Ex Parte Dorogusker et alDownload PDFPatent Trial and Appeal BoardJun 7, 201611805492 (P.T.A.B. Jun. 7, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111805,492 0512212007 Jesse Lee Dorogusker 65656 7590 06/09/2016 KILPATRICK TOWNSEND & STOCKTONLLP/Apple Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 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. 90911-P4431US1-849119 3441 EXAMINER DANG,KHANH ART UNIT PAPER NUMBER 2185 NOTIFICATION DATE DELIVERY MODE 06/09/2016 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): ipefiling@kilpatricktownsend.com j lhice@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JESSE LEE DOROGUSKER, ANTHONY F ADELL, and ROBERT EDWARD BORCHERS Appeal2014-008919 Application 11/805,492 Technology Center 2100 Before ST. JOHN COURTENAY III, KRISTEN L. DROESCH, and JOYCE CRAIG, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-8, 19-35, 41--44, 46-56, and 73-91, which are all the claims pending in this application. 1 Claims 18, 45, and 57-72 are cancelled. Claims 9-17 and 36--40 are withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We refer to the Final Office Action, mailed September 16, 2013. Appeal2014-008919 Application 11/805,492 STATEivIENT OF THE CASE Invention The invention on appeal relates to "systems and methods for power efficient detection of wireless networks by electronic devices." (Spec. i-f 3). According to a described embodiment: "The first electronic device may require more power for normal communication than that for beacon sniffing. Circuitry required for the higher-power normal communication may be turned off when not being used for normal communication." (Spec. i-f 19). Claim 1 is illustrative, and is reproduced below: 1. A method of operating a first device to wirelessly interoperate with a second device, the second device transmitting a beacon signal according to a beacon protocol, the method compnsmg: sniffing for the beacon signal with the first device using beacon reception circuitry according to the beacon protocol, the beacon signal including an identification portion with connection information for connecting to the second device and a configuration portion with configuration information; [L 1] processing the configuration portion of the sniffed beacon signal with the first device to determine the last time the second device was updated with new information; based on the determined last time of the processed beacon signal, enabling the first device to communicate with the second device according to a normal protocol; and [L2] receiving, at the first device, a first primary data signal according to the normal protocol from the second device, the first primary data signal including the new information. (Bracketed matter and emphasis added with respect to contested limitations LI and L2).00K 2 Appeal2014-008919 Application 11/805,492 Rejections A. Claims 1-8, 19-35, 41--44, 46-56, and 73-91 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. B. Claims 1-8, 19-35, 41--44, 46-56, and 73-91 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. C. Claims 1-8, 20, 22-35, 41--43, 47, 49-56, 73-79, and 83-89 are rejected under 35 U.S.C. § 103(a), as unpatentable over Roddie (US 2005/0221858 Al; published October 6, 2005). D. Claims 21, 44, 48, and 80-82 are rejected under 35 U.S.C. § 103(a), as unpatentable over Roddie and Redi (US 7,330,736 B2; issued February 12, 2008). E. Claims 19 and 46 are rejected under 35 U.S.C. § 103(a), as unpatentable over of Roddie and Vanluijt et al. (US 2002/0132614 Al; published September 19, 2002) ("Vanluijt"). F. Claims 90-91 are rejected under 35 U.S.C. § 103(a), as unpatentable over Roddie and Rittle et al. (US 2006/0094456 Al; published May 4, 2006) ("Rittle"). ANALYSIS Rejection A under§ 112, first paragraph (written description) of claims 1--8, 19-35, 41--44, 46--56, and 73-91 Appellants contend the Specification provides support for "the first primary data signal including the new information," as recited in independent claims 1 and 28. (App. Br. 7-8). This new limitation was added by an amendment (pp. 2, 7), that was filed on Aug. 6, 2013. For example, amended claim 1 (id.), is depicted in pertinent part below: 3 Appeal2014-008919 Application 11/805,492 .»igiul indw:!in~ !hem~•" infnrmarion. Amendment, filed Aug. 6, 2013, Claim 1 depicted above (in pertinent part) In the after-final amendment (pp. 2, 7), filed Nov. 5, 2013, Appellants attempted to "expedite prosecution" by deleting the contested language ("the first primary data signal including the new information"), as recited in both independent claims 1 and 28 (p. 14), as depicted below: i:h:::vicc acecording to the !mm1l:l! pn:1tocoL !:h~ fin~ r-rwti:1ry d~1!~ !>~gr;a! iiwlutling i:lw !U'>'<' lH~'}HWiJi{H~, After-Final Amendment, filed Nov. 5 2013, (NOT ENTERED by Examiner), Claim 1 depicted above (in pertinent part) However, entry was denied by the Examiner in the Advisory Action, mailed Nov. 18, 2013. Regarding written description Rejection A, we note Appellants only advance arguments for claim 1. 2 (App. Br. 7-8). Regarding claim 1, Appellants particularly contend, inter alia: The configuration information in the beacon signal indicates a last time the second device was updated with new information. It is the time information that is included in the configuration, and not the new information itself. It is this fundamental misunderstanding that appears to be causing this improper rejection. 