Ex Parte Cambridge

Board of Patent Appeals and Interferences

Mar 24, 2009

09916607 (B.P.A.I. Mar. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte RODNEY D. CAMBRIDGE
________________

Appeal 2008-2054
Application 09/916,607
Technology Center 2100
________________

Decided:1 March 24, 2009
________________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
JEAN R. HOMERE, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-2054
Application 09/916,607

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s twice
rejection of claims 1, 3, 5, 6, 10, 14 through 16, 19, 20, 24 through 26, 29,
31, and 33 through 38. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Invention
The disclosed invention relates to providing security to Bluetooth-
enabled devices and WiFi-enabled devices that employ a control unit and a
device. They operate within an associated communications range such that
they determine when the device is within the range of the communications
of the control unit. When it is determined that the device is within the range
of the communications of the control unit, the device is allowed to remain
functional and, on the other hand, when it is determined that the device is
not within the communications range of the control unit, the device is
rendered to be substantially non-functional. (Figures 1, 2, and 6; Spec. 31,
Abstract).

Representative Claim
1. A handheld security system, comprising:
a Bluetooth-enabled control unit having a range of communications;
and
a Bluetooth-enabled device, wherein the device is registered with the
control unit such that the device cooperates with the control unit using
Bluetooth communications to determine when the device is within the range
of communications of the control unit, wherein when it is determined that
Appeal 2008-2054
Application 09/916,607

3
the device is within the range of communications of the control unit, the
device is functional, and when it is determined that the device is not within
the range of communications of the control unit, the device is at least
partially non-functional;
wherein the device is configured to periodically send an identifying
signal to the control unit and the control unit is configured to send a return
signal to the device when the identifying signal is received by the control
unit;
wherein when the device is at least partially non-functional in a
situation where it is determined that the device is not within the range of
communications of the control unit, the device is configured to continue
periodically sending the identifying signal to the control unit;
wherein the control unit is configured to produce an alert when it is
determined that the device is not within the range of communications of the
control unit;
wherein the control unit includes a control unit display, the control
unit display being configured to display information associated with the
device when it is determined that the device is not within the range of
communications of the control unit;
wherein the device includes a device display, the device display being
configured to display information associated with the control unit when it is
determined that the device is not within range of communications of the
control unit;
wherein the device is configured to periodically send the identifying
signal utilizing a period of time which is configured based on movements of
an owner.
Appeal 2008-2054
Application 09/916,607

4
Prior Art and Examiner’s Rejections
The Examiner relies upon the following references as evidence of
unpatentability:
Lenz 2001/0053947 A1 Dec. 20, 2001
(filed Dec. 15, 2000)
Parker 2002/0078393 A1 Jun. 20, 2002
(filed Dec. 19, 2000)
Doub 6,594,762 B1 Jul. 15, 2003
(filed May 5, 1999)
Lunsford 6,614,350 B1 Sep. 2, 2003
(filed Nov. 8, 2000)
Logan 6,631,271 B1 Oct. 7, 2003
(filed Aug. 29, 2000)

All claims on appeal, claims 1, 3, 5, 6, 10, 14 through 16, 19, 20, 24
through 26, 29, 31, and 33 through 38, stand rejected under 35 U.S.C. § 103.
In a first stated rejection, as to claims 1, 3, 5, 6, 10, 15, 16, 19, 20, 25, 26,
and 34 through 38, the Examiner relies upon Doub in view of Lunsford,
further in view of Logan. In a second stated rejection, the Examiner relies
upon this initial combination of references, further in view of Parker as to
claims 14 and 24. In a third and last stated rejection of claims 29, 31, and
33, the Examiner relies upon the initial combination of references, further in
view of Lenz.

