Telefonaktiebolaget LM Ericsson (publ)

Patent Trials and Appeals Board

Feb 1, 2022

2020005314 (P.T.A.B. Feb. 1, 2022)

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. 15/501,717 02/03/2017 Tim Lauterbach 1009-2149 / P43351 US1 7842 102721 7590 02/01/2022 Murphy, Bilak & Homiller/Ericsson PO BOX 1959 Cary, NC 27572-1959 EXAMINER CHERY, DADY ART UNIT PAPER NUMBER 2461 NOTIFICATION DATE DELIVERY MODE 02/01/2022 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): official@mbhiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIM LAUTERBACH, ALEXANDER FEDERLIN, and THOMAS WEIDENFELLER Appeal 2020-005314 Application 15/501,717 Technology Center 2400 Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is a decision on Appellant’s Request for Rehearing of our Decision on Appeal mailed November 2, 2021.1 We deny Appellant’s request for the reasons discussed herein. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Telefonaktiebolaget LM Ericsson. Appeal Br. 2. Appeal 2020-005314 Application 15/501,717 2 BACKGROUND2 In our Decision we (i) reversed the Examiner’s rejection under 35 U.S.C. § 103(a) of claims 18, 20, 21, 29, 31, and 32 as being obvious over the combination of Zellner, Gruteser, and Rayes; and (ii) affirmed the Examiner’s rejections under 35 U.S.C. § 103(a) of claims 17, 19, 28, 30, and 39 as being obvious over the combination of Zellner, Gruteser, and Rayes. Decision 14. Appellant has filed a Request for Rehearing under 37 C.F.R. § 41.52 requesting we reconsider our Decision affirming the Examiner’s rejection of dependent claims 17, 19, 28, 30, and 39 under 35 U.S.C. § 103(a) as being obvious over the combination of Zellner, Gruteser, and Rayes. Rerquest 1-2. APPELLANT’S ARGUMENTS We have only considered those timely arguments actually made by Appellant in deciding this Request. See 37 C.F.R. § 41.52(a)(1) (“Arguments not raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section.”). Appellant contends: [T]he Decision on Appeal, in its analysis of the rejections of independent claims 17, 19, 28, 30, and 39, relies on new 2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed Jan. 16, 2020); Reply Brief (“Reply Br.,” filed July 9, 2020); Request for Rehearing (“Request,” filed Jan. 3, 2022); Examiner’s Answer (“Ans.,” mailed May 13, 2020); Non-Final Office Action (“Non-Final Act.,” mailed June 28, 2019); our Decision on Appeal (“Decision,” mailed Nov. 2, 2021); and the original Specification (“Spec.,” filed February 3, 2017). Appeal 2020-005314 Application 15/501,717 3 findings and new rationales to support the conclusion of obviousness. The Appellant thus requests reconsideration and modification of the Decision on Appeal to the extent of designating its analysis as a new ground of rejection with respect to claims 17, 19, 28, 30, and 39. Request 1. RESPONSE TO ARGUMENTS We are not persuaded that we relied on new findings and new rationales to support the conclusion of obviousness, and therefore deny Appellant’s Request.3 We did not rely on new findings and new rationales to support the conclusion of obviousness. As stated in our Decision, we incorporated by reference and adopted as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellant's arguments. Decision 4-5. Appellant argues: Absent from all of this, however, is any discussion of how or why it would have been obvious to replace Zellner’s device identification with a very particular IP address, i.e., the address of a location-collecting entity in the communications network. As noted in the claim, this results in adapted data packets containing the IP address of the location-collecting entity as the source of the messages, rather than their actual source. 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. § 41.37(c)(1)(iv). Appeal 2020-005314 Application 15/501,717 4 Request 5. We are not persuaded by Appellant’s argument because the Examiner explains the “how or why it would have been obvious to replace Zellner’s device identification with a very particular IP address, i.e., the address of a location-collecting entity in the communications network.” Specifically, the Examiner explains in the Answer that “the location associated with mobile identification information could be interpreted by a person of ordinary skill in the art as a network address such an IP address.” Ans. 4, citing to Non- Final Act. The Examiner further explains Zellner’s “proxy server 100, upon receipt of query 202, obtains the location of device 200 from network-based location system 122.” Ans. 4-5. The Examiner further explains and finds “Zellner also disclose[s] that the proxy server replaces the source IP address with an IP address of a location-collecting entity.” Ans. 5. Although Appellant argues there is only one “mention of Zellner’s location system 122 anywhere in the Examiner’s Answer” (Request 6), we find a single citation is sufficient. Furthermore, we find Appellant is arguing the references separately. The Examiner cites not only to Zellner, but also to two additional references, Gruteser and Rayes, for teaching or at least suggesting “the IP address of the location-collecting entity as source IP address.” Non-Final Act. 3-6; Ans. 6-7. Appellant lastly argues: The Decision on Appeal here explicitly states that “the possible approaches to solving the problem are known and finite,” which is a new finding of fact. Notably, nowhere in the record is there any discussion or identification of what