Ex Parte Tsiatis et al

Patent Trial and Appeal Board

Feb 5, 2019

14125414 (P.T.A.B. Feb. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/125,414 12/11/2013 Vlasios Tsiatis
152435 7590 02/07/2019
Sage Patent Group/Zacco
PO BOX 30789
RALEIGH, NC 27622-0789
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.
1009-0796 I P33323 US 1 7495
EXAMINER
TACSIK, ERNEST G
ART UNIT PAPER NUMBER
2644
NOTIFICATION DATE DELIVERY MODE
02/07/2019 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):
zaccoinstructions@sagepat.com
outsourcing@zacco.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VLASIOS TSIATIS, ANDREAS FASBENDER, and
JOHAN HJELM 1
Appeal2018-006684
Application 14/125,414
Technology Center 2600
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
DIRBA, 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 28-32, 34--40, 42--43, and 45-52. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, Telefonaktiebolaget L M Ericsson (publ) is the
real party in interest. App. Br. 2.
Appeal2018-006684
Application 14/125,414
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention relate to
handling connection offers in a communication network. Spec. 1:4--5.
Exemplary Claim
Claim 28, reproduced below, is representative of the subject matter on
appeal (emphases added to contested limitations):
28 A method in a network node of a communication
network for sending operator connection offers to a Machine-
to-Machine equipment connectable to the communication
network, the method comprising:
receiving a message comprising a connection
request from a Machine-to-Machine equipment;
obtaining at least one operator connection offer for
the Machine-to-Machine equipment, each offer originating
from a separate operator;
selecting one or more of the at least one operator
connection offer based on context information included in the
received message, wherein the context information comprises
location information for the Machine-to-Machine equipment;
and
sending the selected one or more of the at least one
operator connection offer to a decision entity associated with
the Machine-to-Machine equipment.
2 Our decision relies upon Appellants' Appeal Brief, filed Nov. 17, 2017
("App. Br."); Appellants' Reply Brief, filed June 15, 2018 ("Reply Br.");
Examiner's Answer, mailed Mar. 16, 2018 ("Ans."); Final Office Action,
mailed Aug. 17, 2017 ("Final Act."); and the original Specification, filed
June 15, 2011, as a PCT application ("Spec.").
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Application 14/125,414
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Wild et al. ("Wild")
Gomi et al. ("Gomi")
Hom et al. ("Hom")
Hjelm
Guilford et al. ("Guilford")
Luft
US 2004/0181692 Al
US 2009/0055904 Al
US 2009/0191857 Al
US 2009/0282458 Al
US 2010/0048205 Al
US 2010/0057485 Al
Rejections on Appeal
Sept. 16, 2004
Feb.26,2009
July 30, 2009
Nov. 12, 2009
Feb.25,2010
Mar. 4, 2010
RI. Claims 28-30, 35-39, 43, and 45-52 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Guilford,
Gomi, and Hom. Final Act. 8-20.
R2. Claims 31 and 40 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Guilford, Gomi, Hom, and
Wild. Final Act. 20-22.
R3. Claim 32 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Guilford, Gomi, Hom, and Hjelm.
Final Act. 22-23.
R4. Claims 34 and 42 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Guilford, Gomi, Hom, and Luft.
Final Act. 23-25.
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Application 14/125,414
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 10-17; Reply Br. 3-10),
we decide the appeal of obviousness Rejection RI of claims 28-30, 35-39,
and 51 on the basis of representative claim 28. For obviousness Rejection
RI of claims 43, 45-50, and 52, Appellants rely only on their arguments that
the references fail to disclose "context information comprising location
information in the same message as a connection request," as argued with
respect to claim 28. App. Br. 17-18; see Reply Br. 2. Accordingly, these
claims stand or fall with the corresponding argument presented with respect
to claim 28. See infra Issue 1 (b ).
Remaining claims 31, 32, 34, 40, and 42 in Rejections R2 through R4
are not argued separately (App. Br. 20), and thus, they stand or fall with the
respective independent claim from which they depend. 3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
which Appellants chose not to make in the Briefs, as any such arguments are
waived. 37 C.F.R. § 4I.37(c)(l)(iv).
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Application 14/125,414
We disagree with Appellants' arguments with respect to claims 28-
32, 34--40, 42--43, and 45-52. We highlight and address specific findings
and arguments regarding claim 28 for emphasis as follows.
1. Rejection RI of Claims 28-30, 35-39, 43, and 45-52
Issue 1
Appellants argue the Examiner's rejection of claim 28 under
35 U.S.C. § I03(a) as being obvious over the combination of Guilford,
Gomi, and Hom is in error. 4 App. Br. 11-17; see also Reply Br. 3-10.
