Ex Parte Kim

Patent Trials and Appeals Board

Feb 11, 2013

11489014 - (D) (P.T.A.B. Feb. 11, 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.
11/489,014 07/19/2006 Hoe-Won Kim 1235-119 9141
66547 7590 02/11/2013
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
WANG-HURST, KATHY W
ART UNIT PAPER NUMBER
2646
MAIL DATE DELIVERY MODE
02/11/2013 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 APPEALS BOARD
____________________
Ex parte HOE-WON KIM
____________________

Appeal 2011-008680
Application 11/489,014
Technology Center 2600
____________________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008680
Application 11/489,014

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Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant’s claimed invention is related to a portable terminal with an
improved server connecting device and a method of connecting the portable
terminal to the server. (Spec. 1.) Independent claim 1, reproduced below, is
representative of the subject matter on appeal:

1. A portable terminal comprising:

a communication unit for communicating with a server
through an Access Point (AP);

a server connecting unit for initiating a connection to the
server; and

a controller for automatically searching for the server
using the communication unit via the AP, when the server
connecting unit is operated,

wherein when the portable terminal determines that the
portable terminal is not authenticated by the server, the
portable terminal disconnects from the AP; and

wherein when the portable terminal determines that a
service is terminated after authentication by the server, the
portable terminal disconnects from the AP and the server.

(disputed limitations emphasized)

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REJECTION
The Examiner rejected claims 1-17 under 35 U.S.C. 103(a) as being
unpatentable over the combined teachings and suggestions of Kawai (U.S.
Pat. App. Pub. No. 2003/0217262 A1) and Kalavade (U.S. Pat. App. Pub.
No. 2005/0177515 A1).

GROUPING OF CLAIMS
Based on Appellant’s arguments, we decide the appeal of the
obviousness rejection on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
ISSUE
Under § 103, did the Examiner err in finding that the cited references,
either alone or in combination, would have taught or suggested the disputed
limitations of:
wherein when the portable terminal determines that the
portable terminal is not authenticated by the server, the portable
terminal disconnects from the AP; and

wherein when the portable terminal determines that a
service is terminated after authentication by the server, the
portable terminal disconnects from the AP and the server,

within the meaning of representative claim 1 (emphasis added)?

ANALYSIS
This appeal turns upon claim construction. Our reviewing court
guides that “[i]n the patentability context, claims are to be given their
broadest reasonable interpretations . . . limitations are not to be read into the
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claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted).
At the outset, we observe that the disputed “wherein” clauses in
representative claim 1 are directed to temporal limitations regarding when
disconnect functions are conditionally performed by the portable terminal:
wherein when the portable terminal determines that the
portable terminal is not authenticated by the server, the portable
terminal disconnects from the AP; and

wherein when the portable terminal determines that a
service is terminated after authentication by the server, the
portable terminal disconnects from the AP and the server.

We conclude such conditional claim language broadly covers the
temporal state of a wireless connection from a portable terminal to an access
point (AP) and thus does not limit the claimed portable terminal (apparatus)
to a particular structure. 1 (Claim 1). Thus, we conclude the claim scope is
not limited by the conditional “wherein” clauses.
Even assuming arguendo that the aforementioned “wherein” clause
limitations may be accorded patentable weight, Appellant’s arguments are
not persuasive because we find the weight of the evidence supports the

1 See MPEP § 2111.04 regarding “wherein” clauses:
Claim scope is not limited by claim language that suggests or
makes optional but does not require steps to be performed, or
by claim language that does not limit a claim to a particular
structure. However, examples of claim language, although not
exhaustive, that may raise a question as to the limiting effect of
the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
(MPEP § 2111.04, Eighth Edition, Rev. 9, Aug. 2012, emphasis added).
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Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness regarding representative claim 1. See Examiner’s “Response to
Argument” (Ans. 6-8).
Regarding the first disputed “wherein” clause, the Examiner finds that
Kalavade’s teaches authentication (¶¶ [0008], [0009], [0010]; Fig. 13),
which is suggestive of authentication failure. (Ans. 7). We find failure of
such authentication at least suggests the portable terminal disconnects after it
determines it has not been authenticated.2 (See Kalavade, Fig. 13).
Therefore, we are not persuaded by Appellant’s contention that “Kalavade
fails to relate a failed authentication attempt to a disconnection from an AP
[Access Point], as recited in Claim 1.” (App. Br. 7, ¶ 2).
Regarding the second disputed “wherein” clause, we find Kalavade
teaches or suggests that a session cannot be initially established unless it is
first authenticated. (Kalavade, Fig. 13). We also find Kalavade’s session
that terminates teaches or at least suggests that a service running in the
session is terminated. (¶ [0277]). The same paragraph of Kalavade
expressly teaches “the client does an explicit disconnect.” (Id.).
Appellant avers that “FIG. 13 illustrates a disconnect sent from the
client to a Network Access Server (Radius Client). While these
transmissions are shown as going through the AP en route to their final
destinations, FIG. 13 and the corresponding description fails [to] provide

2 “[T]he sources of information for a properly flexible obviousness inquiry .
. . include . . . the background knowledge, creativity, and common sense of
the person of ordinary skill.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587
F.3d 1324, 1329 (Fed. Cir. 2009). The Examiner’s analysis “may include
recourse to logic, judgment, and common sense available to a person of
ordinary skill that do not necessarily require explication in any reference or
expert opinion.” Id.
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any disclosure relating to a message requesting disconnect from the AP or
client disconnection from the AP.” (App. Br. 7, emphasis added).
In response, we observe that Appellant’s claim 1 does not recite “a
message requesting disconnect from the AP.” (Id). We decline Appellant’s
invitation to read “a message requesting disconnect from the AP” into the
claim. (App. Br. 7, emphasis added). See Van Geuns, 988 F.2d at 1184.
Similarly, Appellant urges in the Reply Brief that “Kalavade fails to
provide any disclosure indicating that the CTDR or the disconnect message
includes an instruction to disconnect from the AP.” (Reply Br. 3, emphasis
added). However, we observe representative claim 1 is silent regarding the
argued “instruction to disconnect from the AP.” (Id.). Thus, Appellant’s
arguments are not commensurate with the broader scope of representative
claim 1.
Notwithstanding Appellant’s arguments, the Supreme Court guides
that “when a patent ‘simply arranges old elements with each performing the
same function it had been known to perform’ and yields no more than one
would expect from such an arrangement, the combination is obvious.” KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag
Pro, Inc., 425 U.S. 273, 282 (1976)).
We find this reasoning is applicable here, particularly given that
authenticated connections of portable terminals to access points (and
associated servers) are well known in the art, as established by the prior art
relied on by the Examiner. For these reasons, on this record, we are not
persuaded of Examiner error. Accordingly, we sustain the obviousness
rejection of representative claim 1. Claims 2-17 (not argued separately) fall
therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
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DECISION
We affirm the Examiner’s rejection under § 103 of claims 1-17.
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).

ORDER
AFFIRMED

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