Ex Parte KirkeDownload PDFBoard of Patent Appeals and InterferencesSep 10, 201211422645 (B.P.A.I. Sep. 10, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte TONY KIRKE ________________ Appeal 2010-005831 Application 11/422,645 Technology Center 2600 ________________ Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005831 Application 11/422,645 2 STATEMENT OF THE CASE 1 Introduction This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b). Although not identified by Appellant in the Appeal Brief as required by the Patent Rules, we note that this case is related to co-pending application 11/422,649 filed on June 7, 2006 that is also currently on appeal (Appeal No. 2010-005834). The issues presented on appeal in that case are similar in many respects to the issues presented by Appellant in this case. Exemplary Claims Exemplary independent claim 1 under appeal reads as follows (emphasis added to contested limitation): 1. A method for communicating information within a network, the method comprising: accessing by a first wireless handheld communication device (WHCD), a list of authorized devices maintained at a second WHCD when said first WHCD is within operating range of said second WHCD, wherein said first WHCD is not paired with said second WHCD, and at least one authorized WHCD specified by said list of authorized devices is outside an operating range of said first WHCD; and communicating information between said first WHCD and said at least one authorized WHCD via said second WHCD. 1 Throughout this Decision, we refer to the Final Office Action (FOA) mailed May 1, 2009; the Appeal Brief (App. Br.) filed Oct. 5, 2009; the Examiner’s Answer (Ans.) mailed Dec. 23, 2009; and the Reply Brief filed Feb. 16, 2010. Appeal 2010-005831 Application 11/422,645 3 Exemplary dependent claim 2 under appeal reads as follows (emphasis added to contested limitation): 2. The method according to claim 1, comprising receiving at said first WHCD, a communication signal from said second WHCO, the communication signal comprising at least one of: an identifier (ID) of said second WHCD and an ID of said at least one authorized WHCD. Exemplary dependent claim 6 under appeal reads as follows: 6. The method according to claim 1, comprising establishing a communication link for communicating said information between said first WHCD and said at least one authorized WHCD using said second WHCD. Prior Art The prior art relied upon by the Examiner in rejecting the claims on appeal is: Biswas WO 02/078272 A1 Oct. 3, 2002 Mgrdechian US 2005/0174975 A1 Aug. 11, 2005 Rejections on Appeal A. The Examiner rejected claims 1, 11, and 21 under 35 U.S.C § 102(b) as being anticipated by Biswas. (FOA 4; Ans. 3). B. The Examiner rejected claims 2-10, 12-20, and 22-30 under 35 U.S.C § 103(a) as being unpatentable over Biswas in view of Mgrdechian. (FOA 5; Ans. 4). Appeal 2010-005831 Application 11/422,645 4 Appellant’s Contentions Claims 1, 11, and 21 In the Appeal Brief, Appellant contends that the Examiner erred in rejecting claim 1 because Biswas does not disclose all the limitations of claim 1. Specifically, Appellant contends that “Biswas does not disclose or suggest at least the limitation of ‘accessing by a first wireless handheld communication device (WHCD), a list of authorized devices maintained at a second WHCD when said first WHCD is within operating range of said second WHCD, . . . communicating information between said first WHCD and said at least one authorized WHCD via said second WHCD,’” as recited in independent claim 1. App. Br. 8-9. Appellant further contends that “Biswas discloses that the table or listing (i.e., the alleged list of ‘authorized devices’) includes all the terminals Bs in the entire MANET (the alleged ‘network’). Biswas clearly discloses that each of the terminals B broadcasts its control information within the MANET (the alleged ‘network’), and that the broadcasted control information is fully distributed to the rest of the terminals (rest of the Bs) within MANET (the alleged ‘network’).” App. Br. 9-10. Appellant goes on to contend that “Biswas does not disclose or suggest that any or all of these broadcasted control information from the terminals Bs, has anything to do with getting ‘authorized’ in order to be listed on the table or listing (the alleged ‘list of authorized devices’). . . . [A]ny terminal that broadcasts its control information within MANET . . . Appeal 2010-005831 Application 11/422,645 5 would automatically (and indiscriminately) be added to the table or list.” App. Br. 10. Appellant also contends that The Examiner alleged that Appellant’s “authorized devices” is broadly claimed, and then tried to limit Appellant’s claim by