Ex Parte Kneckt et al

Patent Trial and Appeal Board

Oct 19, 2018

13822196 (P.T.A.B. Oct. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/822,196 03/26/2013 10928 7590 10/23/2018 Locke Lord LLP IP Docket Department 200 Vesey Street 20th Floor New York, NY 10281-2101 FIRST NAMED INVENTOR Jarkko Kneckt 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 1004289.766US 2287 EXAMINER LIN,WILLW ART UNIT PAPER NUMBER 2412 NOTIFICATION DATE DELIVERY MODE 10/23/2018 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): patent@lockelord.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JARKKO KNECKT, MIKA KASSLIN, and JANNE MARIN Appeal2017-000119 Application 13/822,196 1 Technology Center 2400 Before ELENI MANTIS MERCADER, JASON J. CHUNG, and JAMES W. DEJMEK, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-7, 9, 10, 16-23, 25, 26, and 32. 2 We have jurisdiction under 35 U.S.C. § 6(b ). We reverse and enter a new ground of rejection. INVENTION The invention is directed to cooperation in reserving a communication channel for transmission. Spec. ,r 1. Claim 1, with emphasis, is illustrative of the invention and is reproduced below: 1 According to Appellant, Nokia Technologies Oy is the real party in interest. App. Br. 1. 2 Claims 8, 11-15, 24, 27-31, and 33-35 are cancelled. App. Br. 19, 20, 22, and 23. Appeal2017-000119 Application 13/822, 196 1. A method, comprising: determining, in a communication device of a first basic service set comprising a group of communication devices of a wireless telecommunication network, a primary channel of a second basic service set different from said first basic service set; and causing transmission of channel identification information defining a location of at least one channel of the first basic service set from the communication device to the second basic service set on the determined primary channel of the second basic service set, wherein the determined primary channel of the second basic service set is different from a primary channel of the first basic service set. REJECTIONS AT ISSUE Claims 1---6, 16-22, and 32 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over the combination of McHenry (US 2010/0105332 Al; published Apr. 29, 2010), Kang (US 2014/0307726 Al; published Oct. 16, 2015 (continuation of App. No. 13/318,014 filed on Oct. 28, 2011)), and Rohfleisch (US 2009/0080388 Al; published Mar. 26, 2009). Final Act. 5- 14. Claims 7 and 23 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over the combination of McHenry, Kang, Rohfleisch, and Oerton (US 2013/0028245 Al; published Jan. 31, 2013). Final Act. 15-16. Claims 9, 10, 25, and 26 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over the combination of McHenry, Kang, Rohfleisch, and Yu (US 2009/0279524 Al; published Nov. 12, 2009). Final Act. 16-19. 2 Appeal2017-000119 Application 13/822, 196 A. Claim Construction Claim construction is an issue of law that is left for a court or a tribunal. "[W]hen the district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent's prosecution history), the judge's determination will amount solely to a determination of law." Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). "[T]he ultimate issue of the proper construction of a claim should be treated as a question of law." Id. at 838. We construe claim terms according to their broadest reasonable construction in light of the specification of the patent or application in which they appear. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). Consistent with the broadest reasonable construction, claim terms are generally given their ordinary and customary meaning, as understood by a person of ordinary skill in the art, in the context of the entire specification. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Also, we must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (" [L] imitations are not to be read into the claims from the specification."). However, a term may be defined in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). 1. Claim 1 Claim 1, a method claim, recites, inter alia: transmission of channel identification information defining a location of at least one channel of the first basic service set from 3 Appeal2017-000119 Application 13/822, 196 the communication device to the second basic service set on the determined primary channel of the second basic service set. App. Br. 18, Claim App'x (emphases added). The informational content of non-functional descriptive material is not entitled to weight in the patentability analysis. See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BP AI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003), aff'd, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff'd, 191 F. App'x 959 (Fed. Cir. 2006). As an initial matter, we note that neither claim 1 nor claim 17 recites using the "channel identification information." Rather, this information is merely transmitted from a communication device of a first basic service set to the second basic service set. The independent claims do not recite what receives the information or what is done with the information. Additionally, in this case, because the emphasized text above are merely descriptive labels that do not impart any functionality to claim 1 and the Specification describes "channel identification" in non-limiting nomenclature (Spec. ,r 42 ("the channel identification information may identify all the channels used by the first BSS" (emphasis added)); Spec. ,r,r 77, 78, 82-84, 91, 92, 97, 98 discuss "channel identification" in the context of embodiments), rather than having a specific definition, we conclude the italicized limitations above amount to non-functional descriptive material. As a result, we construe the claim 1 limitation: transmission of channel identification information defining a location of at least one channel of the first basic service set from the communication device to the second basic service set on the determined primary channel of the second basic service set 4 Appeal2017-000119 Application 13/822, 196 ( emphases added) as "transmission of information from the communication device to the second basic service set on the determined primary channel of the second basic service set." 2. Claim 17 Similar to our analysis above in Section A. I., we construe the limitation from claim 1 7: transmission of channel identification information defining a location of at least one channel of the first basic service set from the communication device to the second basic service set on the determined primary channel of the second basic service set. ( emphases added) as "transmission of information from the communication device to the second basic service set on the determined primary channel of the second basic service set." B. Analysis The Examiner appears to include five theories ofunpatentability. Compare Final Act. 3 ( stating Kang is not identical to channel identification information), with id. at 6-7 (stating Kang explicitly discloses transmission of channel identification information), with Ans. 2-5 (not relying on Kang for transmission of channel identification information), with id. at 7-8 (relying on Rohfleisch under what appears to be § 102), with id. at 8-9 (relying on McHenry under what appears to be § 102). The closest theory of unpatentability is Rohfleisch under what appears to be§ 102. We, therefore, focus our analysis on that theory. Rohfleisch teaches an embodiment wherein a WLAN ( wireless local area network) Access Point services two separate basic service sets (BSS 1 and BSS2, respectively). See Rohfleisch, Fig. 1. The Examiner finds 5 Appeal2017-000119 Application 13/822, 196 Rohfleisch teaches the primary channel of BBS2 is the same as a secondary channel of BBS 1. Ans. 8 ( citing Rohfleisch ,r 41, Figs. 9a-9d). The Examiner maps Rohfleisch's teaching from the previous sentence to the limitation: transmission of channel identification information defining a location of at least one channel of the first basic service set from the communication device to the second basic service set on the determined primary channel of the second basic service set recited in claim 1 ( and similarly recited in claim 17). Ans. 7-8 ( citing Rohfleisch ,r 41, Figs. 4a, 4b, 9a-9d). Appellants argue Rohfleisch fails to teach the disputed limitation because, at least, the communication of channel information in Rohfleisch occurs internally within the access point (i.e., at the MAC layer) rather than "on the determined primary channel of the second basic service set." Reply Br. 4--5 ( citing Rohfleisch ,r 41 ). 3 The cited portions of Rohfleisch teach transmitting a channel identification internally (i.e., via a data bus) within WLAN Access Point on the MAC layer. We agree with Appellants that the cited portions of Rohfleisch are silent as to whether the channel identification is transmitted. See Rohfleisch ,r 41, Figs. 4a, 4b, 9a-9d. The Examiner fails to establish a sufficient prima facie theory of unpatentability in the remaining theories for the reasons argued by Appellants. Accordingly, we do not sustain the Examiner's rejection of: 3 Because the Examiner changed the basis of the rejection from the Final Office Action to the Examiner's Answer, Appellants' new arguments in the Reply Brief are timely. Compare Final Act. 3, with id. at 6-7, with Ans. 2- 5, with id. at 7-8, with id. at 8-9. 6 Appeal2017-000119 Application 13/822, 196 (1) independent claims 1 and 17; and (2) 2-7, 9, 10, 16, 18-23, 25, 26, and 32 under 35 U.S.C. § 103(a). NEWGROUNDSOFREJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 1 and 17 under 35 U.S.C. § 102. Regarding claims 1 and 17, Rohfleisch discloses WLAN Access Point 102 (i.e., communication device of a first basic set) communicating with devices in region 104a (i.e., a group of communication devices of a wireless telecommunication network). See Rohfleisch, Fig. 4b. Moreover, Rohfleisch discloses an embodiment wherein a first basic service set (BSS 1) supports Greenfield mode in network 104a, which is pure 802 .11 n transmission mode without providing support of legacy WLAN standards whereas a second basic service set (BSS2) supports mixed-mode, legacy WLAN standards such as IEEE 802.1 la or 802.1 lg in network 104b. See Rohfleisch ,r 29, Figs. 4b, 9a-9d). Stated differently, Rohfleisch's WLAN Access Point recognizes the different modes in the different networks 104a, 104b. Id. ,r 29, Fig. 4b. And Rohfleisch recognizes that primary channels are different for BSS 1 and BSS2. Id. Figs. 9a-9d. Rohfleisch, therefore, discloses the limitation: determining, in a communication device of a first basic service set comprising a group of communication devices of a wireless telecommunication network, a primary channel of a second basic service set different from said first basic service set recited in claim 1 (and similarly recited in claim 17). Furthermore, Rohfleisch discloses WLAN Access Point (i.e., communication device) communicates with devices in BSS2 using a BSS 1 secondary channel (i.e., transmission of information) from the first basic 7 Appeal2017-000119 Application 13/822, 196 service set WLAN Access Point uses BSS2 primary channel that is the same as BSS 1 secondary channel (i.e., on the determined primary channel of the second basic service set), which discloses the limitation "causing transmission of information from the communication device to the second basic service set on the determined primary channel of the second basic service set" recited from our construction of claim 1 ( and similarly recited from our construction of claim 1 7). See Rohfleisch ,r 41, Figs. 4b, 9a-9d; supra Section A. Additionally, Rohfleisch discloses BSS 1 primary channel and BSS2 primary channel are different, which discloses the limitation "wherein the determined primary channel of the second basic service set is different from a primary channel of the first basic service set," recited in claims 1 and 17. See Rohfleisch ,r,r 29, 41, Figs. 4b, 9b-9d. The Patent Trial and Appeal Board is a review body rather than a place of initial examination. Although we have made a new rejection regarding independent claims 1 and 17 under 37 C.F.R. § 41.50(b), we have not reviewed the remaining claims 2-7, 9, 10, 16, 18-23, 25, 26, and 32 to the extent necessary to determine whether these claims are unpatentable over Rohfleisch, alone or in combination with other prior art. We leave it to the Examiner to determine the appropriateness of any further rejections based on Rohfleisch or other references. Our decision not to enter a new ground of rejection for all claims should not be considered as an indication regarding the appropriateness of further rejection or allowance of the non-rejected claims. 8 Appeal2017-000119 Application 13/822, 196 DECISION We reverse the Examiner's decision rejecting claims 1-7, 9, 10, 16- 23, 25, 26, and 32 under 35 U.S.C. § 103(a). We enter a new ground of rejection for claims 1 and 17 under 35 U.S.C. § 102, as explained supra. TIME PERIOD This decision contains a new ground of rejection pursuant to 37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 4I.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record .... REVERSED; 37 C.F.R. § 4I.50(b) 9