Ex Parte Lundgren et al

Patent Trial and Appeal Board

Feb 19, 2016

12748197 (P.T.A.B. Feb. 19, 2016)

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.
12/748,197 03/26/2010 David Lundgren 3875.4170004 4691
26111 7590 02/22/2016
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
AZIZ, ABDULMAJEED
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
02/22/2016 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 DAVID LUNDGREN,
MARK BUER,
CHARLES ABRAHAM,
DAVID GARRETT,
JEYHAN KARAOGUZ, and
DAVID MURRAY
__________

Appeal 2014-002731
Application 12/748,1971
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
David Lundgren, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1–7, 9, 11–17, 19, and 21–24. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

1 The Appellants identify Broadcom Corporation as the real party in interest.
App. Br. 3.
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Application 12/748,197

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SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method, comprising:
receiving, at a network device, a radio frequency (RF)
characterization of one or more signals detected by a communication
device;
comparing, at said network device, said RF characterization of
said one or more signals with one or more previously approved RF
characterizations of said one or more signals to determine a match
result; and
determining, at said network device, whether to approve said
communication device to perform a network transaction based on said
match result.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hales
Maufer et al.
Roberge et al.
Weston
Hamada
Pohja
Govindswamy et al.

US 2002/0035460 A1
US 2005/0147074 A1
US 2005/0242177 A1
US 2007/0084913 A1
US 2010/0079243 A1
US 7,373,109 B2
US 8,036,658 B2
Mar. 21, 2002
July 7, 2005
Nov. 3, 2005
Apr. 19, 2007
Apr. 1, 2010
May 13, 2008
Oct. 11, 2011

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Application 12/748,197

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The following rejections are before us for review:
1. Claims 1, 3, 5, 9, 11, 13, 15, and 19 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Weston, Hamada, Roberge, and
Hales.
2. Claims 2 and 12 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Weston, Hamada, Roberge, Hales, and Pohja.
3. Claims 4 and 14 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Weston, Hamada, Roberge, Hales, and Wagner.
4. Claims 6 and 16 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Weston, Hamada, Roberge, Hales, and
Govindswamy.
5. Claims 7 and 17 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Weston, Hamada, Roberge, Hales, and Maufer.
6. Claims 21–24 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Wagner, Roberge, Hamada, and Hales.

ISSUES
Did the Examiner err in rejecting claims 1, 3, 5, 9, 11, 13, 15, and 19
under 35 U.S.C. §103(a) as being unpatentable over Weston, Hamada,
Roberge, and Hales; claims 2 and 12 under 35 U.S.C. §103(a) as being
unpatentable over Weston, Hamada, Roberge, Hales, and Pohja; claims 4
and 14 under 35 U.S.C. §103(a) as being unpatentable over Weston,
Hamada, Roberge, Hales, and Wagner; claims 6 and 16 under 35 U.S.C.
§103(a) as being unpatentable over Weston, Hamada, Roberge, Hales, and
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Govindswamy; claims 7 and 17 under 35 U.S.C. §103(a) as being
unpatentable over Weston, Hamada, Roberge, Hales, and Maufer; and,
claims 21–24 under 35 U.S.C. §103(a) as being unpatentable over Wagner,
Roberge, Hamada, and Hales?

