Ex Parte Holtschneider

Patent Trial and Appeal Board

Jun 18, 2013

10929829 (P.T.A.B. Jun. 18, 2013)

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.
10/929,829 08/30/2004 David James Holtschneider 2002-073 5737
54472 7590 06/18/2013
COATS & BENNETT/SONY ERICSSON
1400 CRESCENT GREEN
SUITE 300
CARY, NC 27518
EXAMINER
CASCA, FRED A
ART UNIT PAPER NUMBER
2644
MAIL DATE DELIVERY MODE
06/18/2013 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 DAVID JAMES HOLTSCHNEIDER
____________

Appeal 2010-004280
Application 10/929,829
Technology Center 2600
____________

Before BRUCE R. WINSOR, BRYAN F. MOORE,
and CATHERINE SHIANG, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3-21, 41, 45-58, and 60-65. We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 2, 23, 28, 29, 42 - 44, and 59 are cancelled. Claims 22, 24-
27, and 30-40 are withdrawn from consideration pursuant to a restriction
requirement. Supp. Br. 2.
We affirm.
Appeal 2010-004280
Application 10/929,829

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STATEMENT OF THE CASE
Appellant’s invention relates “to the automatic connection of two or
more wireless communication devices.” Spec. 1:5-6. Claim 1, which is
illustrative of the invention, reads as follows:
1. A method of automatically initiating a long-range
wireless connection between two or more communication
devices via a long-range wireless network, the method
comprising:
placing a first communication device in a connection
request mode;
searching for one or more candidate communication
devices in the connection request mode;
detecting one or more first discriminators associated with
the connection request mode of the first
communication device; and
obtaining one or more candidate discriminators
associated with the connection request mode of at
least one of the candidate communication devices;
generating a selection metric for each of the candidate
wireless communication devices based on the
candidate discriminators;
selecting one of the candidate communication devices as
a second communication device based on the
selection metric; and
automatically initiating the long-range wireless
connection via the long-range wireless network
between the first communication device and the
second communication devices.
Claims 1, 3-10, 12, 13, 15-18, 20, 21, 41, 45-58, and 60-65 stand
rejected under 35 U.S.C. § 102(e) as anticipated by Vancraeynest (US
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Application 10/929,829

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2005/0141452 A1; published June 30, 2005; filed Feb 16, 2005; claiming
priority to application 09/413,658 filed Oct. 6, 1999). Ans. 4-10.
Claims 11, 14, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Vancraeynest and Official Notice of well-known prior art.
Ans. 10-12 (citing MPEP § 2144.03).
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed May 14, 2009; “Supp. Br.” filed July 16, 2009), and the Answer
(“Ans.” mailed Oct. 1, 2009; “Supp. Ans.” mailed Oct. 30, 2009) for the
respective positions of Appellant and the Examiner. Only those arguments
actually made by Appellant have been considered in this decision.
Arguments that Appellant did not make in the Brief have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(2010).

ISSUES
The dispositive issues presented by Appellant’s contentions are as
follows:
Did the Examiner err in looking to Vancraeynest in rejecting the
claims because “the handover described by Vancraeynest [is] unrelated to
. . . automatic long-range wireless connections . . . ” (App. Br. 7)?
Did the Examiner err in finding that Vancraeynest discloses all of the
limitations of claim 1?

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ANALYSIS
ANALOGOUS ART
Appellant contends that Vancraeynest’s handover of mobile stations
to one or more different base stations is unrelated to automatic long range
wireless connection between wireless devices. App. Br. 7. Although they
do not use the phrase “non-analogous art,” we understand Appellant to be
contending that Vancraeynest is non-analogous art. Claims 1, 3-10, 12, 13,
15-18, 20, 21, 41, 45-58, and 60-65 are rejected as anticipated by
Vancraeynest. Ans. 4-10.
However, the question whether a reference is analogous art is
irrelevant to whether that reference anticipates. See In re Self,
671 F.2d 1344, 1350, 213 USPQ 1, 7 (CCPA 1982). A
reference may be from an entirely different field of endeavor
than that of the claimed invention or may be directed to an
entirely different problem from the one addressed by the
inventor, yet the reference will still anticipate if it explicitly or
inherently discloses every limitation recited in the claims.
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Accordingly, with
regard to claims 1, 3-10, 12, 13, 15-18, 20, 21, 41, 45-58, and 60-65
Appellant’s contention is unpersuasive.
Claims 11, 14, and 19 were rejected as obvious over Vancraeynest
and official notice of well-known prior art. Ans. 10-12. In an obviousness
analysis,
“[t]wo separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.”
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In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004)). Appellant’s invention is in the field of
wireless, e.g., mobile, communication (see Abstract), as is Vancraeynest’s
disclosure (see Vancraeynest, Abstract). Accordingly, they are in the same
field of endeavor and Vancraeynest is, therefore, analogous art regardless of
the problem addressed.

