Ex Parte HindsDownload PDFPatent Trial and Appeal BoardJun 26, 201310364801 (P.T.A.B. Jun. 26, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/364,801 02/11/2003 John Sherman Hinds PU020086 8510 7590 06/27/2013 JOSEPH S. TRIPOLI THOMSON MULTIMEDIA LICENSING INC. 2 INDEPENDENCE WAY, SUITE #2 P.O. BOX 5312 PRINCETON, NJ 08543-5312 EXAMINER DENNISON, JERRY B ART UNIT PAPER NUMBER 2443 MAIL DATE DELIVERY MODE 06/27/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte JOHN SHERMAN HINDS ________________ Appeal 2011-000762 Application 10/364,801 Technology Center 2400 ________________ Before JEFFREY S. SMITH, BRUCE R. WINSOR, and STACEY G. WHITE, Administrative Patent Judges. WHITE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000762 Application 10/364,801 2 SUMMARY Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF CASE Appellant’s claims are directed to a method and apparatus for establishing communications between devices in a manner that minimizes user interaction and reduces setup time. (Spec. 2:2-5). Claim 1 is illustrative and is reproduced below (disputed limitation is italicized): 1. A method for establishing communications with a communications device as part of set up within a network, comprising: examining transmitted data from said communications device to determine communications parameters for establishing communication with said communications device; constructing a communications model of said communications device for establishing communication with said communications device using said communications parameters, wherein said constructing of said communications model is part of performing an initial setup configuration of a communications interface for said communications device within said network; and passing data intended for receipt by said communications device through said communications interface according to said communications model previously determined for said communications device. REJECTIONS (1) Claims 1-19 and 24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Tso (U.S. Pat. No. 6,421,733) and Jameson (U.S. Pub. No. 2001/0047397). (2) Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Tso, Jameson, and Geiger (U.S. Pat. No. 6,885,319). Appeal 2011-000762 Application 10/364,801 3 (3) Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Tso, Jameson, and Wu (U.S. Pat. No. 7,171,206). (4) Claims 22 and 25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Tso, Jameson, and I'Anson (U.S. Pat. No. 7,050,815). (5) Claims 23 and 26 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Tso, Jameson, and Girard (U.S. Pat. No. 7,283,519). (6) Claim 17 stands rejected under 35 U.S.C. §101 as being directed to non- statutory subject matter. (7) Claims 18 and 19 stand rejected under 35 U.S.C. §112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. We have only considered those arguments that Appellant actually raised in the Briefs. Arguments Appellant could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). ISSUES Appellant’s response to the Examiner’s rejections presents us with the following issues: (1) Did the Examiner err in rejecting claim 17 as unpatentable under 35 U.S.C. § 101? (2) Did the Examiner err in rejecting claims 18-19 as indefinite under 35 U.S.C. § 112, second paragraph? (3) Did the Examiner err in finding that the cited art teaches or suggests “wherein said constructing of said communications model is part of Appeal 2011-000762 Application 10/364,801 4 performing an initial setup configuration of a communications interface,” as required by claim 1? (4) Did the Examiner err in finding that the cited art teaches or suggests in the absence of a constructed communications model for an intended device, sending data to said intended communications device adapted to cause transmission of data by the intended communication device, wherein the transmitted data is examined to determine said communications parameters, and wherein the communications model is constructed using said communications parameters as recited by claim 2? (5) In regards to claim 20, did the Examiner err by using improper hindsight reasoning to combine Tso, Jameson, and Geiger? (6) Did the Examiner err in finding that the cited art teaches or suggests “creating a proxy for said communications device based on said communications model for said communications device; and switching a . . . communications device to pass through said proxy created for said communications device” as recited by claim 21? (7) Did the Examiner err in finding that the cited art teaches or suggests “constructing a communications model that indicates communication direction” as recited by claim 22? (8) In regards to claims 23 and 26, did the Examiner err in combining Tso, Jameson, and Girard without an articulated rationale? ANALYSIS Rejection under 35 U.S.C. § 101 Claim 17 is directed to a “computer-readable