Ex Parte Murakami

Board of Patent Appeals and Interferences

Dec 27, 2010

10919610 (B.P.A.I. Dec. 27, 2010)

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.
10/919,610 08/17/2004 Takuya Murakami NEM-05501 6950
26339 7590 12/28/2010
MUIRHEAD AND SATURNELLI, LLC
200 FRIBERG PARKWAY, SUITE 1001
WESTBOROUGH, MA 01581
EXAMINER
MANOHARAN, MUTHUSWAMY GANAPATHY
ART UNIT PAPER NUMBER
2617
MAIL DATE DELIVERY MODE
12/28/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
______________

Ex parte TAKUYA MURAKAMI
______________

Appeal 2009-006677
Application 10/919,610
Technology Center 2600
______________

Before JOHN C. MARTIN, JOSEPH F. RUGGIERO, and
CARLA M. KRIVAK, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
(Continued on next page.)
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-33, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

A. Appellant’s invention
Appellant’s invention relates to connecting a wireless terminal to a
wireless local area network (LAN) via an access point. Specification 1:5-7.
Figure 1 is reproduced below.

mode) shown on the PTOL-90A cover letter attached to this decision.
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Figure 1 is a block diagram showing a configuration of a wireless
LAN connection system according to a first embodiment of the invention
(id. at 6:6-8). The access point 3 sends out a radio wave including an access
point ID capable of specifying the access point 3 (id. at 11:14-17). Thus,
when the wireless terminal 1 is positioned in a hot spot (service provision
range) of the access point 3 due to movement of the user carrying the
wireless terminal 1, the wireless terminal 1 can receive the radio wave sent
from the access point 3 and retrieve the access point ID from the received
radio wave (id. at 11:17-24).
If CPU 111 in wireless terminal 1 determines that the access point ID
and the corresponding required setting information S are already stored,
CPU 111 reads the setting information S from the database 14 in wireless
terminal 1 (id. at 12:9-12). If, on the other hand, CPU 111 determines that
the setting information S is not already stored, CPU 111 controls the setting
information acquisition unit 13 to receive setting information S from the
setting information distribution server 2 that corresponds to the access point
3 and is disposed in the vicinity thereof (id. at 12:13-21). CPU 111 then
controls the wireless communication unit 15 of wireless terminal 1 to
transmit the setting information S and the access point ID to the access point
3, which then performs connection approval based on the received
information (id. at 13:8-16).
The above “series of operations are performed automatically without
particular consciousness of the user of the wireless terminal 1 or are
performed just by moving the wireless terminal 1 carried by the user close to
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the setting information distribution server 2” (id. at 14:6-10) (emphasis
added).
A second embodiment, depicted in Figure 4, includes a setting
information decryption server 7 for decrypting encrypted setting information
(id. at 15:2-24).

B. The claims
The independent claims before us are claims 1, 16, 24, and 31-33, of
which claim 16 reads as follows:
16. A wireless LAN connection method for connecting a
wireless terminal to a wireless LAN via an access point,
comprising:
providing the wireless terminal with setting information
for connection to the wireless LAN from setting information
provision means provided separately from the wireless terminal,
wherein said setting information is provided independently of
any signal sent from said wireless terminal, and wherein the
setting information is transmitted to the wireless terminal in an
encrypted state as encrypted setting information, wherein the
wireless terminal is a mobile terminal;
automatically acquiring the setting information in the
wireless terminal when the wireless terminal is moved into a
wireless communication range of the setting information
provision means;
automatically receiving, from the access point,
identification information capable of specifying the access point
in the wireless terminal when the wireless terminal is moved
into a wireless communication range of the access point;

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transmitting the identification information and the setting
information to the access point in order to request connection to
the wireless LAN through the access point; and
connecting the wireless terminal to the wireless LAN
through the access point upon receipt of the setting information
and the identification information from the wireless terminal.
Claims App. (Br. 26).2

C. The references
The rejections are based on the following references:
Fujii US 2002/0082002 A1 June 27, 2002
Fontaine US 2004/0242197 A1 Dec. 2, 2004
Rao US 2004/0264395 A1 Dec. 30, 2004
Mankins US 2005/0029358 A1 Feb. 10, 2005
Komatsuzaki US 2005/0272371 A1 Dec. 8, 2005

D. The rejections
Claims 1, 2, 5-9, 11-13, 15, 16, 19-22, 24, 26-28, and 30-33 stand
rejected under 35 U.S.C. § 103(a) for obviousness over Komatsuzaki in view
of Rao. Final Action 2.3
Claims 3, 4, 17, 18, and 25 stand rejected under § 103(a) for
obviousness over Komatsuzaki in view of Rao and Fontaine. Id. at 8.
Claims 10 and 23 stand rejected under § 103(a) for obviousness over
Komatsuzaki in view of Rao and Fujii. Id. at 10.

