Ex Parte Aho et al

Patent Trial and Appeal Board

Mar 19, 2018

13453528 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/453,528 04/23/2012
10949 7590 03/21/2018
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
EeroAho
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.
042933/416016 5253
EXAMINER
SOLTANZADEH, MARYAM
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EERO AHO, ARTO PALIN, and
JUKKA REUNAMAKI
Appeal2017-010207
Application 13/453,528 1
Technology Center 2600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA II, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-16, 18, and 20-22, which are all of the claims pending in the
application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION UNDER 37 C.F.R. § 41.50(b).
1 Appellants identify Nokia Technologies Oy as the real party in interest.
See App. Br. 2.
2 Claims 17 and 19 have been cancelled.
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Application 13/453,528
STATEMENT OF THE CASE
According to Appellants, the claims are directed to a method and
apparatus for causing an operation to be performed based on information
received from a radio frequency identification (RFID) circuit. Spec. i-f 42,
Abstract. 3 Claim 1, reproduced below, is exemplary of the claimed subject
matter:
1. A method comprising:
causing power to be provided to a radio frequency
identification (RFID) communications circuit carried by a
mobile terminal following switchable activation of the RFID
communications circuit in response to an output of a sensor
satisfying a predetermined threshold, wherein the sensor is
configured to sense one or more properties of an environment of
the mobile terminal;
receiving information comprising one or more measured
properties from the RFID communications circuit; and
causing an operation to be performed with a processor
based upon the information received from the RFID
communications circuit by causing the RFID communications
circuit to be programmed prior to the operation of the RFID
communications circuit, wherein the operation to be performed
was at least one of inactive or disabled prior to rece1vmg
information from the RFID communications circuit.
3 This Decision refers to: (1) Appellants' Specification filed April 23, 2012
(Spec.); (2) the Final Office Action (Final Act.) mailed September 13, 2016;
(3) the Appeal Brief (App. Br.) filed January 23, 2017; (4) the Examiner's
Answer (Ans.) mailed June 7, 2017; and (5) the Reply Brief (Reply Br.)
filed July 31, 2017.
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REFERENCES AND REJECTIONS
Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Moran (US 2008/0135615 Al; published June 12, 2008),
Gold (US 8,655,345 B2; issued Feb. 18, 2014), Kondo (US 2011/0219302
Al; published Sept. 8, 2011), and Menzel (US 8,710,962 B2; issued Apr. 29,
2014). Final Act. 2-9.
Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Moran, Gold, Kondo, Menzel, and Linjama (US
2005/0164633 Al; published July 28, 2005). Id. at 9-10.
Claims 13-16, 18, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Moran, Kondo, Sklovsky (US 2009/0247077 Al;
published Oct. 1, 2009), and Menzel. Id. at 10-14.
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellants. Arguments not made are waived. See
MPEP § 1205.02; 37 C.F.R. §§ 41.37(c)(l)(iv), 41.39(a)(l).
ANALYSIS
Claims 1. 2. 4. 6. 7. 9. 11-16. 18. and 20-22
Appellants contend the Examiner erred in finding Moran teaches
causing an operation to be performed with a processor based
upon the information received from the RFID communications
circuit by causing the RFID communications circuit to be
programmed prior to the operation of the RFID communications
circuit, wherein the operation to be performed was at least one of
inactive or disabled prior to receiving information from the RFID
communications circuit,
as recited in claim 1 and similarly recited in claims 6 and 13. App. Br. 14--
15; Reply Br. 1-2. Specifically, Appellants argue Moran "receiv[es] and
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stor[ es] information on a memory through the use of an RFID circuit," but
"[t]here is no functionality or operation that was inactive or disabled prior to
receiving information from the RFID circuit." App. Br. 14; Reply Br. 2.
We are not persuaded. The Examiner finds, and we agree, Moran
teaches reading and verifying a unique identifier that is stored in an RFID
circuit (Ans. 18 (citing Moran i-f 64, claim 12, Abstract); Final Act. 2; see
Moran i-fi-159---60), i.e., "receiving information from the RFID
communications circuit." The Examiner also finds (Ans. 18; Final Act. 2),
and we agree, Moran teaches "writ[ing] ... permanent data to [an] RFID
circuit" (Moran claim 12), i.e., "an operation." Further, the Examiner finds
(Ans. 18; Final Act. 2), and we agree, Moran's permanent data writing
operation is "inactive or disabled prior to receiving information from the
RFID communications circuit" because Moran's RFID circuit "then write[s]
the permanent data to the RFID circuit when the unique identifier is
verified" (Moran claim 12 (emphasis added)). That is, Moran's permanent
data writing operation is activated by the reading and verification of the
unique identifier, and, accordingly, the permanent data writing operation is
inactive until the unique identifier is read and verified. Appellants'
argument (Reply Br. 2; App. Br. 14) does not address the Examiner's
finding that Moran's permanent data writing operation is inactive prior to the
unique identifier being read and verified (Ans. 18 ("an operation of writing
the data to the RFID that was not active is activated upon receiving the
unique identifier and its verification")).