REJECTION UNDER 35 U.S.C. § 102(e)
Claim 1
The Examiner finds that Vancraeynest discloses all of the limitations
of claim 1. Ans. 4-5. In doing so, the Examiner has construed
“communication device” recited in the claims to encompass Vancraeynest’s
“base stations.” See, e.g., Ans. 16. We agree. It is well-established that
during prosecution the claims are to be given the broadest reasonable
interpretation, taking into account any definitions presented in the
Specification, see In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004), without importing limitations from the Specification into
the claims, see In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
The plain meaning of communication device is a device for
communication or a device that communicates. One of ordinary skill in the
wireless or mobile communication art would understand a base station to be
a device that communicates wirelessly with mobile communication devices
such as cell phones, that is to say, a communication device. The
Specification states the following:
As used herein, the term “communication device” may include
a cellular radiotelephone with or without a multi-line display; a
Personal Communication System (PCS) terminal that may
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combine a cellular radiotelephone with data processing,
facsimile, and data communication capabilities; a Personal
Digital Assistant (PDA) that can include a radiotelephone,
pager, Internet/intranet access, web browser, organizer,
calendar, and/or a global positioning system (GPS) receiver;
and a conventional laptop and/or palmtop receiver or other
appliance capable of long-range wireless communication.
Spec. 4:2-10 (emphases added). Although specific examples of
communication devices are disclosed, the use of the word “may” indicates
that the list is exemplary, not limiting, and not a definition. The common
thread running through the examples is that they are “appliance[s] capable of
long-range wireless communication,” as is a base station. Accordingly, we
construe “communication device” as recited in claim 1 to encompass
appliances such as those enumerated by example in the Specification (Spec.
4:2-10) as well as mobile telephones and base stations, as disclosed by
Vancraeynest.
Appellant contends the Examiner erred by “equat[ing] the claimed
connection request mode with a powered on state of a mobile telephone”
(App. Br. 8) as disclosed by Vancraeynest. Appellant asserts that
Vancraeynest’s powering on of a mobile telephone is not an actual request
for communication, but rather merely an indication that the mobile telephone
is available for communication. Id.
The Examiner explains that when a mobile phone is powered on it is
placed in a mode where it can make a request for actual communication
(Ans. 13), which the Examiner construes as being encompassed by the
broadest reasonable interpretation of the phrase “connection request mode”
(see generally Ans. 4, 13-14). See Am. Acad. of Sci. Tech Ctr., 367 F.3d at
1364. The Examiner further asserts that the feature, i.e., a request for actual
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participation in wireless communication, is not recited in the claims. Ans.
13 (citing Van Geuns, 988 F.2d 1181).
We are unpersuaded of error. Appellant has not identified any special
meaning in the art or definition in Appellant’s Specification of “connection
request mode.” The Examiner has provided a reasonable explanation of why
Vancraeynest’s “on” mode is encompassed by the broadest reasonable
interpretation of “connection mode,” which Appellant has not persuasively
rebutted. We note for emphasis that even if we were to accept the
Appellant’s position that the recited “connection mode” requires a request
for actual participation in wireless communication, our view would be the
same. “[I]n considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). Thus,
Vancraeynest’s disclosure of cellular communication systems (see, e.g.,
Vancraeynest, ¶ [0005]) discloses everything that one skilled in the art
would have inferred as being inherent in such systems. For instance, one of
ordinary skill in the wireless or mobile communication art would have
inferred that upon turning on a mobile cellular telephone or other mobile
cellular device, the telephone or device registers with a selected base station
and receives a registration acknowledgement, both in the form of wireless
data communicated between the mobile cellular telephone (i.e., “first
communication device”) and the base station (i.e., “second communication
device”), i.e., actual wireless communication.
Appellant contends the Examiner erred by “equat[ing] the claimed
step of ‘searching for other communication devices in the connection request
