Ex Parte Lagnado et al

Patent Trials and Appeals Board

Jul 29, 2013

11345889 - (D) (P.T.A.B. Jul. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ISAAC LAGNADO and TIMOTHY NEILL
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Appeal 2010-008951
Application 11/345,889
Technology Center 2600
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Before MAHSHID D. SAADAT, MICHAEL J. STRAUSS,
and LARRY J. HUME, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-6, 9-13, and 16-19. 1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm, and enter new grounds of rejection in accordance with
37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to wireless communication devices
communicating with network nodes such as access points (see Spec. ¶
[0001]).
Exemplary independent claims 1 and 9 read as follows:
1. A method, comprising:
receiving a data communication from a first access point
on a first receiver associated with a wireless device; and
while receiving said data communication, using a second
receiver associated with said wireless device to scan for another
access point;
wherein said first access point and said other access
points are part of a common network.

9. A wireless device, comprising:
a plurality of receivers; and
logic coupled to said receivers, said logic causes at least
one receiver to receive data communications from an access
point on a network while at least one other receiver
concurrently scans for another access point on the same
network.

1 Claims 7, 8, 14, and 15 have been canceled, claims 22 and 23 have been
indicated as allowable, and claims 20 and 21 have been objected to for being
dependent upon a rejected base claim but otherwise allowable.
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The Examiner’s Rejections
Claims 1, 9, and 16 stand rejected under 35 U.S.C. 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
(See Ans. 8).
Claims 1-6, 9-13, and 16-19 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over Crisler (US 5,179,559), McAlinden (US 5,946,633),
Grilli (US 6,438,117 B1) and further in view of Smith (US 2004/0157645
A1) or Giannetti (US 6,288,678 B1) or Rune (US 2003/0060222 A1). (See
Ans. 8-14).

ISSUES
Appellants’ contentions present us with the following issues:
1. Under the second paragraph of 35 U.S.C § 112, with respect to
appealed claims 1, 9, and 16, would the claims reasonably apprise those of
skill in the art of their scope?
2. Under 35 U.S.C § 103(a), with respect to appealed claims 1-6,
9-13, and 16-19, would one of ordinary skill in the art at the time of the
invention have found it obvious to combine Crisler, McAlinden, and Grilli
with one of Smith or Giannetti or Rune to render the claimed invention
unpatentable?

PRINCIPLES OF LAW
Indefiniteness
The general rule is that a claim must set out and circumscribe a
particular area with a reasonable degree of precision and particularity when
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read in light of the disclosure as it would be by the artisan. In re Moore, 439
F.2d 1232, 1235 (CCPA 1971). Acceptability of the claim language
depends on whether one of ordinary skill in the art would understand what is
claimed in light of the specification. Seattle Box Co. v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). See also Metabolite
Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1366 (Fed. Cir.
2004):
The requirement to “distinctly” claim means that the claim must have
a meaning discernible to one of ordinary skill in the art when
construed according to correct principles . . . . Only when a claim
remains insolubly ambiguous without a discernible meaning after all
reasonable attempts at construction must a court declare it indefinite.
(Citations omitted).
Obviousness
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006), In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991), and In re Keller, 642 F.2d 413, 425 (CCPA 1981).
The Supreme Court has explained “if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The Examiner can satisfy
this burden by showing some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness. KSR Int’l. v.
Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)).