2 Appeal Brief filed April 14, 2008.
3 Although claim 33 is not identified in the statement of this ground of
rejection at page 2 of the Final Action, it is addressed in the discussion of
(Continued on next page.)
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Claims 14 and 29 stand rejected under § 103(a) for obviousness over
Komatsuzaki in view of Rao and Mankins. Id.

ANALYSIS
Appellant argues, as a group, all of the claims that stand rejected over
Komatsuzaki in view of Rao. We select claim 16 as representative.
37 C.F.R. § 41.50(c)(1)(vii).
The Examiner finds that Komatsuzaki discloses all of the limitations
recited in claim 1 except the term “automatically” (two occurrences) and
relies on Rao for a teaching of automatically acquiring setting information.
Final Action 3-4. Appellant does not challenge the Examiner’s
interpretation of Rao. Instead, Appellant argues that the rejection is
improper because, as noted above, Komatsuzaki discloses depressing a
predetermined button to initiate acquisition and thus “teaches away” from
using automatic acquisition. (Br. 12-13.)
Komatsuzaki discloses a system that enables a communication setting
operation between apparatuses to be performed easily and quickly.
Komatsuzaki [0010]. A number of different system embodiments are
depicted in Figures 1, 15-18, 21, 23-27, 29-33, 38, 42, and 44 (see Brief
Description of Drawings at [0052]-[0095]). The Examiner relies primarily
on the system depicted in Figure 1, which is reproduced below.

this rejection at page 8 thereof.
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Figure 1 shows an embodiment using the “infrastructure mode,” in
which an access point 11 is connected by wire to the Internet 1 (id. at
[0096]). Access point 11 and terminal apparatus 13 include IC (integrated
circuit) tag readers 21 and 31, respectively, which provide contactless
communication with a tag (IC card) 12 that stores communication setting
information (id. at [0097], [0098]).
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The communication setting information can take the form shown in
Figure 2, reproduced below (id. at [0101]).

At step S1 in Figure 1, a user puts the tag 12 very close to the IC tag
reader/writer 21 of the access point 11, which performs contactless
communication with the tag 12 at close range and transmits the
communication setting information to the tag 12 (id. at [0101]). At step S2,
the tag 12 stores the communication setting information received from the
IC tag reader/writer 21 at step S1 (id. at [0111]). At step S3, the user puts
the tag 12 having the communication setting information stored therein very
close to the IC tag reader/writer 31 of the terminal apparatus 13, which
receives the communication setting information stored in the tag 12 from the
tag 12 (id. at [0112]). At step S4, the terminal apparatus 13 stores the
communication setting information received at step S3, and at step S5
performs a communication setting operation for performing wireless
communication of the IEEE 802.11 scheme with the access point 11 based
on the communication setting information (id. at [0113]). At step S6, the
terminal apparatus 13 performs wireless communication of the IEEE 802.11
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scheme with the access point 11 based on the communication setting
performed at step S5 (id. at [0114]).
Figure 12, which is similar to Figure 19, on which Appellant’s
“teaching away” argument is based, is reproduced below.

Figure 12 is a flow chart depicting the process employed in acquiring
the communication setting information from tag 12 by the terminal apparatus
13 (step S3 of Fig. 1) (id. at [0163]). This acquisition process begins when
the user presses a key in operation section 206 (Fig. 6) of terminal
apparatus 13:
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The terminal apparatus 13 starts detection of the tag 12,
for example when a predetermined key of the keyboard forming
the operation section 206 is pressed to input a command for
acquiring the communication group formation information.
Then, at step S91 in FIG. 12, the CPU 201 of the terminal
apparatus 13 monitors the operation section 206 and determines
whether or not the predetermined button of the operation
section 206 is pressed to command acquisition of the
communication group formation information. The CPU 201
repeatedly performs the processing at step S91 to wait until the
predetermined button of the operation section 206 is pressed to
command transmission of the communication group formation
information.
Id. at [0164].4
Figure 16 is reproduced below.