introducing a new limitation, which is not recited in Appellant’s claim 1. For example, the Examiner argued that “a list of authorized devices or a list of known devices, or a list of visible users” is fairly characterized as a table listing known (available) terminals in a network. The Examiner’s above argument is moot, because in effect, the Examiner has rewritten Appellant’s claim 1 to include limitations or features, which are not recited in Appellant’s claim language. . . . Since the Examiner’s alleged elements (i.e., list of known devices or a list of visible users”) are not found in Appellant’s claim 1, the Appellant maintains that Biswas does not anticipate Appellant’s claim 1. App. Br. 11. Appellant contends that “[m]ore specifically, Biswas does not disclose that the table or the listing maintained by each of the terminals in the network is disclosed as ‘authorized terminals’. . . . [T]he Examiner has not provided support that Biswas discloses ‘authorized terminals’ in the tables or listings.” App. Br. 12. In the Reply Brief, Appellant contends The Examiner made a new argument and relies for support on Appellant’s Fig. 6C, which discloses a List of Known/Authorized Devices as list 614c within HCD 602c's Appeal 2010-005831 Application 11/422,645 6 (“second WHCD”) operating range. More specifically, the Examiner seems to allege, for a first time, that Appellant’s Fig. 6C discloses that devices HCD 604c, HCD 606c and HCD 608c are the only devices known within the operating range of HCD 602c, and all of devices HCD 604c, HCD 606c and HCD 608c (“known device”) are on the List of Known/Authorized Devices as list 614c. The Appellant points out that Appellant’s Fig. 6C simply illustrates that all devices within the operating range can in fact also be authorized devices and thus be on the list, and in any event is simply an exemplary embodiment of the invention and should not be construed in a limiting manner (see specification at ¶0053). Reply 4. Finally, Appellant contends Appellant’s Fig. 7 and ¶0061 further support Appellant’s argument that Appellant's “list (i.e., list 704) of known or authorized devices (KAD list) (i.e., HCD2, HCD3 and HCD5)” are not merely just known devices, but are authorized devices which are differentiable from the unauthorized devices (i.e., HCD4 and ... HCDX). Biswas does not disclose the alleged list of authorized devices. Accordingly, the Examiner's . . . arguments . . . are moot. Reply 5. Appellant contends that similar arguments pertain to independent claims 11 and 21. (App. Br. 12). Claims 2, 12, and 22 Appellant contends that the Examiner erred in rejecting claims 2-10, 12-20, and 22-30 because Appeal 2010-005831 Application 11/422,645 7 Mgrdechian, in general, discloses an initiating wireless device (the alleged “first WHCO”) accessing information (e.g., wireless device ID and user profile information) associated with another wireless device via an Internet network with a remote computer system 360 (see Mgrdechian’s abstract). Mgrdechian’s remote computer system 360, therefore, is not a WHCD. Consequently, Mgrdechian’s remote computer system is also outside the operating range of the initiating wireless device (the alleged “first WHCD”). Mgrdechian, therefore, also does not disclose or suggest “said first WHCD is within operating range of said second WHCD . . . communicating information between said first WHCD and said at least one authorized WHCD via said second WHCD,” as recited by the Appellant in independent claim 1. Therefore, Mgrdechian does not overcome the deficiencies of Biswas in independent claims 1, 11 and 20, respectively. . . . [C]laims 2-10, 12-20 and 22-30, which depend from independent claims 1, 11, and 21, respectively, are consequently also respectfully submitted to be allowable at least for the reasons stated above with regard to allowability of claim 1. App. Br. 14. Appellant goes on to contend that “Mgrdechian’s remote computer system 360 is not a WHCD” and “does not disclose or suggest ‘receiving at said first WHCO, a communication signal from said second WHCD, the communication signal comprising at least one of: an identifier (ID) of said second WHCD and an ID of said at least one authorized WHCD,’ as recited in Appellant’s claim 2.” App. Br. 15. Finally, in the Reply Brief, Appellant contends that Appellant points out that Mgrdechian (pg. 11, pp0104, lines 15- 27) discloses that the target device (the alleged “second Appeal 2010-005831 Application 11/422,645 8 WHCD”) sends back to the initiating device (the alleged “first WHCD”) a communication signal, including its own device identifier (ID) and the device ID of all the wireless devices within the range. Since Mgrdechian does not disclose