Ex Parte Hari et al

Patent Trial and Appeal Board

Sep 7, 2016

13162877 (P.T.A.B. Sep. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/162,877 06/17/2011
46363 7590 09/09/2016
Tong, Rea, Bentley & Kim, LLC
ALCATEL-LUCENT USA INC.
12 Christopher Way
Suite 105
Eatontown, NJ 07724
FIRST NAMED INVENTOR
Adiseshu Hari
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.
809259-US-NP 8469
EXAMINER
SHIN, KYUNG H
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
09/09/2016 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):
docketing@trbklaw.com
ipsnarocp@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADISESHU HARI, ANDREA FRANCINI,
YUH-JYE CHANG, and MANOJ K. JAITLY
Appeal2015-004744
Application 13/162,877
Technology Center 2400
Before LINZY T. McCARTNEY, JOHN P. PINKERTON, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-36. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2015-004744
Application 13/162,877
STATEMENT OF THE CASE
The present patent application relates to "supporting services for a
computer via a mobile computing device." Spec. 1:7-8. Claims 1, 15, 16,
and 32 are independent. Claim 1 illustrates the claimed subject matter:
1. A mobile computing device, comprising:
a processor and a memory communicatively connected to
the processor, the processor configured to:
receive, at the mobile computing device from a remote
device, a request to configure the mobile computing device to
operate in a selected one of a plurality of peripheral connection
device classes;
configure the mobile computing device to operate in the
selected peripheral connection device class; and
receive, at the mobile computing device from the remote
device, information associated with a service to be provided for
a computer by the mobile computing device based on the selected
peripheral connection device class.
REJECTIONS
Claims 1-36 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over two or more of Lee et al. (US 2009/0307679 Al; Dec. 10, 2009)
("Lee"), Lu et al. (US 2010/0146279 Al; June 10, 2010) ("Lu"), Angelhag
et al. (US 2008/0113655 Al; May 15, 2008), Mir et al. (US 2010/0014459
Al; Jan. 21, 2010), Chow et al. (US 2009/0013165 Al; Jan. 8, 2009),
Huotari et al. (US 2007/0016714 Al; Jan. 18, 2007).
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ANALYSIS
Appellants argue claims 1-13 and 15 together and claims 16-19, 24,
25, 27, and 32 together. See App. Br. 13-24. As permitted by 37 C.F.R.
§ 41.41(c)(iv), we select independent claims 1and16 as representative of
their respective sets of claims. Appellants have not presented separate
patentability arguments for the remaining claims. See App. Br. 25-27.
Therefore, the pending claims stand or fall with claims 1 and 16. We
address the arguments Appellants raised concerning claims 1 and 16 below.
Appellants have waived arguments they failed to raise in their briefs. See 37
C.F.R. § 41.41(b)(2); Ex parte Borden, No. 2008-004312, 2010 WL 191083
(BP AI 2010) (informative).
Claim 1
Appellants argue the Examiner's combination of Lee and Lu fails to
teach or suggest "the arrangement of ... claim 1 in which a processor of a
mobile computing device is configured to receive, from a remote device, a
request to configure the mobile computing device and information
associated with a service to be provided for a computer by the mobile
computing device." App. Br. 13-14 (emphases omitted); see also Reply Br.
4--7. Appellants contend the Examiner's conclusion that Lee's host device
and Lu's agents correspond to the recited "remote device" is "unreasonable."
App. Br. 14; Reply Br. 3. Appellants also assert that although Lee discloses
a connection between a mobile terminal and a server, the cited portions of
Lee do not teach or suggest the mobile terminal receives the recited
"request" or "information" from the server. App. Br. 14--15; Reply Br. 4--5.
Moreover, Appellants contend claim 1 recites an arrangement involving a
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mobile computing device, a remote device, and a computer, but Lee and Lu
each merely disclose a mobile device and a host computer. See App. Br. 13-
14, 16-17; Reply Br. 11.
