Apple Inc.

Patent Trials and Appeals Board

May 10, 2021

2019006917 (P.T.A.B. May. 10, 2021)

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.
15/062,122 03/06/2016 Joonsuk KIM 5607.2320001(P26778US1) 8263
63975 7590 05/10/2021
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
DAYA, TEJIS A
ART UNIT PAPER NUMBER
2472
NOTIFICATION DATE DELIVERY MODE
05/10/2021 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):
Apple-eOA@sternekessler.com
e-office@sternekessler.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOONSUK KIM, CHIU NGOK E. WONG, and
SYED A. MUJTABA
Appeal 2019-006917
Application 15/062,122
Technology Center 2400
Before JOSEPH L. DIXON, JOHN A. JEFFERY, and
JOHNNY A. KUMAR, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–24. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2018). Appellant identifies the real party in interest as Apple Inc.
Appeal Br. 3.
Appeal 2019-006917
Application 15/062,122
2
CLAIMED SUBJECT MATTER
The claims are directed to an aggregated data frame structures. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. An electronic device, comprising:
a processor; and
an interface circuit, coupled to the processor, and
configured to communicate with another electronic device and
to:
combine a plurality of media access control (MAC)
headers corresponding to a plurality of media access control
service data units (MSDUs) into an aggregated MAC header,
wherein the aggregated MAC header comprises receiver
addresses, transmitter addresses, and length information
corresponding to the plurality of MSDUs;
insert the aggregated MAC header into a first
portion of a frame;
insert the plurality of MSDUs into a second portion
of the frame, wherein the plurality of MSDUs are inserted
without their corresponding MAC headers;
insert one or more tail bits between the aggregated
MAC header and the plurality of MSDUs in the frame; and
transmit the frame.
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Application 15/062,122
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kakani US 2006/0018268 A1 Jan. 26, 2006
Lim US 2008/0043731 A1 Feb. 21, 2008
Raissinia US 2008/0130538 A1 June 5, 2008
Wu US 2008/0279219 A1 Nov. 13, 2008
Kwon US 2009/0074010 A1 Mar. 19, 2009
Rajkotia US 2010/0246543 A1 Sept. 30, 2010
Agiwal US 2011/0002347 A1 Jan. 6, 2011
Zhang US 2011/0080873 A1 Apr. 7, 2011
Sammour US 2014/0133380 A1 May 15, 2014
Frederiks US 2015/0063330 A1 Mar. 5, 2015
Liu VHT Frame Padding Mar. 16, 2016
Lv US 9,509,403 B2 Nov. 29, 2016

REJECTIONS
Claims 1–24 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. The claims contain subject
matter which was not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventor or a
joint inventor, or for pre-AlA the inventor(s), at the time the application was
filed, had possession of the claimed invention. Final Act. 2.
Claims 1–24 stand rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor, or for pre-AIA the applicant
regards as the invention.2 Final Act. 3.

2 This rejection does not appear in the Examiner’s Answer. This rejection
was withdrawn by the Examiner as a result of the Interview on March 4,
2019 and the Advisory Action and is considered withdrawn.
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Application 15/062,122
4
Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kakani in view of Zhang and Rajkotia. Final Act. 4.
Claim 3 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kakani in view of Zhang, Rajkotia, and Kwon. Final Act. 6.
Claim 4 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kakani in view of Zhang, Rajkotia, and Lim. Final Act. 7.
Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kakani in view of Zhang, Lim and Rajkotia. Final Act. 7.
Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kakani in view of Zhang, Lim, Rajkotia, and Lv. Final Act. 8.
Claims 7, 8, and 10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kakani, Zhang, Lim, and Rajkotia. Final Act. 8.
Claim 9 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kakani, Zhang, Lim, Rajkotia, and Kwon. Final Act. 11.
Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kakani, Zhang, Lim, Rajkotia, and Lv. Final Act. 12.
Claim 12 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kakani, Zhang, Lim, Rajkotia and Liu. Final Act. 12.
Claims 13, 15, 16, 19, and 22 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kakani, Zhang, Rajkotia, and Raissinia. Final Act.
13.
Claims 14 and 20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kakani, Zhang, Rajkotia, Raissinia, and Sammour. Final
Act. 16.
Claims 17 and 23 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kakani, Zhang, Rajkotia, Raissinia, and Frederiks. Final
Act. 17.
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Claims 18 and 24 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kakani, Zhang, Rajkotia, Raissinia, and Wu. Final Act.
18.
Claim 21 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kakani, Zhang, Rajkotia, Raissinia, and Agiwal. Final Act. 19.