or suggest “a list of authorized devices”, in this regard, Mgrdechian’s “all the wireless devices within the range” are not the alleged “at least one (authorized) WHCD”. Therefore, the Examiner's . . . arguments are still moot. Dependent claims 2- 10, 12-20 and 22-30 are submitted to be allowable. Reply 7. Claims 6-10, 16-20, and 26-30 Appellant contends that the Examiner erred in rejecting claims 6-10, 16-20, and 26-30 because Mgrdechian’s remote computer system is also outside the operating range of the initiating wireless device (the alleged “first WHCD”). Mgrdechian therefore also does not disclose or suggest “said first WHCD is within operating range of said second WHCD . . . communicating information between said first WHCD and said at least one authorized WHCD via said second WHCD,” as recited by the Appellant in independent claim 1 . . . [and c]laims 6-10, 16-20 and 26-30 depend directly or indirectly from claims 1, 11 and 21, respectively, are also submitted to be allowable. App. Br. 16. Issues on Appeal Issue 1 Did the Examiner err in rejecting claims 1, 11, and 21 as being anticipated because Biswas does not disclose the limitations “accessing by a first wireless handheld communication device (WHCD), a list of authorized Appeal 2010-005831 Application 11/422,645 9 devices maintained at a second WHCD when said first WHCD is within operating range of said second WHCD,” and “communicating information between said first WHCD and said at least one authorized WHCD via said second WHCD,” as recited by claim 1? Issue 2 With respect to the unpatentability rejection of dependent claims 2, 12, and 22, did the Examiner err in finding that the combination of Biswas with Mgrdechian teaches or suggests “receiving at said first WHCD, a communication signal from said second WHCD, the communication signal comprising at least one of: an identifier (ID) of said second WHCD and an ID of said at least one authorized WHCD,” as recited in dependent claim 2? Issue 3 With respect to the rejection of dependent claims 6-10, 16-20, and 26- 30, and similar to Issue 1, supra, did the Examiner err in finding that the combination of Biswas with Mgrdechian teaches or suggests that “said first WHCD is within operating range of said second WHCD . . . [and] communicating information between said first WHCD and said at least one authorized WHCD via said second WHCD,” as recited in independent claim 1, and as similarly recited in independent claims 11 and 21, from which claims 6-10, 16-20, and 26-30 variously and ultimately depend? Appeal 2010-005831 Application 11/422,645 10 ANALYSIS Issue 1 We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We disagree with Appellant’s conclusions with respect to claim 1, and we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in the Examiner’s Answer (Ans. 3-4 and 8-9) in response to Appellant’s Arguments (App. Br. 8-12; Reply 3-6). In particular, we concur with the Examiner’s finding that Biswas discloses “accessing by a first wireless handheld communication device (WHCD), a list of authorized devices maintained at a second WHCD when said first WHCD is within operating range of said second WHCD.” (Ans. 3- 4 and 8-9). Further in this regard, Appellant’s arguments that Biswas’ list of “known devices” does not disclose Appellant’s claimed “list of authorized devices” are unpersuasive. These arguments are particularly unpersuasive because, as pointed out by the Examiner, Appellant’s Specification uses the terms “known” and “authorized” interchangeably (see Spec. at ¶¶ [0050] – [0053] (“list of known or authorized devices”)). In addition, we find that Biswas’ list of “known” devices may be construed to include “authorized” devices, as Appellant has not restricted the claimed “list of authorized devices maintained at a second WHCD” to only include authorized devices and exclude known but unauthorized devices. That is, given the broadest reasonable interpretation of the claim language, Appeal 2010-005831 Application 11/422,645 11 and as disclosed by Biswas, we find that “authorized devices” could be construed as merely being a subset of “known devices.” As a result, we disagree with Appellant that “the Examiner has rewritten Appellant’s claim 1 to include limitations or features, which are not recited in Appellant’s claim language.” (See App. Br. 11 (emphasis omitted)). To the extent that the Examiner may or may not have set forth a “new argument” in the Answer, we also disagree with Appellant that the Examiner has read limitations from the embodiment in Appellant’s Fig. 6C into the claims. (See Reply 4). Further, we find Appellant’s arguments regarding Appellant’s FIG. 7 and ¶ [0061] of the Specification (see Reply 5) to be unpersuasive, as