Ex Parte Lee

Patent Trial and Appeal Board

Aug 15, 2017

14108515 (P.T.A.B. Aug. 15, 2017)

United States Patent and Trademark Office
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.
14/108,515 12/17/2013 Jae-Hyeok LEE 5000-1-1597 6688
33942 7590
Cha & Reiter, LLC
17 Arcadian Avenue
Suite 208
Paramus, NJ 07652
08/15/2017 EXAMINER
RIVERO, ALEJANDRO
ART UNIT PAPER NUMBER
2647
MAIL DATE DELIVERY MODE
08/15/2017 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 JAE-HYEOK LEE
Appeal 2017-000328
Application 14/ 108,51s1
Technology Center 2600
Before ALLEN R. MacDONALD, BRADLEY W. BAUMEISTER, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to “searching for a nearby target Bluetooth
device.” Spec. Abstract.
Illustrative Claim
Claim 1 is illustrative and reproduced below with the claim language
at issue emphasized:
1 According to Appellant, the real party in interest is Samsung Electronics
Co., Ltd. App. Br. 3.
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Application 14/108,515
1. A method in a first Bluetooth device, the method comprising:
sending an inquiry message for searching for a nearby
target Bluetooth device;
receiving from a target Bluetooth device an inquiry
response message including predefined information mark data,
and extracting link information from the information mark data;
and
accessing associated information of the target Bluetooth
device using the extracted link information,
wherein the link information comprises a manual link
which is a link on a network which provides a manual associated
with the target Bluetooth device.
Rejections
Claims 1, 2, 5—12, and 15—20 stand rejected under 35 U.S.C. § 103(a)
as obvious over Stouder-Studenmund (US 2014/0134947 Al; May 15, 2014)
and Ahmed et al. (US 2005/0267900 Al; Dec. 1, 2005). Final Act. 4.
Claims 4 and 14 stand rejected under 35 U.S.C. § 103(a) as obvious
over Stouder-Studenmund, Ahmed, and Tang (US 2006/0173974 Al;
Aug. 3, 2006). Final Act. 14.2
Claims 3 and 13 stand rejected under 35 U.S.C. § 103(a) as obvious
over Stouder-Studenmund, Ahmed, Tang, and Kim et al.
(US 2013/0311610 Al; Nov. 21,2013). Final Act. 16.
ISSUES
1. Did the Examiner err in finding Ahmed teaches or suggests “a
manual link which is a link on a network which provides a manual
associated with the target Bluetooth device,” as recited in claim 1?
2 The Examiner withdrew the rejection of claims 4 and 14 for indefmiteness
under 35 U.S.C. § 112, second paragraph. Ans. 20.
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2. Did the Examiner err in finding Stouder-Studenmund teaches or
suggests “the link information further comprises a package name of an
application associated with the target Bluetooth device” and “determining a
pre-stored link corresponding to a pre-stored package name that matches the
package name of the link information,” as recited in claim 6?
ANALYSIS
Claims 1—5, 7—15, and 17—20
Stouder-Studenmund discloses “device discovery features by
providing or transmitting discovery information from a ‘server’ device via a
short-range communication protocol such as . . . Bluetooth.” Stouder-
Studenmund 1 5. “The discovery information provided by the server can
include one or more URL’s (Uniform Resource Locators) that reference the
server and/or its services, or other information that identifies the server or a
service provided by the server.” Id. Lor example, a link can be “an address
in the format of a service protocol, such as HTTP, TCP/IP, or the like, via
which the server receives communication requesting its services, such as
receiving documents to print” or “receiving video to display.” Id. 132.
Ahmed discloses a way to “keep track of sales, purchase,
maintenance, renovation, upgrades, status, etc. relating to condition and
repair of a home.” Ahmed 13. The portion of Ahmed relied on by the
Examiner discloses that when a homeowner purchases an item, the “user
manual” for the purchased item “may be directly sent to the homeowner’s
computer 415 via, for example, a wireless network link such as Bluetooth
retrieval on a personal digital assistant (PDA) or mobile phone.” Id. 1112.
Given these disclosures, the Examiner finds “all of the limitations of
the argued claim 1 are disclosed by Stouder-Studenmund with the exception
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of providing a manual.” Ans. 24. “In other words, while Stouder-
Studenmund discloses . . . providing a service via the link, [it] does not
specify a scenario where the particular service provided by a server is a
manual.” Id. at 24—25. “Ahmed is cited only for the feature missing from
Stouder-Studenmund,” specifically that “a user manual is one of many
services that may be provided to a user via a link to a server.” Id. at 25.
Thus, Ahmed is only used to teach the limitation “the link information
comprises a manual link which is a link on a network which provides a
manual associated with the target Bluetooth device,” as recited in claim 1
and commensurately in independent claims 7, 11, and 17. Final Act. 5.
We agree with Appellant that Ahmed’s user manual is for the
purchased item, not the Bluetooth device (i.e., the PDA or phone). App.
Br. 10; Ahmed 1112. Unless the purchased item is the Bluetooth device (a
finding the Examiner has not made), Ahmed’s manual fails to teach or
suggest “a manual associated with the target Bluetooth device’ '' as claimed.
Nevertheless, we conclude that the disputed limitation is not entitled
to patentable weight because it is directed to non-functional descriptive
material, specifically printed matter. See MPEP § 2111.05 (9th ed., R-
07.2015, Nov. 2015). The Federal Circuit has “long held that if a limitation