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Accordingly, we are not persuaded the Examiner erred in finding
Moran teaches or suggests the disputed limitations as recited in independent
claims 1, 6, and 13. 4 Dependent claims 2, 5 4, 7, 9, 11, 12, 14--16, 18, and
20-22 are not separately argued. See App. Br. 11-16. Therefore, we sustain
the rejection of claims 1, 2, 4, 7, 9, 11, and 12 under 35 U.S.C. § 103(a) as
being unpatentable over Moran, Gold, Kondo, and Menzel, the rejection of
claims 21 and 22 under 35 U.S.C. § 103(a) as being unpatentable over
4 Independent claims 1 and 6 recite "causing an operation to be
performed ... by causing the RFID communications circuit to be
programmed prior to the operation of the RFID communications circuit." It
is not clear if a) "the operation of the RFID communications circuit"
introduces a new operation or if b) "the operation of the RFID
communications circuit" refers to "an operation to be performed with a
processor." Furthermore, the ambiguity in the "operation" potentially results
in ambiguity as to what claimed action is "causing" which other claimed
actions. In claim 13, "the operation" is introduced before "an operation,"
causing ambiguity. In the event of further prosecution, the Examiner may
wish to review claims 1, 6, and 13 for compliance with the definiteness
requirement of 35 U.S.C. § 112, second paragraph. Halliburton Energy
Servs., Inc. v. M-1 LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) ("the patent
drafter is in the best position to resolve the ambiguity in the patent claims,
and it is highly desirable that patent examiners demand that applicants do so
in appropriate circumstances so that the patent can be amended during
prosecution rather than attempting to resolve the ambiguity in litigation").
5 Claim 2, depending from claim 1, recites "wherein causing an operation to
be performed by causing the RFID communications circuit to be
programmed." It is not clear if the wherein clause is meant to further define
the previously recited operations in claim 1 or if the clause is meant to
introduce a new operation. In particular, it is not clear if "causing the RFID
communications circuit to be programmed," recited in claim 2, refers to the
"causing the RFID communications circuit to be programmed," recited in
claim 1. Claim 7, depending from claim 6, recites similar limitations as
claim 2. In the event of further prosecution, the Examiner may wish to
review claims 2 and 7 for compliance with the definiteness requirement of
35 U.S.C. § 112, second paragraph.
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Moran, Gold, Kondo, Menzel, and Linjama, and the rejection of claims 13-
16, 18, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Moran,
Kondo, Sklovsky, and Menzel.
Claims 3 and 8
Before addressing the Examiner's rejection under 35 U.S.C. § 103(a),
we first consider whether dependent claims 3 and 8 are sufficiently definite
under 35 U.S.C. § 112, second paragraph. We determine they are not, and,
accordingly, we enter a NEW GROUND OF REJECTION for claims 3 and
8 under 37 C.F.R. § 41.50(b).
The second paragraph of 35 U.S.C. § 112 provides that "[t]he
specification shall conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the applicant regards as
his invention." The Federal Circuit has stated that "[i]t makes good sense,
for definiteness and clarity . . . for the USPTO initially to reject claims
based on a well-founded prima facie case of lack of clarity (in its several
forms) based on the perspective of one of ordinary skill in the art in view of
the entire written description and developing prosecution history." In re
Packard, 751F.3d1307, 1312 (Fed. Cir. 2014). We determine the language
of claims 3 and 8 fails to satisfy the definiteness requirement of 35 U.S.C.
§ 112, second paragraph.
Claim 3, directly depending from claim 2 and ultimately depending
from claim 1, recites, in part, "wherein causing the RFID communications
circuit to be programmed comprises opening a browser." Claims 1 and 2
both recite "causing the RFID communications circuit to be programmed,"
and, as discussed supra, the programming recited in claim 2 can be
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reasonably interpreted as different programming than the programming
recited in claim 1. Because claim 3 depends from both claim 2 and claim 1,
it is not clear to which of the recited programming limitations claim 3 refers,
i.e., the programming "prior to the operation of the RFID communications
circuit" as recited in claim 1 or the programming "for subsequent operation"
which is caused by the operation to be performed, as recited in claim 2. As
such, there are at least two reasonable interpretations: (1) the programming
described in claim 3 further limits the programming recited in claim 1 and
(2) the programming described in claim 3 further limits the programming
recited in claim 2. Claim 8, directly depending from claim 7 and ultimately
depending from claim 6, recites similarly unclear limitations. For the
reasons discussed above, we determine claims 3 and 8 are indefinite.