these “possible approaches” are. Perhaps Appeal 2020-005314 Application 15/501,717 5 more critically, there is no identification of even what “the problem” is. There is certainly no evidence on the record to suggest that replacing Zellner’s device identification with an IP address for a location-collecting entity solves any problem with Zellner’s system. Request 7. We are not persuaded by Appellant’s argument because we are not setting forth a new ground of rejection, but rather applying case law to the facts of the case. Decision 9. In our Decision, we have referenced the same citations as the Examiner and relied upon the same facts relied upon by the Examiner. Decision 2-13. We also disagree with Appellant’s contention in the Request that our claim analysis in the Decision rises to the level of a new ground of rejection, because claim interpretation is the first step in any meaningful analysis, consistent with our statutory responsibility as a Board to “review adverse decisions of examiners upon applications for patents pursuant to section 134(a).” 35 U.S.C. § 6(b)(1). Our review necessarily requires reading the claim limitations that are disputed by Appellant on the corresponding features found by the Examiner in the cited prior art. We then determine whether the Examiner’s claim interpretation is reasonable, in light of any limiting definitions found in the claims, or in the Specification, and consistent with any corresponding context provided by Appellant in the Specification. To require claim analysis by the Board to be designated a new ground of rejection would frustrate the purpose of the Administrative Procedure Act (APA), and any meaningful PTAB administrative review of the claim terms disputed by Appellant on appeal. Further, Appellant does not specifically Appeal 2020-005314 Application 15/501,717 6 explain in the Request how the Board’s claim analysis changed the thrust of the rejection based upon the prior art teachings cited by the Examiner. The Board reviews appealed rejections for reversible error based upon the arguments and evidence Appellant provides for each issue identified by Appellant. See 37 C.F.R. § 41.37(c)(1)(iv) (2013); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). [A]ll that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of [35 U.S.C.] § 132. Jung, 637 F.3d at 1363. The thrust of the Board’s rejection changes when “it finds facts not found by the examiner . . . and these facts are the principal evidence upon which the Board’s rejection was based. . . . Accordingly, fairness dictates that the applicant . . . should be afforded an opportunity to respond to the Board’s new rejection.” In re Leithem, 661 F.3d 1316, 1320 (Fed. Cir. 2011) citing Kumar, 418 F.3d at 1368. The thrust of the Board’s rejection changes when “it finds facts not found by the examiner . . . and these facts are the principal evidence upon which the Board’s rejection was based . . . Accordingly, fairness dictates that the applicant . . . should be afforded an opportunity to respond to the Board’s new rejection.” Leithem, 661 F.3d at 1320 citing Kumar, 418 F.3d at 1368. Here, we have not changed the thrust of the Examiner’s rejection, nor made new factual findings. Id. Appeal 2020-005314 Application 15/501,717 7 When an IP address is substituted with another address the result is predictable. Moreover, the Examiner does, in fact, state the problem of maintaining data privacy, and articulates a reasoning for combining the cited references: Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the invention to combine the teaching of Rayes with the teaching of Zellner and Grusteser by using the above features such as dummy data such fake address as IP address for network identification as taught by Rayes for the purpose of providing data privacy for network services ([0001]). Non-Final Act. 6. Appellant does not traverse the Examiner’s motivational findings in the Request. For at least the aforementioned reasons, we find unavailing Appellant’s arguments in the Request that our claim analysis in our Decision rises to the level of a new ground of rejection. Accordingly, on this record, and based upon a preponderance of the evidence, we are not persuaded of error regarding the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness for claims 17, 19, 28, 30, and 39 on appeal, as rejected under § 103 over the cited Zellner, Gruteser, and Rayes references. CONCLUSION We have considered all of the arguments timely raised by Appellant in the Request. For the aforementioned reasons, Appellant’s contentions have not persuaded us of error in our Decision affirming the rejection of claims 17, 19, 28, 30, and 39. Appeal 2020-005314 Application 15/501,717 8 DECISION SUMMARY Accordingly, we have denied Appellant’s Request to reconsider our Decision affirming the Examiner’s rejection of claims 17, 19, 28, 30, and 39 under 35 U.S.C. § 103(a), and we decline to modify our Decision, which is now final for purposes of judicial review. See 37 C.F.R. § 41.52(a)(1). Outcome of Decision on Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 17, 19, 28, 30, 39 103(a) Zellner, Gruteser, Rayes 17, 19, 28, 30, 39 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s) Affirmed Reversed 17-21, 28-32, 39 103(a) Zellner, Gruteser, Rayes 17, 19, 28, 30, 39 18, 20, 21, 29, 31, 32 TIME PERIOD FOR RESPONSE 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). See 37 C.F.R. § 41.50(f). DENIED