Ex Parte Tsiatis et alDownload PDFPatent Trial and Appeal BoardFeb 5, 201914125414 (P.T.A.B. Feb. 5, 2019) Copy Citation 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."). 2 Appeal2018-006684 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. 3 Appeal2018-006684 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). 4 Appeal2018-006684 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. 5 Appeal2018-006684 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 6 Appeal2018-006684 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 7 Appeal2018-006684 Application 14/125,414 ( 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. 8 Appeal2018-006684 Application 14/125,414 "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. 9 Appeal2018-006684 Application 14/125,414 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." 10 Appeal2018-006684 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, 11 Appeal2018-006684 Application 14/125,414 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 12 Copy with citationCopy as parenthetical citation