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ANALYSIS
Rejection under 35 U.S.C. § 112, second paragraph
The Examiner’s underlying basis for support of this rejection is that
the claim terms “common network” (recited in claim 1) and “same network”
(recited in claims 9 and 16) are indefinite as it is not clear what constitutes a
common/same network (Ans. 7-8). Appellants contend that the
Specification, at page 3, paragraph 11, explains the term “common network”
(or “same network”) by providing examples such as “a group of wireless
access points that provide communication over a set of channels” or the
access points within a business” (App. Br. 10).
We disagree with Appellants’ reasoning and rebuttal that paragraph
11 of their Specification explains the disputed terms. The referred-to
disclosure and Figure 2 merely disclose multiple access points. However,
the Specification does not define what type of network constitutes a
“common network” or “same network,” nor explains how the access points
are related to each other in a “common network” or “same network” in
contrast with other types of access points in other networks. As such, the
skilled artisan, upon reading the claims in light of the Specification, would
not be able to ascertain the scope of the claimed invention, specifically the
term “part of a common network” or “on the same network” recited in
claims 1, 9, and 16. Therefore, we sustain the rejection of claim 1, 9, and 16
under the second paragraph of 35 U.S.C. § 112.
Rejection under 35 U.S.C. § 103(a)
Appellants argue that the combination of the references fails to teach
or suggest “the technique of using a second receiver to scan for another
access point while a first receiver continues receiving data communication
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from a current access point” (App. Br. 10). Appellants assert that Crisler
merely discloses “ a cell site (a cell tower to each [sic] a cellular phone
communicates) that sends an interrupt signal to a cell phone which then
causes the phone to begin scanning for another cell site” (id.). Similarly,
Appellants acknowledge that McAlinden discloses simultaneously using
multiple transceivers for higher bandwidth while Smith, Giannetti, or Rune
provide for use of multiple transceivers (App. Br. 11). However, Appellants
assert that the combination is improper as “the Examiner has not established
any reason whatsoever to justify why the combination would have been
obvious” (id.).
Appellants’ arguments are not persuasive. We find no error in the
Examiner’s determination that, while Crisler’s receiver may briefly interrupt
the data communication to scan the adjacent cell sites, simultaneously using
McAlinden’s multiple transceivers provides for one of the transceivers scan
for another access point while another receiver is receiving data transmission
from an access point (Ans. 4-5). In other words, we concur with the
Examiner’s conclusion that an ordinarily skilled artisan would have
recognized and appreciated the obviousness of using multiple transceivers in
the communication system of Crisler such that, while one receiver is
receiving a data communication from a first access point, another receiver,
albeit interrupted, is used to scan for another access point (see Crisler, col. 1,
ll. 44-54). We also note that scanning for another access point after the data
communication is interrupted in the second receiver is not precluded by the
claims.
When combining Crisler’s and McAlinden’s teachings with Grilli, and
one of Smith or Giannetti or Rune, the combination would predictably yield
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no more than what one would expect from such a combination, such as
providing additional receivers for scanning while another receiver receives
data communication. See KSR, at 417.
Further, contrary to Appellants’ contention, no evidence has been
found that an ordinarily skilled artisan would be unable to recognize the
benefit of using McAlinden’s multiple transceivers or to implement its
application. Indeed, in consonance with the record, the Supreme Court has
indicated that:
[It is error to] assum[e] that a person of ordinary skill
attempting to solve a problem will be led only to those elements
of prior art designed to solve the same problem . . . . Common
sense teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.
Id. at 420 (citation omitted).
We also find that the Examiner (see Ans. 4, 13, and 14) has provided
an articulated line of reasoning with a rational underpinning to support the
conclusion of obviousness for the proposed combination of Crisler and
McAlinden. KSR, at 418. We agree with the Examiner that an ordinarily
skilled artisan would have recognized and appreciated the obviousness of
applying to the transceiver of Crisler, McAlinden’s teaching of
simultaneously using multiple transceivers to facilitate scanning for another
access point while one of the transceivers is receiving a data communication
from a first access point, and thereby improve the efficiency of the wireless
system.
Lastly, with respect to Appellants’ contention (Reply Br. 1) that the
prior art solutions may increase data transmission speeds rather than solve
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the interrupt problem, we observe that such secondary results are not recited
in the claims. That is, the claims include no recitation related to whether
interrupt is allowed or no increase in the speed of data transmission speed is
desired.
New Grounds of Rejection -- 37 C.F.R. § 41.50(b)
I.
We reject claims 20-23 under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Claims 20 and 21 recite the indefinite term “common network” and
depend from claim 1 which was indicated as being indefinite. Independent
claims 22 and 23 also recite the indefinite term “same network.” As such,
we conclude that the ordinary artisan would not be reasonably apprised as to
the scope of claims 20-23, and reject these claims under § 112, second
paragraph.
II.
We reject claims 1-6, 9-13, and 16-23 under 35 U.S.C. § 112, first
paragraph, as the present disclosure fails to provide adequate written
description support for the recitations related to “common network” and
“same network.”
To comply with the “written description” requirement of 35 U.S.C.
§ 112, first paragraph, an applicant must convey with reasonable clarity to
those skilled in the art that, as of the filing date sought, he or she was in
possession of the invention. In other words, the function of the written
description requirement of the first paragraph of 35 U.S.C. § 112 is to ensure
that the inventor has possession, as of the filing date of the application relied
on, of the specific subject matter later claimed by him. In re Wertheim, 541
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F.2d 257, 262 (CCPA 1976), Moba, B.V. v. Diamond Automation, Inc., 325
F.3d 1306, 1319, (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1563 (Fed. Cir. 1991). In all cases, the purpose ‘of the description
requirement is to ensure that the inventor had possession, as of the filing
date of the application relied on, of the specific subject matter later claimed
by him.’”) (Quoting In re Edwards, 568 F.2d 1349, 1351-52 (CCPA 1978)).
One shows “possession” by descriptive means such as words,
structures, figures, diagrams, and formulas that fully set forth the claimed
invention. . Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997). It is not sufficient for purposes of the written description
requirement that the disclosure, when combined with the knowledge in the
art, would lead one to speculate as to modifications that the inventor might
have envisioned, but failed to disclose. Id.
Independent claims 1, 9, 16, 22, and 23 recite that the first access
point and another access point are “part of a common network” or “on the
same network.” However, the written description (and the drawings) does
not indicate what is encompassed by a common or the same network or how
the access points are affected by such limitation.

DECISION
The rejection of claims 1-6, 9-13, and 16-19 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Crisler, McAlinden, and
Grilli with one of Smith or Giannetti or Rune is affirmed.
The rejection of claims 1, 9, and 16 under 35 U.S.C. § 112, second
paragraph as being indefinite is affirmed.
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In new grounds of rejection, we have rejected claims 20-23 under
35 U.S.C. § 112, second paragraph, and claims 1-6, 9-13, and 16-23 under
35 U.S.C. § 112, first paragraph.
With respect to the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1)
provides that “Appellant may file a single request for rehearing within two
months from the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner . . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record . . . .

Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
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prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED -- 37 C.F.R. § 41.50(b)

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