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mode’ with monitoring beacon signals transmitted by one or more base
stations as taught by Vancraeynest.” App. Br. 8. Appellant explains that:
a mobile telephone relies on beacon signals to identify and
locate base stations in the vicinity of the mobile telephone.
While such monitoring operations help locate base stations that
may be used for future wireless communications, they do not
represent a search for communication devices in an actual
connection request mode.
Id.
The Examiner explains as follows:
When the mobile phone is turned “on”, it continuously/
periodically searches for beacon signals from multiple base
stations (other communication devices) in the vicinity of the
mobile phone so that the best base station is selected for
communication with the mobile phone. A person of ordinary
skill in the art would appreciate and know that base stations in
cellular communication systems periodically transmit beacon
signals so that their signal strengths are detected at the mobile
phone. Vancaeynest [sic] discloses a mobile phone selecting a
base station based on strength of signal obtained from beacon
signals (Par. 11, lines 1-13). Further, the base stations (other
communication devices) must be powered on (in
communication request mode) mode so that their beacon
signals are transmitted to the mobile telephone. Thus, the
mobile phone of [Vancraeynest] monitoring base station
beacons for the purpose of finding the best base station to
communicate with is equivalent to “searching for one or more
candidate communication devices in the connection request
mode.”
Ans. 15.
The Examiner has provided a reasonable explanation which Appellant
has not persuasively rebutted. Accordingly, we are unpersuaded of error,
see Preda, 401 F.2d at 826, and note for emphasis, as above, that one of
ordinary skill in the art would have further understood that the registration of
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a mobile telephone with a base station comprises actual wireless
communication.
Appellant contends the Examiner erred by “equat[ing] the claimed
candidate discriminators with Vancraeynest's base station signal strengths.”
App. Br. 8. Appellant explains that “[w]hile the signal strength of a base
station signal impacts the accuracy of wireless communications between a
mobile telephone and a base station, such signal strengths in and of
themselves do not represent information associated with a connection
request mode of a communication device.” App. Br. 9.
The Examiner explains as follows:
As mentioned by [Appellant], discriminators are defined as
information associated with the connection request mode of a
device, e.g., amplitude. . . . [A] person of ordinary skill in the
art would appreciate and understand that amplitude represents
the strength of signals. Thus, discriminators are interpreted as
signal strength. Vancraeynest's mobile phone looks for signal
strengths of the beacon signals transmitted from multiple base
stations. The mobile phone selects the base station with highest
signal strength for communication, thus, mobile phone
detecting signal strengths of the base stations reads on the
detecting of discriminators (see [Vancraeynest,] par. 11).
Ans. 16-17.
We find the Examiner’s explanation to be reasonable and not
persuasively rebutted by Appellant. We are, therefore, unpersuaded of error.
See Preda, 401 F.2d at 826.
Appellant further contends that:
the claimed selection metric (generated based on the candidate
discriminators) is wholly different from the list of base station
signal strengths described by Vancraeynest, and the claimed
candidate communication device selection (based on the
selection metric) is wholly different from the base station
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selection (based on an ordered list of signal strengths) described
by Vancraeynest.
App. Br. 9. We are unpersuaded of error. Appellant merely reiterates what
the disputed claim limitations recite and makes general allegations that the
disclosures of Vancraeynest relied on by the Examiner are “wholly
different.” Merely reciting the language of the claims and asserting that the
cited prior art reference does not disclose a claim limitation is insufficient to
show error. See 37 C.F.R. § 41.37(c)(vii)(2010) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”); see also 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.”); cf. In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”).
That said, we note that the Examiner has responded to Appellant’s
contentions with reasonable explanations (see Ans. 17-18) which Appellant
has not persuasively rebutted.
Appellant has not persuaded us of error in the rejection of claim 1.
Accordingly, we sustain the rejection of claim 1.