OPINION
35 U.S.C. § 112(a)
With respect to independent claims 1, 7, 13 and 19, Appellant does
not set forth separate arguments for patentability regarding 35 U.S.C.
§ 112(a). Appeal Br. 9. As a result, we select independent claim 1 as the
representative claim for the group. See 37 C.F.R. § 41.37(c)(1)(iv).
Therefore, claims 2–24 will stand or fall with representative independent
claim 1 with respect to 35 U.S.C. § 112(a). Arguments which Appellant
could have made but did not make in the Brief are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv).
The purpose of the written description requirement is to convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
applicant was in possession of the invention as now claimed. Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The possession test
alone, however, is not always sufficient to meet the written description
requirement. Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969
(Fed. Cir. 2002). Rather, “the written description requirement is satisfied by
the patentee’s disclosure of ‘such descriptive means as words, structures,
figures, diagrams, formulas, etc., that fully set forth the claimed invention.’”
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Application 15/062,122
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Id. (quoting Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997)).
We adopt Examiner’s findings that claim 1 contains subject matter
which was not described in the Specification in such a way as to reasonably
convey to one skilled in the relevant art that the inventor or a joint inventor
at the time the application was filed, had possession of the claimed
invention. Final Act. 2–3; Advisory Act. 3; Ans. 21.
The claim language at issue is “wherein the aggregated MAC header
comprises receiver addresses, transmitter addresses and length information.”
Final Act. 2. The Examiner finds Appellant’s Specification discloses a
single MAC transmitter address at paragraph 45 but not a plurality of MAC
transmitter addresses. Final Act. 2–3. The Examiner correspondingly finds
no part of the Specification that discloses an aggregated MAC header
comprising a plurality of transmitter addresses. Final Act. 2–3; Advisory
Act. 3; Ans. 21. Regarding Appellant’s Figure 5, the Examiner finds that
administration devices are not transmitter devices. Advisory Act. 3; Ans.
21.
The Appellant contends that paragraph 45 of the Specification “does
not limit an aggregated MAC header to only having one transmitter address,
as the Office alleges.” Appeal Br. 10. The Appellant further contends that
Figure 5 “illustrates an aggregated MAC header 502 that includes a plurality
of MAC headers – MAC Head 1, MAC Head 2, . . . , MAC Head N” where
“each MAC header in the plurality of MAC headers include at least a
transmitter address” and “the transmitter address is at least one of the
addresses AD1–AD4 of Figure 5.” Appeal Br. 10; Reply Br. 3. The
Appellant correspondingly contends that “the multiple MAC headers 1–N in
the aggregated header 502 support and disclose multiple transmitter
Appeal 2019-006917
Application 15/062,122
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addresses in the aggregated header 502.” Appeal Br. 11; Reply Br. 4. In
summary, the Appellant contends that since “the specification discloses that
the aggregated MAC header includes a plurality of MAC headers and each
MAC header includes a transmitter address, . . . the aggregated header
includes a plurality of transmitter addresses.” Appeal Br. 11; Reply Br. 4.
The Appellant’s contention that paragraph 45 of the Specification
“does not limit an aggregated MAC header to only having one transmitter
address, as the Office alleges” (Appeal Br. 10.) is not justified by the
language itself in paragraph 45, which contains only one transmitter address.
Spec. ¶ 45. As described, “the information passed between the data link and
physical layers can include, for example, MAC information (such as length
of a PSDU), a MAC address of a transmitter, a MAC address of one or more
receivers.” Spec. ¶ 45 (emphasis added). There is a transmitter and multiple
receivers. Spec. ¶ 45. The MAC address of a transmitter in paragraph 45
supports a single MAC transmitter address, not the “transmitter addresses”
in claim 1.
The Appellant’s contention that “the transmitter address is at least one
of the addresses AD1–AD4 of Figure 5” (Appeal Br. 10; Reply Br. 3.) is not
fully established by that Figure and related description. AD1–AD4 are
“administration devices,” not transmitter addresses. Spec. ¶ 58; Advisory
Act. 3; Ans. 21. The Appellant had opportunities to respond to Examiner’s
factual findings by showing how administration devices are transmitter
addresses as a matter of fact, but did not.
The Appellant’s contention that “the multiple MAC headers 1–N in
the aggregated header 502 support and disclose multiple transmitter
addresses in the aggregated header 502” (Appeal Br. 11; Reply Br. 4) is not
established by paragraph 45 and Figure 5. Paragraph 45 contains a single
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transmitter address, not transmitter addresses. Spec. ¶ 45. Figure 5 shows
administrative devices AD1–AD4, not transmitter addresses. Fig. 5.
The Appellant’s contention that since “the specification discloses that
the aggregated MAC header includes a plurality of MAC headers and each
MAC header includes a transmitter address, . . . the aggregated header
includes a plurality of transmitter addresses” (Appeal Br. 11; Reply Br. 4.)
does not provide support for the “transmitter addresses” in claim 1. Each
MAC header contains administrative devices AD1–AD4. Fig. 5. There is
disclosure of a MAC address of a transmitter. Spec. ¶ 45. The combination
of these two sections is MAC header administrative devices AD1–AD4 and
a MAC address of a transmitter. Taken together, these sections do not
contain the concept that each MAC header includes a plurality of transmitter
addresses. We agree with the Examiner that these section are not enough to
provide support for the aggregated MAC header comprising the transmitter
addresses in claim 1.

