Ex Parte Brown et al

Patent Trial and Appeal Board

Apr 29, 2016

12352315 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/352,315 01112/2009
52169 7590 05/03/2016
Integral IP I BlackBerry
4400 Bathurst Street, Suite 10
TORONTO, ON M3H 3R8
CANADA
FIRST NAMED INVENTOR
Michael K. Brown
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.
RIM016-22US 1577
EXAMINER
NGUYEN, HAI V
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
USPTO@INTEGRALIP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL K. BROWN, SCOTT TOTZKE,
HERB LITTLE, NEIL ADAMS, and MICHAEL S. BROWN
Appeal2014-004416
Application 12/352,315
Technology Center 2600
Before JEAN R. HOMERE, ELENI MANTIS MERCADER, and
JAMES W. DEJMEK, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-004416
Application 12/352,315
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 3,
7, 11, 24, 25, 31, and 32. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claimed invention is directed to determining a target transmit
power of a wireless transmission based, at least in part, on confidentiality of
data carried by the wireless transmission. Abstract.
Claim 3, reproduced below, is illustrative of the claimed subject
matter:
3. A method in a first wireless device, the method
compnsmg:
determining a target transmit power of a wireless
transmission, wherein one or more frames to be carried by said
wireless transmission are addressed to a second wireless device
and include voice data of a telephone call, said target transmit
power determined based, at least in part, on an identity of a
participant in said telephone call who is not using said first
wireless device; and
transmitting said wireless transmission to said second
wireless device.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Cooper
Kurisko et al.
US 2002/0123325 Al
US 2003/0050009 Al
2
Sept. 5, 2002
Mar. 13, 2003
Appeal2014-004416
Application 12/352,315
REJECTIONS
The Examiner made the following rejections:
Claims 3, 7, and 24 stand rejected under 35 U.S.C § 112, first
paragraph as failing to comply with written description.
Claims 3, 7, 11, 24, 25, 31, and 32 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over Kurisko in view of Cooper.
ISSUES
The issues are whether the Examiner erred in finding:
1. Appellants' Specification does not provide an adequate description
for the recited limitation of "said target transmit power determined based, at
least in part, on an identity of a participant in said telephone call who is not
using said first wireless device" as recited in claims 3, 7, and 24; and
2. the combination of Kurisko and Cooper teaches or suggests:
determining[/ determines] a target transmit power of a wireless
transmission, wherein one or more frames to be carried by said
wireless transmission are addressed to a second wireless device
and include voice data of a telephone call, said target transmit
power determined based, at least in part, on an identity of a
participant in said telephone call who is not using said first
wireless device
as recited in claims 3, 7, and 24.
ANALYSIS
35 U.S.C § 112,first paragraph
Appellants argue the Specification provides adequate description for
the recitation of "said target transmit power determined based, at least in
3
Appeal2014-004416
Application 12/352,315
part, on an identity of a participant in said telephone call who is not using
said first wireless device" as recited in claims 3, 7, and 24 (App. Br. 8-11).
Appellants, in particular, cite to paragraphs 19, 23, and 24 for support:
"At 202, one or more of devices 102, 104 and 106 may
determine different target transmit powers for different
wireless transmission having different security requirements
... "(paragraph [0019]);
"The security requirements of a particular transmission may
include the confidentiality of data carried by the particular
transmission, with lower target transmit powers for
transmissions carrying data of higher confidentiality than
for transmissions carrying data of lower confidentiality"
(paragraph [0023 ]); and
"For example, telephone calls with members of the user's
family may be considered less confidential than telephone
calls with the user's co-workers. Accordingly, the target
transmission power for transmissions between mobile device
102 and headset 106 may be lower for some telephone calls
than others" (paragraph [0024]).
App. Br. 8.
We agree with Appellants that the paragraphs cited above
provide sufficient written description support for the target transmit
power being determined based, at least in part, on an identity of a
participant in the telephone call who is not using the first wireless
device such as family members versus co-workers (see Spec., paras.
19, 23, 24).
Accordingly, we reverse the Examiner's rejection of claims 3, 7, and
24 under 35 U.S.C § 112, first paragraph.
4
Appeal2014-004416
Application 12/352,315
teach:
35 U.S.C § 103(a)
Appellants argue the combination of Kurisko and Cooper does not
determining/determines a target transmit power of a wireless
transmission, wherein one or more frames to be carried by said
wireless transmission are addressed to a second wireless
device and include voice data of a telephone call, said target
transmit power determined based, at least in part, on an
identity of a participant in said telephone call who is not
using said first wireless device
as recited in claims 3, 7, and 24 (App. Br. 12).
Appellants argue Kurisko is silent regarding any telephone call, let
alone, teaching "an identity of a participant in said telephone call who is not
using said first wireless device" as recited in claims 3, 7, and 24 (App. Br.
12). Appellants further argue Cooper is silent regarding an identity of any
participant in the telephone call (App. Br. 12-14).
We are not persuaded by Appellants' argument. "The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference." In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Instead, the relevant issue is "what
the combined teachings of the references would have suggested to those of
ordinary skill in the art." Id. "Combining the teachings of references does
not involve an ability to combine their specific structures." In re Nievelt,
482 F.2d 965, 968 (CCPA 1973). The Examiner relies (Ans. 12) on
Kurisko' s teachings of Figure 2, and respective text, for lowering the power
of transmission between two wireless devices for security concerns to avoid
a Bluetooth sniffer (see Fig. 2; paras. 57-58). The Examiner then relies on
Cooper for the teaching of having mobile terminals communicating with
5
Appeal2014-004416
Application 12/352,315
voice data in telephone calls communicate in a secure mode to prevent
audible eavesdropping of the conversation (Ans. 12; para. 20). Thus, one
skilled in the art at the time of the invention would have been motivated to
lower the power of transmission as a security measure as taught by Kurisko
in the telephone mobile devices to avoid eavesdropping as taught by Cooper
in conversations where secure communications are needed, such as if the
conversations regarding confidential work. The motivation stems from an
artisan being presumed to possess both skill and common sense. See KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary
skill is also a person of ordinary creativity, not an automaton.").
Thus, we agree with the Examiner that the combination of Kurisko
and Cooper teaches the disputed limitation of claims 3, 7, and 24.
Accordingly, we affirm the Examiner's rejection of these claims and the
remaining pending claims of 11, 25, 31, and 32, which were not argued
separately.
CONCLUSION
1. The Examiner erred in finding Appellants' Specification does not
provide an adequate description for the recited limitation of "said target
transmit power determined based, at least in part, on an identity of a
participant in said telephone call who is not using said first wireless device"
as recited in claims 3, 7, and 24; and
2. The Examiner did not err in finding the combination of Kurisko
and Cooper teaches the limitation of:
determining[/ determines] a target transmit power of a wireless
transmission, wherein one or more frames to be carried by said
wireless transmission are addressed to a second wireless device
6
Appeal2014-004416
Application 12/352,315
and include voice data of a telephone call, said target transmit
power determined based, at least in part, on an identity of a
participant in said telephone call who is not using said first
wireless device
as recited in claims 3, 7, and 24.
DECISION
For the above reasons, the Examiner's obviousness rejection of claims
3, 7, 11, 24, 25, 31, and 32 is affirmed. However, the written description of
claims 3, 7, and 24 is reversed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See
37 C.F.R. § 41.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2013).
AFFIRMED
7