Claims 41, 47, 58
The patentability of independent claims 41, 47, and 58 was argued
relying on the arguments made for the patentability of claim 1. App. Br. 9-
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10. These arguments are unpersuasive for the reasons discussed supra and
we therefore sustain the rejection of claims 41, 47, and 58.

Claim 65
The patentability of independent claim 65 was argued relying on the
arguments made for the patentability of claim 1. App. Br. 10-11. These
arguments are unpersuasive for the reasons discussed supra. Appellant
further argues that “[b]ecause Vancraeynest does not teach or suggest the
steps selecting the candidate device based on the claimed discriminators,
Vancraeynest necessarily does not anticipate exchanging identification
information between the two devices.” App. Br. 11. Appellant’s contention,
which relies on arguments regarding claim 1 that we find unpersuasive, is
similarly unpersuasive. Accordingly, we are unpersuaded of error, and note
for emphasis, that one of ordinary skill in the art would have further
understood that the registration of a mobile telephone with a base station
comprises actual wireless communication in which identification
information is exchanged between the two devices. See Preda, 401 F.2d at
826. We therefore sustain the rejection of claim 65.

Claims 4-6, 46, 49, 51, 53, 55, and 57
Claims 4-6, 46, 49, 51, 53, 55, and 57 depend, directly or indirectly,
from claim 1, 41, or 47. The patentability of claims 4-6, 46, 49, 51, 53, 55,
and 57 was argued relying on the arguments made for the patentability of
claims 1 and 65. App. Br. 11. These arguments are unpersuasive for the
reasons discussed supra and we therefore sustain the rejection of claims 4-6,
46, 49, 51, 53, 55, and 57.
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Application 10/929,829

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Claims 7-14, 61, and 62
1

Claims 7-14, 61, and 62 depend, directly or indirectly, from claim 1 or
58. The patentability of claims 7-14, 61, and 62 was argued relying on the
arguments made for the patentability of claim 1. App. Br. 11. These
arguments are unpersuasive for the reasons discussed supra. Appellant
contends that Vancraeynest does not disclose the additional limitations
recited by claims 7-14, 61, and 62. However, Appellant’s argument is
unpersuasive as it does not address the findings made by the Examiner (Ans.
6-7, 10-11) with specificity, and amounts to little more than reiterating what
the disputed claim limitations recite and making general allegations that
Vancraeynest does not disclose the limitations. Merely reciting the language
of the claims and asserting that the cited prior art reference does not disclose
a claim limitation is insufficient. See 37 C.F.R. § 41.37(c)(vii)(2010); see
also In re Lovin, 652 F.3d at 1357; cf. Baxter Travenol, 952 F.2d at 391.

Claims 3, 15-18, 20, 21, 45, 48, 50, 52, 54, 56, 60, 63, and 64
Claims 3, 15-18, 20, 21, 45, 48, 50, 52, 54, 56, 60, 63, and 64 depend
from claim 1, 41, 47, or 58. The patentability of claims 3, 15-18, 20, 21, 45,
48, 50, 52, 54, 56, 60, 63, and 64 was argued relying on the arguments made
for the patentability of claim 1. App. Br. 11. These arguments are
unpersuasive for the reasons discussed supra and we therefore sustain the
rejection of claims 3, 15-18, 20, 21, 45, 48, 50, 52, 54, 56, 60, 63, and 64.

1
Appellant includes claims 11 and 14 (Br. 11), which are rejected under
§ 103 (Ans. 10-11), in this argument. Claims 11 and 14 are discussed
further infra.
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REJECTION UNDER 35 U.S.C. § 103(a)
Claims 11, 14, and 19 depend, directly or indirectly, from claim 1.
The patentability of claims 11, 14, and 19 under 35 U.S.C. § 103(a) was
argued relying on the arguments made for the patentability of claim 1. Br.
12. These arguments are unpersuasive for the reasons discussed supra and
we therefore sustain the rejection of claims 11, 14, and 19.

ORDER
The decision of the Examiner to reject claims 1, 3-21, 41, 45-58, and
60-65 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

kis