These contentions present us with the following issues:
(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests "selecting one or more of the at least one operator
connection offer based on context information included in the received
message, wherein the context information comprises location information,"
as recited in claim 28? ( emphasis added).
(b) Did the Examiner err in finding the cited prior art combination
teaches or suggests "a message comprising a connection request," where
"context information [is] included in the received message" and "the context
information comprises location information," as recited in claim 28?
4 In the Reply Brief, Appellants also contend that the background section
provided in the Examiner's Answer is improper because the Examiner fails
to cite to evidence in the record to support his statements. Reply Br. 2-3
( citing Ans. 3--4). However, these statements provide a general introduction
to the technology at issue, and the Answer does not rely upon this
background to support the Rejections. See Ans. 3--4, 5-14. Further, we note
that Appellants do not identify any inaccuracies, and Appellants provide no
authority for the proposition that such an introductory section is
impermissible. Accordingly, we are not persuaded of any reversible error.
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Application 14/125,414
Analysis
Issue 1 (a)-"selecting one or more of the at least one operator
connection offer based on context information included in the
received message, wherein the context information comprises
location information"
The Examiner found that Guilford discloses a bid server that selects
an operator connection offer, but does not show that the offer is selected
based on location information. Final Act. 9-10 ( citing Guilford ,r,r 105-
106). The Examiner turned to Gomi for this missing element, explaining
that Gomi discloses a service request message that is processed using
positional information calculated from GPS signals. Id. at 10 ( citing Gomi
,r 259). The Examiner reasoned that it would have been obvious to
incorporate Gomi' s location information in Guilford' s offer selection
process so that the offers selected are optimal for a user's environment and
location. Id. ( citing Gomi ,r 31 as providing this motivation); see id. at 4
( explaining that the bid server could use the location to select only those
offers available to wireless devices in that location).
Appellants argue that Guilford makes no mention of a wireless
device's location and fails to describe "any basis for selection of the offers
by the bid server." App. Br. 12. Turning to Gomi, Appellants contend that
"Gomi' s request message, while including device position information, has
nothing to do with evaluating service offers from multiple operators." Id.
at 13 (emphasis omitted); see also Reply Br. 7 (arguing Gomi is "not related
to the selection of operator connection offers") ( emphasis omitted). Further,
Appellants state that the Examiner's rationale to combine is insufficient
because it "says nothing of any basis for offer selection." App. Br. 14. The
Examiner responds that "the benefits of location consideration in the
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Application 14/125,414
offering of service would be an obvious result in the combination of
Guilford and Gomi." Ans. 7-8.
Appellants' arguments do not persuade us of error on the part of the
Examiner because Appellants attack the references individually, while the
Examiner relies on the combined disclosures in the references to reject
claim 28. See Final Act. 2-5, 8-10. Where a rejection rests on the
combined disclosures in the references, an appellant cannot establish
nonobviousness by attacking the references individually. In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, the combined disclosures in Guilford and Gomi render the
disputed limitation obvious, as explained by the Examiner. Specifically,
Guilford discloses a wireless device that transmits a service request to a bid
server, and Guilford teaches that the bid server presents one or more offers
to the device. Guilford ,r,r 105---06. We agree with the Examiner that this
discloses "selecting one or more of the at least one operator connection
offer." Although we agree with Appellants that Guilford does not disclose a
method for filtering the offers to present to a wireless device, claim 28 does
not include such a requirement-rather, it simply requires that an operator
connection offer be "select[ ed]." Further, we find that Guilford implies that
some undisclosed method would be used to filter the offers. See Guilford
,r 105 (Guilford's bid server "can store all present deals offered by different
wireless service providers" and is responsible for "processing and
presenting" those offers to wireless devices.). As explained by the
Examiner, a person of ordinary skill in the art would have found it obvious
to modify the disclosure of Guilford to use Gomi' s location information to
select offers based on a wireless device's location. See Gomi ,r 260
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( explaining that the service providing unit uses the location to calculate the
preferred "access network and communication device").
Based on the above, we agree with the Examiner's determination that
a person of ordinary skill in the art would have found that the proposed
combination of references renders obvious this limitation, i.e., "selecting one
or more of the at least one operator connection offer based on context
information included in the received message, wherein the context
information comprises location information."
Issue 1 (b)-"a message comprising a connection request,"
where "context information [is] included in the received
message" and "the context information comprises location
information "
Appellants also argue that the references fail to disclose or suggest
receiving location information in the same message as a connection request.
App. Br. 14--17. Specifically, Appellants submit that Gomi's service request
cannot be considered to be a "connection request," but rather is a request to
use a service after a connection has been established. Id. at 14--16; see id.
at 16 ( arguing that "Gomi' s 'service request' ... necessarily takes place well
after Gomi' s device is connected to the network").
