Ex Parte Kim

Patent Trial and Appeal Board

Apr 28, 2014

11860299 (P.T.A.B. Apr. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/860,299 09/24/2007 Jong-Hwan KIM 1235-527 (SP7011) 6332
66547 7590 04/29/2014
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
BILODEAU, DAVID
ART UNIT PAPER NUMBER
2648
MAIL DATE DELIVERY MODE
04/29/2014 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 JONG-HWAN KIM
____________

Appeal 2011-012502
Application 11/860,299
Technology Center 2600
____________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-18. App. Br. 2; Ans. 3. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.

Appeal 2011-012502
Application 11/860,299

2
REJECTIONS
The Examiner rejected claims 1-3, 7, 8, 12, 13, 17, and 18 under 35
U.S.C. § 102(b) as anticipated by U.S. Pub. No. 2005/0073522 A1 to
Aholainen. Ans. 6-7.
The Examiner rejected claims 1, 7, 12, and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Aholainen and U.S. Pub. No. 2002/0132584
A1 to Izumi. Id. at 8-9.
The Examiner rejected claims 4-6, 9-11, and 14-16 under 35 U.S.C.
§ 103(a) as unpatentable over Aholainen and U.S. Pub. No. 2003/0220765
A1 to Overy. Id. at 9-11.
ANTICIPATION REJECTION OF
CLAIMS 1-3, 7, 8, 12, 13, 17, AND 18
OVER AHOLAINEN
Claims 1-3, 7, 8, 12, 13, 17, and 18 are rejected as anticipated by
Aholainen. Appellant directs arguments to claim 1 and asserts the remaining
claims require the argued subject matter. App. Br. 7-8 and 10. We agree
that claim 1 is accordantly representative.
The dispositive issue is whether the Examiner adequately addresses
claim 1’s requirement of “one or more pre-stored data items are multicasted
to a plurality of Bluetooth devices” (emphasis added). App. Br. 5-7.
The Examiner finds the claimed multicasting is taught by Aholainen’s
Figure 1A network of master and slave devices, stating:
The term multi cast is being interpreted to mean sending one
transmission to multiple devices but not necessarily all of the
devices as in a broadcast. Aholainen shows communication
between a Master device and several Bluetooth slave devices
[Figure 1 A]. In Par. 0006 Aholainen states “[t]he master
Appeal 2011-012502
Application 11/860,299

3
device maintains the piconet’s network clock and controls when
each slave device can communicate with the master.” This is a
form of multi cast as is common in Bluetooth Protocol.
The controlling of each slave device (i.e. control signals
are multicasted to a plurality of Bluetooth slave devices) by the
Master of the piconet can be interpreted as a multicast.
Ans. 11-12.
Appellant responds:
[T]he Examiner has failed to show that controlling, by the
Master, of each slave device in a piconet makes it necessary
that the Master multicast to each slave device of the piconet.
Accordingly, the Examiner has failed to provide the necessary
basis in fact or technical reasoning of reasonable support[.]
Reply Br. 2.
Appellant’s argument is persuasive. The Examiner simply does not
explain – and it is not self-evident – why Aholainen’s cited master device is
perceived to multicast the same control signal to the slave devices; as
opposed to transmitting respective control signals to the slave devices. In
light of the plain meaning and invention’s disclosed embodiment of a
“multicast,” an ordinarily skilled artisan would interpret the claimed
multicasting as a transmission of the same data items to the Bluetooth
devices. See e.g., multicast. (n.d.). Collins English Dictionary – Complete &
Unabridged 10th Edition. Retrieved April 21, 2014, from Dictionary.com
website: http://dictionary.reference.com/browse/multicast (“a broadcast from
one source simultaneously to several receivers”); cf., Spec. p. 10, ll. 10-28
(multicast example by which the same data items are sequentially
Appeal 2011-012502
Application 11/860,299

