Ex Parte Falck et al

Board of Patent Appeals and Interferences

Sep 29, 2009

10563846 (B.P.A.I. Sep. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte THOMAS FALCK and HENNING MAASS
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Appeal 2009-004278
Application 10/563,8461
Technology Center 2600
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Decided: September 29, 2009
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Before KENNETH W. HAIRSTON, MARC S. HOFF, and THOMAS S.
HAHN, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Koninklijke Philips Electronics N.V.
Appeal 2009-004278
Application 10/563,846

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 11-16.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention relates to a system and method for giving a
presentation on an image-showing device (such as a projector) from a
mobile device. If the mobile device has access to a company’s internal
network, a wireless connection is made to the projector over the internal
network. If the mobile device belongs to a visitor who does not have access
to the internal network, an ad-hoc wireless connection is made between the
mobile device and the projector (Abstract).
Claim 11 is exemplary of the claims on appeal:
11 A system for giving a presentation, comprising:
an internal communication network adapted for access by an internal
wireless device and a visitor wireless device;
a mobile data carrier operative to load software to the visitor wireless
device and to set the visitor wireless device to an ad-hoc mode;
an image-showing device comprising a wireless communication
interface, wherein the internal wireless device is adapted to access the
image-showing device via the internal network.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Okanoue US 6,307,843 Oct. 23, 2001
Slobodin US 2002/0196378 A1 Dec. 26, 2002
Kammer US 2003/0087602 A1 May 8, 2003
Harry Newton, “Newton’s Telecommunication Dictionary,” p. 45.
IEEE 100: The Authoritative Dictionary of IEEE Standards Terms, p. 19.

2 Claims 1-10 and 17-23 have been cancelled.
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Claims 11 and 13-16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kammer in view of Slobodin.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kammer in view of Slobodin and Okanoue.
Throughout this decision, we make reference to the Appeal Brief
(“Br.,” filed June 24, 2009) and the Examiner’s Answer (“Ans.,” mailed
August 6, 2009) for their respective details.

ISSUES
Appellants argue that Kammer fails to teach that its mobile data
carrier is operative to load software to the visitor wireless device, or that the
mobile data carrier is operative to set the visitor wireless device to an ad-hoc
mode (App. Br. 5).
Appellants’ contentions present us with the following issues:
1. Have Appellants shown that the Examiner erred in finding that
Kammer teaches a mobile data carrier operative to load software to a visitor
wireless device?
2. Have Appellants shown that the Examiner erred in finding that
Kammer teaches a mobile data carrier operative to set the visitor wireless
device to an ad-hoc mode?
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. Appellants’ Specification discloses that in infrastructure mode,
wireless terminal devices communicate with other terminal devices via a
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base station, and in ad-hoc mode, “wireless terminal devices are able to
communicate with one another directly, i.e. without the help of base
stations” (Spec. 5).
Kammer
2. Kammer teaches that “[t]o support local area wireless
communications, handheld computer 100 may include wireless connectivity
software … further added via an expansion card” (¶ 0027). “Expansion card
124, including an RF transceiver, may be installed in handheld computer 100
via an expansion slot 122” (id.).
3. Handheld computer 100 includes “local area wireless
technology to permit wireless communication with other portable electronic
devices and computing devices that have compatible communication
technology” (¶ 0026).
Slobodin
4. Slobodin teaches wireless transmission of a digital image to a
presentation projector using a reduced amount of bandwidth, by transmitting
a subset of the digital image data (Abstract).
Okanoue
5. Okanoue teaches an ad hoc network in which mobile hosts are
connected to each other via direct wireless links (col. 1, ll. 9-11).

PRINCIPLES OF LAW
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
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familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-
420.
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations and internal quotation marks omitted). "Inherency, however,
may not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient."
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
quotation marks omitted).
ANALYSIS
CLAIMS 11 AND 13-16
We select claim 11 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appellants, while conceding that Kammer teaches that expansion card
124 may include an RF transceiver (Kammer ¶ 0027), argue that Kammer
contains no suggestion that expansion card 124 is operative to load software
to the visitor wireless device, i.e., Kammer’s handheld computer 100 (App.
Br. 5). According to Appellants, although Kammer suggests that wireless
connectivity software may be added via an expansion card or transferred
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from another computer, Kammer does not suggest that the card is operative
to load software (App. Br. 6, citing Kammer ¶ 0027).
We do not agree with Appellants that Kammer’s disclosure fails to
amount to a suggestion that expansion card 124 is not “operative to load
software.” The very paragraph of Kammer cited by Appellants states that
“[t]o support local area wireless communications, handheld computer 100
may include wireless connectivity software … further added via an
expansion card” (FF 2). “Expansion card 124, including an RF transceiver,
may be installed in handheld computer 100 via an expansion slot 122” (FF
2). Kammer thus teaches that the express purpose of an exemplary
expansion card added to a handheld computer is to support local area
wireless communications, and that it includes the hardware (RF transceiver)
and software necessary to effectuate such communications. We agree with
the Examiner’s tacit finding that it is inherent in Kammer that such an
expansion card necessarily is operative to load software to the handheld
computer such that local area wireless communication by that handheld
computer may occur.
Appellants further argue that Kammer fails to teach a mobile data
carrier operative to set the visitor wireless device to an ad-hoc mode (App.
Br. 5). According to Appellants, Kammer’s teaching that handheld computer
100 includes “local area wireless technology to permit wireless
communication with other portable electronic devices and computing
devices that have compatible communication technology” (FF 3) is
insufficient to suggest setting the visitor wireless device to ad-hoc mode.
Appellants’ Specification discloses, however, that in infrastructure mode,
wireless terminal devices communicate with other terminal devices via a
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base station, and in ad-hoc mode, “wireless terminal devices are able to
communicate with one another directly, i.e. without the help of base
stations” (FF 1). Kammer teaches wireless communication between
wireless-capable devices, and does not mention the use of a base station. We
therefore find that Kammer, given the lack of a base station, inherently
teaches that communication between wireless-capable devices takes place in
an ad-hoc mode, and further find that Kammer inherently teaches setting the
visitor wireless device (handheld computer 100) to an ad-hoc mode (see
Ans. 9).
Appellants have not established error in the Examiner’s proposed
combination of references. Thus, we will sustain the rejection of claims 11
and 13-16 under 35 U.S.C. § 103(a) as being unpatentable over Kammer in
view of Slobodin.
CLAIM 12
With respect to claim 12, Appellants argue only that Okanoue fails to
remedy the deficiencies of the combination of Kammer and Slobodin
asserted with respect to the rejection of claim 11. However, because we
affirm the rejection of parent claim 11, from which claim 12 depends, we
will affirm the rejection of dependent claim 12 under § 103 for the same
reasons expressed with respect to claim 11, supra.

CONCLUSIONS OF LAW
1. Appellants have not shown that the Examiner erred in finding
that Kammer teaches a mobile data carrier operative to load software to a
visitor wireless device.
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2. Appellants have not shown that the Examiner erred in finding
that Kammer teaches a mobile data carrier operative to set the visitor
wireless device to an ad-hoc mode.
ORDER
The Examiner’s rejection of claims 11-16 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

ELD

PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
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