Ex Parte Herrero-Veron et al

Patent Trial and Appeal BoardSep 24, 2012

11265906 (P.T.A.B. Sep. 24, 2012)

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. 11/265,906 11/03/2005 Christian Herrero-Veron 4015-5372 7807 24112 7590 09/24/2012 COATS & BENNETT, PLLC 1400 Crescent Green, Suite 300 Cary, NC 27518 EXAMINER AGA, SORI A ART UNIT PAPER NUMBER 2476 MAIL DATE DELIVERY MODE 09/24/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHRISTIAN HERRERO-VERON and LARS HAKAN PALM ____________ Appeal 2011-006088 Application 11/265,906 Technology Center 2400 ____________ Before JAMESON LEE, STEPHEN C. SIU, and MICHAEL R. ZECHER, Administrative Patent Judges. ZECHER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006088 Application 11/265,906 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 14-21. Br. 2. Responsive to a restriction requirement, claims 1-13 have been withdrawn. Id. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Invention Appellants invented a method and apparatus that enable a mobile station to subscribe to a larger number of multi-case services than provided by a conventional wireless network. Abstract. Illustrative Claim 14. A method of transmitting multi-cast data associated with a multi-cast service from a wireless network to a mobile station in the wireless network, the method comprising: reserving a first value space for packet service identifiers and an enhanced value space for multi-cast service identifiers separate from said first value space; receiving a multi-cast service identifier from the mobile station, wherein the received multi-cast service identifier is selected by the mobile station from the enhanced value space for the multi-cast service during a joining phase; establishing a multi-cast communication session for the mobile station based on the selected multi-cast service identifier during a data transmission phase; and transmitting the multi-cast data from the wireless network to the mobile station during the established multi-cast communication session. Prior Art Relied Upon Bae US 2003/0064726 A1 Apr. 3, 2003 Mademann US 2005/0054353 A1 Mar. 10, 2005 (PCT filed Oct. 19, 2001) Appeal 2011-006088 Application 11/265,906 3 Rejection on Appeal Claims 14-21 were rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Mademann and Bae. Ans. 3-9. Examiner’s Findings and Conclusions The Examiner finds that Mademann teaches “reserving a first value space for packet service identifiers and an enhanced value space for multi- cast service identifiers separate from said first value space[,]” as recited in independent claim 14. Ans. 9-10. In particular, the Examiner finds that Mademann teaches two distinct services and values—point-to-point (“PtP”) and multicast services. Ans. 9. The Examiner finds that Mademann discloses activating a multicast service using the extended network layer service access point identifier (“NSAPI”). Ans. 9-10 (citing ¶ [0017]). Moreover, the Examiner finds that Mademann teaches using the conventional NSAPI values for PtP services and using extended NSAPI values for multicast services. Ans. 10. Further, the Examiner finds that because Mademann discloses that the extended NSAPI signaling elements allow a greater number of packet data protocol (“PDP”) contexts which are set up in parallel and are limited by the value range of the NSAPI (¶ [0017]), Mademann suggests using different values for PtP and multicast services. Ans. 10. Appellants’ Contentions Appellants contend that Mademann’s extended NSAPI is not associated with an identifier separate from the conventional reserved identifier (i.e., conventional NSAPI). Br. 5. Instead, Appellants argue that Mademann’s extended NSAPI represents an optional signaling element that Appeal 2011-006088 Application 11/265,906 4 “allows a greater number of PDP contexts, which are set up in parallel and are limited by the value range of the NSAPI.” Br. 5 (emphasis in original). Appellants assert that because Mademann discloses using the conventional NSAPI to identify information element values for both packet and multicast services, Mademann does not teach reserving a value space for multi-cast service identifiers separate from the value space reserved for packet service identifiers, as required in independent claim 14. Id. Appellants rely upon the same arguments presented for the obviousness rejection of independent claim 14 to rebut the obviousness rejection of independent claim 21. Br. 6. II. ISSUE Has the Examiner erred in determining that the combination of Mademann and Bae suggests “reserving a first value space for packet service