Ex Parte Cherry et al

Patent Trial and Appeal Board

Jan 4, 2013

10453980 (P.T.A.B. Jan. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DARREL D. CHERRY and JAMES CLOUGH
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Appeal 2010-008218
Application 10/453,980
Technology Center 2400
______________

Before ROBERT E. NAPPI, JUSTIN BUSCH and MIRIAM L. QUINN,
Administrative Patent Judges.

QUINN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-5, 7, 14-16, 19, and 26-33. We have jurisdiction under
35 U.S.C. § 6(b). Claims 6, 8-13, 17-18, and 20-25 have been cancelled,
and claim 34 has been withdrawn.
Appellant’s Invention
The invention relates to systems and methods for configuring a client
for remote use of a network-based service. (Spec. 2, ll. 5-6.)
Exemplary Claim
Independent claim 1 is representative of the invention and it reads as
follows:
1. A method for automatically configuring
a client for remote use of a network-based service,
comprising:
the client automatically calling a service
manager that manages a network-based service that
is supported on a local network to which the client is
connected, the service manager being a single
network service application that in addition to
managing the network-based service also provides
security information to the client;
the service manager automatically generating
security information for the client as a consequence
of the client's connection to the local network, the
security information being configured to
authenticate the client and authorize its use of the
network-based service;
the service manager automatically providing
to the client the generated security information;
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the service manager automatically registering
the client with the network-based service; and
the client automatically receiving and storing
the security information for later use of the network-
based service by the client from a remote location.
References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hibino US 7,389,414 B2 Jun. 17, 2008
Chen US 6,061,796 May 9, 2000
Viets US 6,357,010 B1 Mar. 12, 2002