claims (a) printed matter that (b) is not functionally or structurally related to
the physical substrate holding the printed matter, it does not lend any
patentable weight to the patentability analysis.” In re Distefano, 808 F.3d
845, 848 (Fed. Cir. 2015). Therefore, such printed matter “may not be a
basis for distinguishing prior art.” Id.
With respect to the first prong, “a limitation is printed matter only if it
claims the content of information.” Distefano, 808 F.3d at 848. Here,
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whether a link is to a “manual” or whether that manual is “associated with
the target Bluetooth device” is determined by the content of information, i.e.,
whether the content is instructions how to use the target Bluetooth device.
For example, Appellant argues the content of Ahmed’s manual is different
than the claims because Ahmed’s manual instructs how to use a purchased
item rather than the Bluetooth device. See App. Br. 10.
A “manual” is no different than “a set of instructions,” which the
Federal Circuit repeatedly has found constitutes ineligible printed matter.
E. g., In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); AstraZeneca LP v.
Apotex, Inc., 633 F.3d 1042, 1064 (Fed. Cir. 2010) (“a label instructing”).
Whether the manual is a physical book or an electronic file does not change
that the limitation is directed to the content of information. See Ex parte
Nehls, 88 USPQ2d 1883, 1887-90 (BPAI Jan. 28, 2008) (precedential); see
also Distefano, 808 F.3d at 850 (“not because it involved a computer”).
Moreover, in the claims as written, the determination of whether the content
is a “manual” is relevant only to the human reader, as the Bluetooth device
retrieves the link regardless of the underlying content. Cf. In re Lowry, 32
F. 3d 1579, 1583 (Fed. Cir. 1994). Thus, we conclude that the claimed
manual link constitutes printed matter.
With respect to the second prong, the claimed manual link is not
functionally or structurally related to the substrate holding the manual link.
The Federal Circuit has held that an applicant “is not, however, entitled to
patent a known product by simply attaching a set of instructions to that
product.” Ngai, 367 F.3d at 1339. In Ngai, the Federal Circuit concluded
the “addition of a new set of instructions into a known kit” constituted
printed matter because “the printed matter [i.e., the instructions] in no way
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depends on the kit, and the kit does not depend on the printed matter. All
that the printed matter does is teach a new use for an existing product.”
Ngai, 367 F.3d at 1339. The same is true here where the Bluetooth device
retrieves the link in the same way regardless whether the content of the link
is a manual and regardless what device the manual is associated with. See
AstraZeneca, 633 F.3d at 1065. Neither the function nor the structure of the
Bluetooth device are changed based on the underlying content of the link.
Thus, although we consider all limitations in the claim, we find “a manual
link which is a link on a network which provides a manual associated with
the target Bluetooth device” is not entitled to patentable weight.
Appellant does not dispute that Stouder-Studenmund teaches all other
limitations in the independent claims. Thus, Stouder-Studenmund teaches
all limitations entitled to patentable weight.
Accordingly, we sustain the Examiner’s obviousness rejections of
independent claims 1,7, 11, and 17, and their dependent claims 2, 3, 5, 8—
10, 12, 13, 15, and 18—20, which Appellant does not argue separately. See
App. Br. 7-17; 37 C.F.R. § 41.37(c)(l)(iv).
Claims 4 and 14
For dependent claims 4 and 14, Appellant argues “Tang . . . does not
cure the deficiencies of Stouder-Studenmund and Ahmed.” App. Br. 15.
However, we are not persuaded there are deficiencies for the reasons above.
Accordingly, we sustain the Examiner’s rejection of claims 4 and 14.
Claims 6 and 16
Dependent claim 6 further recites “the link information further
comprises a package name of an application associated with the target
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Bluetooth device” and “determining a pre-stored link corresponding to a pre­
stored package name that matches the package name of the link
information.” Claim 16 recites commensurate limitations.
We are not persuaded the Examiner erred. We agree with the
Examiner that Stouder-Studenmund discloses a server “can be given human-
readable names for its services. . . . Each named service entity includes both
a service name and the human-readable name for the service. For example,
‘http’ is the name for HTTP web services.” Stouder-Studenmund 141;
Ans. 40-42 (citing Stouder-Studenmund Tflf 41—48). “A lookup can then be
performed using the service name to find the server address.” Stouder-
Studenmund 148.
We further agree with the Examiner that Appellant’s argument
regarding the package name being smaller than the link is not commensurate
with the claim as presently written. Ans. 42 43; App. Br. 16. For example,
the package name “HTTP web services” is longer than the application name
“http” (see Stouder-Studenmund 141) or even a more complete link such as
“/server/bin/http” and, thus, the package name requires more data, not less.
Accordingly, we sustain the Examiner’s rejection of claims 6 and 16.
DECISION
For the reasons above, we affirm the decision rejecting claims 1—20.
No time for taking subsequent action in connection with this appeal
maybe extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f).
AFFIRMED
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