identifiers and an enhanced value space for multi-cast service identifiers separate from said first value space[,]” as recited in independent claim 14, and similarly recited in independent claim 21? III. ANALYSIS Claims 14 and 21 Based on the record before us, we do not discern error in the Examiner’s obviousness rejection of independent claim 14, which recites, inter alia, “reserving a first value space for packet service identifiers and an enhanced value space for multi-cast service identifiers separate from said first value space[.]” We also do not discern error in the Examiner’s Appeal 2011-006088 Application 11/265,906 5 obviousness rejection of independent claim 21, which recites a similar claim limitation. We begin our analysis by noting that Mademann discloses using a pre-existing structure already defined for PtP services to activate a multicast service. ¶ [0017]. In particular, Mademann discloses activating the multicast service using an extended PtP service signaling element—referred to as an extended NSAPI. Id. Although Mademann discloses that the extended NSAPI allows a greater number of PDP contexts that are set up in parallel and limited by the value range of the NSAPI (id.), Mademann nonetheless discloses using two separate identifiers—1) the NSAPI or conventional NSAPI; and 2) the extended NSAPI. Moreover, in light of the aforementioned disclosure, we conclude that an ordinarily skilled artisan would have readily appreciated reserving value space for extended NSAPIs that identify information element values for multicast services separate from the value space reserved for conventional NSAPIs that identify information element values for PtP services (i.e., packet services). As a result, we agree with the Examiner’s determination that Mademann teaches the disputed claim limitation. See Ans. 9-10. It follows that the Examiner has not erred in concluding that the combination of Mademann and Bae renders independent claims 14 and 21 unpatentable. Claims 15 and 17-20 Appellants do not provide separate and distinct arguments for patentability with respect to dependent claims 15 and 17-20. See Br. 6-7. Therefore, we accept Appellants’ grouping of these dependent claims with their underlying base claim. Id. at 6. Consequently, dependent claims 15 and 17-20 fall with independent claim 14. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2011-006088 Application 11/265,906 6 Claim 16 Appellants argue that because Mademann’s reuse of the conventional information element identifier restricts the number of new information values to 16 values ranging from 0-15, Mademann teaches no more than 16 new information element values. Br. 6-7. Therefore, Appellants argue that Mademann does not teach 128 values ranging between 128 and 255, as required by dependent claim 16. Br. 7. The Examiner finds that the second range of values recited in dependent claim 16 is not patentably distinct from Mademann because discovering the optimum or workable ranges of Mademann’s extended NSAPI values (e.g., value ranges 128-255 which are well known values that are almost always used in each octet of an Internet Protocol address) involves only routine skill in the art. Ans. 10-11. We agree with the Examiner. We understand Mademann’s disclosure pertaining to restricting the value range of the extended NSAPI to that of a conventional NSAPI (see ¶ [0017]) to mean restricting the extended NSAPI to eight bits—the same number of bits in a conventional NSAPI. Therefore, because Mademann discloses that the extended NSAPI allows a greater number of PDP contexts (id.), we conclude that one of ordinarily skill in the art would have understood that the number of new information element values in Mademann’s extended NSAPI is not restricted to a maximum of 16 values ranging from 0-15. Moreover, whether or not using all eight bits in Mademann’s extended NSAPI constitutes optimization, based on these facts it would have been obvious to an ordinarily skilled artisan to use these extended bits to provide 128 different extended NSAPIs ranging between 128 and 255, each of which is capable of being employed for a different Appeal 2011-006088 Application 11/265,906 7 multicast service. It follows that the Examiner has not erred in concluding that the combination of Mademann and Bae renders dependent claim 16 unpatentable. IV. CONCLUSION For the foregoing reasons, the Examiner has not erred in rejecting claims 14-21 as being unpatentable under 35 U.S.C. § 103(a). V. DECISION We affirm the Examiner’s decision to reject claims 14-21. 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 cu