JIANXIU HAO, HAIYAN ZHOU, JIAN HUANG, AND BAOQING YE Appeal 2015-005204 Application 12/730,7651 Technology Center 2100 Before JASON V. MORGAN, NABEEL U. KHAN, and KAMRAN JIVANI, Administrative Patent Judges. MORGAN, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellants, Verizon Communications, Inc., is the real party in interest. App. Br. 3. Appeal 2015-005204 Application 12/730,765 STATEMENT OF THE CASE Introduction This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1—4, 6—17, and 19-27. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Rejections The Examiner rejects all claims under 35 U.S.C. § 103(a) as being unpatentable over Wan et al. (US 2007/0204104 Al, published Aug. 30, 2007) and Allen Miu and Paramvir Bahl, Dynamic Host Configuration for Managing Mobility Between Public and Private Networks, Proc. of the 3rd Conf. on USENIX Symp. on Internet Tech, and Sys., San Francisco, California (Mar. 26—28, 2001), available at https://www.usenix.org/legacy/ event/usits01/full_papers/miu/miu.pdf (“Miu”). Final Act. 2—28 (June 17, 2014). ANALYSIS Based on the record before us, Appellants have not established error in the Examiner’s rejection. To show error, Appellants must do more than merely aver a failure of the rejection’s applied prior art to teach a particular claim feature. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011); see also Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“the Board reviews the particular fmding(s) contested by an appellant anew in light of all the evidence and argument on that issue”). “[T]he extent to which the examiner fails to provide ‘syllogistic argument’ to fill the gaps between the 2 Appeal 2015-005204 Application 12/730,765 prior art and the rejected claims is dependent upon a substantive showing that such gaps exist in the first place.” Jung, 637 F.3d at 1364 (emphasis added). Appellants’ unsupported contentions are insufficient to show error in the Examiner’s rejection. Each argument set forth by Appellants across 37 pages of the Appeal Brief adheres to the same formula: (1) quote the entire claim; (2) quote a claim limitation; (3) list the prior art sections cited by the Final Action for the claim limitation; (4) address each prior art section, one-by-one, by merely: (a) quoting portions of the section (e.g., sentences), (b) requoting included portions thereof (e.g., words thereof), and (c) stating the sections do not disclose or suggest the claim limitation, which is requoted with unexplained underlining; and (5) conclude the argument by again stating the prior art section does not disclose or suggest the claim limitation, which is again requoted in full. App. Br. 7-43. Appellants’ arguments include additional conclusory statements—in particular, statements that the section “does not even mention” a term or terms of the claim limitation (id. at 9-11, 20, 24—26, 30, 33—36, 41) or “does not disclose or suggest doing anything” (id. at 9-11, 34—36) under particular claim limitation conditions. These conclusory statements similarly fail to shed light on the merits of the Examiner’s findings as to what the prior art teaches or suggests. 3 Appeal 2015-005204 Application 12/730,765 Appellants’ contentions, as set forth in the formula detailed above (even with additional conclusory statements), break down into mere quotations of applied prior art and claim language, with an open invitation for the Board to perform its own comparison of the prior art and claimed invention. However, the Board does not develop arguments, comparisons, etc., on behalf of Appellants; Appellants must present developed comparisons of the prior art art and claimed invention for our consideration. See Jung, 637 F.3d at 1364—65; Frye, 94 USPQ2d at 1075; see also In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art”). In sum, Appellants’ contentions lack sufficient explanation as to the asserted differences between the prior art and claimed invention, and therefore are unpersuasive. Accordingly, we affirm the Examiner’s rejection of claims 1—4, 6—17, and 19—27. DECISION We affirm the Examiner’s rejection of claims 1—4, 6—17, and 19—27. 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 4