Appellant’s arguments are not commensurate with the scope of the independent claims. Contrary to Appellant’s arguments, the limitations of claim 1, for example, do not differentiate known devices from unauthorized devices. We also agree with the Examiner’s finding that Biswas discloses “communicating information between said first WHCD and said at least one authorized WHCD via said second WHCD,” as recited by claim 1 (Ans. 3-4 and 8-9). Accordingly, Appellant has not convinced us of any error in the Examiner’s characterization of the cited art and related claim construction. Therefore, we sustain the Examiner’s anticipation rejection of claims 1, 11, and 21. Appeal 2010-005831 Application 11/422,645 12 Issue 2 We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We disagree with Appellant’s conclusions with respect to claim 2, and we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in the Examiner’s Answer (Ans. 4-5 and 10-11) in response to Appellant’s Arguments (App. Br. 14-15; Reply 6-7). In particular, we concur with the Examiner’s finding that Mgrdechian teaches or suggests “a communication signal from said second WHCD, the communication signal comprising at least one of: an identifier (ID) of said second WHCD and an ID of said at least one authorized WHCD,” as recited in dependent claim 2. (Ans. 4-5, 10-11). Further in this regard, Appellant’s arguments are particularly unpersuasive because, as pointed out by the Examiner, Mgrdechian’s FIGS. 8 and 9 and related disclosure teach the example of wireless connectivity (e.g., via Bluetooth) between two cellphones (“A” and “B” in FIG.8) cited by the Examiner (see Ans. 11) in which “at least one of . . . an identifier (ID) of the second WHCD,” or “an ID of said at least one authorized WHCD” is provided in the communication signal between Mgrdechian’s wireless devices A and B. (See Ans. 11). Although we find that Mgrdechian also meets the further limitations argued by Appellant with respect to teaching a WHCD, as well as the WHCD being outside the operating range of the initiating wireless device, Appeal 2010-005831 Application 11/422,645 13 we need not come to any conclusions with regard to these issues in reaching our decision. Appellant’s arguments are misplaced, as the Examiner merely relies upon Mgrdechian as teaching at least an identifier of the second WHCD being in the communication signal between wireless devices. Accordingly, Appellant has not convinced us of any error in the Examiner’s characterization of the cited art and related claim construction. Therefore, we sustain the Examiner’s unpatentability rejection of claims 2- 10, 12-20, and 22-30. Issue 3 We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We disagree with Appellant’s conclusions with respect to claim 6, and we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in the Examiner’s Answer (Ans. 6 and 10-11) in response to Appellant’s arguments (App. Br. 16; Reply 8). In particular, we point out that Appellant’s arguments with respect to claims 6-10, 16-20, and 26-30 are misplaced, in that Mgrdechian is not relied upon for the limitation cited by Appellant, i.e., “said first WHCD is within operating range of said second WHCD . . . communicating information between said first WHCD and said at least one authorized WHCD via said second WHCD,” as recited by the Appellant in independent claim 1. (See App. Br. 16). Appeal 2010-005831 Application 11/422,645 14 We note that Appellant has not argued the limitation present in claim 6, but instead argues that Mgrdechian does not make up for the alleged deficiencies of Biswas with respect to independent claim 1. Thus, Appellant’s arguments for dependent claims 6-10, 16-20, and 26-30 are substantially the same as for Issue 1, supra. Accordingly, Appellant has not convinced us of any error in the Examiner’s characterization of the cited art and related claim construction. Therefore, we sustain the Examiner’s unpatentability rejection of claims 6- 10, 16-20, and 26-30. CONCLUSIONS (1) Appellants have not established that the Examiner erred with respect to the anticipation rejection of claims 1, 11, and 21 under 35 U.S.C. § 102(b), such that the rejection of these claims is sustained. (2) Appellants have not established that the Examiner erred with respect to the unpatentability rejection of claims 2-10, 12-20, and 22-30 under 35 U.S.C. § 103(a), such that the rejection of these claims is sustained. (3) On this record, claims 1-30 have not been shown to be patentable. DECISION The Examiner’s rejection of claims 1-30 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)(iv). Appeal 2010-005831 Application 11/422,645 15 AFFIRMED msc Copy with citationCopy as parenthetical citation