Ex Parte Lee et alDownload PDFPatent Trial and Appeal BoardJun 25, 201311093782 (P.T.A.B. Jun. 25, 2013) Copy Citation 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. 11/093,782 03/30/2005 Yui-Wah Lee Lee 4-14 (LCNT/126776) 9960 46363 7590 06/26/2013 WALL & TONG, LLP/ ALCATEL-LUCENT USA INC. 25 James Way Eatontown, NJ 07724 EXAMINER PEREZ GUTIERREZ, RAFAEL ART UNIT PAPER NUMBER 2642 MAIL DATE DELIVERY MODE 06/26/2013 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 YUI-WAH LEE and SCOTT C. MILLER ____________ Appeal 2010-004193 Application 11/093,782 Technology Center 2600 ____________ Before ELENI MANTIS MERCADER, DAVID M. KOHUT, and LYNNE E. PETTIGREW, Administrative Patent Judges. PETTIGREW, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-22.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Claim 23 has been cancelled. Appeal 2010-004193 Application 11/093,782 2 STATEMENT OF THE CASE Introduction Appellants’ invention relates to methods and systems for discovering service information useable for selecting a wireless network service provider at a public wireless hotspot. Spec. ¶ 0001. More specifically, the invention relates to coding roaming service information to form a roaming information code, which is wirelessly transmitted from a network access point to a mobile terminal of a user. Spec. ¶ 0005. Claims 1, 20, and 22 are independent. Claim 1 is illustrative of the invention (disputed limitation in italics): 1. A method for discovering service information associated with a wireless access point (WAP), the method comprising: coding roaming service information to form a roaming information code, wherein the roaming service information comprises information identifying a plurality of roaming organizations having respective roaming agreements with an owner or operator of the WAP; and wirelessly transmitting the roaming information code from the WAP to a mobile terminal (MT) of a user. Rejections on Appeal The Examiner has rejected claims 1, 2, 8, and 17-22 under 35 U.S.C. § 102(e) as being anticipated by Thompson (US 2002/0022483 A1, Feb. 21, 2002). Ans. 3-6. The Examiner has rejected claims 3-7 under 35 U.S.C. § 103(a) as being unpatentable over Thompson and Hsu (US 7,146,130 B2, Dec. 5, 2006). Ans. 6-7. Appeal 2010-004193 Application 11/093,782 3 The Examiner has rejected claims 9-12 under 35 U.S.C. § 103(a) as being unpatentable over Thompson and Willard (US 5,625,351, Apr. 29, 1997). Ans. 7-8. The Examiner has rejected claims 13-16 under 35 U.S.C. § 103(a) as being unpatentable over Thompson and Ahmavaara (US 2004/0066756 A1, Apr. 8, 2004). Ans. 8-9. ISSUES (1) Does Thompson disclose “wherein the roaming service information comprises information identifying a plurality of roaming organizations having respective roaming agreements with an owner or operator of the WAP,” as recited in claim 1? (2) Does Thompson disclose “wherein a roaming organization is a plurality of wireless network service providers having a joint roaming relationship,” as recited in claim 2? ANALYSIS Claim 1 Appellants contend that Thompson does not disclose “wherein the roaming service information comprises information identifying a plurality of roaming organizations having respective roaming agreements with an owner or operator of the WAP,” as recited in claim 1. App. Br. 11-16; Reply Br. 2- 8. In finding that Thompson discloses this limitation, the Examiner relies on the second embodiment described in paragraph 0158 of Thompson. Ans. 4. In that embodiment, an access point (AP) may “‘beacon’ or provide continuously a list of ESSIDs [Extended Service Set Identifiers] corresponding to all of the WSPs [wireless service providers] that are Appeal 2010-004193 Application 11/093,782 4 supported by that AP.” Thompson, ¶ 0158; Ans. 4. Thus, the Examiner finds that the list of ESSIDs corresponding to all of the WSPs supported by an access point is “information identifying a plurality of roaming organizations having respective roaming agreements with an owner or operator of the WAP” as recited in claim 1. Ans. 4. Appellants contend the Examiner erred because “a wireless service provider is not a roaming organization, and, thus, the ESSIDs beaconed by the AP of Thompson do not identify roaming organizations.” App. Br. 11 (emphases omitted); see also App. Br. 12-16 (repeating the same argument). Appellants refer to their Specification, which in their view “makes a clear distinction between wireless service providers and roaming organizations.” Reply Br. 2 (citing Spec., ¶¶ 0036, 0044, 0046, and 0074). We disagree with Appellants’ statement that their Specification provides a “clear distinction” between wireless service providers and roaming organizations. As described in Appellants’ Specification, a roaming organization is a plurality of wireless service providers having a multilateral roaming agreement. Spec., ¶ 0036. Given this description, Appellants’ position on appeal appears to be that a roaming organization cannot consist of a single wireless service provider. That argument, however, does not persuade us that the Examiner erred. In the second embodiment described in paragraph 0158 of Thompson, an AP beacons a list of ESSIDs corresponding to all of the WSPs supported by that AP. In addition to that paragraph, the Examiner cites paragraphs 0148 and 0149 of Thompson, which disclose that multiple WSPs may enter into a roaming agreement that provides network access to WSPs at access points operated by other providers. See Ans. 4; see also Spec., ¶ 0024 Appeal 2010-004193 Application 11/093,782 5 (describing roaming agreements). We further note that paragraph 0158 of Thompson does not preclude multiple WSPs from sharing a corresponding ESSID. See also Thompson, ¶ 0020. In view of these disclosures, we find that the list of ESSIDs beaconed by an AP in paragraph 0158 of Thompson is information identifying a plurality of roaming organizations, each of which may include multiple WSPs and has a roaming agreement with an owner or operator of the AP. For at least these reasons, we sustain the Examiner’s § 102(e) rejection of claim 1 as well as dependent claims 8 and 17-19, for which Appellants have not made separate, detailed arguments. See App. Br. 16. We also sustain the Examiner’s § 102(e) rejection of claims 20-22, which Appellants argue on the same basis as claim 1. See App. Br. 17-29. Because Appellants do not make separate, detailed arguments with respect to claims 3-7 and 9-16, we also sustain the Examiner’s rejections of those claims under 35 U.S.C. § 103(a). Claim 2 Appellants separately argue claim 2, which depends from claim 1 and further recites “wherein a roaming organization is a plurality of wireless network service providers having a joint roaming relationship.” See App. Br. 17. The Examiner finds that Thompson discloses this limitation. Ans. 6 (citing Thompson, ¶¶ 0148, 0149, and 0158). For the reasons discussed with respect to claim 1, we agree with the Examiner that the cited paragraphs of Thompson disclose information identifying roaming organizations as further recited in claim 2. Accordingly, we sustain the Examiner’s § 102(e) rejection of claim 2. Appeal 2010-004193 Application 11/093,782 6 DECISION The Examiner’s rejections of claims 1-22 are affirmed.2 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 msc 2 We have decided the appeal before us. In the event of further prosecution of claim 22, which recites a computer-readable storage medium, the Examiner’s attention is directed to In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (holding that transitory signals are not patent-eligible subject matter under 35 U.S.C. § 101), and Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). Copy with citationCopy as parenthetical citation