Ex Parte Kirke

Patent Trial and Appeal Board

Dec 14, 2012

11422649 (P.T.A.B. Dec. 14, 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 2010-0058341
Application 11/422,649
Technology Center 2600
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Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
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).
We affirm.

1 The party in interest is Broadcom Corporation.
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STATEMENT OF THE CASE 2
Introduction
Appellant’s invention is directed to communication of information
within a network and, more specifically, “certain embodiments of the
invention relate to a method and system for delivering messages to one or
more wireless handheld communication devices.” Spec. ¶ [0003].
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 devices authorized to access a second
WHCD, wherein said list of devices is maintained by a
centralized communication device that facilitates
communication between said first WHCD and said second
WHCD, and wherein said first WHCD is not paired with said
second WHCD; and
if said list of devices authorized to access said second WHCD
comprises an identifier (ID) of said first WHCD, establishing a
communication link between said first WHCD and said second
WHCD via said centralized communication device.

Exemplary dependent claim 5 under appeal reads as follows
(emphasis added to contested limitation):

2 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. 18, 2009; and the Reply Brief filed
Feb. 16, 2010.
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5. The method according to claim 1, wherein said
centralized communication device maintains at least a second
list of devices authorized to access a third WHCD.

Exemplary dependent claim 8 under appeal reads as follows
(emphasis added to contested limitation):
8. The method according to claim 1, comprising
determining whether said second WHCD is within range of
said centralized communication device, prior to said
communicating said information between said first WHCD
and said second WHCD.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Burr US 2002/0103862 A1 Aug. 1, 2002
Mgrdechian US 2005/0174975 A1 Aug. 11, 2005
Heinonen US 6,968,153 B1 Nov. 22, 2005

Rejections on Appeal
A. The Examiner rejected claims 1, 5-7, 11, 15-17, 21, and 25-27
under 35 U.S.C. § 102(e) as being anticipated by Heinonen. (Ans. 3).
B. The Examiner rejected claims 2-4, 12-14, and 22-24 under 35
U.S.C. § 103(a) as being unpatentable over Heinonen in view of Burr.
(Ans. 5).
C. The Examiner rejected claims 8-10, 18-20, and 28-30 under 35
U.S.C. § 103(a) as being unpatentable over Heinonen in view of
Mgrdechian. (Ans. 7).
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ISSUES AND ANALYSIS
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 claims 1, 5, and 8, 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 in response to Appellant’s Arguments.
However, we highlight and address specific findings and arguments
regarding claims 1, 5, and 8 for emphasis as follows.
1. Rejection of Claims 1, 2-4, 7, 11-14, 17, 21-24, and 27
Issue 1
Appellant argues (App. Br. 9-15; Reply Br. 3-6) that the Examiner’s
anticipation rejection of claim 1 under 35 U.S.C. § 102(e) over Heinonen is
in error. These contentions present us with the following issue:
Did the Examiner err in finding that Appellant’s claimed
method is anticipated by Heinonen, particularly that Heinonen
discloses “a list of devices authorized to access a second
WHCD, wherein said list of devices is maintained by a
centralized communication device that facilitates
communication between said first WHCD and said second
WHCD,” as recited in independent claim 1?

Analysis
We agree with the Examiner’s finding that Heinonen discloses “a list
of devices authorized to access a second WHCD, wherein said list of devices
is maintained by a centralized communication device that facilitates
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communication between said first WHCD and said second WHCD,” as
recited in independent claim 1. (Ans. 9-10).
Specifically, we agree with the Examiner’s finding that Heinonen’s
originating Bluetooth® (BT) device D1, target BT device D2 and BT
repeater R discloses and correlates to Appellant’s recited “first WHCD”,
“second WHCD” and “centralized communication device”, respectively.
(Ans. 4 (citing Heinonen at Fig. 1B, and see Heinonen at col. 16:48-58)).
Further, Appellant’s arguments that Heinonen’s list of “known
devices” does not disclose Appellant’s claimed “list of devices authorized to
access a second WHCD” are unpersuasive. These arguments are particularly
unpersuasive because, as pointed out by the Examiner (Ans. 9-10),
Appellant’s Specification uses the terms “known” and “authorized”
interchangeably. (Spec. at ¶¶ [0050] – [0053] (“list of known or authorized
devices (KAD list)” and FIG. 7, #704).
In addition, we find that Heinonen’s list of “known” devices may be
construed to include “authorized” devices, as Appellant has not restricted the
claimed “list of devices authorized to access a second WHCD” to only
include authorized devices, and to exclude known but unauthorized devices.
That is, given the broadest reasonable interpretation of the claim language,
and as disclosed by Heinonen, we find that “devices authorized” may be
construed as merely being a subset of “known devices.”
Further, we find Appellant’s arguments regarding Appellant’s FIG. 7
and ¶ [0050] of the Specification (see Reply 5-6) to be unpersuasive, as
Appellant’s arguments are not commensurate with the scope of the
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independent claims. Contrary to Appellant’s arguments, the limitations of
claim 1, for example, do not differentiate known devices from unauthorized
devices.
We also disagree with Appellant’s argument that the Examiner made a
new argument in the Answer. In arguing that an alleged new ground of
rejection was made by the Examiner, Appellant asserts that the Examiner
misread Appellant’s Fig. 7 and Specification (i.e., Fig. 7 #704a and ¶0050),
and has therefore misconstrued Appellant’s claimed “list of authorized
devices.” Appellant has not persuaded us that the Examiner made any new
ground of rejection, as the Examiner merely referred to Appellant’s FIG. 7
and ¶ [0050] (Ans. 10) for clarification only in response to Appellant’s
argument over the definition of the word “authorized” (App. Br. 4).
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 representative
claim 1, and claims, 7, 11, 17, 21, and 27, grouped with claim 1. As
Appellants have not provided separate arguments with respect to dependent
claims 2-4, 12-14, and 22-24, we similarly sustain the Examiner’s rejection
of these claims under 35 U.S.C. § 103(a).
2. Anticipation Rejection of Claims 5, 6, 15-16, and 25-26
Issue 2
Appellant argues (App. Br. 15-16; Reply Br. 6-7) that the Examiner’s
anticipation rejection of claim 5 under 35 U.S.C. § 102(e) over Heinonen is
in error. These contentions present us with the following issue:
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Did the Examiner err in finding that Appellant’s claimed
method is anticipated by Heinonen, particularly that Heinonen
discloses the method of claim 1, “wherein said centralized
communication device maintains at least a second list of
devices authorized to access a third WHCD,” as recited in
dependent claim 5?