medium for storing a set of instructions.” The Examiner rejected this claim under 35 U.S.C. § 101 because the medium could include non-statutory matter such as a signal. Appeal 2011-000762 Application 10/364,801 5 (Ans. 6-7). Appellant avers that the claim is limited by the Specification which recites that “the process steps described herein are intended to be broadly interpreted as being equivalently performed by software, hardware or a combination of both.” (Reply Br. 20 (citing Spec. 0024)).1 Appellant's arguments are not persuasive. One of ordinary skill in the art would understand that the claimed instructions could be stored on a propagating signal. Appellant does not cite to a definition in the Specification sufficient to exclude transitory signals from the scope of claim 17. A claim that can include a transitory signal is not patentable under 35 U.S.C. § 101 and as such, we affirm the Examiner’s rejection of claim 17. See In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).2 Rejections under 35 U.S.C.§ 112 The Examiner rejected claims 18 and 19 as indefinite for failing to meet the requirements of 35 U.S.C. § 112, sixth paragraph. (Ans. 4-5). As a preliminary matter, we agree with the Appellant that claim 19 was listed in error. (Reply Br. 22) Claim 19 does not contain means plus function limitations nor does it depend on a claim that includes any such limitations. Thus, we reverse this rejection as applied to claim 19. As to claim 18, Appellant does not dispute that the terms are covered by 35 U.S.C. § 112 1 Appellant’s references to the Specification are to the published patent application, U.S. Pub. No. 2003/0191845 A1 (Oct. 9, 2003). 2 We note the Examiner’s suggestion that Appellant may be able to avoid this rejection by amending the claim. (Ans. 3; See U.S. Patent & Trademark Office, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (“A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation ‘non-transitory’ to the claim.”)). Appeal 2011-000762 Application 10/364,801 6 sixth paragraph; instead, Appellant argues sufficient structure is recited and properly linked in the Specification. (Reply Br. 22-25). Appellant points to the interfacing unit 120 as the recited structure for the “means for examining transmitted data,” “means for constructing a communication model,” and “means for passing data.” (Reply Br. 23-24 (citing Fig. 4, ¶¶ 0028, 0029, 0032)). We find that the passages cited by the Appellant recite structure that is linked to the functions for each of the means plus function terms at issue. However, as to the “means for constructing a communication model” we agree with the Examiner and find that the recited structure is insufficient. (Ans. 5). The Specification recites that the interfacing unit 120 may be “incorporated within a general purpose processor that is programmed to perform various functions in accordance with the present invention.” (Spec. 6:30-34). In order for a general purpose processor to provide sufficient structure under §112 an algorithm must be set forth in the specification. WMS Gaming Inc. v. In’tl Game Tech., 184 F.3d 1339, 1348 (Fed. Cir. 1999); see also Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249, 1254 (Fed. Cir. 2005). In support of this limitation, the Appellant points to the portion of the Specification that states: “At step 408, the interfacing unit 120 constructs a communications model from the recorded information of step 406.” (Reply Br. 23 (citing Spec. ¶ 0029)). This singular pronouncement merely states the function performed by the means and is insuffient to provide the required algorithm (i.e., structure) for the “means for constructing a communication model.” See Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012). As such, the Specification fails to provide sufficient structure for the “means for Appeal 2011-000762 Application 10/364,801 7 constructing a communications model.” Therefore, we affirm the Examiner’s rejection of claim 18 under 35 U.S.C. § 112, second paragraph. Rejection of claim 1 under 35 U.S.C. § 103 The Appellant argues that the cited art does not teach or suggest “wherein said constructing of said communications model is part of performing an initial setup configuration of a communications interface,” as required by claim 1. Appellant avers that neither Tso nor Jameson address performing a setup configuration of any interface or device. (App. Br. 14- 16). The Examiner points to Tso’s “laundry list of information … stored about the user which makes up a type of model for the system to use to bridge the communications between client and servers” as disclosing the claimed communication model. (Ans. 10, 17 (citing Tso 7:20-8:9)). The Examiner combines Tso with Jameson’s teaching of profile creation as teaching the initial setup. (Ans. 18 (citing Jameson ¶ 0046-0050)). We disagree with the