4 In the quotations herein from Komatsuzaki, bolding of the reference
numerals is omitted.
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Figure 16 shows an example of a communication system that differs
from the embodiment depicted in Figure 1 by locating the tag 12 in the
access point (331) rather than separately therefrom (id. at [0198]).
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Figure 18 shows an example of a communication system that differs
from those of Figures 1 and 16 in that a tag 12 is not used, i.e., the portable
terminal apparatus 332 directly acquires communication setting information
from the access point 11 (id. at [0209]). We note that the terminal apparatus
in each of Figures 16 and 18 is designated “332.”
Figure 19, on which Appellant specifically relies, is reproduced
below.
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Figure 19 is described as a flow chart explaining how communication
setting information is acquired by the portable terminal apparatus in the
system embodiment depicted in Figure 18 (id. at [0213]). The Figure 19
acquisition process, like that shown in Figure 12, begins when the user
presses a key: “When a user presses the predetermined button of the
operation section, the portable terminal apparatus 332 determines that the
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predetermined button of the operation section is pressed to command
acquisition of the communication group formation information at step S301,
and the processing proceeds to step S302” (id. at [0215]).
We agree with the Examiner that Appellant’s “teaching away”
argument is unpersuasive. As explained in Depuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009):
“A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant.” Ricoh Co., Ltd. v. Quanta Computer
Inc., 550 F.3d 1325, 1332 (Fed.Cir.2008) (quoting In re Kahn,
441 F.3d 977, 990 (Fed. Cir. 2006)). A reference does not
teach away, however, if it merely expresses a general
preference for an alternative invention but does not “criticize,
discredit, or otherwise discourage” investigation into the
invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
Appellant’s “teaching away” argument is unpersuasive because modifying
Komatsuzaki in the manner proposed by the Examiner is consistent with,
rather than contrary to, Komatsuzaki’s disclosure for the reasons stated as
follows by the Examiner:
Komatsu[za]ki is not teaching against automating the
acquisition of setting information. The utility of
Komatsu[z]aki’s invention is teaching the steps of providing a
more reliable system (Paragraph [0009]; “user can prevent
erroneous connection of the terminal apparatus to apparatus
other than the terminal apparatus”, Paragraph [0232] ) that
could prevent accidental download of the configuration from
unwanted access points. The utilization of Rao is for teaching
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to automatically acquiring setting information in order to
provide a solution that can further avoid having to obtain
network identifier for the local WLAN and can avoid having to
navigate confusing configuration set-up interfaces for each
wireless network client being configured. Rao’s method of
achieving network configuration information increases the
reliability and reduces installation time.
(Answer 14.)
Furthermore, not only does Komatsuzaki fail to teach away from
using automatic acquisition, we find that Komatsuzaki describes automatic
acquisition as an alternative to user-initiated acquisition. Regarding
acquisition step S91 in the Figure 12 flow chart (concerning the Figure 1
embodiment), Komatsuzaki explains:
In the aforementioned description, when the
predetermined operation is input from the operation section
206, the terminal apparatus 13 starts the detection processing of
the tag 12. However, it does not necessarily start the detection
processing of the tag 12 when the predetermined operation is
input. That is, the terminal apparatus 13 may always detect the
tag 12. The terminal apparatus 13 always performing the
detection of the tag 12 is effective, for example when the
terminal apparatus 13 is connected to a power source for home
use.
(Id. at [0172]) (emphasis added). Komatsuzaki also makes the same
suggestion in paragraph [0223] when discussing “terminal apparatus 332.”
Because paragraph [0223] discusses tag 12, it presumably is referring to the
Figure 16 embodiment, which employs such a tag, rather than to the Figure
18 embodiment, which does not. The same suggestion is made in paragraph
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[0241] when discussing terminal apparatus 13-1, which appears in the
Figure 21 embodiment.5
Appellant’s argument that “Komatsuzaki’s device would not operate
properly with the automatic wireless client described by Rao” (Br. 14) is
unpersuasive because it is based on the fact that “both acquisition and
transmission functionality [are] initiated in Komatsuzaki by the user input of
pressing the predetermined button” (id.) and thus constitutes a repetition of
the above “teaching away” argument.
For the foregoing reasons, we sustain the rejection of claim 16 and the
other claims grouped therewith, viz., claims 1, 2, 5-9, 11-13, 15, 19-22, 24,
26-28, and 30-33.
The rejections of the remaining claims (viz., claims 3, 4, 10, 14, 17,
18, 23, 25, and 29), whose merits are not separately argued, are also
sustained. In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).

DECISION
The Examiner’s decision that claims 1-33 are unpatentable under 35
U.S.C. § 103(a) is affirmed.

5 A similar suggestion is made in paragraph [0161] regarding access point
11 (Fig. 1).
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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). See 37 C.F.R.
§ 1.136(a)(1)(v) (2010).
AFFIRMED

kis

MUIRHEAD AND SATURNELLI, LLC
200 FRIBERG PARKWAY, SUITE 1001
WESTBOROUGH, MA 01581