Ex Parte Kirke

Patent Trial and Appeal Board

Nov 16, 2012

11422638 (P.T.A.B. Nov. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TONY KIRKE
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Appeal 2010-004698
Application 11/422,638
Technology Center 2600
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Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JEREMY J. CURCURI, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-27. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
Claims 1-4, 9-13, and 18 are rejected under 35 U.S.C. § 102(e) as
anticipated by Ma (US 2007/0249286 A1; published Oct. 25, 2007; filed
Apr. 21, 2006). Ans. 4-5.
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Claims 5, 7, 8, 14, 16, 17, 19-23, and 25-27 are rejected under 35
U.S.C. § 103(a) as unpatentable over Ma and Silvester (US 2005/0250472
A1; published Nov. 10, 2005). Ans. 5-9.
Claims 6, 15, and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ma, Silvester, and Son (US 2007/0135045 A1; published
June 14, 2007; filed May 5, 2006). Ans. 10.
We affirm.

STATEMENT OF CASE
Appellant’s invention relates to communicating information within a
network. A list of authorized devices that are allowed to communicate with
a wireless handheld communication device (WHCD) is generated, without
pairing the WHCD with any device that is specified in the list of authorized
devices. A direct communication link may be established between the
WHCD and at least one other device within operating range of the WHCD
based on the list. Abstract. Claim 1 is illustrative and reproduced below
with the key disputed limitation emphasized:
1. A method of communicating information within a network, the
method comprising:
generating in a wireless handheld communication device (WHCD), a
list of authorized devices that are allowed to communicate with said WHCD
without pairing said WHCD with any device that is specified in said list of
authorized devices;
storing said generated list of authorized devices in memory within
said WHCD; and
establishing a direct communication link between said WHCD and at
least one other device within operating range of said WHCD based on said
stored generated list.

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CONTENTIONS1
The Examiner finds that Ma teaches all recited limitations of
independent claim 1. Ans. 4. The Examiner maps Ma’s device bonding
process to the disputed limitation. Id. (citing ¶0046, ¶0047, ll. 13-17). See
also Ans. 11-12 (citing ¶ 0047, ll. 14-27). The Examiner finds that Ma and
Silvester collectively teach all recited limitations of independent claim 19.
Ans. 6-7. The Examiner finds that Silvester teaches a processor within a
WHCD. Ans. 7 (citing Fig. 1, element 110).
The Examiner further finds that Ma and Silvester collectively teach all
recited limitations of dependent claims 5 and 7. Ans. 5-6. Regarding claim
5, the Examiner finds that Silvester teaches if said list of authorized devices
does not comprise said at least one other device, acquiring identification
information (authenticate) from said at least one other device. Ans. 6 (citing
¶ 0019, ll. 1-6). See also Ans. 13-14. Regarding claim 7, the Examiner
finds that Silvester teaches adding (authenticating) wireless devices to the
approved list after comparing the unique identification. Ans. 6 (citing ¶
0018, ll. 10-15). See also Ans. 14-15.
Appellant argues that Ma does not disclose generating in a WHCD a
list of authorized devices that are allowed to communicate with said WHCD
without pairing said WHCD with any device that is specified in said list of
authorized devices, as recited in claim 1. App. Br. 8-11; Reply Br. 3-7.

1 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the following documents for their respective
details: the Appeal Brief (App. Br.) filed October 5, 2009; the Examiner’s
Answer (Ans.) mailed November 23, 2009; and the Reply Brief (Reply Br.)
filed January 19, 2010.
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Appellant argues that Silvester does not disclose generating in a WHCD a
list of authorized devices, as recited in claim 19. App. Br. 13.
Appellant further argues that Silvester does not disclose if said list of
authorized devices does not comprise said at least one other device,
acquiring identification information from said at least one other device, as
recited in claim 5. App. Br. 13-14. Appellant further argues Silvester does
not disclose determining whether to add said at least one other device to said
list of authorized devices, based on said acquired identification information,
as recited in claim 7. App. Br. 14-15; Reply Br. 8-10.

ISSUES
Under 35 U.S.C. § 102(e), has the Examiner erred by finding that Ma
teaches generating in a WHCD a list of authorized devices that are allowed
to communicate with said WHCD without pairing said WHCD with any
device that is specified in said list of authorized devices, as recited in
claim 1?
Under 35 U.S.C. § 103(a), has the Examiner erred by finding that Ma
and Silvester collectively teach: (i) generating in a WHCD a list of
authorized devices, as recited in claim 19; (ii) if said list of authorized
devices does not comprise said at least one other device, acquiring
identification information from said at least one other device, as recited in
claim 5; and (iii) whether to add said at least one other device to said list of
authorized devices, based on said acquired identification information, as
recited in claim 7?