Claim Groupings
With respect to independent claims 1, 10, 16, 20, and 26, pages 15
through 19 of the principal Brief argue the features collectively with respect
to representative independent claim 1 as representative of them all.
Additionally, within this first stated rejection, pages 19 through 21 present
Appeal 2008-2054
Application 09/916,607

5
arguments as to dependent claim 6 separately. Page 21 of the Brief does not
separately argue the second stated rejection, but in turn relies upon the
patentability thereof based on the arguments presented as to the first stated
rejection. Lastly, as to the third stated rejection, the arguments presented at
pages 21 through 26 of the principal Brief repeat the same arguments as
those set forth with respect to the first stated rejection.
The Reply Brief improperly repeats all of the same arguments
presented in the principal Brief on appeal and presents brief arguments with
respect to the Examiner’s responsive arguments set forth in the Answer. As
in the principal Brief, the Reply Brief repeats the patentability of the second
stated rejection based upon the arguments presented as to the first stated
rejection, and the arguments in the Reply Brief also repeat the same
arguments set forth in the Brief with respect to the first stated rejection. The
principal Brief and Reply Brief do not mention, let alone argue, the
Examiner’s reliance upon Lenz in the third stated rejection and present no
arguments as to its combinability with Doub, Lunsford, and Logan.

ISSUE
In view of the findings made under the topic “Claim Groupings,” has
Appellant shown that the Examiner erred in finding that the combination of
Doub and Lunsford, further in view of Logan, teaches the subject matter of
representative independent claim 1 on appeal?

Appeal 2008-2054
Application 09/916,607

6
FINDINGS OF FACT
These findings of fact are presented merely to expand upon the actual
findings of fact from the respective references actually made by the
Examiner in the Answer:
1. As set forth at column 1 in the Background of the Invention of
Doub, his invention relates to portable devices to improve security of the
respective systems to prevent unauthorized users from accessing them.
Although Doub does not explicitly teach the use of so-called Bluetooth or
WiFi (claim 29) enabled communication dialogs, the use of such would have
been apparent to the artisan within the teachings of Lunsford and Logan,
which extensively discuss Bluetooth embodiments and suggest WiFi
embodiments (infra). Still, the Abstract of Doub teaches “[a]n electronic
device and a remote device cooperate to enable a display of an electronic
device when a distance between the electronic device and the remote device
is less than a transmit range and to disable the display when the distance is
greater than the transmit range.” See Figure 1. This loss of proximity of the
respective devices leads to the absence of a display or the disablement of the
display, which disablement of the display in turn is a form of display to the
user. The dialogs shown in Figures 3 and 5 relate to transmission and reply
signals. The absence of a responsive signal is monitored by the time-out
counter 225 in Figure 2, the operation of which is shown in Figure 3.
2. As pointed out by the Examiner, Lunsford has extensive
teachings of the use of Bluetooth operating environments throughout its
entire disclosure. Additionally, the initial teachings in the Background of
the Invention of Lunsford relating to Bluetooth also make reference to
corresponding teachings of WiFi at columns 1, lines 37 through 50, which
Appeal 2008-2054
Application 09/916,607

7
also make reference to the I.E.E.E. 802.11a and 802.11b protocols which are
identical to those relied upon by Appellant’s Specification at page 22, lines
20 through 25, for the WiFi embodiment in independent claim 29.
3. Lunsford’s security web is provided by Bluetooth protocols
such that each of plural devices within his security web may act separately in
time as both a device and a control unit to the extent recited in independent
claim 1 on appeal, as initially revealed in the Abstract of this patent. Upon
the determination of the so-called non-authorized loss of proximity of any
device on the web with respect to any other device on Lunsford’s security
web, any one of the devices may initiate a so-called event, as taught at
column 2, line 63 through column 3, line 16; column 6, line 65 through
column 7; and column 8, lines 38 through 49. Such a loss of proximity
yields alarm displays and the respective deactivation or non-functionality (as
claimed) of any device that respectively does not continue the dialog of
identification signals with respect to each other device in the security web at
regular time intervals. This dialog occurs with respect to at least two
devices as illustrated in Figures 1a, 1b, and plural devices as illustrated in
Figures 2 through 4. The actual dialogs are illustrated in Flow Chart Figures
6 through 9 in various embodiments with an exclusive embodiment in Figure
10 directed to Bluetooth protocols. These and the Examiner’s relied upon
locations in Lunsford relate to the time periods or periodicity of polling
operations between the respective devices. The absence of polling dialogs
between devices within these periods yields a loss of proximity and a
lockout of the respective devices with respect to the other devices.
Particular Bluetooth time-out teachings are noted at columns 11 and 12.
Appeal 2008-2054
Application 09/916,607