The Examiner responds that the Specification does not define the term
"connection request," and the Examiner interprets this term broadly as a
request to communicate. Ans. 11. The Examiner finds that Gomi' s service
request is "a request for service that would be available from a network that
a device can be connected to." Id. at 10. The Examiner notes that a wireless
device may have more than one connection ( e.g., at different layers), and
accordingly, the Examiner is not persuaded by the Appellants' attempt to
distinguish Gomi' s service request. Id. at 11.
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"In the patentability context, claims are to be given their broadest
reasonable interpretations," and "limitations are not to be read into the
claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993). Any special meaning assigned to a term by the specification
must be clear to a person of ordinary skill in the art reading the specification.
See Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
We are not persuaded by Appellants arguments regarding the
construction of a "connection request." 5 Appellants do not point to, nor
could we find, any language in claim 28 that limits the connection request to
a request for connection to a communication network, a request to establish a
connection only if no other connection has been established, or a request to
establish a connection only through an operator. Also, Appellants do not
point to, nor could we find, any language in claim 28 that would exclude a
request to connect with particular types of services.
Appellants note that the Specification describes establishing a
connection between an M2ME and one of several available home operators.
5 Appellants provide different constructions of this claim term. App. Br.
14--16. For example, Appellants contend that term "refers to a request for a
connection to a communication network, so that the requesting device can
receive services from the network," and then Appellants submit that the
proper construction is "a connection request from a M2Me [Machine to
Machine Equipment] to connect to a communication network through an
operator." Id. at 16. However, as explained, we find that neither comports
with the broadest reasonable interpretation in light of the Specification.
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App. Br. 16; Reply Br. 9. However, when construing a claim term, one
should not import narrower definitions for terms based on specific
embodiments disclosed in the specification. See Phillips v. AWH Corp., 415
F.3d 1303, 1323 (Fed. Cir. 2005) (en bane) ("[A]lthough the specification
often describes very specific embodiments of the invention, we have
repeatedly warned against confining the claims to those embodiments.").
Based on this record, we conclude that the broadest reasonable interpretation
of "connection request" is a request to establish a connection.
Based on this construction, we find that Gomi' s service request
discloses a "connection request" because Gomi discloses that its service
request is a request to establish a connection, specifically with a service
through either a wireless LAN or a cellular phone network. Gomi ,r,r 259-
60. The fact that another connection or session may have previously been
established does not alter our analysis; rather, the question is whether
Gomi's service request is encompassed by the broadest reasonable
interpretation of "connection request." As explained above, we find that it
is. Accordingly, we find Appellants' arguments do not show error in the
Examiner's factual findings or the ultimate finding of obviousness of
representative claim 28 over the proposed combination of references.
Based on the above, we agree with the Examiner's determination that
a person of ordinary skill in the art would have found that the proposed
combination of references renders obvious this limitation, i.e., "receiving a
message comprising a connection request," where "context information [is]
included in the received message" and "the context information comprises
location information."
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Application 14/125,414
Therefore, we sustain the Examiner's obviousness Rejection RI of
representative claim 28 and grouped claims 28-30, 35-39, and 51, which
fall therewith. See Claim Grouping, supra. Further, we are not persuaded
by Appellants' arguments that the references fail to disclose "sending
context information comprising location information in the same message as
a connection request," as argued with respect to claim 28 (see supra Issue
l(b)), and accordingly we sustain the Examiner's obviousness Rejection RI
of grouped claims 43, 45-50, and 52, which fall therewith. See Claim
Grouping, supra.
2. Rejection R2 of Claims 31 and 40
In response to obviousness Rejection R2 of dependent claims 31 and
40 under 35 U.S.C. § I03(a), Appellants rely on the arguments provided
with respect to independent claims 28 and 37. App. Br. 20. Accordingly,
these claims fall with their respective independent claims, and we sustain the
Examiner's rejection.
3. Rejection R3 of Claim 32
In response to obviousness Rejection R3 of dependent claim 32 under
35 U.S.C. § I03(a), Appellants rely on the arguments provided with respect
to independent claim 28. App. Br. 20. Accordingly, this claim falls with its
respective independent claim, and we sustain the Examiner's rejection.
4. Rejection R4 of Claims 34 and 42
In response to obviousness Rejection R4 of dependent claims 34 and
42 under 35 U.S.C. § I03(a), Appellants rely on the arguments provided
with respect to independent claims 28 and 37. App. Br. 20. Accordingly,
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these claims fall with their respective independent claims, and we sustain the
Examiner's rejection.
CONCLUSION
The Examiner did not err with respect to obviousness Rejections RI
through R4 of claims 28-32, 34--40, 42--43, and 45-52 under 35 U.S.C.
§ I03(a) over the cited prior art combination of record, and we sustain the
rejection.
DECISION
We affirm the Examiner's decision rejecting claims 28-32, 34--40,
42--43, and 45-52.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
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