Ex Parte Anthony et al

Board of Patent Appeals and Interferences

Dec 15, 2006

09952073 (B.P.A.I. Dec. 15, 2006)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Bruce Oliver Anthony, Jr.; Louis Edward Behrens;
David Joseph Gimpl; and Tammy Lynn Van Hove
____________

Appeal No. 2006-1413
Application No. 09/952,073
____________

ON BRIEF
____________

Before HAIRSTON, JERRY SMITH, and BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

A patent examiner rejected claims 1, 3-7, and 9-12. The appellants appeal
therefrom under 35 U.S.C. § 134(a). We affirm.

I. BACKGROUND
The invention at issue on appeal concerns "provisioning." The appellants define
provisioning information "as a myriad of parameters required for an electronic device,
such as a computer, to make a successful, sustained, and reliable connection to a
computer network." (Spec. at 1.) Network service providers and computer
manufacturers commonly provide provisioning information to a user who must then
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Application No. 09/952,073

enter connection information (e.g., dial-in telephone numbers, area code, telephone
properties) to connect the computer to the network. (Id.)

As devices (e.g., cable modems, DSL modems, wireless modems) for connecting
to, and communicating with, a computer network (e.g., the Internet) become faster, the
procedure for configuring those devices becomes more complex. Because the
procedure requires inputting technical parameters such as permanent virtual circuit
types, modulation types, and encapsulation protocols, opine the appellants, it would be
imprudent to expect an average user to configure such devices. (Id. at 5.)

Consequently, the appellants' invention provides a provisioning key for
connecting a computer to a network such as the Internet. More specifically, a user
initially orders the computer, which includes a device for providing communication
between the computer and the network. During the ordering, the user is prompted to
answer questions. Based on the answers given by the user, provisioning information for
the computer's communication device is generated. The provisioning information is
stored in a portable medium that can be recognized by the communication device, and
the medium is delivered to the user. (Id. at 15.)

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Application No. 09/952,073

A further understanding of the invention can be achieved by reading the following
claim.
1. A method for providing a provisioning key for connecting an electronic
device to a computer network, said method comprising:

placing an order for an electronic device by an user, wherein said
electronic device includes a network communication device capable of
communicating with a computer network;

prompting said user to answer a plurality of questions during said
order placement;

generating corresponding provisioning information for said network
communication device within said electronic device based on answers
given by said user in response to said plurality of questions;

storing said provisioning information in a portable medium that can
be readily recognized by said electronic device; and

delivering said portable medium to said user.

Claims 1, 5-7, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as obvious
over U.S. Patent Application Pub. No. 2003/001434315 ("Jaalinoja ") and U.S. Patent
No. 6,385,729 ("DiGiorgio"). Claims 3, 4, 9, and 10 stand rejected under § 103(a) as
obvious over Jaalinoja; DiGiorgio; and U.S. Patent Application Pub. No. 2004/0024656
("Coleman").

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Application No. 09/952,073

II. OPINION
"When multiple claims subject to the same ground of rejection are argued as a
group by appellant, the Board may select a single claim from the group of claims that
are argued together to decide the appeal with respect to the group of claims as to the
ground of rejection on the basis of the selected claim alone. 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)(vii).

Here, the appellants argue claims 1, 5-7, 11, and 12, which are subject to the
same ground of rejection, as a group. (Appeal Br. at 4-6.) We select claim 1 as the
sole claim on which to decide the appeal of the group. "With this representation in
mind, rather than reiterate the positions of the examiner or the appellants in toto, we
focus on the two points of contention therebetween," Ex parte Dang, No. 2003-0506,
2004 WL 1665541, at *2 (Bd.Pat.App & Int. 2006):
• placing order for electronic device
• basing provisioning on answers.

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Application No. 09/952,073

A. PLACING ORDER FOR ELECTRONIC DEVICE
The examiner makes the following findings.
Jaalinoja only teaches that a user purchases token for mobile
communication means (i.e. electronic device) [Jaalinoja, see abstract].
However, claims 1 and 7 directly or indirectly recite purchasing or ordering
services for said electronic device by a user. Claims 1 and 7 do not recite
the Iimitation of purchasing or ordering said electronic device by a user
(emphasis added).