2 Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(l)(iv). 4 Appeal2014-008919 Application 11/805,492 ~ .,. A r"", 1. , , , .,. , , .,. • ro , • -t Yaragrapn 4LLJ J states mat me new mrormauon may De valuable to the device. And, paragraph 4[6] describes a user's preference for when the primary communication circuitry is to be enabled. An example of a user's preference is when the second device has been updated within a specified amount of time. If the new information was in the beacon signal, there would be no need to enable the primary communication circuitry. And, paragraph 4[2] states "configuration information portion 394 may indicate that the [second] device that transmitted the beacon has recently been updated with new features or information that may be valuable to the [first] device." The indication is for the first device to enable the primary communication circuitry to obtain the new information that may be valuable. If the configuration information included the new information, then paragraph 4[2] would just state that. The indication is that new information may be valuable. For the first device to know for sure, the first device must enable the primary communication circuitry to actually obtain the new information. Thus, the specification does describe that the new information would be sent via a primary data signal, and not in a beacon signal, as is asserted by the Examiner. The Examiner disagrees, and finds the Specification does not provide written description support for "the first primary data signal including the new information," as recited in claim 1 (and claim 28): [I]t is clear that paragraph [0042] of Appellants' specification (corresponding to paragraph [0043] Patent Publication U.S. 2007/0270119) does not support the limitation, "first primary data signal including new information." There is absolutely nothing in paragraph [0042] of Appellants' specification that even merely provides support for the limitation, "first primary data signal including new information." The "new information" 3 Appellants' paragraph numbers have been corrected to correspond to the Specification, and not to the paragraphs in Patent Publication US 2007/0270119 (as referenced by Appellants, App. Br. 7-8). 5 Appeal2014-008919 Application 11/805,492 ~ ciam1 1, lines 9 ana l j) refers to the "new reatures or information" (paragraph [0042] of the specification). The "first primary data signal" (claim 1) corresponds to "primary communication data signals" disclosed in paragraphs [0043] and [0044] of Appellants' specification. The "first primary data signal (claim 1) also corresponds to "primary communication data signals 297" consistently disclosed throughout Appellants' specification. (Ans. 6). Our reviewing court guides the written description "must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed." Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) (citation and quotations omitted). The test is whether the disclosure "conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Id. "[A]ctual 'possession' or reduction to practice outside of the specification is not enough. Rather, ... it is the specification itself that must demonstrate possession." Id. at 1352; see also PowerOasis, Inc. v. T-Afobile USA, Inc., 522 F.3d 1299, 1306--07 (Fed. Cir. 2008) (explaining that§ 112, i-f 1 "requires that the written description actually or inherently disclose the claim element"). "[I]t is not a question of whether one skilled in the art might be able to construct the patentee's device from the teachings of the disclosure . . . Rather, it is a question whether the application necessarily discloses that particular device . . . A description which renders obvious the invention for which an earlier filing date is sought is not sufficient." Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)) (emphasis added). 6 Appeal2014-008919 Application 11/805,492 This reasoning is applicable here. The originally-filed Specification (i-f 42) refers to "new features or information" in discussing the configuration information portion 394 of the beacon signal (Fig. 3), which "may indicate that the device transmitting the beacon signal may have been recently updated with new features or information." However, we find no actual or inherent support in the cited portions of the Specification (i-fi-f 42, 46), for "new information" being necessarily included in "the first primary data signal" (claim 1 ), sufficient to demonstrate possession under § 112, first paragraph. 4 See PowerOasis, Inc., 522 F.3d at 1306--07. As guided by our reviewing court: "[a] description which renders obvious the invention for which an earlier filing date is sought is not sufficient." Lockwood, 107 F.3d at 1572. Therefore, we find a preponderance of the evidence supports the Examiner's finding the Specification fails to comply with the written description requirement of 35 U.S.C. § 112, first paragraph, for all claims rejected under Rejection A.5 4 See App. Br. 7-8, citing to paragraphs 43 and 47 of Patent Publication US 2007 /0270119, corresponding to paragraphs 42 and 46 in Appellants' Specification. 