Ex Parte Hall

Patent Trial and Appeal Board

Sep 24, 2013

11423558 (P.T.A.B. Sep. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ERIC HALL
____________________

Appeal 2011-004753
Application 11/423,558
Technology Center 2400
____________________

Before BARBARA A. BENOIT, GEORGIANNA W. BRADEN, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004753
Application 11/423,558

2
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
21–40. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Illustrative Claim
The claimed subject matter relates to provisioning computer devices
(Spec. ¶1).
Claim 21 is illustrative and is reproduced below:
21. A system, comprising:
an access point that transmits network sourced server
provisioning data via a first wireless network;
a computer server configured to receive, via a second
wireless network, the networked sourced server provisioning
data; and
a cart configured to be wheeledly positioned for
computer server provisioning and to wirelessly connect the
access point to the computer server, the cart comprising:
a first wireless transceiver that receives the
network sourced server provisioning data via the first
wireless network; and
a second wireless transceiver that transmits, to the
computer server via the second wireless network, the
provisioning data received by the first wireless
transceiver;
wherein the provisioning data comprises an operating system
executable by the computer server.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Appeal 2011-004753
Application 11/423,558

3
Hutcheson
Purpura
Kanodia
US 2003/0032409 A1
US 2003/0051075 A1
US 2006/0253693 A1
Feb. 13, 2003
Mar. 13, 2003
Nov. 9, 2006

Rejections
The Examiner made the following rejections:
Claims 21–24, 28–34, and 36–401 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kanodia and Purpura (Ans. 4–7).
Claims 25–27 and 35 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kanodia, Purpura, and Hutcheson (Ans. 7–8).

ANALYSIS
Claims 21–27, 29, and 31–402
Appellant makes the following contentions regarding the rejection of
independent claim 21:

1 Both the Examiner’s Answer and the Final Office Action from which the
appeal is taken identify claim 40 as rejected under 35 U.S.C. §103(a) as
unpatentable over Kanodia and Purpura without providing specific
reasoning. Since Appellant has not presented any separate argument for
patentability of claim 40, any such argument is deemed waived. See 37
C.F.R. § 41.37(c)(1)(vii).
2 Although independent claims 31 and 37 are presented under separate
headings (App. Br. 13, 14), Appellant merely references the arguments
presented for claim 21 without presenting any additional arguments to
establish separate patentability. Appellant also relies on the arguments made
for claim 21 to establish patentability of dependent claims 22–24, 29, 32–34,
36, and 38–40 (App. Br. 13, 14) and to establish patentability of claims 25–
27 and 35 (App. Br. 17–18). We therefore treat claim 21 as representative of
claims 21–27, 29, and 31–40. 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2011-004753
Application 11/423,558

4
(1) the Examiner erred because Kanodia does not teach or suggest “an
access point that transmits network sourced server provisioning data via a
first wireless network,” as recited in claim 21 (App. Br. 11–12; Reply Br. 1–
2); and
(2) the Examiner erred because Kanodia does not teach or suggest that
“the provisioning data comprises an operating system,” as recited in claim
21 (App. Br. 12–13; Reply Br. 2–3).
With respect to the first contention, we are not persuaded that the
Examiner erred. Appellant contends that the Examiner erred in finding the
recited “access point” disclosed by Kanodia’s provisioning station 340 as
shown in Fig. 8 of Kanodia (App. Br. 11). As support for this argument,
Appellant cites a definition of “access point” as “a wireless transceiver that
connects [a] LAN to a wired network” (App. Br. 11, citing Microsoft
Computer Dictionary, 5th ed. (2002)).
During patent examination, claims must be given their broadest
reasonable interpretation consistent with the specification. See Phillips v.
AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005). We agree with the
Examiner’s finding that Appellant’s Specification does not expressly define
the term and that Appellant’s proffered definition is “just one of several
definitions that can be consistent with the term ‘access point’” (Ans. 9). For
example, another relevant technical dictionary provides the broader
definition of “[a] point where connections may be made for testing or using
particular communications circuits” (Newton’s Telecom Dictionary, 20th ed.
(CMP Books, 2004), p. 39). Because we find that Kanodia’s provisioning
station 340 provides a point where connections may be made for using the
Appeal 2011-004753
Application 11/423,558

