Ex Parte Cromer et al

Board of Patent Appeals and Interferences

Jan 13, 2012

11079329 (B.P.A.I. Jan. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DARYL CARVIS CROMER, PHILIP JOHN JAKES, HOWARD
JEFFREY LOCKER, and RANDALL SCOTT SPRINGFIELD
____________

Appeal 2009-012992
Application 11/079,329
Technology Center 2600
____________

Before MAHSHID D. SAADAT, DEBRA K. STEPHENS,
and KRISTEN L. DROESCH, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-4, 6-15, and 17. Claims 5 and 16 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to methods, systems, and computer
program products that allow a client device to recognize a Wireless
Broadcast Storm During Active Scan Association (WBSDAASA), and
initiate an alternate connection scheme with the access point to avoid the
access point live-lock caused by the WBSDAASA (see Spec. ¶¶ [0010] –
[0011]).
Exemplary independent claims 1 and 12 read as follows:
1. A method comprising:
monitoring for a Wireless Broadcast Storm During
Active Scan Association (WBSDAASA) at a client device; and
upon detecting the WBSDAASA at the client device,
using an alternate connection scheme to wirelessly connect the
client device to an access point of a wireless network.

12. A computer program product, residing on a
computer usable storage medium, comprising:
program code configured to monitor, when executed by a
client device, for a Wireless Broadcast Storm During Active
Scan Association (WBSDAASA); and
program code configured to, upon detecting the
WBSDAASA when executed by the client device, use an
alternate connection scheme to wirelessly connect the client
device to an access point of a wireless network.

Rejections
The Examiner relies on the following prior art in rejecting the claims:
Gandhi US 7,228,134 B2 Jun. 5, 2007
Zangi US 7,274,936 B2 Sep. 25, 2007

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Claims 12-15 and 17 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Claims 1, 3, 7, 9, 12, and 14 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Gandhi.
Claims 2, 8, and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gandhi in view of well-known prior art.
Claims 4, 10, and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gandhi in view of Zangi.
Claims 6, 11, and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gandhi.
Appellants’ Contentions
With respect to 35 U.S.C. § 101 rejection, Appellants contend that the
Examiner erred in rejecting claims 12-15 and 17 because independent claim
12 was amended to replace the term “computer usable medium” with
“computer usable storage medium,” which covers statutory subject matter
(Br. 4). Additionally, Appellants point out that, to avoid reading the recited
computer usable storage medium on a transmitted signal, the reference to
“communication media, such as computer and telephone networks including
Ethernet” was deleted from paragraph [0029] of Appellants’ Specification
(id.). Appellants conclude that claim 12, as amended to include a computer
usable storage medium, does not encompass a signal under transmission (Br.
4-5).
With respect to the 35 U.S.C. § 102 rejection of claims over Gandhi,
Appellants contend that Gandhi does not support a finding of anticipation
because the cited portions of the reference indicate that, instead of a client
device, a base station or an access point changes access parameters in
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response to an overload condition detected by the access point (Br. 5-6).
Appellants further contend that, even if the disclosed approach were to be
implemented in a subscriber station, the reference disclosure is not enabling
for the proposed arrangement (Br. 6) and the subscriber station would
change its own access parameters (Br. 6-7).
With respect to claims 2, 8, and 13, Appellants assert that: (1)
the well-known prior art does not teach or suggest the missing
features; and (2) modifying Gandhi in the manner proposed in the
rejection would change the principle of operation of the disclosed
serving base station (Br. 7).
Appellants argue the patentability of the remaining claims by
merely asserting that the proposed combination of references does not
teach or suggest all of the recited features of these claims (Br. 8).

ISSUES
1. Did the Examiner err in rejecting claims 12-15 and 17 under
35 U.S.C. § 101 because the claims are directed to statutory subject matter?
2. Did the Examiner err in rejecting claims 1, 3, 7, 9, 12, and 14 as
being anticipated by Gandhi because the reference does not teach monitoring
for a WBSDAASA at a client device and using an alternate connection
scheme, as recited in claim 1?
3. Did the Examiner err in rejecting claims 2, 8, and 13 under
35 U.S.C. § 103(a) because the combination of Gandhi with the well-known
prior art fails to teach or suggest all the recited features and would change
the principle of operation of Gandhi?

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ANALYSIS
Rejection under 35 U.S.C. § 101
We agree with the Examiner (Ans. 8) that the claimed “computer
usable storage medium,” when read in light of the Specification, includes
programs delivered to a data storage system by a variety of signal-bearing
media. In that regard, Appellants’ Specification states:
Programs defining functions on the present invention can be
delivered to a data storage system or a computer system via a
variety of signal-bearing media, which include, without
limitation, non-writable storage media (e.g., CD-ROM),
writable storage media (e.g., a floppy diskette, hard disk drive,
read/write CD ROM, optical media).