4
transmitted to selected devices).1 The Examiner has not established a
teaching of any such multicasting by Aholainen’s cited master device.
For the foregoing reasons, the anticipation rejection of claims 1-3, 7,
8, 12, 13, 17, and 18 is not sustained.
OBVIOUSNESS REJECTION OF
CLAIMS 1, 7, 12, AND 17
OVER AHOLAINEN AND IZUMI
Claims 1, 7, 12, and 17 are rejected as obvious over Aholainen and
Izumi. Appellant directs arguments to claim 1 and asserts the remaining
claims require the argued subject matter. App. Br. 9. We agree that claim 1
is accordantly representative.
The dispositive issue is, again, whether the Examiner adequately
addresses claim 1’s requirement of “one or more pre-stored data items are
multicasted to a plurality of Bluetooth devices” (emphasis added). Id. at 8-9.
The Examiner finds the claimed multicasting is additionally taught
(i.e., in addition to Aholainen’s teachings) by Izumi’s transmission of
registration information to neighboring devices, stating:
The Examiner ... directs applicant’s attention to [Par.
0014 and 0049] of Izumi which states “a wireless
communication apparatus comprising: registration means [ ];
and informing means for sending information associated with
the first wireless terminal registered by the registration means
to other already registered wireless communication apparatuses

1 Note the invention’s disclosed embodiment – and, thus, claimed scope – of
multicasting includes transmission of a message to devices sequentially,
whereas the plain meaning appears restricted to transmission of a message to
devices simultaneously. Thus, the claimed multicasting encompasses both
sequential and simultaneous transmissions.
Appeal 2011-012502
Application 11/860,299

5
in response to registration by the registration means.” This
shows pre-stored data (i.e.[,] information associated with the
first wireless terminal) is multicast to a plurality of Bluetooth
devices (sent to other already registered wireless devices).
Ans. 12-13 (Examiner’s emphasis).
Appellant responds:
[T]his [emphasized] statement that is found in paragraph 0014
of Izumi fails to disclose or suggest that the sending of
information that is associated with the first wireless terminal is
performed by a multicasting a plurality of Bluetooth devices via
a Bluetooth module of the portable terminal[.]
Paragraph 0049 of Izumi that the Examiner cites in the
Response to Argument section is also deficient, with paragraph
0049 of Izumi simply disclosing that a “registration mode is
launched by key operations” and that “the cordless telephone
102 begins to send an Inquiry message as an inquiry number of
Bluetooth (S702).”
Reply Br. 3.
Appellant’s argument is not persuasive. Izumi’s above-addressed
disclosures clearly teach that, as part of a registration mode for registering
neighboring Bluetooth devices, the in-mode device multicasts an “Inquiry
message” to the neighboring devices. Izumi ¶ [0049].2 In the cited example:
A registration mode is launched by key operations on the
cordless telephone 102. If the registration mode is launched
(S701), the cordless telephone 102 begins to send an Inquiry
message as an inquiry number of Bluetooth (S702). Upon
receiving the Inquiry message (S801), the facsimile 101, PC

2 Note that Aholainen’s mentions an exchange of “inquiry and paging
packets.” Aholainen ¶ [0033].
Appeal 2011-012502
Application 11/860,299

6
103, digital camera 104, and printer 105 send Inquiry Response
messages as responses (S802).
Id. The above inquiry message transmission teaches the claimed
multicasting, particularly insofar that the same inquiry message is received
by the facsimile, PC, camera, and printer.
For the foregoing reasons, the obviousness rejection of claims 1, 7,
12, and 17 is sustained.
OBVIOUSNESS REJECTION OF
CLAIMS 4-6, 9-11, AND 14-16
OVER AHOLAINEN AND OVERY
Claims 4-6, 9-11, and 14-16 are rejected as obvious over Aholainen
and Overy. The rejection suffers the same deficiency as the anticipation
rejection of claims 1-3, 7, 8, 12, 13, 17, and 18 over Aholainen. Ans. 9
(“Claims 4-6, 9-11 and 14-16 … unpatentable over Aholainen as applied to
claim 1 above[.]”).
Accordingly, the obviousness rejection of claims 4-6, 9-11, and 14-16
is not sustained.
DECISION
The Examiner’s decision rejecting claims 1, 7, 12, and 17 is affirmed.
The Examiner’s decision rejecting claims 2-6, 8-11, 13-16, and 18 is
reversed.3

3 We leave the Examiner to determine whether, in light of our holdings,
claims 2-6, 8-11, 13-16, and 18 may be rejected over a combination of
references including Izumi.
Appeal 2011-012502
Application 11/860,299

7
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-IN-PART

tj