Ex Parte Jayachandran

Patent Trial and Appeal Board

Feb 25, 2016

13368072 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/368,072 02/07/2012
72165 7590 02/29/2016
BANNER & WITCOFF, LTD
ATTORNEYS FOR CLIENT 004770
1100 13TH STREET
SUITE 1200
WASHINGTON, DC 20005-4051
FIRST NAMED INVENTOR
Rajesh JAYACHANDRAN
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.
004770.02296 1077
EXAMINER
OBAYANJU, OMONIYI
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
02/29/2016 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):
PTO-72165@bannerwitcoff.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJESH JAY ACHANDRAN 1
Appeal2014-005805
Application 13/368,072
Technology Center 2600
Before THU A. DANG, JAMES W. DEJMEK, and
SCOTT B. HOWARD, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1--4, 6-14, and 16-22. Claims 5 and 15 have been canceled. App.
Br. 5. We have jurisdiction over the remaining pending claims under
35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection.
1 Appellant identifies Nokia Corporation as the real party in interest. App.
Br. 2.
Appeal2014-005805
Application 13/368,072
STATEMENT OF THE CASE
Introduction
Appellant's invention is directed to "controlling [the] operating mode
of mobile communication devices." Spec. i-f 2. In a disclosed embodiment,
an operating mode change command may be sent (i.e., broadcast) to mobile
devices as they enter an area serviced by a wireless access point. Spec. i-f 24.
An example of a change in operating mode may be to set the mobile device
to silent. Spec. i-f 35.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
1. A method comprising:
detecting an operating mode change command received by a
mobile communications device in a broadcast message from a
wireless access device, and
changing an operating mode of the mobile communications
device in response to the operating mode change command, the
operating mode change affecting user interface output of the mobile
communications device.
The Examiner's Rejections
1. Claims 1, 2, 6, 8-12, 16, and 18-22 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Hodges et al. (US 2008/0133791
Al; June 5, 2008) ("Hodges"). Final Act. 3-9.
2. Claims 3, 4, 7, 13, 14, and 17 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over Hodges and I' Anson et al. (US
2011/0312333 Al; Dec. 22, 2011) ("I' Anson"). Final Act. 9-13.
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Appeal2014-005805
Application 13/368,072
Issue on Appeal
Did the Examiner err in finding Hodges discloses "detecting an
operating mode change command received by a mobile communications
device in a broadcast message from a wireless access device," as recited in
claim 1?
ANALYSIS2
Appellant contends, inter alia, the Examiner erred in finding Hodges
discloses a broadcast message. App. Br. 10-11. In particular, Appellant
argues the cited portions of Hodges do not "indicate that the location
specific data is pushed to a plurality of devices, as opposed to a specific
device." App. Br. 11. Additionally, Appellant notes that a person of
ordinary skill in the art would understand that the examples provided in
Hodges of pushing location specific data (e.g., SMS, MMS, and W AP) are
not broadcast messages, but rather unicast messages. Reply Br. 5.
In response, the Examiner explains that "[t]he term 'a broadcast
message' is broadly claimed [and] is fairly characterized as the network
pushing (i.e. transmitting) location specific data to devices (i.e. broadcast)."
Ans. 3 (citing Hodges i-fi-124, 43, 54).
We find Appellant's argument persuasive of Examiner error. In
particular, paragraph 24 of Hodges is directed to reception frequencies
associated with broadcast media (as opposed to disclosing a broadcast
2 Throughout this opinion we have considered the Appeal Brief filed
January 14, 2014 ("App. Br."); the Reply Brief filed April 7, 2014 ("Reply.
Br."); the Examiner's Answer mailed on February 6, 2014 ("Ans."); and the
Final Office Action mailed on July 16, 2013, from which this Appeal is
taken ("Final Act.").
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Appeal2014-005805
Application 13/368,072
message comprising an operation mode change command). Additionally, as
Appellant notes, paragraphs 43 and 54 disclose pushing location specific
data to a device and provide exemplary methods of "a SMS message, a
MMS message, a WAP push or any other suitable technology." Hodges
iT 43.
To anticipate, a prior art reference must disclose more than "multiple,
distinct teachings that the artisan might somehow combine to achieve the
