Ex Parte Borges et al

Patent Trial and Appeal Board

Nov 27, 2018

13282275 (P.T.A.B. Nov. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/282,275 10/26/2011
81310 7590 11/29/2018
Meyertons, Hood, Kivlin, Kowert & G (Apple)
P.O. BOX 398
Austin, TX 78767-0398
FIRST NAMED INVENTOR
Daniel R. Borges
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.
7888-10601 3189
EXAMINER
HUQ,FARZANAB
ART UNIT PAPER NUMBER
2455
NOTIFICATION DATE DELIVERY MODE
11/29/2018 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):
patent_docketing@intprop.com
ptomhkkg@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL R. BORGES, ABUZAR AMINI,
and JIM WILCOX 1
Appeal2018-002467
Application 13/282,275
Technology Center 2400
Before BRADLEY W. BAUMEISTER, MICHAEL J. STRAUSS, and
JEREMY J. CURCURI, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Apple, Inc. See App.
Br. 2.
Appeal 2018-002467
Application 13/282,275
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1, 3, 5, 6, and 8-21. Claims 2, 4, and 7 are canceled. Final Act. 2.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection pursuant to 37 C.F.R.
§ 4I.50(b). 2
THE INVENTION
The claims are directed to data commands for personal wireless
network devices. Spec., Title. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A computer-implemented method for obtaining information
from a personal wireless network device, the method
compnsmg:
at a personal computing device operatively coupled to the
personal wireless network device by a serial
communications mechanism:
sending a request command to the personal wireless
network device via the serial communications
mechanism; and
receiving the information via the serial communications
mechanism in response to sending the request
command;
wherein the request command is one of:
a configuration network address request command,
wherein the information comprises a network address
2 We refer to the Specification, filed Dec. 12, 2012 ("Spec."); the Final
Office Action, mailed Aug. 24, 2016 ("Final Act."); Appeal Brief, filed July
6, 2017 ("App. Br."); and the Examiner's Answer, mailed Nov. 6,
2017("Ans."). The Reply Brief filed Jan. 5, 2018 is noted, but it is not cited
herein.
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Application 13/282,275
of a web server of the personal wireless network
device,
a billing network address request command, wherein the
information comprises a network address of an
Internet web site of a radio network carrier, or
a service type request command, wherein the information
comprises service type information pertaining to
current radio connectivity between the personal
wireless network device and a radio network.
REFERENCES
The following prior art is relied upon by the Examiner in rejecting the
claims on appeal:
Creemer
Souissi
US 7,570,942 B2
US 2015/0050918 Al
REJECTION
Aug.4,2009
Feb. 19,2015
The Examiner rejected claims 1, 3, 5, 6, and 8-21 under 35 U.S.C.
§ I03(a) as being unpatentable over Souissi and Creemer. Final Act. 3-10.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred in rejecting independent claims 1, 13,
and 18-21 under 35 U.S.C. § I03(a) as being unpatentable over Souissi and
Creemer. We agree with Appellants' arguments as to this rejection of the
claims.
The Examiner finds Souissi discloses all the limitations of claim 1
except that it does not explicitly disclose the entirety of a first of three
alternative request command limitations, i.e., that the information received
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Application 13/282,275
in response to a configuration network address request command includes a
network address of a web server of a personal wireless network device.
Final Act. 3--4. The Examiner relies on Creemer for disclosing details of the
information received responsive to the first alternative, i.e., the configuration
network address request command. Final Act. 4.
Appellants contend the rejection is deficient because it contains
insufficient analysis or reasoning explaining why the claims are rendered
obvious over the cited portions of the references. App. Br. 8. Appellants
argue the "rejection constitutes 'mere conclusory statements' without
'articulated reasoning' or 'some rational underpinning to support the legal
conclusion of obviousness"' and, therefore, fails to establish a primafacie
case of obviousness. App. Br. 9. Appellants further argue the prior art fails
to teach or suggest each of the request commands including the
configuration network address request command (App. Br. 9--10), billing
network address request command (App. Br. 9--10), and the service type
request command (App. Br. 11-13).
