Ex Parte Eidson et al

Patent Trial and Appeal Board

Mar 20, 2013

10829091 (P.T.A.B. Mar. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOHN C. EIDSON and BRUCE HAMILTON
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Appeal 2010-008672
Application 10/829,091
Technology Center 2400
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Before KALYAN K. DESHPANDE, ERIC B. CHEN, and LARRY J.
HUME, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/829,091

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STATEMENT OF CASE
1

The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-8, 10-16, 18-21, and 24-27, the only claims pending in
the application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

The Appellants invented a measurement/control system that includes a
configuration data source that provides a set of configuration data that
specifies a measurement/control function, and a set of distributed devices
each having means for obtaining the configuration data from the
configuration data source and means for diffusing the configuration data
among the distributed devices. Specification 3:12-19.
An understanding of the invention can be derived from a reading of
exemplary claims 10 and 25, which are reproduced below [bracketed matter
and some paragraphing added]:
10. A method for configuring a set of distributed devices,
comprising the steps of:
[1] providing to one or more of the distributed devices, via
communication subsystems of the one or more distributed
devices, a set of configuration data that configures the one or
more distributed devices for performing a measurement/control
function; and
[2] diffusing the provided configuration data among the
distributed devices.

1
Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Feb. 22, 2013) and Reply Brief (“Reply Br.,” filed May 25, 2010),
and the Examiner’s Answer (“Ans.,” mailed March 25, 2010), and Final
Rejection (“Final Rej.,” mailed Aug. 27, 2009).
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25. [T]he method of claim 10, wherein the step of diffusing
includes the step of determining a relative staleness of different
sets of configuration data.

REFERENCE
The Examiner relies on the following prior art:
McDonnell US 2001/0028313 A1 Oct. 11, 2001

REJECTION
2

Claims 1-8, 10-16, 18-21, and 24-27 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by McDonnell.

ISSUE
The issue of whether the Examiner erred in rejecting claims 1-8, 10-
16, 18-21, and 24-27 under 35 U.S.C. § 102(b) as being anticipated by
McDonnell turns on whether McDonnell describes the limitations of
independent claims 10 and 24, and several of the dependent claims.

ANALYSIS
The Appellants first contend that McDonnell fails to teach or suggest
to “configure one or more distributed devices for performing a
measurement/control function” such that McDonnell does not teach or
suggest “any data which both (1) configures a distributed service for
performing a measurement/control function; and (2) is diffused among a set
of distributed devices,” as per claims 10 and 24. App. Br. 5-6 and 8-9 and

2
The Examiner indicates that claim 22 is rejected, however Appellants
previously canceled this claim, which is not subject to Appeal or our
Decision.
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Reply Br. 1-3 and 5-6. The Appellants specifically argue that McDonnell
fails to mention “setting parameters.” Reply Br. 2. The Appellants further
contend that McDonnell fails to describe the step of “obtaining configuration
data from an application server,” as per claim 11. App. Br. 6-7.
We disagree with the Appellants. McDonnell describes a distributed
telemetry method and service system, where a group of mobile entities
participate in the collection of geographically dispersed reads about a
parameter of interest. McDonnell ¶¶ 0057-0058. As found by the
Examiner, McDonnell describes that the system sends out a message over
the mobile radio infrastructure for triggering the taking of readings by users
or their devices. Ans. 7-8 and Final Rej. 8 (citing McDonnell ¶¶ 0063-
0070). The mobile devices are collecting readings based on a parameter of
interest, such as the weather or mental state of the user. Id. The desired
parameter can be recorded by the mobile devices automatically without user
involvement. McDonnell ¶ 0070. That is, a measurement of a desired
parameter is broadcast from an application server and is diffused among a
plurality of mobile devices, and the mobile devices are configured without
user involvement to record the desired parameter. As such, we agree with
the Examiner that McDonnell describes claim 10 and the “obtaining the
configuration data from an application server” step of claim 11.
The Appellants also contend that McDonnell fails to describe “a
kiosk,” “a fist communication channel,” and “a second communication
channel” as recited in claims 5, 8, and 15. App. Br. 7-9 and Reply Br. 3-4.
We disagree with the Appellants. The Examiner found that “[t]he
communication is established between the mobile entities each time the data
is being distributed among the devices.” Ans. 9 (citing McDonnell ¶¶ 0063-
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0069). That is, the claims or Specification does not limit the scope of “a
kiosk” and as such “a kiosk” encompasses any application server that
communicates with the mobile devices. Furthermore, the claims do not limit
the scope of a communication channel such that the second channel is
distinguished from the first channel. As such, the first and second
communication channels encompass the communication between mobile
devices and the server that broadcasts parameters to record disclosed by
McDonnell. While the Appellants have presented several arguments that the
Examiner improperly relied on inherency, the Appellants do not provide any
evidence or rationale to rebut these findings in McDonnell. As such, we are
not persuaded by the Appellants’ contention.
The Appellants also contend that McDonnell fails to describe claims
6, 16, and 18. App. Br. 7-8 and 10 and Reply Br. 4-5 and 7. The Appellants
specifically argue that the Examiner erred in rejecting claim 16 for the same
reasons set forth in support of claim 15, and the Examiner erred in rejecting
claim 18 for the same reasons set forth in support of claim 24. Id. The
Appellants further submit that the Examiner erred in rejecting claim 6 for the
same reasons as set forth for claim 16. App. Br. 9. The Appellants also
submit that the Examiner erred in rejecting claims 19-21 and 26-27 for the
same reason as set forth for claim 18. App. Br. 10-11. We disagree with the
Appellants. The Appellants’ arguments in support of claims 15 and 24 were
not found to be persuasive supra and are not persuasive here for the same
reasons. While the Appellants indicate that claims are patentable for
“additional reasons,” the Appellants fail to set forth any additional reasons
beyond reciting the claim language and merely alleging the Examiner erred
in the Examiner’s rejection. As such, we do not consider these “additional
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reasons” to be arguments. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”); In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”).
The Appellants further contend that McDonnell fails to describe
“determining a relative staleness of different sets of configuration data,” as
per claim 25. App. Br. 8 and Reply Br. 5. The Appellants specifically argue
that the portions of McDonnell cited by the Examiner describe validating
measured data, and do not describe validating configuration data. Id. Here
we agree with the Appellants. We find no evidence on the record that
McDonnell describes “determining a relative staleness of different sets of
configuration data.” The Examiner found that the system verifies that a
reading as a correct timestamp and the determining of correct time stamp is
the same as a relative staleness of data. Ans. 9-10. However, the
verification of a timestamp is not the same as determining the relative
staleness of configuration. We further agree with the Appellants that the
verification of measurement data is not the same as determining the
staleness of configuration data. Accordingly, we do not sustain the
Examiner’s rejection of claim 25.

CONCLUSIONS
The Examiner did not err in rejecting claims 1-8, 10-16, 18-21, 24,
and 26-27 under 35 U.S.C. § 102(b) as being anticipated by McDonnell.
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The Examiner erred in rejecting claim 25 under 35 U.S.C. § 102(b) as
being anticipated by McDonnell.

DECISION
To summarize, our decision is as follows.
 The rejection of claims 1-8, 10-16, 18-21, 24, and 26-27 under 35
U.S.C. § 102(b) as being anticipated by McDonnell is sustained.
 The rejection of claim 25 under 35 U.S.C. § 102(b) as being
anticipated by McDonnell is not sustained.

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

ELD