ANALYSIS
The rejection of claims 1, 3, 5, 9, 11, 13, 15, and 19 under 35 U.S.C. §103(a)
as being unpatentable over Weston, Hamada, Roberge, and Hales.
The independent claims are claims 1 and 11.
Weston is relied on to show “receiving, at a network device, [ ] one or
more signals detected by a communication device.” Claim 1. See Final Act.
3. Weston is also relied on to show “a processor configured to:
receive [ ] one or more. signals detected by said communication device.”
Claim 11. See Final Act. 8.
Claims 1 and 11 more specifically call for receiving a “radio
frequency (RF) characterization of one or more signals.” According to the
Examiner, that aspect is disclosed in Hales, citing claim 24 as evidence. See
Final Act. 4 (“Hales teaches the characterization of radio frequency
signals.”)
Claim 1 includes a limitation to “comparing, at said network device,
said RF characterization of said one or more signals with one or more
previously approved RF characterizations of said one or more signals to
determine a match result.” Claim 11 includes a similar limitation.
The Examiner found that Hamada discloses said “comparing”
limitation but for the RF characterization. See Final Action 3: “Hamada
teaches that an authentication device can compare a received tag 10 with a
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registered or previously approved tag 10 to determine a matched result.” As
evidence, the Examiner cites paras. 8, 65, 73, 76 and 97 of Harada. Final
Act. 3.
Claim 1 also includes a limitation to “determining, at said network
device, whether to approve [a] communication device to perform a network
transaction based on said match result.” Claim 11 includes a similar
limitation.
The Examiner found that Roberge discloses said “determining”
limitation, but for it being “based on said match result.” Figs. 1A and 1H
and paras. 5, 36, 40, 44, and 47 are relied on. See Final Act. 3 (“Roberge
teaches that a network device or POS terminal 14c, which contains a built-in
RFIO reader, determines whether to approve a communication device
(active RFIO transponder) in order to perform a network transaction.”)
The Appellants’ main contention is that
the Examiner has focused on distinct terms and phrases of the claims
to reject certain features to the exclusion of the claims’ greater
context. As just one example, the Examiner focuses on claims 1 and
11’s determination “whether ... to approve said communication device
to perform a network transaction” in isolation, to the exclusion of the
basis on which the determination is made.
App. Br. 10. In other words, the Appellants argue that the Examiner used
impermissible hindsight to reach the claimed subject matter given the cited
prior art combination. We agree.
The Examiner states that “[a]t the time of the invention, it would have
been obvious for one of ordinary skill in the art to have modified Weston
with [ ] Hales with the motivation of overcoming the mismanagement of
information handled by manual processes. Final Act. 4. In our view, this is
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insufficient as “some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006). The difficulty is that even if we assume the reasoning
sufficient to explain how one of ordinary skill in the art would reach the
claim limitation “receiving, at a network device, a radio frequency (RF)
characterization of one or more signals detected by a communication
device” (claim 1), it does not explain why one of ordinary skill in the art
would be led further to compare the RF characterization of a signal with a
previously approved RF characterizations of said signal to determine a
match result; and determine, at said network device, whether to approve said
communication device to perform a network transaction based on said
match result” as the claims as a whole require. The Examiner well explains
how Hamada and Roberge would lead one to the “comparing” limitation but
for the RF characterization and the “determining” limitation but for it being
“based on said match result.” But there is insufficient explanation why one
of ordinary skill in the art, given Hales for example, would be led further to
compare the RF characterization of a signal with a previously approved RF
characterizations of said signal to determine a match result; and determine,
at said network device, whether to approve said communication device to
perform a network transaction based on said match result” as the claims as a
whole require.
For the foregoing reasons, the rejection of claims 1 and 11 is not
sustained. A prima facie case of obviousness has not been made out in the
first instance by a preponderance of the evidence. Claims 3, 5, and 9, and
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claims 13, 15, and 19 depend from claims 1 and 11, respectively. Their
rejection is not sustained for the same reasons.
The rejection of claims 2 and 12 under 35 U.S.C. §103(a) as being
unpatentable over Weston, Hamada, Roberge, Hales, and Pohja.
The rejection of claims 4 and 14 under 35 U.S.C. §103(a) as being
unpatentable over Weston, Hamada, Roberge, Hales, and Wagner.
The rejection of claims 6 and 16 under 35 U.S.C. §103(a) as being
unpatentable over Weston, Hamada, Roberge, Hales, and Govindswamy.
The rejection of claims 7 and 17 under 35 U.S.C. §103(a) as being
unpatentable over Weston, Hamada, Roberge, Hales, and Maufer.
Claims 2, 4, 6, and 7, and claims 12, 14, 16, and 17 depend from
claims 1 and 11, respectively. Their rejection is not sustained for the same
reasons used not to sustain the rejection of claims 1 and 11.

The rejection of claims 21-24 under 35 U.S.C. §103(a) as being
unpatentable over Wagner, Roberge, Hamada, and Hales.
This rejection of independent claim 21, and claims 22–24 that depend
from it, is not sustained for similar reasons to those used above not to sustain
the rejection of claims 1 and 11.
Claim 21 does not mention “RF characterization” but more generally
“characterization.” Nevertheless, claim 21 does not merely recite
“generating, at a communication device, a characterization of one or more
signals detected.” It also calls for “receiving, at said communication device,
a determination from [a] network device whether to approve said
communication device, said determination being based on a comparison
between said characterization of said one or more signals and one or more
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previously approved characterizations of said one or more signals at said
network device by said communication device.”
The Examiner finds that “[a]t the time of the invention, it would have
been obvious for one of ordinary skill in the art to have modified Weston
with . . . Hales [sic, Wagner] with the motivation of overcoming the
mismanagement of information handled by manual processes.” Final
Act. 25. But Wagner was cited for showing only the claimed “generating”
step. There is insufficient explanation as why one of ordinary skill in the art
would be led to modify Roberge and Hamada via Hales and thereby reach
the “receiving” step.
Accordingly, because a prima facie case of obviousness has not been
made out for the claimed subject matter as a whole in the first instance by a
preponderance of the evidence, the rejection of independent claim 21 and
claims 22–24 that depend from it is not sustained

CONCLUSIONS
The rejections of claims 1, 3, 5, 9, 11, 13, 15, and 19 under 35 U.S.C.
§103(a) as being unpatentable over Weston, Hamada, Roberge, and Hales;
claims 2 and 12 under 35 U.S.C. §103(a) as being unpatentable over
Weston, Hamada, Roberge, Hales, and Pohja; claims 4 and 14 under
35 U.S.C. §103(a) as being unpatentable over Weston, Hamada, Roberge,
Hales, and Wagner; claims 6 and 16 under 35 U.S.C. §103(a) as being
unpatentable over Weston, Hamada, Roberge, Hales, and Govindswamy;
claims 7 and 17 under 35 U.S.C. §103(a) as being unpatentable over
Weston, Hamada, Roberge, Hales, and Maufer; and, claims 21–24 under
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35 U.S.C. §103(a) as being unpatentable over Wagner, Roberge, Hamada,
and Hales, are not sustained.

DECISION
The decision of the Examiner to reject claims 1–7, 9, 11–17, 19, and
21–24 is reversed.

REVERSED