(Examiner's Answer at 7.) The appellants argue, "[P]aragraph 0021 of Jaalihoja only
teaches that 'a user can order tokens 10,' which is different from the claimed step of
placing an order for an electronic device." (Appeal Br. at 4.)

"In addressing the point of contention, the Board conducts a two-step analysis.
First, we construe the representative claim at issue to determine its scope. Second, we
determine whether the construed claim would have been obvious." Ex Parte Massingill,
No. 2003-0506, 2004 WL 1646421, at *2 (Bd.Pat.App & Int. 2004).

1. Claim Construction
"Analysis begins with a key legal question — what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). In answering the question, "the PTO gives claims their 'broadest reasonable
interpretation.'" In re Bigio, 381 F.3d 1320, 1324, 72 USPQ2d 1209, 1211 (Fed. Cir.
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Application No. 09/952,073

2004) (quoting In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1668 (Fed. Cir.
2000)). "Moreover, limitations are not to be read into the claims from the specification."
In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993) (citing
In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)).

Here, claim 1 recites in pertinent part the following limitations: "placing an order
for an electronic device. . . ." We agree with the examiner's aforementioned finding that
the limitations do not require purchasing or ordering the electronic device itself. To the
contrary, giving the representative claim its broadest, reasonable construction, the
limitations can merely require ordering a service for the electronic device.

2. Obviousness Determination
"Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious." Ex Parte Massingill, No. 2003-
0506, 2004 WL 1646421, at *3 (Bd.Pat.App & Int. 2004). The question of obviousness
is "based on underlying factual determinations including . . . what th[e] prior art teaches
explicitly and inherently. . . ." In re Zurko, 258 F.3d 1379, 1383, 59 USPQ2d 1693, 1696
(Fed. Cir. 2001) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459,
467 (1966); In re Dembiczak, 175 F.3d 994, 998, 50 USPQ2d 1614, 1616 (Fed. Cir.
1999); In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995)). "'A
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Application No. 09/952,073

prima facie case of obviousness is established when the teachings from the prior art
itself would appear to have suggested the claimed subject matter to a person of
ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed.
Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA
1976)).

Here, Jaalinoja's invention "relates to methods and systems for allowing users of
a cellular telecommunication system to obtain services, goods, or other benefits from a
third party." (¶ 0002.) Generally, "[t]he user of the mobile communication means 200
can use the invention by ordering 50 a certain token from the token issuing system,
which produces a token 10 and transmits 51 the token to the mobile communication
means." (¶ 0019.) "The user of the mobile communication means can then later use
the token by effecting 52 the transfer of the token 10 to the token verification system,
which receives and processes the token, and allows the user to obtain the benefit, right,
or product associated with the token." (Id.)

"According to a further aspect of the invention tokens are used for controlling
access to external network for wireless terminals connected to a local network."
(¶ 0145.) More specifically, "[i]f the user wishes to access the external network 760, the
user needs to present a token to the token verifying system 300, which as a response to
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Application No. 09/952,073

receiving and processing of a valid token from the user instructs the gateway 750 to
allow communication to and from the external network to and from the terminal of the
user." (Id.) "Such an embodiment allows easy wireless access to local information
services, which is of advantage both to the users of terminals and the party managing
the local network and the local information services." (Id.)

"In a further advantageous embodiment, the local area network can also have
services which require a token for access. In such a case, a server 740 providing such a
service requires an indication from the verifying system that a terminal having a certain
IP address is allowed to use the service, before allowing the terminal to use the
service." (¶ 0153.) "The user then needs to provide a token to the token verifying
system in order to use the particular service. Such an embodiment can be used for
example for provision of VIP services, customer benefit services, or payable services."
(Id.)