Appellant. Tso’s disclosure is directed to dynamically manipulating data transmitted between two computers over a communications link. (Tso 1:12- 13, 2:8-12, 2:47-49). The portion of Tso cited by the Examiner lists examples of data that may be used to indicate which data manipulation services may be invoked by Tso’s invention. (Id. 7:20-8:9). The limitations of claim 1 specify that “communications parameters” are used to construct a “communications model.” The broadest reasonable construction of these limitations would include Tso’s disclosure of data such as type of encoding/compression, network latency, bandwidth, error rates, which may be used to invoke services that create an interface for data to pass through in order to complete transmission of data between a client and a server. (Ans. Appeal 2011-000762 Application 10/364,801 8 10 (citing Tso 17:16-25, 7:20-8:9)). The cited portion of Jameson creates a profile for a software application that selectively retrieves information from various internet sites. (Jameson ¶¶ 00046-50). The broadest reasonable construction of “initial setup configuration of a communications interface” would include Jameson’s disclosure of the initial creation and setup of the aforementioned profiles including “configuration information that controls the overall process.” (Id. ¶ 0046). Thus, we sustain the Examiner’s rejection of claim 1 and for similar reasons claims 6, 11, 17 and 18, which contain commensurate limitations and their dependent claims 3-5, 8-10, 13- 16, 19, and 24, which were not separately argued, as obvious over the cited art. Rejection of claim 2 under 35 U.S.C. § 103 Appellant urges that the Examiner erred in finding that the cited art teaches or suggests the limitations of claim 2 because Tso does not determine whether a communications model has been established nor does it address the conditional aspects of constructing the communications model. (App. Br. 18). Claim 2 requires, in the absence of an existing communications model, sending data to the intended device in an effort to cause a transmission to occur and using parameters gleaned from that transmission to construct a communications model. The Examiner interprets Tso’s disclosure of a non-enabled device as a device without a communication’s model. (Ans. 19 (citing Tso 10:50)). The Examiner points out that a “pop-up” including hypertext link 44 may be sent to the non- enabled device to allow the download of specialized software to enable sophisticated transcoding functionality. (Ans. 19 (citing Tso 11:4)). We find the Examiner’s explanation to be reasonable and not persuasively Appeal 2011-000762 Application 10/364,801 9 rebutted by Appellant. Appellant has not presented persuasive evidence or argument demonstrating error in the Examiner’s rejection of claim 2. Thus, we sustain the Examiner’s rejection of claim 2 under 35 U.S.C. § 103(a) and for similar reasons we sustain the rejections of claim 7 and 12, which contain commensurate limitations. Rejection of claim 20 under 35 U.S.C. § 103 As to claim 20, Appellant argues that the Examiner used improper hindsight to combine Tso and Jameson with Geiger. Claim 20 depends on claim 6 with the additional limitation that the network device be a modem, cable modem, dial-up modem, DSL modem, set top box, router, or switch. The Examiner finds Tso and Jameson teach the limitations of claim 6 and Geiger teaches placing information in a PDA or a set top box. In addition, the Examiner finds Tso discloses the use of a dial-up modem as a network device. (Tso 2:56-3:6). The Examiner further finds Geiger discloses a set top box, modems, a router and a switch that may be equipped with codec systems to compress and decompress data utilizing different algorithms for different device types. (Ans. 13 (citing Geiger 2:50-56, 15:10-40)). As noted above, the type of compression is one of the parameters disclosed in Tso used to construct a communications model. According to the Examiner, one of ordinary skill in the art would learn from the combined disclosures of the cited art that the same programming could apply to a number of different devices including PDAs or set top boxes. Appellant has not convinced us of error in the Examiner’s reasonable rationale. As such, we sustain the Examiner’s rejection of claim 20 under 35 U.S.C. § 103(a). Appeal 2011-000762 Application 10/364,801 10 Rejection of claim 21 under 35 U.S.C. § 103 Appellant argues that the Examiner erred in finding that the cited art teaches or suggests “creating a proxy for said communications device based on said communications model for said communications device; and switching a communications device to pass through said proxy created for said communications device” as recited by claim 21. The Examiner relies upon Wu to teach or suggest this limitation. (Ans. 14 (citing Wu 10:8-57)). Wu relates to transferring