Spec. ¶ [0029] (emphasis added).
Thus, reading independent claim 12 in light of the Specification, the
recited “computer usable storage medium” that is not limited to non-
transitory embodiments encompasses both statutory subject matter (CD-
ROM, hard disk drive, etc.) and non-statutory subject matter (i.e., signal-
bearing transmission waves) which carry data received via different signal-
bearing media such as “transitory” or propagated signals. Signals are not
patentable subject matter under § 101. See In re Nuijten, 500 F.3d 1346,
1357 (Fed. Cir. 2007).
According to USPTO guidelines, such claims must be amended to
recite solely statutory subject matter:
A claim drawn to such a computer readable medium that covers
both transitory and non-transitory embodiments may be
amended to narrow the claim to cover only statutory
embodiments to avoid a rejection under 35 U.S.C. § 101 by
adding the limitation “non-transitory” to the claim.

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See David J. Kappos, Subject Matter Eligibility of Computer Readable
Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010); see also U.S. Patent
& Trademark Office, Interim Examination Instructions for Evaluating
Subject Matter Eligibility Under 35 U.S.C. § 101, at 2 (Aug. 2009),
available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf.
The invention as claimed is not limited to non-transitory
embodiments. Accordingly, we sustain the Examiner’s 35 U.S.C. § 101
rejection of claims 12-15 and 17 as being directed to non-statutory subject
matter.
Rejection under 35 U.S.C. § 102
We agree with the Examiner’s findings and conclusions (see Ans. 9-
14) and adopt them as our own. Additionally, we highlight and address
specific findings and arguments regarding claim 1 for emphasis as follows.
As stated by the Examiner (Ans. 9), the cited portions in columns 1, 3,
5, and 7 of Gandhi disclose using an alternate connection scheme by
selecting and changing additional or alternative access probe parameters
upon detection of an overload condition. We also agree with the Examiner
(Ans. 10) that Gandhi discloses implementing the recited functions in
different locations such as the wireless unit or the client device rather than
the base station or the access point (see Gandhi; col. 9, ll. 4-8).
With respect to Appellants’ contention that Gandhi does not provide
an enabling disclosure for Appellants’ claimed subject matter (Br. 7), we
concur with the Examiner’s response (see Ans. 11-12). We further find that
Appellants’ arguments do not include any supportive explanation or data to
specifically show that Gandhi is not enabling and one of ordinary skill
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artisan would have not recognized and understood how to implement the
described method and system in the wireless unit without undue
experimentation. We also observe that similar to Gandhi, Appellants’
Specification relies on the knowledge of ordinary skilled artisan to provide
the necessary details of implementing the claimed subject matter. For
example, Appellants’ Specification merely provides a general description of
how alternate scan options A, B, or C, as shown in Figure 3, may be selected
(see Spec. ¶ [0024-26]). The selection is further described as being initiated
by a software program or a Graphical User Interface (GUI) providing
manual selection options to a user, which may be part of a processor or a
dedicated logic (Spec. ¶ 0027).
Additionally, we do not find Appellants’ position that when detection
is performed at the subscriber station of Gandhi, the parameters related to
the subscriber station will be changed to be persuasive of any error in the
Examiner’s anticipation rejection. As explained by the Examiner (Ans. 14),
claim 1 only recites “using an alternate connection scheme” without
specifically requiring which one of the client device or the access point may
change their connection or access parameters.
Accordingly, we conclude that the relied-on portions of Gandhi
adequately disclose all the recited features of claim 1.
Rejections under 35 U.S.C. § 103
With respect to the rejection of claims 2, 8, and 13, we agree with the
Examiner’ findings and conclusions (Ans. 5-6, 15) that modifying Gandhi
with well-known prior art to passively listen at the client device for a beacon
from the access point would not change the operational principle of Gandhi.
As stated by the Examiner (Ans. 15), such modification would provide an
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added function to the method and system of Gandhi. Therefore, we find
Appellants’ conclusory statements (see Br. 7), that lack any specificity as to
why the proposed rejection would be improper, to be inadequate to
overcome the reasonable case of prima facie obviousness set forth by the
Examiner.
Regarding the remaining claims, we also find Appellants’ general
allegations of patentability to be unpersuasive of any error in the Examiner’s
rejections of claims 4, 6, 10, 11, 15, and 17.

CONCLUSIONS
1. The Examiner has not erred in rejecting claims 12-15 and 17
under 35 U.S.C. § 101 as being non-statutory.
2. The Examiner has not erred in rejecting claims 1, 3, 7, 9, 12,
and 14 under 35 U.S.C. § 102(e)
3. The Examiner has not erred in rejecting claims 2, 4, 6, 8, 10,
11, 13, 15, and 17 under 35 U.S.C. § 103(a)
4. Claims 1-4, 6-15, and 17 are not patentable.

DECISION
The Examiner’s decision rejecting claims 1-4, 6-15, and 17 is
affirmed.
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

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