We find Appellants' arguments unpersuasive. As an initial matter, the
Examiner concluded a combination of Lee's and Lu's teachings rendered
claim 1 obvious. See Final Act. 2--4. Yet the arguments discussed above
generally address Lee and Lu individually. To the extent these arguments
address these references individually, we find them unpersuasive. "[O]ne
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references." In re Keller,
642 F.2d 413, 426 (CCPA 1981).
With respect to Appellants' arguments concerning the recited "remote
device," the Examiner construed "remote device" as a "device connectable
via a communication connection enabling communication between devices
located at different locations." Final Act. 25; see also Ans. 25. Under this
construction, the Examiner found Lee's host device is a "remote device"
because Lee discloses the host device can use Bluetooth to communicate
with a mobile terminal. Final Act. 25-26. Although Appellants argue this
construction is "unreasonable" and contend that Lee's server is the recited
"remote device" and Lee's host device is the claimed "computer,"
Appellants have not provided persuasive evidence or reasoning to support
these positions. See, e.g., App. Br. 14--15; Reply Br. 3--4. Appellants have
not pointed to anything in the claims or the specification that limit "remote
device" to a server or exclude a host device from being a "remote device."
Nor have Appellants cited any extrinsic evidence to support these
contentions. In light of Appellants' failure to persuasively challenge the
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Examiner's construction of "remote device," Appellants have not persuaded
us the Examiner erred.
Regarding Appellants' contentions regarding Lee's server, the
Examiner concluded it would have been obvious in light of Lee's and Lu's
teachings to modify Lee's invention so that Lee's mobile terminal receives
the recited "request" and "information," not Lee's server. See Final Act. 2-
4. Appellants' contention that Lee's server does not receive this data
therefore does not address the Examiner's rejection.
As for Appellants' argument that the Examiner's combination of Lee
and Lu fails to teach or suggest an arrangement involving a mobile
computing device, a remote device, and a computer, this argument is
incommensurate with the scope of claim 1. With respect to the recited
"computer," claim 1 simply recites "information associated with a service to
be provided for a computer." This limitation sets out an intended use for a
service for which the recited information is associated; it does not specify a
particular arrangement of the computer with respect to "mobile computing
device" and "remote device" recited in claim 1.
Even if Appellants were correct that claim 1 requires a particular
arrangement of a "mobile computing device," a "remote device," and a
"computer," the Examiner concluded a combination of Lee and Lu suggests
such an arrangement. The Examiner found Lu teaches that a remote
computer communicates with a mobile device such as a smart card and
concluded a combination of Lee's and Lu's teachings would result in
Appellants' argued arrangement of devices. Lu i-f 52; see also Final Act. 2-
4, 21-23. Moreover, the Examiner found Lee discloses an embodiment in
which a host device transfers data to a mobile terminal, which in tum
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transfers the data to an external server. See Lee if 70, Fig. 9; see also Final
Act. 4; Ans. 25. Although Appellants argue that Lee's host and Lu's agents
cannot serve as the claimed "remote device," this argument is unpersuasive
for the reasons discussed above.
Appellants also assert the Examiner failed "to express a reason based
on rational underpinnings for the proposed combination of Lee and Lu."
App. Br. 17. In support of this assertion, Appellants again argue that the
Examiner's interpretation of "remote device" is unreasonable and that the
Examiner's rejection does not account for the mobile computing device,
remote device, and computer recited in claim 1. Id. Appellants further
contend
one skilled in the art ... would not interpret the teachings related
to [Lee's] host device ... and [Lu's] host computer ... as being
teachings related to an arrangement in which [Lee's] host device
. . . [Lu's] computer . . . are different devices performing
different functions in conjunction with a common mobile
terminal.
Id. According to Appellants, "[t]here is no reasonable basis for the proposed
combination of Lee and Lu relied upon by the Examiner." Id.