Analysis
We agree with the Examiner that Heinonen discloses a method,
“wherein said centralized communication device maintains at least a second
list of devices authorized to access a third WHCD,” as recited in dependent
claim 5.
In particular, we agree with the Examiner and find that Heinonen
discloses a “second list” in the form of a translation database that inherently
contains one or more lists. Ans. 4 and 10-11 (citing Heinonen at Fig. 5,
#513, and col. 13:54-63). Further in this regard, we agree with the Examiner
and find that Heinonen’s translation database includes all the devices that
respond within the coverage of the BT repeater.
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 dependent
claim 5, and claims 6, 15-16, and 25-26, grouped with claim 5.
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3. Unpatentability Rejection of Claims 8-10, 18-20, and 28-30
Issue 3
Appellant argues (App. Br. 18-19; Reply Br. 8-9) that the Examiner’s
unpatentability rejection of claim 8 under 35 U.S.C. § 103(a) over Heinonen
in view of Mgrdechian is in error. These contentions present us with the
following issue:
Did the Examiner err in finding that Appellant’s claimed
method is unpatentable over the combination of Heinonen and
Mgrdechian, particularly that the combination teaches or
suggests the method of claim 1 that further comprises
“determining whether said second WHCD is within range of
said centralized communication device, prior to said
communicating said information between said first WHCD and
said second WHCD,” as recited in dependent claim 8?

Analysis
We agree with the Examiner and find that the combination of
Heinonen and Mgrdechian teaches or suggests all the claim limitations,
particularly the limitation “determining whether said second WHCD is
within range of said centralized communication device, prior to said
communicating said information between said first WHCD and said second
WHCD,” as recited in dependent claim 8.
Further in this regard, we agree with the Examiner that Appellant has
broadly claimed his “centralized communication device.” The claim merely
requires that the centralized communication device function to facilitate
communication between the first and second WHCD’s, which we find to be
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insufficient to distinguish over the cited art. In further agreement with the
Examiner, we note that Mgrdechian was relied upon as teaching determining
whether the second WHCD (other device) is within range of the centralized
communication device (target device which detects the ID of other devices
within its range), prior to communicating the information between the first
WHCD (initiating device) and second WHCD. In Mgrdechian, the target
device sends the ID information of other device to the initiating device in
order to detect and/or establish communication between the initiating and
other device. (Ans. 12 (citing Mgrdechian at ¶ [0104])). Thus, we find that
Appellant’s argument that Mgrdechian’s target device does not function as a
centralized communication device is not persuasive.
Accordingly, Appellant’s arguments have not convinced us that the
Examiner erred in rejecting claim 8, such that we sustain the rejection of
claim 8, as well as claims 9-10, 18-20, and 28-30 which fall with claim 8.
CONCLUSIONS
(1) The Examiner has not erred with respect to the anticipation
rejection of claims 1, 5-7, 11, 15-17, 21, and 25-27 under 35 U.S.C.
§ 102(e), such that the rejection of these claims is sustained.
(2) The Examiner has not erred with respect to the unpatentability
rejection of claims 2-4, 12-14, and 22-24 under 35 U.S.C. § 103(a), such that
the rejection of these claims is sustained.
(3) The Examiner has not erred with respect to the unpatentability
rejection of claims 8-10, 18-20, and 28-30 under 35 U.S.C. § 103(a), such
that the rejection of these claims is sustained.
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(4) 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).
AFFIRMED

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