8
4. Logan’s teachings directly relate to Bluetooth embodiments as
do Lunsford’s teachings. As initially revealed in Logan’s Abstract, his
invention discloses a rules-based system for monitoring the movement and
relative location of a plurality of electronic devices and performing specified
actions, such as issuing notification messages and actuating alarms, when
the conditions specified in one or more of the defined rules are satisfied.
The Abstract also reveals the security aspect of the programmability of these
rules to prevent these devices from being misplaced or forgotten. The rules’
definitions are selectively chosen by the user, the discussion of which begins
at the middle of column 6, through the end of Logan’s patent. The showing
in Figure 3 and its corresponding discussion beginning at the middle of
column 7 illustrate that the user is permitted the optional selection of certain
conditions, including time constraints, such that when the conditions are
met, then a missing device or one out of range causes the display of a visual
alarm on any chosen device including another device. The discussion at
column 7 of Figure 3 characterizes these rules as positional rules or
positional conditions.
5. Lenz teaches the corresponding usability of Bluetooth and WiFi
technologies at page 2, paragraph [0018].

PRINCIPLES OF LAW
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (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 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
Appeal 2008-2054
Application 09/916,607

9
1989)). Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).

The Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” and
discussed circumstances in which a patent might be determined to be
obvious. Id. at 1739 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. The
operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 1740.
We must determine whether or not the differences between the subject
matter sought to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
Appeal 2008-2054
Application 09/916,607

10
See id. at 1734. Obviousness determination is not the result of a rigid
formula, and we will consider the facts of a case and the common sense of
those skilled in the art. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1161 (Fed. Cir. 2007). That is, the test for obviousness is rather what
the combined teachings of the references would have suggested to those of
ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981);
In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).

ANALYSIS
The reader is directed to understand the duplication of the arguments
with respect to the first and third rejections in both the principal Brief and
the Reply Brief as noted in our earlier discussion of “Claims Groupings” in
this Opinion. Moreover, the Brief and Reply Brief incorrectly reference the
last Office Action as the Final Rejection issued on August 18, 2006.
However, the Examiner issued a Non-Final Office Action, the last Office
Action in this application, on January 29, 2007.
The Examiner provides adequate reasoning among the teachings of
Lunsford to combine the teachings of Lunsford with those in Doub and of
those in Logan to combine Logan’s teachings with those in Lunsford and
Doub. There are believed to be consistent with the requirements of the
Supreme Court since the Court indicates, as reproduced earlier, that the
combination of familiar elements according to known methods would likely
render the invention obvious when it does no more than yield predictable
results utilizing the functional approach of combinability.
In this light, the Examiner has adequately addressed Appellant’s
arguments in the Brief and Reply Brief that the combination of Lunsford and
Appeal 2008-2054
Application 09/916,607