The Examiner responds, emphasizing the three types of request
commands are recited in the alternative (Ans. 10), suggesting the prior art
need disclose only one of the three to render the claims obvious under
35 U.S.C. § 103(a). The Examiner further describes the Creemer and
Souissi disclosures, but without mapping or otherwise clearly linking the
disclosures to the individual claim elements. Ans. 10-12.
We are persuaded the Examiner erred in rejecting the independent
claims. We agree with Appellants that the cited portions of the applied
references, on their face, do not disclose the request commands of claim 1.
Also, the Examiner provides inadequate explanation to compensate for the
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Application 13/282,275
references' apparent lack of disclosure. For example, the Examiner fails to
explain and we are unable to ascertain why Souissi's quality of service
parameter (QoS) is a request by a computing device. See App. Br. 11-12.
We are also unable to ascertain how Souissi teaches or suggests the
remaining types of request commands of claim 1. Thus, in order for us to
sustain the Examiner's rejection, we would need to resort to impermissible
speculation or unfounded assumptions or rationales to supply deficiencies in
the factual bases of the rejection before us. In re Warner, 379 F.2d 1011,
1017 (CCPA 1967). Accordingly, we do not sustain the obviousness
rejection of independent claim 1 or of independent claims 13 and 18-21,
which recite similar limitations. We likewise do not sustain the obviousness
rejection of claims 3, 5, 6, 8-12, and 14--17, which depend from claims 1
and 13.
We note Appellants raise additional contentions of error, but we do not
reach them as our resolution of the contention discussed above is dispositive
of the appealed rejection under 35 U.S.C. § 103(a).
NEW GROUNDS OF REJECTION
35 US.C. § 102(b) and 35 US.C. § 103(a)
Pursuant to our authority under 37 C.F.R. § 4I.50(b), we reject
independent claims 1, 13, and 18-21 under 35 U.S.C. § 102(b) as anticipated
by or, alternatively, under 35 U.S.C. § 103(a) as being obvious over Souissi.
The language of claim 1 is set forth below in italics. The claim language is
followed by the reasoning that supports the rejection.
A computer-implemented method for obtaining information
from a personal wireless network device, the method
comprising ....
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Souissi discloses enabling communications over a wide area network
and a local area network, wherein one or more computing devices ( the
claimed personal computing device) may communicate with (i.e., obtain
information from) a wireless router (the claimed personal wireless network
device) over the local area network. Souissi, Abstract.
[A]t a personal computing device operatively coupled to the
personal wireless network device by a serial communications
mechanism ....
Souissi discloses:
The computing devices interface with the wireless router over a
wireless Local Area Network (LAN) such as a ... wireless
USB network.
Souissi ,r 23.
[W]ireless router 304 can include a USB or other data connection
902 for interfacing with wireless router 304.
Souissi ,r 60.
Appellants disclose a prior art Universal Serial Bus (USB) is a serial
communications mechanism (Spec. ,r 3). Therefore, Souissi's disclosure of
interfacing a computing devices with a wireless router using a USB
connection teaches or suggests "a personal computing device operatively
coupled to a personal wireless network device by a serial communications
mechanism," as claimed.
[SJ ending a request command to the personal wireless network
device via the serial communications mechanism; and ....
Souissi discloses:
According to a second embodiment, a method comprises:
establishing a first data connection with a base station
associated a wide area network over the wide area network;
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establishing a second data connection with at least one
computing device over a local area network; discovering a
service being requested by or being run by the at least one
computing device and a service type of the service; and
determining, based on the service type, whether the service is
authorized by a carrier operating the wide area network.
Souissi ,r 11 ( emphasis added).
[W]ireless router 304 can detect what type of service the device
is requesting or trying to access in step 520. In step 522, wireless
router 304 can determine whether the device, the service, or both
are authorized by the associated carrier.
Souissi ,r 29 ( emphasis added).