5
particular communications circuits shown in Fig. 8 of Kanodia, we are not
persuaded of error.
With respect to the second contention, we are not persuaded that the
Examiner erred. The particular content of the recited “provisioning data”
does not affect or otherwise alter the transmitting and receiving functions
performed by the recited “access point,” “computer server,” and “cart.” As
such, the limitation “wherein the provisioning data comprises an operating
system” defines nonfunctional descriptive material that is not entitled to
weight in the patentability analysis. See Ex parte Curry, 84 USPQ2d 1272,
1274 (BPAI 2005) (informative) (“wellness-related” data in databases and
communicated on distributed network did not functionally change either the
data storage system or the communication system used in the claimed
method), aff’d, No. 06-1003 (Fed. Cir. June 12, 2006) (Rule 36).
“[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been [invalidated] by the prior art.” Ex
parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative), aff’d,
191 Fed. Appx. 959 (Fed. Cir. 2006) (citing In re Ngai, 367 F.3d 1336, 1339
(Fed. Cir. 2004)). See also Ex parte Nehls, 88 USPQ2d 1883, 1887–90
(BPAI 2008) (precedential) (discussing nonfunctional descriptive material).
We are therefore not persuaded of error.
We accordingly sustain the rejection of claim 21, as well as the
rejections of claims 22–27, 29, and 31–40, for which Appellant relies on
similar arguments.

Appeal 2011-004753
Application 11/423,558

6
Claims 23, 33, and 38
Appellant contends that the Examiner erred in finding that Kanodia
teaches or suggests that “the cart is configured to provide the provisioning
data to the computer server while the computer server is positioned at the
production location at which the server is to be permanently positioned,” as
recited in claim 23 (App. Br. 14–15). Appellant asserts that claims 33 and
38 include similar limitations (App. Br. 14).
To satisfy a functional limitation in an apparatus claim, the prior-art
apparatus must be capable of performing the recited function. See, e.g., In
re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997). Kanodia teaches an
automated provisioning platform in which a local IT administrator initiates
provisioning by unpacking a device and establishing communication with a
provisioning node (Kanodia ¶33). Kanodia further teaches detection of the
location from which the device is connecting by the provisioning platform so
that local provisioning preferences may be applied (id. ¶37). Although
Appellant’s argument focuses on embodiments in which mobile devices are
provisioned (App. Br. 14–15), the Examiner correctly finds that Kanodia
also teaches provisioning of other devices such as desktop computers (Ans.
14, citing Kanodia ¶12). We thus conclude that the apparatus disclosed by
Kanodia is capable of “provid[ing] the provisioning data to the computer
server while the computer server is position at the production location at
which the server is to be permanently positioned.”
We accordingly sustain the rejections of claims 23, 33, and 38.

Appeal 2011-004753
Application 11/423,558

7
Claim 28
Appellant contends that the Examiner erred in finding that Kanodia
teaches or suggests that “the first wireless transceiver communicates with a
provisioning computer, via the access point, and retrieves the provisioning
data from the provisioning computer,” as recited in claim 28 (App. Br. 15).
With the Examiner’s identification of Kanodia’s provisioning node 320 as
corresponding to the “cart comprising[] a first wireless transceiver,”
Appellant argues that “[o]ne skilled in the computer arts would not expect
such communication because the provisioning node 320 is merely a means
of connecting (e.g., a cable) the device 300 to the provisioning station 340”
(App. Br. 15).
We are not persuaded by this contention because it requires too
narrow a construction of “communicate.” Rather, applying the broadest
reasonable construction of the term consistent with the specification, we
agree with the Examiner that “communicate” encompasses the type of
communication described in Kanodia: “[t]he provisioning node
communicates with the provisioning server through the provisioning station
to communicate provisioning data to the attached device” (Ans. 14–15).
We accordingly sustain the rejection of claim 28.

Claim 30
Appellant contends that the Examiner erred in finding that Kanodia
teaches or suggests that “the first and second transceivers are coupled to
form a WLAN point-to-multipoint bridge,” as recited in claim 30 (App. Br.
15–16). Specifically, Appellant argues that each provisioning node 320 in
Kanodia provides for connecting only a single device 300 to a single
Appeal 2011-004753
Application 11/423,558

8
provisioning station and therefore does not teach or suggest a “WLAN point-
to-multipoint bridge” (App. Br. 16).
But the Examiner correctly observes that “[t]he claim does not specify
how the WLAN point-to-multipoint bridge is configured” (Ans. 15). The
Examiner thus reasons that the limitation is disclosed by Kanodia because
each provisioning station communicates with multiple devices through the
provisioning nodes (id.). Under the standard in which the broadest
reasonable construction of claim terms is applied consistent with the
specification, we agree with this reasoning. The claim does not exclude the
use of other elements in achieving formation of the WLAN point-to-
multipoint bridge.
We accordingly sustain the rejection of claim 30.