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ANALYSIS
THE ANTICIPATION REJECTION OF CLAIMS 1-4, 9-13, AND 18 OVER MA
We agree with the Examiner’s position, with regard to claim 1, that
Ma teaches all claim limitations. Ans. 4, 11-12. Ma (¶ 0046) describes a
device bonding process in which a Bluetooth master device sends a
broadcast query that requests each Bluetooth slave device to return its
unique Bluetooth address. Ma (¶ 0047, ll. 14-16) states “Bluetooth master
device 112 [in Figure 1C] creates and maintains a list of Bluetooth addresses
at 176 received from the queried wireless devices 105, 107, 109 and 171.”
Appellant has not persuaded us that Ma’s broadcast query and
subsequent creation of a list of Bluetooth addresses received from the
queried devices would not generate in a WHCD a list of authorized devices
that are allowed to communicate with said WHCD without pairing said
WHCD with any device that is specified in said list of authorized devices, as
recited in claim 1.
As the Examiner explains, during the search mode described in Ma,
the queried wireless devices communicate (via the inquiry responses)
without, or before, pairing. Ans. 11 (citing ¶ 0046). The list of Bluetooth
addresses 176 in Figure 1C is created by Bluetooth master device 112, and
contains a list of addresses for the queried wireless devices. Accordingly,
Ma teaches the disputed limitation.
Therefore, Appellant’s arguments in the Appeal Brief (App. Br. 8-11)
that Ma does not teach the disputed limitation are unpersuasive.
Regarding Appellant’s argument in the Reply Brief (Reply Br. 3-5)
that the list of Bluetooth addresses 176 does not exist until after the search
mode, we find this argument unavailing. Claim 1 recites “a list of
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authorized devices that are allowed to communicate with said WHCD
without pairing said WHCD.” The fact that Ma creates the list of Bluetooth
addresses 176 after the inquiry responses are communicated to the Bluetooth
master device 112 does not preclude a finding that Ma teaches a list of
authorized devices that are allowed to communicate with said WHCD
without pairing said WHCD as recited in claim 1.
Regarding Appellant’s further arguments in the Reply Brief (Reply
Br. 5-6) that Ma’s list of Bluetooth addresses 176 is merely a list of the slave
Bluetooth devices that respond to the query, that Ma does not disclose that
all the slave devices on the list of Bluetooth addresses 176 are allowed to
communicate with the master device 112, and that the devices on the list of
Bluetooth addresses 176 are authorized only after matching with the prior
registered list of Bluetooth addresses, we find these arguments unpersuasive.
As explained above, the inquiry responses from the slave devices are
communications to the master device 112, and thus Ma teaches a list of
authorized devices that are allowed to communicate with said WHCD
without pairing said WHCD as recited in claim 1.
We conclude Appellant has not shown error in the Examiner’s
anticipation rejection based on Ma regarding claim 1. We therefore sustain
the Examiner’s rejection of claim 1, as well as claims 2-4, 9-13, and 18,
which are not argued separately.

THE OBVIOUSNESS REJECTION OF CLAIMS 5, 7, 8, 14, 16, 17, 19-
23, AND 25-27 OVER MA AND SILVESTER
We agree with the Examiner’s position, with regard to claim 19, that
Ma and Silvester collectively teach all claim limitations. Ans. 6-7.
Regarding Appellant’s argument (App. Br. 13) that Silvester does not
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overcome the deficiencies of Ma as Silvester does not disclose generating in
a WHCD a list of authorized devices, we need not address whether Silvester
cures Ma’s purported deficiencies for the reasons discussed above when
addressing claim 1. We are not persuaded that the Examiner has erred in
rejecting claim 19.
We also agree with the Examiner’s position, with regard to claim 5,
that Ma and Silvester collectively teach all claim limitations. Ans. 5-6, 13-
14. Silvester (¶ 0019, ll. 1-3) states “[t]he authentication of operation 290 is
recommended even though the wireless electronic device 160 is on an
approved list of electronic devices.” Appellant has not persuaded us that
Silvester’s recommending authentication even though a device is already on
an approved list would not have taught “if said list of authorized devices
does not comprise said at least one other device, acquiring identification
information from said at least one other device,” as recited in claim 5.
Regarding Appellant’s argument (App. Br. 14) that authentication in
Silvester is performed regardless of whether the WHCD is an authorized
device or not, we find this argument unpersuasive. As the Examiner
explains, Silvester’s authentication is recommended and thus may or may
not be performed. Ans. 13. We are not persuaded that the Examiner has
erred in rejecting claim 5.
We also agree with the Examiner’s position, with regard to claim 7,
that Ma and Silvester collectively teach all claim limitations. Ans. 6, 14-15
(citing Silvester, ¶ 0018, ll. 10-15). Appellant argues
all the electronic devices found in the memory will be added.
There is no determination to add or not to add. Therefore,
Silvester does not disclose or suggest “determining whether to
add said at least one other device to said list of authorized
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devices, based on said acquired identification information,” as
recited in Appellant’s claim 7.
App. Br. 15. See also Reply Br. 8-10. We find this argument unpersuasive.
Silvester (¶ 0018, ll. 13-15) states “[i]f the identification of the wireless
electronic device 160 is found in memory 130 in operation 280, the wireless
electronic device 160 is authenticated in operation 290.” As the Examiner
explains, Silvester determines whether to add by authenticating when the
wireless device is found in memory. Ans. 15. In short, in the event that a
device is added, there has been a determination of whether to add the device.
We are not persuaded that the Examiner has erred in rejecting claim 7.
We therefore sustain the Examiner’s rejection of claims 5, 7, and 19,
as well as claims 8, 14, 16, 17, 20-23, and 25-27, which are not argued
separately.

THE OBVIOUSNESS REJECTION OF CLAIMS 6, 15, AND 24 OVER
MA, SILVESTER, AND SON
We also agree with the Examiner’s position, with regard to claims 6,
15, and 24, that Ma, Silvester, and Son teach all claim limitations. Ans. 10.
Appellant argues that Son does not overcome the deficiencies of Ma and
Silvester. App. Br. 16. We need not address whether Son cures Ma’s and
Silvester’s purported deficiencies for the reasons discussed above when
addressing claims 1 and 5. We therefore sustain the Examiner’s rejection of
claims 6, 15, and 24.

DECISION
The Examiner’s decision rejecting claims 1-27 is affirmed.
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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

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