Examiner’s Rejections
(a) The Examiner has rejected claims 1-3, 7, 14, 15, 19, 26, 27, and
29-31 under 35 U.S.C. § 102(e) as being anticipated by Hibino.
(b) The Examiner has rejected claims 5, 16, and 28 under U.S.C.
§ 103(a) as being unpatentable over Hibino in view of Chen.
(c) The Examiner has rejected claims 4, 32, and 33 under 35 U.S.C.
§ 103(a) as being unpatentable over Hibino in view of Viets.
ISSUES
Rejection under 35 U.S.C. § 102(e)
Appellants argue that the Examiner’s rejection of claims 1-3, 7, 14,
15, 19, 26, 27, and 29-31 under 35 U.S.C. § 102(e) is in error. Based on the
Appellants’ arguments concerning claim 1, we decide the appeal of
independent claims 1, 14, and 26, and dependent claims 2-3, 7, 15, 19, 27,
and 29-31. See 37 C.F.R. § 41.37(c)(1)(vii). Appellants argue the rejection
of dependent claim 7 for additional separate reasons, which we also consider
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in deciding the issues. Appellants’ arguments present us with the following
contentions:
a) Appellants contend that the Examiner erred in rejecting claim 1
because Hibino does not disclose a “single network service
application that in addition to managing the network-based service
also provides security information to the client.” (App. Br. 6-7.)
b) Appellants contend that the Examiner erred in rejecting claim 1
because Hibino does not disclose a “service manager automatically
generating security information for the client as a consequence of
the clients’ connection to the local network.” (App. Br. 7-8
(denoting in italics the disputed claim limitation).)
c) Appellants contend that the Examiner erred in rejecting claim 1
because Hibino does not disclose that the client can “use the
network-based service from a remote location.” (App. Br. 8.)
d) Appellants contend that the rejection of claim 7 is in error because
regardless of whether the Examiner points to a Bluetooth “security
protocol” or a “printer service” as the recited network-based
service, Hibino fails to disclose that these are provided by “the
same service.” (App. Br. 10.)
Rejection under 35 U.S.C. § 103(a)
Appellants argue that the rejection of claims 5, 16, and 28 under 35
U.S.C. § 103(a) as being unpatentable over Hibino in view of Chen is in
error. Appellants do not make any particularized argument concerning these
dependent claims. Instead, Appellants rest exclusively on the arguments
made with respect to the rejection of independent claims 1, 14, and 26. We
decide Appellants’ contentions on appeal concerning claims 1, 14, and 26 as
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stated above, and are presented with no separate contentions to decide for
dependent claims 5, 16, and 28. Concerning the rejection of claims 4, 32,
and 33 under 35 U.S.C. § 103(a) as being unpatentable over Hibino in view
of Viets, Appellants raise no issues on appeal, and, thus, we consider none.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellants’ arguments.
As to Appellants’ contention (a), we agree with Appellants.
Appellants argue that there is no evidence Hibino discloses a “single
network service application that in addition to managing the network-based
service also provides security information to the client.” (App. Br. 6-7;
Reply 3.) We do not find in either the final rejection or the Examiner’s
Answer a showing that Hibino, or any other prior art, discloses a “single
network application,” as recited in claims 1 and 14. Accordingly, we reverse
the rejection of independent claims 1 and 14, and their dependent claims.
We note that independent claim 26 does not recite a similar limitation
Concerning Appellants’ contention (b), we disagree with Appellants.
The claim language at issue in this contention is recited in independent
claims 1, 14, and 26. Since this contention applies to independent claim 26,
we analyze Applicants’ arguments as they pertain to this claim. First,
Appellants argue that the alleged security information in Hibino is “created
in response to the user selecting the BD address of the cell phone and
inputting his/her ID; not automatically as a consequence of connecting to the
BT network.” (App. Br. 8 (emphasis omitted).) The Examiner responds that
the exchange of the addresses to generate the security key in Hibino comes
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from the “connection” between the two elements on the network. (Ans. 9.)
We are not persuaded by Appellants’ argument that the Examiner has erred
in finding that Hibino discloses security information automatically generated
“as a consequence” of the two Bluetooth devices engaging in a Bluetooth
connection.
Continuing with contention (b), Appellants’ second argument
addresses the Examiner’s application of Hibino’s Bluetooth connection as
the recited “local network” being inconsistent with the Examiner’s finding
that the Piconet area (for Bluetooth communications) meets the limitation of
a “remote location,” as recited in claim 1. We note that claim 26 does not
recite the “remote location” limitation. Therefore, we decline to consider
this argument as it is not commensurate with scope of the claim.
We do not consider, and therefore do not address, the remaining
contentions (c) and (d) as they are not commensurate in scope with claim 26
and are moot with respect to claims 1 and 14 as issue (a) is dispositive.

CONCLUSION
We find the Examiner has not met the burden of showing anticipation
of claims 1 and 14 for failure to show the limitation of the “single network
service application,” as recited in those claims. We concur with the
conclusion reached by the Examiner in rejecting claims 26 and 27 under 35
U.S.C. § 102(e), and claim 28 as being unpatentable under 35 U.S.C. §
103(a). Appellants did not challenge the final rejection of claims 4, 32, and
33 under 35 U.S.C. § 103(a) as being unpatentable over Hibino in view of
Viets. However, since we reverse the Examiner’s rejection of claims 1, 3
and 14, from which claims 4 and 32 depend, the rejection to these claims is
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also reversed. As to claim 33, which depends from claim 26, we sustain that
rejection.

DECISION
We REVERSE the following rejections:
(a) claims 1-3, 7, 14, 15, 19, 29-31 under 35 U.S.C. § 102(e) as being
anticipated by Hibino;
(b) claims 5 and 16 under 35 U.S.C. § 103(a) as unpatentable over
Hibino and Chen; and
(c) claims 4 and 32 under 35 U.S.C. § 103(a) as unpatentable over
Hibino and Viets.
We AFFIRM the following rejections:
(a) claims 26-27 under 35 U.S.C. § 102(e) as being anticipated by
Hibino;
(b) claim 28 under 35 U.S.C. § 103(a) as unpatentable over Hibino and
Chen; and
(c) claim 33 under 35 U.S.C. § 103(a) as unpatentable over Hibino and
Viets.

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)(2011).

AFFIRMED-IN-PART

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