Claim 36
Appellant contends that the Examiner erred in finding that the
limitations recited in claim 36 are taught or suggested by Kanodia (App. Br.
16–17).
First, we are not persuaded that the Examiner erred in finding that
Kanodia’s “provisioning station” teaches or suggests the recited “access
point” for the reasons we express supra in our analysis of claim 21.3

3 Appellant observes (App. Br. 16–17) that the Examiner is inconsistent
when stating that “the provisioning node is interpreted as the ‘access point’”
(Final Office Action, p. 6, emphasis added) because the Examiner previously
found a correspondence between Kanodia’s provisioning station and the
recited “access point” (compare, e.g., Ans. 4). While we agree with
Appellant’s observation, we conclude that the Examiner’s inconsistency is
harmless error. We have considered the Examiner’s remarks as having
Appeal 2011-004753
Application 11/423,558

9
Second, we are not persuaded by Appellant’s argument that Kanodia
does not teach or suggest a virtual local area network for provisioning data
(App. Br. 17). As the Examiner finds, neither the specification nor the claim
language expressly defines the term “virtual local area network (‘VLAN’)”
(Final Office Action, p. 10). Although Appellant reproduces a definition
from a dictionary source (App. Br. 17), other sources provide broader
definitions, such as “a collection of devices grouped together to form a
virtual network within a larger network” (Newton’s Telecom Dictionary,
20th ed. (CMP Books, 2004), p. 894). We agree with the Examiner’s finding
that “Kanodia discloses that devices can be provisioned to communicate
using the infrastructure of the foreign location and a secure Internet
connection from various provisioning stations across the world” (Final
Office Action, p. 6, citing Kanodia ¶64). Applying the broadest reasonable
interpretation consistent with the specification, we are therefore not
persuaded that the Examiner erred.
We accordingly sustain the rejection of claim 36.

Claims 27 and 35
Appellant contends that the Examiner erred in finding that “the access
point comprises a cellular base station mounted in a build area where the
computer server will be operated in production, the cellular base station
forming a microcell for wirelessly transmitting the provisioning data,” as
recited in claim 27, is taught or suggested by the combination of Hutcheson

intended to refer consistently to Kanodia’s “provisioning station” as
corresponding to the recited “access point.”
Appeal 2011-004753
Application 11/423,558

10
with the other cited art (App. Br. 18). Appellant asserts that claim 35
includes similar limitations (App. Br. 18).
Appellant’s specific argument (App. Br. 18) that the content
provisioning method of Hutcheson cannot be applied to provisioning data
because Hutcheson teaches pseudo-random selection of content for delivery
to the communication device is unpersuasive because it attacks Hutcheson
individually when the Examiner has, in fact, relied on the combination of
Hutcheson with Kanodia and Purpura. The test for obviousness is what the
combined teachings of the prior art would have suggested to the hypothetical
person of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA
1981). As the Examiner suggests, the teaching value of Hutcheson lies in its
disclosure of wireless communication of content via a cellular network (see
Ans. 16). In finding it obvious to incorporate the teachings of Hutcheson to
Kanodia by adapting the provisioning station with a cellular transmission
system (Ans. 8), the Examiner has identified a combination that involves no
more than the predictable use of prior-art elements according to their
established functions. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
We accordingly sustain the rejections of claims 27 and 35.

CONCLUSION
On the record before us, we conclude that:
(1) the Examiner did not err in rejecting claims 21–24, 28–34, and 36–
40 under 35 U.S.C. § 103(a) as unpatentable over Kanodia and Purpura; and
(2) the Examiner did not err in rejecting claims 25–27 and 35 under
35 U.S.C. § 103(a) as unpatentable over Kanodia, Purpura, and Hutcheson.
Appeal 2011-004753
Application 11/423,558

11

DECISION
The Examiner’s decision rejecting claims 21–40 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

tj