Ex Parte Clark et al

Patent Trial and Appeal Board

Aug 23, 2016

13903378 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/903,378 05/28/2013 Jeffrey Clark
63203 7590 08/25/2016
ROGITZ & AS SOCIA TES
750B STREET
SUITE 3120
SAN DIEGO, CA 92101
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.
RPS920100028-US-CNT 4859
EXAMINER
NGUYEN, TANH Q
ART UNIT PAPER NUMBER
2118
NOTIFICATION DATE DELIVERY MODE
08/25/2016 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):
Noelle@rogitz.com
eofficeaction@appcoll.com
J ohn@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY CLARK, MARK CHARLES DA VIS,
JUSTIN TYLER DUBS, STEVEN RICHARD PERRIN,
JENNIFER GREENWOOD ZA WACK.I, and DEKUI ZHANG
Appeal2015-002147
Application 13/903,378
Technology Center 2100
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JON M. JURGOV AN, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4, 5, 7, 33--43, and 46-48, 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 Lenovo Singapore
PTE. Ltd. (App. Br. 2).
2 Claims 2, 3, 6, 8-32, 44, and 45 were canceled by the Amendment after
Final Office Action filed on Sept. 12, 2014 under 37 C.F.R. § 1.312, which
was approved by the Examiner for entry in the record on Sept. 18, 2014.
Appeal2015-002147
Application 13/903,378
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to receiving messages in various power
states of wireless information handling devices (Spec. i-f 1 ). Claim 1 is
illustrative of the invention and reads as follows:
1. A method, comprising:
enabling at least a first wireless device in response to an
information handling device entering a reduced power state,
wherein the first wireless device is enabled such that it at least
wirelessly connects to a wireless network;
transitioning the information handling device from the
reduced power state to a higher power state in response to
receiving a first message received over the wireless network
through an established network connection that maintains a
presence on the wireless network;
enabling a second wireless device in response to receiving
the first message;
establishing a subsequent network connection using the
second wireless device;
receiving a second message over the subsequent network
connection; and
processmg the second message using the information
handling device.
The Examiner's Rejections
Claims 1, 4, 5, 33-35, and 37-39 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Bahl (US 7,539,508 B2; May 26, 2009) (see Ans.
3---6).
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Appeal2015-002147
Application 13/903,378
Claims 5, 7, 35, 36, 39, and 40 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bahl and Dahlen (US 2008/0162964 Al; July
3, 2008) (see Ans. 4---6).
Claims 41--43 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Bahl and Jones (US 2009/0172104 Al; July 2, 2009) (see Ans. 6-7).
Claims 46--48 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Bahl, Nicholas (US 2004/0148533 Al; July 29, 2004), and Dunstan
(US 2005/0044433 Al; Feb. 24, 2005) (see Ans. 7).
ANALYSIS
Independent Claims 1, 33, and 37
Appellants contend Bahl does not disclose "enabling at least a first
wireless device in response to an information handling device entering a
reduced power state," as recited in claim 1 (App. Br. 5-7). Appellants argue
Bahi "mereiy indicates that, once wireiess computing device 220 becomes
idle at some time not specified, the relied-upon low power transceiver 100
can be powered up," whereas claim 1 requires "enabling the first wireless
device in response to the information handling device entering a reduced
power state" (App. Br. 7). Appellants argue claims 33 and 37 on the same
basis as claim 1 (App. Br. 5-7).
We are not persuaded of Examiner error in the rejection of claim 1
over Bahl. Appellants' contention that Bahl does not specify the timing for
the wireless computing device to become idle and for the low power
transceiver to be powered up is not commensurate with the scope of the
claims, which do not require any specific timing for enabling the first
wireless device. The broadest reasonable interpretation, which is consistent
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Application 13/903,378
with Appellants' disclosure, of enabling a first wireless device "in response
to" an information handling device entering a reduced power state includes
enabling the first device "at some point after" the information handling