For its part, DiGiorgio discloses "[a] secure token device, such as a smart card or
an ibutton, [which] provides a user with a vehicle for accessing services that are
provided by an Internet Service Provider (ISP)." (Abs., ll. 1-3.) "In addition to providing
access to the Internet, ISPs may also provide additional services to their customers,
including chat rooms, news services, electronic mail messaging and bulletin board
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Application No. 09/952,073

services." (Col. 1, ll. 14-18.) "The use of the secure token device enables ISPs to tailor
their service offerings and billing options to individual users. The users may be offered
different service options." (Col. 4, ll. 42-44.)

Because Jaalinoja teaches ordering an electronic token that allows a wireless
terminals access to an external network or access to local services, or DiGiorgio
teaches ordering ISP-provided services for a user's "PDA, a personal computer (PC) or
a workstation," (col. 5, ll. 47-48), we find that teachings from the prior art itself would
have suggested ordering a service for an electronic device.

B. BASING PROVISIONING ON ANSWERS
The examiner finds that Jaalinoja teaches the following features:
• prompting said user to answer a plurality of questions [paragraph
0021i.e. WAP service is inherent];

• generating corresponding provisioning information for said network
communication device within said electronic device based on
answers given by said user in response to said plurality of
questions [paragraphs 0021-24 i.e. generating a token according to
the received token request or to the WAP service][.]

(Examiner's Answer at 4-5.) The appellants argue, "Paragraphs 0021-0024 of
Jaalinoja may provide the generation of a token according to a token request but
certainly not based on answers given by a user in response to a series of questions
during the order placement of the electronic device." (App. Br. at 5.)
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Application No. 09/952,073

1. Claim Construction
Claim 1 further recites in pertinent part the following limitations: "prompting said
user to answer a plurality of questions; generating corresponding provisioning
information for said network communication device within said electronic device based
on answers given by said user in response to said plurality of questions. . . ." Giving the
representative claim its broadest, reasonable construction, the limitations require basing
provisioning information on answers.

2. Obviousness Determination
As aforementioned, the appellants admit that Jaalinoja generates a token based
on a request. (App. Br. at 5.) Because such a token is used for the provision of VIP
services, customer benefit services, or payable services, as mentioned regarding the
first point of contention, we find that a user must answer questions regarding which of
such services he desires and that the provisioning information of the token must be
based on these answers. Similarly, because the information stored on DiGiorgio's
secure token device can be used for the provision of access to the Internet, chat rooms,
news services, electronic mail messaging, and bulletin board services, as also
mentioned regarding the first point of contention, we find that a user must answer
questions regarding which of such services he desires and that the provisioning
information stores on the token must be based on these answers.
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Application No. 09/952,073

Therefore, we affirm the rejection of claim 1 and of claims 5-7, 11, and 12, which fall
therewith.

Rather than arguing the rejection of claims 3, 4, 9, and 10 separately, the
appellants rely on their aforementioned arguments. (Appeal Br. at 7) Unpersuaded by
these arguments, we also affirm the rejections of these claims.

III. CONCLUSION
In summary, the rejections of claims 1, 3-7, and 9-12 under § 103(a) are
affirmed.

"Any arguments or authorities not included in the brief or a reply brief filed
pursuant to [37 C.F.R.] § 41.41 will be refused consideration by the Board, unless good
cause is shown." 37 C.F.R. § 41.37(c)(1)(vii). Accordingly, our affirmance is based only
on the arguments made in the briefs. Any arguments or authorities omitted therefrom
are neither before us nor at issue but are considered waived. Cf. In re Watts, 354 F.3d
1362, 1367, 69 USPQ2d 1453, 1457 (Fed. Cir. 2004) ("[I]t is important that the applicant
challenging a decision not be permitted to raise arguments on appeal that were not
presented to the Board.") No time for taking any action connected with this appeal may
be extended under 37 C.F.R. § 1.136(a)(1)(iv).
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Application No. 09/952,073

AFFIRMED

KENNETH W. HAIRSTON
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY
Administrative Patent Judge )
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Application No. 09/952,073

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