claimed invention." NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
1371 (Fed. Cir. 2008); see also In re Arkley, 455 F.2d 586, 587 (CCPA
1972) ("The [prior art] reference must clearly and unequivocally disclose the
claimed [invention] or direct those skilled in the art to the [invention]
without any need for picking, choosing, and combining various disclosures
not directly related to each other by the teachings of the cited reference.").
Because we find that Hodges does not disclose detecting an operating
mode change command in a broadcast message, as required by independent
claim 1, and similarly required in claims 10, 11, and 21, we need not address
the other issues related to the rejection of these claims raised by Appellant.
Accordingly, based on the record before us, we are constrained to reverse
the Examiner's 35 U.S.C. § 102(b) rejection of claim 1 and the rejection of
claims 10, 11, and 20, which contain similar recitations. We also do not
sustain the Examiner's rejections of claims 2--4, 6-9, 12-14, 16-20, and 22,
which depend from claims therefrom.
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Appeal2014-005805
Application 13/368,072
NEW GROUND OF REJECTION
We enter new grounds of rejection pursuant to our authority under 3 7
C.F.R. § 41.50(b). We reject independent claim 1under35 U.S.C. § 102(b)
as being anticipated by Miriyala (US 2003/0078080 Al; Apr. 24, 2003).
Miriyala describes a muting system in which mobile devices that enter
a silent zone are automatically muted by the system. Miriyala, Abstract.
Miriyala discloses "[t]he muter automatically communicates a muting
command to the wireless communication device in the silent zone."
Miriyala i-f 4. Miriyala further discloses the system may periodically
broadcast a message comprising the muting command such that all devices
entering the silent zone receive the message. Miriyala i-f 21 ("This [pushing
muting information] can be achieved by setting up the system to periodically
communicate the muting commands and the information stored in the
memory 30 at a rate that will allow every device entering the doorway to
receive the messages at least once.").
Thus, as to claim 1, we find Miriyala discloses a method comprising:
detecting an operating mode change command received by a mobile
communications device in a broadcast message from a wireless access
device (see, e.g., Miriyala i-fi-1 1, 4, 11 ("automatically arranging for different
operational modes for subscriber devices while located within such a zone"),
21, Figs. 1, 3), and changing an operating mode of the mobile
communications device in response to the operating mode change command,
the operating mode change affecting user interface output of the mobile
communications device (see, e.g., Miriyala i-fi-1 11, 17, 21, 22) (i.e., changing
the mobile device to silent mode).
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Appeal2014-005805
Application 13/368,072
Accordingly, for the reasons discussed supra, we find Miriyala
discloses each and every limitation recited in claim 1.
The Patent Trial and Appeal Board is a review body, rather than a
place of initial examination. We have made a new rejection regarding
independent claim 1under37 C.F.R. § 41.50(b). However, we have not
reviewed the remaining claims 2--4, 6-14, and 16-22 to the extent necessary
to determine whether these claims are unpatentable over Miriyala or other
prior art. We leave it to the Examiner to ascertain the appropriateness of any
further rejections based on these or other references. Our decision not to
enter a new ground of rejection for all claims should not be considered an
indication regarding the appropriateness of further rejection or allowance of
the non-rejected claims. See MPEP § 1213.03.
DECISION
We reverse the Examiner's decision rejecting claims 1, 2, 6, 8-12, 16,
and 18-22 under 35 U.S.C. § 102(b) as being anticipated by Hodges.
We reverse the Examiner's decision rejecting claims 3, 4, 7, 13, 14,
and 17 under 35 U.S.C. § 103(a) as being unpatentable over Hodges and
I' Anson.
We newly reject claim 1under35 U.S.C. § 102(b) as anticipated by
Miriyala.
37 C.F.R. § 41.50(b) provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
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Appeal2014-005805
Application 13/368,072
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner. ...
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
REVERSED; 37 C.F.R. § 41.50(b)
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