a communication session into one of a plurality of service areas and each service area being associated with a transcoding proxy. (Wu 1:1-21). Appellant avers that Wu does not involve the establishment of communication. (App. Br. 20-21). However, as with claim 1 the Examiner relies upon Tso and Jameson for that limitation. (Ans. 13- 14). Wu is relied upon to show the use of a proxy and switching a communication device to pass through the proxy as recited by the disputed limitation. Wu details switching a device from one service area to another using transcoding proxies. (Id. 10:8-57). The Appellant has not persuaded us of error in the Examiner’s reasoning, and thus, we sustain the Examiner’s rejection of claim 21 under 35 U.S.C. § 103(a). Rejection of claim 22 under 35 U.S.C. § 103 Appellant avers that the Examiner erred in finding that the cited art teaches or suggests “constructing a communications model that indicates communication direction” as recited by claim 22. The Examiner finds that the broadest reasonable interpretation of “communication direction condition” would encompass both Tso’s disclosure of user location information and I’Anson’s disclosure of specific location data. (Ans. 22 (citing Tso 7:35-30); Ans. 15 (citing I’Anson 4:40-62, 5:63-66)). Appellant Appeal 2011-000762 Application 10/364,801 11 argues that Tso fails to teach constructing a communication model and thus, could not possibly contemplate communications direction conditions. (App. Br. 22). As discussed in regards to claim 1, we disagree with Appellant’s interpretation of Tso and for similar reasons this argument is also unpersuasive as to claim 22. Appellant also argues that claimed communications direction “clearly and unambiguously mean[s] an inbound (e.g. downlink in wireless communication) or outbound (e.g. uplink) communication with respect to a referenced device.” (Reply Br. 18 (citing Spec. ¶ 0014)). Appellant cites to a discussion of Fig. 1, which illustrates an embodiment of the invention. (Spec. ¶ 0008). The cited section mentions data being transferred bi- directionally. (Spec. ¶ 0014). Appellant’s argument is unpersuasive because the cited portion of the Specification does not contain a definition sufficient to limit the meaning of the claim language. Appellant goes on to argue that the Examiner provides insufficient rationale for combining the disclosures of Tso and I’Anson. (App. Br. 22). Here again we are not persuaded. The Examiner finds that for one of ordinary skill in the art it would have been obvious to expand upon Tso’s recitation of location information with the more detailed disclosure found in I’Anson. (Ans. 22). The Appellant has not provided argument or evidence sufficient to persuade us of error in the Examiner’s reasonable explanation. Thus, we sustain the Examiner’s rejection of claim 22 under 35 U.S.C. § 103(a) and claim 25, which contains a commensurate limitation. Rejection of claim 23 under 35 U.S.C. § 103 As to claim 23, Appellant argues that the Examiner erred by combining Tso, Jameson, and Girard without an articulated rationale. Appeal 2011-000762 Application 10/364,801 12 Appellant asserts that Tso is not concerned with setup configuration so there would be no reason for one of skill in the art to combine Tso with Girard’s notification that a configuration has been completed. (App. Br. 23). Girard discloses transmitting a report to various network components upon completion of configuration of certain network devices. (See Ans. 23 (citing Girard 30:3-17)). The Examiner finds that [i]t would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize Girard's ability to notify that a configuration is complete with the combine[d] inventions of Tso and Jameson so that a device that is having its configuration information stored on a proxy is complete, the device can be notified that it may start or continue communicating in the system now. (Ans. 16). The Appellant has not provided sufficient evidence to persuade us of error in the Examiner’s rationale. As such, we sustain the Examiner’s rejection of claim 23 under 35 U.S.C. § 103(a) and claim 26, which contains a commensurate limitation. DECISION At least one rejection of each claim on appeal has been affirmed, which thus constitutes a general affirmance of the decision of the Examiner as to each claim on appeal. 37 C.F.R. § 41.50(a)(1). To summarize, our decision is as follows. The rejection of claims 17 under 35 U.S.C. § 101 is affirmed. The rejection of claim 18 under 35 U.S.C. § 112, second paragraph is affirmed. The rejection of claim 19 under 35 U.S.C. § 112, second paragraph is reversed. Appeal 2011-000762 Application 10/364,801 13 The rejection of claims 1-26 under 35 U.S.C. § 103(a) as unpatentable over the cited art 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 msc Copy with citationCopy as parenthetical citation