device enters the reduced power state (see In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997): claim language is given its broadest reasonable
interpretation during prosecution).
We also agree with the Examiner's finding that Bahl teaches no
concurrent power usage by an information handling device (i.e., wireless
computing device 220) and a first wireless device (i.e., low power
transceiver 100), therefore the first wireless device (100) is enabled (i.e.,
powered up) to connect to the wireless network at some point after the
information handling device (220) enters a low power state by becoming idle
(Ans. 8-14 (citing Bahl col. 2, 11. 25-29 and col. 7, 1. 58- col. 8, 1. 5)).
Thus, we sustain the Examiner's rejection of claims 1, 33, and 37 under
35 U.S.C. § 102(b) as anticipated by BahL
Dependent Claims 4, 34, and 38
In addition to arguments similar to those presented for claim 1,
Appellants contend Bahl's low power transceiver is not an external device
that is powered "in response to the information handling device entering the
reduced power state," as required in claim 4, and similarly in claims 34 and
38 (App. Br. 8-9). We are not persuaded of Examiner error, because as
discussed supra, we agree with the Examiner's finding that Bahl's low
power transistor is powered "in response to" the wireless computing device
entering a low power state. Further, we agree with the Examiner's finding
that Bahl discloses implementing the low power transistor as an external
device (Ans. 14--15 (citing Bahl col. 5, 11. 22-27)). Therefore, we sustain the
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Application 13/903,378
Examiner's rejection of claims 4, 34, and 38 under 35 U.S.C. § 102(b) as
anticipated by Bahl.
Dependent Claims 41-43
Appellants contend the combination of Bahl and Jones does not teach
receiving "first and second messages [that] are instant messages," as recited
in claims 41--43, because Jones does not discuss the power states of its
devices, such as powered off, powered, down, or unable to receive messages
(App. Br. 9-10). Appellants further argue the Examiner has not articulated
any reasoning to support the conclusion of obviousness, and has relied upon
improper hindsight reconstruction to reject the claims (App. Br. 10-11;
Reply Br. 1-2).
Appellants' contention regarding Jones is not persuasive of Examiner
error, because Appellants are essentially attacking the Jones reference
individually where the rejection is based on the combination of Bahl and
Jones (see In re Keller, 642 F.2d 413, 426 (CCPA 1981) ("[O]ne cannot
show non-obviousness by attacking references individually where ... the
rejections are based on combinations of references.")). The Examiner relied
on Jones to teach the concept of using instant messages to communicate
between computer devices (Ans. 19-20 (citing Jones i-f 6)), and properly
found that the combination of Bahl and Jones teaches enabling a wireless
device in response to receiving an instant message (Ans. 3--4 and 6-7).
Further, Appellants' contention that the combination of Bahl and
Jones is based on improper hindsight reasoning is not supported by sufficient
evidence that the Examiner's rejection is based on knowledge gleaned only
from Appellants' disclosure, or based on knowledge which was beyond the
level of ordinary skill in the art at the time (see In re McLaughlin, 443 F .2d
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Application 13/903,378
1392, 1395 (CCPA 1971)). The Examiner's rejection is based on the
findings from Bahl and Jones, as discussed supra. Additionally, the
Examiner has provided "some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness," using instant
messages as the communications in the system of Bahl would have allowed
the exchange of information in a direct, timely manner, without having to
wait out e-mail responses (Ans. 20-21 (citing Jones i-f 6); see KSR Int 'l v.
Teleflex, Inc., 550 U.S. 398, 417-18 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006))). Accordingly, we sustain the Examiner's
rejection of claims 41--43 under 35 U.S.C. § 103(a) as unpatentable over
Bahl and Jones.
Remaining Claims
No separate arguments are presented for the remaining dependent
claims. We therefore sustain their rejections for the reasons stated with
respect to independent claims 1, 3 3, and 3 7.
DECISION
We affirm the Examiner's decision to reject claims 1, 4, 5, 7, 33--43,
and 46--48.
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).
AFFIRMED
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