11
Doub would have nullified Doub to make it unsatisfactory for its intended
purpose. On the contrary, the artisan would have combined, according to the
above-noted case law, the teachings rather than the structural elements of the
respective references of Doub and Lunsford in such a manner as to enhance
the operability of Doub’s system with the expanding teachings from
Lunsford in the same environment of use as Doub. Rather than limiting the
teachings of Doub to a single control unit that is operable within a respective
device as argued by Appellant in the Brief and Reply Brief, the expanding
teachings of Lunsford would have permitted any given device to act as a
device as well as a respective control unit to the other devices within
Lunsford’s security net. With respect to the combinability of Doub and
Lunsford, Findings of Fact 1 through 3 clearly further support the
Examiner’s reasons of combinability within the guidance provided by the
above-noted case law, in addition to the findings already made by the
Examiner in the Answer with respect to the teachings of both of these
references.
These Findings of Fact also clearly address the allegation of the
absence of the respective control unit display and device displays recited at
the end of representative claim 1 on appeal, the arguments of which are
repeatedly made in the Brief and Reply Brief. Additionally, Finding of Fact
4 with respect to Logan also plainly indicates that it was well known in the
art for a user to choose any respective device to conditionally display a loss
of proximity to any other device or the same device by means of the
condition dialog setup box in Figure 3 of Logan.
Appellant’s last argument with respect to the first stated rejection
appears to relate to the limitation at the end of claim 1 reciting “wherein the
Appeal 2008-2054
Application 09/916,607

12
device is configured to periodically send the identifying signal utilizing a
period of time which is configured based on movements of an owner.” Each
of the three references to Doub, Lunsford, and Logan appear to be directly
concerned with identifying when a loss of proximity has occurred between
plural devices operating within a protocol environment that requires periodic
dialogs there between. Thus, each reference relates indirectly to the broadly
recited mobility of the user/owner of a given device. Moreover, we agree
with the Examiner’s observations in the paragraph bridging pages 12 and 13
of the Answer where the Examiner makes references to corresponding
teachings in Doub and Lunsford relating to the respective teachings of
periodically sending identification signals utilizing a given period of time.
These are buttressed by our Findings of Fact 1 through 4.
With respect to the arguments directed to dependent claim 6, this
claim recites that, within the security system of claim 1, “wherein the device
is exclusively registered with the control unit.” The Examiner correctly
points out at page 14 of the Answer that Appellant has already
argued/admitted that the teachings in Doub directly relate to devices that are
only registered with the single control unit by pointing to page 16 of the
principal Brief on appeal. As the Examiner has pointed out and we have
noted in Finding of Fact 3, Lunsford teaches embodiments where there is a
dialog exclusively between two devices as well as where the dialog occurs
between a plurality of devices greater than two, where each may function
separately in time as a device as well as a respective control unit to each
other. Therefore, even in the embodiments in Lunsford that utilize more
than two devices, at any point in time when one device is operating as a
Appeal 2008-2054
Application 09/916,607

13
device, it operates exclusively with respect to any other device that functions
as a control unit at that moment of the dialog.
The third stated rejection includes independent claim 29 which recites
features relating to WiFi protocols in contrast to all other independent claims
in the first stated rejection that relate to Bluetooth embodiments. Finding of
Fact 5 relates correspondingly and identically the teachings of Bluetooth and
WiFi as being interchangeable. See Finding of Fact 2 with respect to
corresponding teachings in Lunsford.

CONCLUSIONS OF LAW
Appellant has not shown that the Examiner erred in finding that the
combination of Doub and Lunsford, further in view of Logan, teaches the
subject matter of representative independent claim 1 on appeal.
Since the dependent claims within the first stated rejection are not
argued other than claim 6 which the Examiner and we have addressed, they
fall with representative independent claim 1 on appeal. Correspondingly,
the dependent claims within the second stated rejection are not argued to be
patentable and fall with our consideration of representative independent
claim 1 on appeal. Since the features of independent claim 29 within the
third stated rejection are argued identically to those presented with respect
the first stated rejection and representative independent claim 1 on appeal, it
as well as the dependent claims in this third stated rejection also fall.

Appeal 2008-2054
Application 09/916,607

14

DECISION
The Examiner’s three separately stated rejections under 35 U.S.C.
§ 103 of claims 1, 3, 5, 6, 10, 14 through 16, 19, 20, 24 through 26, 29, 31,
and 33 through 38 are affirmed. All claims on appeal are unpatentable.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

msc

ZILKA-KOTAB, PC
P.O. BOX 721120
SAN JOSE, CA 95172-1120