For the reasons discussed above, we find unpersuasive Appellants'
arguments regarding the Examiner's construction of "remote device" and the
Examiner's alleged failure to account for the recited mobile computer
device, remote device, and computer. We find Appellants' remaining
arguments equally unpersuasive. The Examiner found one of ordinary skill
in the art would have been motivated to combine Lee's and Lu's teachings in
the claimed manner "for the benefits achieved from a system that facilitates
secure communications between a secure portable device and a host
computer." Final Act. 4 (citing Lu if 1 ). Appellants' conclusory assertions
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do not persuasively address this rationale, much less explain why the
Examiner erred. Appellants provide no persuasive evidence or reasoning to
support the assertions that "one skilled in the art ... would not interpret the
teachings related to [Lee's] host device ... and [Lu's] host computer ... as
being teachings related to" the claimed arrangement and that "[t]here is no
reasonable basis for the proposed combination of Lee and Lu." See App. Br.
17. In addition, these assertions assume claim 1 recites an arrangement of a
mobile computer device, remote device, and computer. As discussed earlier,
claim 1 does not. Moreover, to the extent Appellants are asserting that Lee's
and Lu's teachings are not physically combinable, "[t]he test for obviousness
is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference .... " In re Keller,
642 F.2d at 425. "Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art." Id.
Finally, Appellants argue the Examiner impermissibly broke claim 1 's
"receive, at the mobile computing device from the remote device,
information associated with a service to be provided for a computer"
limitation into parts. App. Br. 18. Appellants contend that by doing so the
Examiner "impermissibly ignore[ d] the portion of this feature which
indicates that the information is received at the mobile computing device."
Id. (emphasis omitted). Appellants also assert the cited portion of Lu merely
discloses that a smart card agent provides services to a host agent;
Appellants argue this disclosure does not teach or suggest claim 1 's
"receive, at the mobile computing device from the remote device,
information associated with a service to be provided for a computer"
limitation. Id.
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We find Appellants' arguments unpersuasive. The Examiner did not
impermissibly break up the disputed "receive" limitation, nor did the
Examiner ignore a part of this limitation. The Examiner simply found that
Lee and Lu teach or suggest different aspects of this limitation and
concluded it would have been obvious to combine these teachings in a
manner that resulted in the claimed invention. See Final Act. 2--4; Ans. 23-
26. Relatedly, the Examiner did not find Lu's disclosure that a smart card
agent provides services to a host agent alone teaches the "receive" limitation
at issue. Rather, the Examiner found a combination of Lee's and Lu's
disclosures teach or suggest this limitation. See Final Act. 2--4. Appellants'
arguments against Lu individually have not persuaded us the Examiner
erred. See Keller, 642 F.2d at 426. 1
Claim 16
With the exception noted below, Appellants' arguments concerning
claim 16 are nearly identical to Appellants' arguments for claim 1. Compare
App. Br. 13-18, with id. at 19-24. We find these arguments unpersuasive
for the reasons discussed above with respect to claim 1.
Appellants also contend the Examiner's combination of Lee and Lu
fails to teach or suggest "initiate, at the mobile computing device, an action
1 Appellants assert the Examiner's findings regarding Lu "appear to be
contradictory" because Appellants believe the Examiner mapped Lu's card
agent to claim l's "remote device" and "mobile computing device" and Lu's
host agent to claim l's "remote device" and "computer." Reply Br. 6-7
(emphases omitted). We find this assertion unpersuasive. First, the quoted
portions of the Answer do not explicitly make these mappings. See Ans. 25.
Second, the Examiner found Lee teaches or suggests the recited "mobile
computing device" and "remote device." Final Act. 2-3.
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for providing the service for the computer via the mobile computing device
based on a peripheral connection device class of the mobile computing
device" as recited in claim 16. App. Br. 23-24. In particular, Appellants
assert Lee's disclosure that a control module in a mobile terminal loads a
program to use a desired USB class when the module receives an instruction
to change its USB mode from a host device does not teach or suggest claim
16' s "initiate" limitation. See id. at 24. Appellants have failed to provide
persuasive evidence or reasoning to support this assertion. In any event, we
agree with the Examiner that Lee's disclosure teaches or suggests this
limitation. See Final Act. 4; Ans. 29-30.
DECISION
For the above reasons, we affirm the rejections of claims 1-36.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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