35 U.S.C. § 103 – Independent claims 1, 7, 13, and 19
With respect to independent claims 1, 7, 13 and 19, the Appellant
does not set forth separate arguments for patentability with respect to
35 U.S.C. § 103. Appeal Br. 9. As a result, we select independent claim 1
as the representative claim for the group. See 37 C.F.R. § 41.37(c)(1)(iv).
Therefore, claims 2–5, 7–10 and 12–24 will stand or fall with representative
independent claim 1 with respect to 35 U.S.C. § 103. Arguments which
Appellant could have made but did not make in the Brief are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv).
We review the appealed rejection for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
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thereon. 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)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). Upon review of the
evidence and each of the respective positions set forth in the record, we find
that the preponderance of evidence supports Appellant’s position in the
record. Accordingly, we reverse the Examiner’s rejection on appeal
essentially for the reasons set forth in the record by Appellant, with the
following emphasis.
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations and internal quotation marks omitted). “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations
and internal quotation marks omitted).
The Examiner finds that claim 1 is taught by Kakani in view of Zhang
and Rajkotia. Final Act. 4. The claim language at issue is “wherein the
aggregated MAC header comprises receiver addresses, transmitter addresses
and length information” (emphasis added). Appeal Br. 3. The Examiner
cites to Kakani Figures 2–3A, paragraphs 26, 30, and 39 coupled with an
inherency finding to teach the limitation “wherein the aggregated MAC
header comprises receiver addresses and transmitter addresses.” Final Act.
4–5, 20. The Examiner explains a) Kakani Figures 2–3A show aggregate
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frame header 310 has three receiving stations addresses, b) the diagonal lines
before item 312 in Kakani Figure 3A further show the aggregate header, c) it
is inherent that the Kakani transmitter or source address would need to be in
the aggregate frame to indicate who transmitted the frame and d) using IEEE
standard 802.11n, an aggregated MSDU contains transmitter address values
as set forth in paragraph 4. Ans. 21. Regarding point d), it is unclear if
Examiner is referring to background paragraph 4 in Kakani or Appellant’s
specification because paragraphs 4 in both recite IEEE 802.11. Kakani ¶ 4;
Spec. ¶ 4.
The Appellant contends that “the Office improperly relies on
inherency.” 3 Appeal Br. 15–17; Reply Br. 5–6. The Appellant contends
that claim 1 recites a transmitter address in the aggregate frame header, but
the inherency finding is only for a transmitter address in an aggregate frame.
Appeal Br. 15; Reply Br. 5. The Appellant contends that even if a Kakani
transmitter address is in the aggregate frame, this does not necessarily mean
that transmitter address is in the aggregate frame header, or that “plural
transmitter addresses” are in the aggregated MAC header. Appeal Br. 17;
Reply Br. 5.
We agree with the Appellant that the inherency finding does not
establish that Kakani’s aggregated MAC header comprises plural transmitter
addresses. Appeal Br. 17; Reply Br. 5. While the Examiner finds the
Kakani transmitter address inherently appears in an aggregate frame, the
Examiner does not show transmitter addresses in the aggregate frame
header. Appeal Br. 17; Reply Br. 5. There might only be one Kakani

