Ex Parte Ayatsuka et al

Patent Trial and Appeal Board

Feb 8, 2016

10250341 (P.T.A.B. Feb. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/250,341 10/12/2004
60803 7590
Paratus Law Group, PLLC
620 Herndon Parkway
Suite 320
Herndon, VA 20170
02/08/2016
FIRST NAMED INVENTOR
Yuji Ayatsuka
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.
1946-0275 7234
EXAMINER
MIRZA, ADNAN M
ART UNIT PAPER NUMBER
2443
MAILDATE DELIVERY MODE
02/08/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUJI A Y ATSUKA and NOBUYUKI MATSUSHITA
Appeal2014-004394
Application 10/250,341
Technology Center 2400
Before JOHN A. EV ANS, KAMRAN JIV ANI, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 3, 20-22, and 24-37, which are all the claims pending
in this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Sony Corporation.
App. Br. 3.
2 Claims 2, 4-19, and 23 have been canceled. See App. Br. 5.
Appeal2014-004394
Application 10/250,341
STATEMENT OF THE CASE
Introduction
Appellants' present patent application relates to establishing a
connection between two devices over a first wireless communication
channel. See Abstract. The connection is established by one of the two
devices after identification information is provided to the device over a
second, different wireless communication channel. See id. Claim 1 is
illustrative of the claimed invention and reads as follows:
1. A physical server unit for managing communication
for at least two client devices, comprising:
a storage unit configured to store identification
information which includes information for establishing a
connection between the at least two client devices which
are not connected over a first wireless communication
channel;
a providing unit configured to provide the
identification information stored by the storage unit over a
second wireless communication channel, different from
the first wireless communication channel, to one of the at
least two devices so as to establish the connection between
the at least two devices over the first wireless
communication channel.
The Examiner's Rejections
Claims 1, 3, 26, and 30 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement. See Ans.
3.
Claims 1, 3, 20-22, and 24-37 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Eyal (US 6,735,628 B2; May 11, 2004) and
Mikkonen (US 6,822,971 Bl; Nov. 23, 2004). See Ans. 3.
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Application 10/250,341
ANALYSIS
The Enablement Rejection
Appellants argue the Examiner erred in rejecting claims 1, 3, 26, and
30 under 35 U.S.C. § 112, first paragraph, for failing to comply with the
enablement requirement for the limitation "establishing the connection
between the first device and the second device over the first wireless
communication channel based on the connection information transmitted
over the second wireless communication channel." App. Br. 13-15. In
particular, Appellants argue the Examiner failed to support the rejection by
explaining why the Specification is not enabling, applying the factors set
forth in Jn re Wands, 858 F.2d 731, 737 (Fed. Cir. 1998). App. Br. 15.
Appellants further argue the Specification provides sufficient support
for the challenged limitation. App. Br. 13-14. More particularly,
Appellants argue the Specification supports the "second wireless
communication channel" limitation by disclosing a network connecting the
management server and the VCR. Reply Br. 4 (citing Spec. Fig. 1 (the solid
line labeled network 2 ), 31: 14-16). Appellants argue the Specification
supports the "first wireless communication channel" by disclosing a wireless
communication channel between the VCR and the television receiver that is
established according to address information transmitted over the network.
Reply Br. 4-5 (citing Spec. Fig. 1 (the dotted line), 32:9-14). The Examiner
responds that the cited portions do not provide sufficient support for
establishing the first connection based on information transmitted over the
second connection. Ans. 4.
We find the Specification discloses a management server 1
transmitting to the VCR 3 an address of the television receiver 5 over
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Application 10/250,341
network 2. Spec. Fig. 1, 31:2-32:14. This address is used to establish a
second, different connection between VCR 3 and television receiver 5. Id.
Accordingly, we agree with Appellants that the Examiner erred because the
cited portions provide sufficient support for the disputed claim limitation.
The Obviousness Rejection
Appellants argue the Examiner erred in rejecting claims 1, 3, 20-22,
and 24-37 as unpatentable over Eyal and Mikkonen. App. Br. 16-20. In
particular, Appellants argue Mikkonen fails to cure the deficiencies of Eyal
because Mikkonen does not disclose providing identification information
"over a second wireless communication channel, different from the first
wireless communication channel, to one of the at least two devices so as to
establish the connection between the at least two devices over the first
wireless communication channel." App. Br. 18-20.
The Examiner finds the claimed first and second devices are the
foreign agent and home agent, respectively. Ans. 5-6 (citing Mikkonen 4:7-
19, 33--41). Appellants argue Mikkonen does not disclose using a second
communication channel to send to the first or second device the identifier
that is used for establishing a first communication channel. App. Br. 18.
According to Appellants, the foreign agent sends registration information to
the home agent over the Internet backbone and all communications between
the data terminal and the correspondent entity occur over the Internet
backbone, as well. Reply Br. 7.
As the Examiner found, Mikkonen discloses a foreign agent and a
home agent (the claimed "at least two devices"), each in different
subnetworks. Ans. 5 (citing Mikkonen 4:7-19). The user attaches a storage
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Application 10/250,341
element to a data terminal, which provides the stored identification
information to the foreign agent ("one of the at least two devices") over the
subnetwork 112 (the claimed "second communication channel"). See
Mikkonen Fig. 4, 4: 11-18. The foreign agent uses the provided
identification information to establish a connection to the home agent over
the Internet backbone (the claimed "first wireless communication channel").
See Mikkonen Fig. 4, 4: 16-24. Because the data terminal provides the
foreign agent the identification information over the subnetwork instead of
the Internet backbone, we are not persuaded that the Examiner erred in
finding Mikkonen teaches "a second wireless communication channel,
different from the first wireless communication channel."
CONCLUSIONS
On the record before us and in view of the analysis above, we find the
Examiner erred in rejecting claims 1, 3, 26, and 30 for failing to enable the
limitation "establishing the connection between the first device and the
second device over the first wireless communication channel based on the
connection information transmitted over the second wireless communication
channel." Accordingly, we do not sustain the Examiner's rejection of claims
1, 3, 26, and 30 under 35 U.S.C. § 112.
On the record before us and in view of the analysis above, we are not
persuaded by Appellants' contentions that the Examiner erred in rejecting
claim 1. Therefore, we sustain the rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over Eyal and Mikkonen. Appellants argue the
patentability of claims 3, 26, 30, and 34 based on the same reasons presented
for claim 1. See App. Br. 20. We, therefore, sustain the rejection of claims
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Appeal2014-004394
Application 10/250,341
3, 26, 30, and 34 under 35 U.S.C. § 103(a) as unpatentable over Eyal and
Mikkonen for the same reasons as set forth above. We also sustain the
rejection of dependent claims 20-22, 24, 25, 27-29, 31-33, and 35-37,
which were not argued separately. See App. Br. 20.
DECISION
The decision of the Examiner to reject claims 1, 3, 26, and 30 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement is REVERSED.
The decision of the Examiner to reject claims 1, 3, 20-22, and 24-37
under 35 U.S.C. § 103(a) as unpatentable over Eyal and Mikkonen is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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