Accordingly, we enter a new ground of rejection under 35 U.S.C. § 112,
second paragraph as to claims 3 and 8.
Because we determine the claims are indefinite, we further determine
that analyzing the Examiner's rejection of claims 3 and 8 under 35 U.S.C. §
103(a) would require us to make unreasonably speculative assumptions
concerning the meaning of the claim language. See In re Steele, 305 F.2d
859, 862-863 (CCPA 1962). We decline to do so and, therefore, proforma
reverse the Examiner's rejection of claims 3 and 8 under 35 U.S.C. § 103(a).
Claims 5 and 10
Appellants contend the Examiner erred in finding Moran, Gold, and
Menzel teach
causing an operation to be performed comprises at least one of
causing a display to be presented upon a user interface of the
mobile terminal, opening a web browser utilizing an address
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included within the information received from the RFID
communications circuit, opening an application referenced by
the information received from the RFID communications circuit
or executing program instructions included in the information
received from the RFID communications circuit,
as recited in claim 5 and similarly recited in claim 10. App. Br. 16; Reply
Br. 2-3. Specifically, Appellants argue the disclosure of Moran cited by the
Examiner "is silent with respect to all of the aforementioned features"
recited in the claims. App. Br. 16. Appellants further argue "the cited
disclosure of Gold has no relation to any of the features" recited in the
claims. Id. Additionally, Appellants argue the "Answer is silent with regard
to addressing any [of] the specific details set forth by" claim 5. Reply Br. 3.
We are persuaded. The Examiner finds the Abstract and claim 12 of
Moran teach the disputed limitation. Final Act. 5. The Examiner further
finds Gold teaches the disputed limitation at column 8, lines 41-53. Final
Act. 5. The Examiner further finds Menzel teaches
a cellular phone including a processor, a web browser application,
and an RFID reader update application, where direct update
capability may be facilitated by a cellular telephone interface
integrated into the RFID reader that is to be updated. A
transferred RFID reader update may include an initial set of
instructions to cause an RFID reader to write subsequent
information to a defined location in the memory of the RFID
reader. The data or instructions are designed to modify the
operation of the RFID reader. In addition, the authorizing party
may use a web browser to access the server and authorize the
grant of access.
Ans. 21 (citing Menzel, 1:30-40, 4:61-5:14). 6
6 Although not cited by the Examiner, we note Menzel does teach a "web
browser application 118 of cellular telephone 200 may be used to request an
RFID reader update from server 250." Menzel 6:61---63. Thus, the
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The Examiner relies on the Abstract and claim 12 of Moran to teach a
permanent data writing operation (Ans. 18; Final Act. 2), but we do not
readily find, nor does the Examiner explain, where Moran teaches operations
which cause a display to be presented or operations using information
received by the RFID to open a web browser, open an application, or
execute program instructions included in the information received from the
RFID circuit. Further, the Examiner's cited portions of Gold teach an RFID
associated with a mobile device (Final Act. 5 (citing Gold, 8:41-53)), but we
do not readily find, nor does the Examiner explain, where Gold teaches the
operations recited by the claims.
Additionally, although Menzel teaches an RFID reader update
application and that a web browser Application can update an RFID reader,
the Examiner has not provided analysis sufficiently detailing which of the
cited features of Menzel teach which of the claimed operations. See Ans. 21
(citing Menzel, 1:30-40, 4:61-5:14). Nor does the Examiner conclude that
it would have been obvious, in light of Menzel' s teachings, to perform any
of the operations recited in the claims. See id. Moreover, the Examiner does
not explain with particularity why an ordinary skilled artisan would perform
any of the claimed operations. See id.
As such, we are constrained by the record to reverse the Examiner's
obviousness rejection of dependent claims 5 and 10 over Moran, Gold,
Kondo, and Menzel.
Examiner's reliance on Menzel 4:61-5:14 for teaching "a web browser," as
recited in claim 5, may be a typographical error. See Ans. 21. In the event
of further prosecution, the Examiner may wish to review all citations to
Menzel for accuracy.
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DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1, 2, 4, 6, 7, 9, 11-16, 18, and 20-22.
For the reasons above, we reverse the Examiner's decision rejecting
claims 3, 5, 8, and 10.
In a new ground of rejection, we reject claims 3 and 8 under 35 U.S.C.
§ 112, second paragraph for indefiniteness.
TIME TO RESPOND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
When the Board enters such a non-final decision, the 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 prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
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misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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.
§ 41.50(±).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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