Ex Parte Nidd

Board of Patent Appeals and Interferences

Sep 16, 2011

10062108 - (D) (B.P.A.I. Sep. 16, 2011)

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.
10/062,108 02/01/2002 Michael Nidd CH920000073US1 9994
7590 09/19/2011
ANNE VACHON DOUGHERTY
3173 Cedar Road
Yorktown Heights, NY 10598
EXAMINER
BRUCKART, BENJAMIN R
ART UNIT PAPER NUMBER
2478
MAIL DATE DELIVERY MODE
09/19/2011 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 MICHAEL NIDD
____________

Appeal 2009-006306
Application 10/062,108
Technology Center 2400
____________

Before THOMAS S. HAHN, CARL W. WHITEHEAD, JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-006306
Application 10/062,108

2
STATEMENT OF THE CASE
Summary
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-12. Appeal Brief 1. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). We reverse.

Introduction
Appellant describes the invention as a computerized method,
apparatus, and device for retrieving multidimensional data from a database
in response to a user query. “Independent claims 1, 9, and 18 recite a
method, program storage device, and system, respectively.” Appeal Brief 3.
Actually, the independent claims are 1, 8, and 12, and they are respectively
directed to a method, a wireless network device, and a recording medium
embodying a computer program code (Appeal Brief. 36-40).

Exemplary Claim
Exemplary independent claim 1under appeal reads as follows:
1. A method for performing service discovery in a pervasive wireless
network comprising a plurality of devices including a network device and
other devices, wherein lists are maintained and updated for services that are
available from the plurality of devices connected to the pervasive network,
the method comprising the network device:
accessing a remote device to obtain information for establishment of a
connection to the remote device;
establishing a connection to the remote device whereby the remote device
joins the pervasive wireless network;
retrieving from the remote device service information related to services
provided by the remote device, connection information for configuring
connections to the remote device and service usage information for using the
services;
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updating a list of all network services at said network device based on
retrieved service information; and
forwarding the retrieved service information to the other network devices for
said other network devices to perform updating of lists of services available
from the plurality of devices connected to the pervasive network based on
the received information.

Rejections on Appeal
Claims 1, 2, 4, 8, and 10-12 stand rejected under 35 U.S.C. §102(e) as
being anticipated by U.S. Patent Number 6,604,140 B1 issued to Beck.
Answer 3-4.
Claims 1, 2, 4-8, and 10-12 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over U.S. Patent Number 6,751,200 B1 issued to Larsson
and U.S. Patent Number 6,182,224 B2 issued to Phillips. Answer 5-7.
Claims 3 and 9 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Larsson, Phillips, and U.S. Publication Number
2002/0075940 A1 issued to Haartsen. Answer 7-8.

Issues on Appeal
Did the Examiner err in rejecting claims 1-12 over the various 35
U.S.C. §§ 102 and 103 rejections because neither Beck nor Phillips discloses
a registry that includes updating a list of all network services?

PRINCIPLES OF LAWS
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
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During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal
quotation marks omitted). “[T]he words of a claim ‘are generally given their
ordinary and customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (citations omitted).
If the Examiner's burden to establish a prima facie case of
unpatentability is met, the burden then shifts to the Appellants to overcome
the prima facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992).

ANALYSIS
Anticipation Rejection
Claims 1, 8, and 12
For the purpose of the Appeal, Appellant groups claims 1, 8, and 12
together. Appeal Brief 12.
Appellant contends that Beck does not teach that a service descriptor
is used to update a list of all network services and points to a passage in
Beck at column 5, lines 3-27. Appeal Brief 16. The Examiner responds by
indicating that the updating is a statement of intended use and that Beck
shows that the service descriptor is used to update a list of network services.
Answer 10-11; see Beck col. 4, ll. 61-67; col. 7, l. 63 to col. 8, l. 15; col. 8,
ll. 49-56. We find the Examiner’s rationale to be unsustainable. Claim 1 is
drawn to a method of performing a service discovery in a wireless network
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and thus the updating claim limitation is not a statement of intended use, but
is, instead, a method step. Therefore we find the Appellant’s argument to be
persuasive because Beck fails to disclose that a service descriptor is used to
update a list of all network services. See Beck column 5, lines 3-27.
Independent claims 8 and 12 are apparatus claims, but they both recite
structures enabling functionality similar to that set forth in method claim 1.
Accordingly, the Examiner’s positions regarding the intended use doctrine
are misplaced with respect to these claims as well. We therefore will not
sustain the Examiner’s rejection of claims 1, 8, and 12. We likewise will not
sustain the Examiner’s rejections of claims 2, 4, 10, and 11which depend
upon claims 1 and 8.

Obviousness Rejections
Appellant asserts Phillips fails to teach updating a list of all network
services at the network device based upon retrieved service information.
Appeal Brief 25. The Examiner finds that Phillips discloses the claimed
invention in Figure 1A by sending data via steps 8 and 9. Answer 5. The
Examiner further relies upon Phillips column 10, lines 1-57 to support his
position. Id. Figure 1 of Phillips is reproduced below:
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Figure 1A shows a block diagram of a system for providing enhanced
services using service advertisments. Phillips, column 8, lines 46-48.

In the Response to Arguments section of the Answer, the Examiner
does not address Appellant’s assertion that Phillips fails to disclose updating
the list of all network services as claimed, and it is not readily apparent from
the drawing and large sections of Phillips cited that Phillips discloses
updating the list as claimed. For example, the information being forwarded
in the cited passage of column 10 does not appear to be “information related
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to services provided by the remote device” as recited in claim 1. Phillips
alternatively discloses the following examples for what the forwarded client
advertising information may be: “relative urgency of requests from the client
process 102; or willingness to pay for services from the server node 105.”
Phillips, col. 9, ll. 61-67.
In summary, the Examiner has failed to establish a prima facie case of
unpatentability for claim 1 because of Phillips’ lack of disclosure as noted
above. Independent claims 8 and 12 recite similar limitations. We therefore
will not sustain the Examiner’s obviousness rejection of claims 1, 2, 4-8, and
10-12. See Oetiker, 977 F.2d at 1445. Regarding dependent claims 3 and 9,
the Examiner has not alleged that the additionally cited reference, Haartsen,
cures the shortcomings of the rejection noted above. We therefore will not
sustain the obviousness rejection of these claims for the reasons stated.

CONCLUSION
The Examiner has erred in rejecting claims 1-12 over the various
35 U.S.C. §§ 102 and 103 rejections.

DECISION
The Examiner’s rejections of claims 1-12 as being unpatentable under
35 U.S.C. § 102(e) and 35 U.S.C. § 103(a) are reversed.

REVERSED

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