Souissi's disclosure of discovering a service being requested by a
computing device (i.e., the claimed personal computing device) teaches or
suggests the prior step of requesting device sending a request command to a
wireless modem, i.e., the personal wireless network device, via a serial
communications mechanism (i.e., USB connection 902). In particular, one
skilled in the art would have understood Souissi' s disclosure of a wireless
router discovering a service is being requested indicates that a requesting
device first sent the request to the request-processing wireless router.
Alternatively, to the extent that it potentially may not be necessary or
inherent, Souissi's disclosure of the router discovering a service is being
requested at least suggests a requesting device first sending a request for a
service or type of service.
[RJ eceiving the information via the serial communications
mechanism in response to sending the request command ....
Souissi discloses:
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If the device, service, or both, are authorized, then in step 524,
the connection can be allowed by wireless router 304.
Otherwise, the connection can be denied in step 526.
Souissi ,r 29.
By allowing or denying the connection in response to whether the
service is authorized, Souissi teaches or suggests receiving information
(allowing or denying the connection) via USB connection 902 (the claimed
serial communications mechanism) in response to a computing device
requesting a type of service, i.e., the sending of the request command.
[W] herein the request command is one of ...
a service type request command, wherein the information
comprises service type information pertaining to current
radio connectivity between the personal wireless network
device and a radio network.
Souissi discloses:
[S]ervice discovery step of 520 ... allows for identifying the
type of service being run for instance Video vs. VOIP etc.
Souissi ,r 31.
In certain embodiments, the Quality of Service (QoS) made
available to a certain device 306 can be based on the device and
service filtering described above. For example, device based
QoS can be based on the above device filtering and service
filtering algorithms to determine what level of service to
provide to the device or service that is detected.
Souissi ,r 32.
Souissi's disclosure of services including Video and VOIP and QoS
representing levels of service available on a system teach or suggest service
type information pertaining to current radio connectivity between the
personal wireless network device and a radio network.
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Because Souissi teaches or suggests one of the three alternative
categories of request commands (i.e., the "service type" request command),
we need not consider whether the reference also teaches or suggests the
remaining two types, i.e., a network address request command and a billing
network address request command. Therefore, for the reasons discussed, we
find Souissi teaches or suggests the method of independent claim 1. And for
the same reasons, Souissi teaches or suggests the method of independent
claim 13 and devices of independent claims 20 and 21.
Independent claims 18 and 19 are each directed to a non-transitory
computer-readable medium storing instructions for implementing method
steps corresponding to claims 1 and 13. In connection with the medium of
these claims, Souissi discloses "modem and router instructions that can be
loaded into volatile memory in the wireless router." Souissi ,r 19 ( describing
Fig. 7); see also Souissi ,r,r 41--45 (describing memory 504 and "non-volatile
memory 506 ... used to store ... instructions"). Souissi's nonvolatile
memory teaches or suggest the non-transitory computer-readable medium of
independent claims 18 and 19, the remaining limitations being taught or
suggested by Souissi for the reasons discussed in connection with method
claim 1.
Remaining claims
Although we have rejected the independent claims under 37 C.F.R.
§ 41.50(b ), we have not reviewed the remaining claims to the extent
necessary to determine whether these claims are unpatentable under
35 U.S.C. §§ 102 or 103. We leave it to the Examiner to determine the
appropriateness of any further rejections based thereon.
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DECISION
We reverse the Examiner's decision to reject claims 1, 3, 5, 6, and 8-
21 under 35 U.S.C. § 103(a).
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b ), we
newlyrejectclaims 1, 13,and 18-21 under35U.S.C. § 102(b)asbeing
anticipated by or, alternatively, under 35 U.S.C. § 103(a) as being
unpatentable over Souissi.
Rule 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 4I.50(b) also provides:
When the Board enters such a non-final decision, Appellants, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground[s] 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[ s] of
rejection [are] 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[ s] of
rejection designated in [this] 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
misapprehended or overlooked in entering the new ground of
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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.
REVERSED
37 C.F.R. § 4I.50(b)
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