5 See 35 U.S.C. § 132(a), which provides that "[n]o amendment shall introduce new matter into the disclosure of the invention." See also MPEP § 2163.06: "Relationship of Written Description Requirement to New Matter." 7 Appeal2014-008919 Application 11/805,492 Rejection B under§ 112, second paragraph of claims 1-8, 19-35, 41--44, 46--56, and 73-91, Appellants challenge the Examiner's legal conclusion that the claim language, "the first primary data signal including the new information" is indefinite. (Claims 1 and 28) (App. Br. 7-8). Appellants' particularly contend, inter alia: Under the Examiner's interpretation, the new information is always obtained via the beacon signal, and thus there is never a need for the primary data signals. This is in contradiction with the above paragraphs that indicate the primary data signals are enabled when an update has occurred in a timeframe satisfying the user's preference. Thus, the Examiner's understanding of the description is incorrect, and has caused errors in the 35 U.S.C. § 112 rejection .... (App. Br. 9). The Examiner disagrees: [I]t is clear that those skilled in the art would NOT understand what is claimed ("first primary data signal including new information") when claim 1 is read in light of Appellants' specification, paragraph [0042] (corresponding to paragraph [0043] of Patent Publication U.S. 2007/0270119), which states that "configuration information portion 394 may indicate that the device that transmitted the beacon has recently been updated with new features or information that may be valuable to the device that received the beacon." (Ans. 11-12). We note our finding above (regarding Rejection A) that "the first primary data signal including the new information" (independent claims 1, 28) is without written description support, under § 112, first paragraph. We further note 37 C.F.R. 1.75(d)(l) requires: 8 Appeal2014-008919 Application 11/805,492 The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description. Here, even given the lack of support in the originally-filed Specification (see discussion of Rejection A above), we nevertheless conclude the meaning of "the first primary data signal including the new information" (claims 1, 28), under a broad but reasonable interpretation, is not amenable to two or more plausible claim constructions. 6 Therefore, we conclude the claims rejected under Rejection B would not be indefinite to an artisan possessing an ordinary level of skill. Accordingly, we reverse rejection B, under§ 112, second paragraph, of all claims rejected thereunder, as being purportedly indefinite. Rejection C of claims 1--8, 20, 22-35, 41--43, 47, 49-56, 73-79, and 83--89 under§ 103 Issue: Under§ 103(a), did the Examiner err in finding Roddie would have taught or suggested contested limitations LI and L2: "[L 1] processing the configuration portion of the sniffed beacon signal with the first device to determine the last time the second device was updated with new information," "[L2] receiving, at the first device, a first primary data signal according to the normal protocol from the second device, the first primary data signal including the new information," within the meaning of claim 1? 6 "[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim ... indefinite." Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). 9 Appeal2014-008919 Application 11/805,492 Appellants contend Roddie fails to teach or suggest all the elements of claim 1, with specific reference to contested limitations LI and L2: As described above, the new information is not in the beacon signal. Thus, the examiner has not rejected the actual claim language, but has changed the claim language to fit the rejection. Such an interpretation is unreasonable as the "last time" is a separate claim element from the beacon signal. Also, the customary meaning of the word "time" is not a beacon signal, but an actual time. Further, a current time of when the beacon signal is received is not a last time that the second device was updated, as the current time may be two hours after the last time the second device was updated (See i-f 47 of the present application). Now here does Roddie mention a determination of a time in the past (last time) when the second device was updated with new information, as recited in claim 1. Nor, has the examiner even alleged that Roddie does since the Examiner has ignored this claim language, or changed the clam language via a misinterpretation. (App. Br. 10, emphasis omitted). The Examiner disagrees (Ans. 16), and refers to the Specification in support of the claim interpretation set forth in the Final Office Action: Paragraph [0042] of Appellants' specification (corresponding to paragraph [0043] Patent Publication U.S. 2007/0270119) states that "Configuration portion 394 may include information that can be used by beacon reception circuitry to identify the specific configuration of the electronic device that transmitted the beacon signal. For example, configuration information portion 394 may indicate that the device that transmitted the beacon has recently been updated with new features or information that may be valuable to the device that received the beacon" (emphasis added). Thus, as understood from Appellants' specification, paragraph [0042], "to determine the last time the second device was updated with new information" (claim 1, emphasis added) is to determine that the second device has recently been updated with new information. 