3 While Appellant makes other arguments responsive to the 103 rejections,
these arguments need not be addressed at this time since the inherency issue
is determinative of this outcome.
Appeal 2019-006917
Application 15/062,122
11
transmitter and corresponding transmitter address in the aggregate frame
header. The Examiner’s burden of proving non-patentability is by a
preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed.
Cir. 1985) (“[P]reponderance of the evidence is the standard that must be
met by the PTO in making rejections.”). “A rejection based on section 103
clearly must rest on a factual basis.” In re Warner, 379 F.2d 1011, 1017
(CCPA 1967). “The Patent Office has the initial duty of supplying the
factual basis for its rejection. It may not . . . resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis.” Id.
We disagree with the Examiner that the mere mention of standard
IEEE 802.11n, without more, inherently requires Kakani transmitter
addresses in an aggregate frame header. The Examiner has not relied upon a
combination of IEEE standard 802.11n with Kakani, Zhang, and Rajkotia to
result in the claimed invention, but this is insufficient for a factual finding of
inherency by the Examiner to support the Examiner’s conclusion of
obviousness.
As a result, we find that the Examiner has not made adequate factual
findings to the express claim language to support the ultimate conclusion of
obviousness of independent claims 1, 7, 13, and 19 and dependent claims 2–
5, 8–10, 12, 14–18, and 20–24. Additionally, the Examiner has not
identified how any of the additional prior art references remedy the noted
deficiency.

35 U.S.C. § 103 – Dependent claims 6 and 11
With respect to the obviousness rejections of dependent claims 6 and
11, the Examiner additionally relies upon the Lim and Lv references, but the
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Examiner does not identify how the cited portions in these references
remedy the noted deficiency above. As a result, we cannot sustain the
Examiner’s obviousness rejections of claims 6 and 11.
CONCLUSION
The Examiner’s decision rejecting claims 1–24 under 35 U.S.C.
§ 112(a) is AFFIRMED.
The Examiner’s decision rejecting claims 1–24 under 35 U.S.C. § 103
is REVERSED.

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DECISION SUMMARY
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–24 112(a) Written Description 1–24
1, 2 103 Kakani, Zhang, Rajkotia 1, 2
3 103 Kakani, Zhang, Rajkotia, Kwon 3
4 103 Kakani, Zhang, Rajkotia, Lim 4
5 103 Kakani, Zhang, Lim, Rajkotia, 5
6 103 Kakani, Zhang, Lim, Rajkotia,
Lv
6
7, 8, 10 103 Kakani, Zhang, Lim, Rajkotia 7, 8, 10
9 103 Kakani, Zhang, Rajkotia, Lim,
Kwon
9
11 103 Kakani, Zhang, Lim, Rajkotia,
Lv
11
12 103 Kakani, Zhang, Lim, Rajkotia,
Liu
12
13, 15,
16, 19,
22
103 Kakani, Zhang, Rajkotia,
Raissinia
13, 15,
16, 19,
22
14, 20 103 Kakani, Zhang, Rajkotia,
Raissinia, Sammour
14, 20
17, 23 103 Kakani, Zhang, Rajkotia,
Raissinia, Frederiks
17, 23
18, 24 103 Kakani, Zhang, Rajkotia,
Raissinia, Wu
18, 24
21 103 Kakani, Zhang, Rajkotia,
Raissinia, Agiwal
21
Overall
Outcome
1–24

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
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AFFIRMED