10 Appeal2014-008919 Application 11/805,492 We note the Examiner relies on a single reference (Roddie) in the final rejection of claim 1 (Final Act. 4), but also refers to a Wikipedia definition for "beacon frame." (Final Act. 6). The Examiner finds contested limitations LI and L2 are not explicitly taught by Roddie (Final Act. 6-7), but concludes the missing features would have been obvious to one of ordinary skill in the art, in light of Roddie's full disclosure. Specifically, the Examiner concludes: It would have been obvious to one of ordinary skill in the art at the time the invention was made to update or change the capability (network type or encryption method), timestamp, supported rates, and/ or parameter sets of the second device to conform with current network environment and/ or user preferences. (Final Act. 7). In support, the Examiner finds: For example, the user can always update/change the encryption method (i.e.; from WEP to WPA) to enhance[e] wireless security. Thus, it is clear that the content of the beacon frame or specifically, the configuration portion with configuration information of the beacon frame, broadcasted by the second device, must always be updated to reflect any corresponding change regarding the capability (network type or encryption method) etc. of the second device so that primary data can be exchanged between the first and second devices. (Id., emphasis added). However, the Examiner appears to rely on a theory of possible use, and does not point to a specific reason why one having ordinary skill in the art would have modified the teachings of Roddie to include performing the contested missing claim limitations (i.e., steps or acts L 1 and L2, claim 1 ). "Even when obviousness is based on a single prior art reference, there must 11 Appeal2014-008919 Application 11/805,492 be a showing of a suggestion or motivation to modify the teachings of that reference." In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). "' [R ]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."' KSR Int'!. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). To the extent the Examiner is relying on a theory of inherency under § 103, our reviewing court guides: [t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient. In re Oelrich, 666 F.2d at 581 (emphasis added) (citations and quotation marks omitted). Thus, our early precedent, and that of our predecessor court, established that the concept of inherency must be limited when applied to obviousness, and is present only when the limitation at issue is the "natural result'' of the combination of prior art elements. Id. Par Pharm., Inc. v. TWI Pharms., Inc. 773 F.3d 1186, 1194--95 (Fed Cir. 2014) (quoting In re Oelrich, 666 F.2d 578, 581(CCPA1981)) (emphasis added). This reasoning is applicable here. We find the Examiner has not provided sufficient articulated reasoning with some rational underpinning establishing why the proffered modification would have been made by an artisan, one not having the benefit of Appellants' claims and/ or Specification. To the extent the Examiner is relying upon a theory of inherency under§ 103, the Examiner has not fully developed the record to 12 Appeal2014-008919 Application 11/805,492 show how the contested claim features (LI, L2), the Examiner found to be missing from Roddie (Final Act. 6-7), would have been the "natural result flowing from the operation" taught by Roddie. PAR Pharm., Inc., 773 F.3d at 1195. Therefore, on this record, we find a preponderance of the evidence supports Appellants' contentions regarding independent claims 1 and 28. (App. Br. 9-11 ). Accordingly, we reverse Rejection C under § 103 of claims 1 and 28, and all associated dependent claims rejected thereunder. Rejections ~Funder §103 For the same reasons, we reverse Rejections D-F of the remaining dependent claims on appeal, because the Examiner has not shown how the additional cited references overcome the aforementioned deficiencies of Roddie, as relied upon to reject independent claims 1 and 28 under Rejection C. Conclusion For at least the aforementioned reasons, on this record, we are not persuaded the Examiner erred regarding all claims rejected under Rejection A, under§ 112, first paragraph (written description). However, for the reasons discussed above, and by a preponderance of the evidence, we are persuaded the Examiner erred in rejecting all claims rejected under Rejections B-F. 13 Appeal2014-008919 Application 11/805,492 DECISION We affirm the Examiner's decision rejecting claims 1-8, 19-35, 41--44, 46-56, and 73-91, under§ 112, first paragraph (written description). We reverse the Examiner's decision rejecting claims 1-8, 19-35, 41--44, 46-56, and 73-91, under§ 112, second paragraph. We reverse the Examiner's decision rejecting claims 1-8, 19-35, 41--44, 46-56, and 73-91, under§ 103(a). 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 for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37 C.F.R. § 41.50(f). AFFIRMED 14 Copy with citationCopy as parenthetical citation