Ex Parte Park et al

Patent Trial and Appeal Board

Dec 12, 2016

12705230 (P.T.A.B. Dec. 12, 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.
12/705,230 02/12/2010 Woo-Jin PARK 678-3851 (P17194) 7961
66547 7590 12/14/2016
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
HO, THOMAS
ART UNIT PAPER NUMBER
2494
NOTIFICATION DATE DELIVERY MODE
12/14/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pto @ farrelliplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WOO-JIN PARK, JIN-HYOUNG KIM, JIN-WOOK LEE, JE-
HYOK RYU, HUN LIM, SHIN-IL KANG, and GENE-MOO LEE
Appeal 2015-006197
Application 12/705,230
Technology Center 2400
Before JOHN A. JEFFERY, JEFFREY A. STEPHENS, and SCOTT E.
BAIN, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 2, 4—8, 10-14, and 16—24. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants’ invention automatically connects a portable terminal and
digital device wirelessly to enable a user to conveniently access a Wireless
Local Area Network (WLAN). See generally Spec. 5—7. Claim 1 is
illustrative:
Appeal 2015-006197
Application 12/705,230
1. A method for automatic wireless connection to a
digital device in a portable terminal, comprising:
acquiring information about the portable terminal, the
information being commonly used by the digital device and the
portable terminal for the automatic wireless connection;
setting, by the portable terminal, a Wireless Local Area
Network (WLAN) to an Ad-hoc mode;
automatically generating, by the portable terminal, a
Service Set Identifier (SSID) of the WLAN using the acquired
information about the portable terminal;
automatically generating, by the portable terminal, a
security key of the WLAN using the acquired information about
the portable terminal;
automatically generating, by the portable terminal, an
Internet Protocol (IP) address for the WLAN using the acquired
information about the portable terminal; and
wirelessly connecting, by the portable terminal, to the
digital device using the IP address for the WLAN,
wherein the information about the portable terminal
includes at least one of a phone number and an Electronic Serial
Number (ESN) of the portable terminal.
THE REJECTIONS
The Examiner rejected claims 1, 2, 6—8, 10, 13, 14, 16—18, and 21—24
under 35 U.S.C. § 103(a) as unpatentable over Kawakami (EP 1,603,289
Al; Dec. 7, 2005) and Amin (US 6,167,261; Dec. 26, 2000). Final Act. 5-
ll.1
1 Throughout this opinion, we refer to (1) the Final Rejection mailed May
19, 2014 (“Final Act.”); (2) the Appeal Brief filed December 8, 2014 (“App.
Br.”); (3) the Examiner’s Answer mailed April 6, 2015 (“Ans.”); and (4) the
Reply Brief filed June 8, 2015 (“Reply Br.”).
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Application 12/705,230
The Examiner rejected claims 4, 5, 11, 12, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Kawakami, Amin, Nath (US 2008/0064367
Al; Mar. 13, 2008), and Silvemail (US 2008/0137860 Al; June 12, 2008).
Final Act. 11—14.
THE OBVIOUSNESS REJECTION OVER KAWAKAMI AND AMIN
The Examiner finds that Kawakami’s automatic wireless connection
method (1) acquires information about a portable terminal, namely stored
provisional setting information, and (2) automatically generates, by the
terminal, an SSID, security key, and IP address using the acquired
information. Final Act. 5—6. Although the Examiner acknowledges that
Kawakami’s acquired information lacks a phone number or ESN, the
Examiner cites Amin as teaching this feature in concluding that the claim
would have been obvious. Final Act. 7.
Appellants argue that although Kawakami’s terminal receives
provisional setting information and generates setting information, including
an SSID, key, and IP address, Kawakami is silent as to how they are
generated, let alone by using information about the portable terminal that
includes an ESN, as claimed. App. Br. 5—7; Reply Br. 1—3. Appellants add
that although Amin’s ESN is used in a telephone profile, the prior art is
silent regarding transmitting or receiving an ESN, let alone applying such a
transmission or reception to Kawakami’s system as the Examiner proposes.
App. Br. 6; Reply Br. 2—3.
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Application 12/705,230
ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Kawakami and Amin collectively would have taught or
suggested a portable terminal automatically generating an SSID, security
key, and IP address for a WLAN using acquired information about the
portable terminal, where the information includes at least one of a phone
number and ESN of the terminal?
(2) Is the Examiner’s proposed combination of these references
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion?
ANALYSIS
On this record, we are unpersuaded of error in the Examiner’s
rejection of claim 1 for the reasons indicated by the Examiner (Final Act. 5—
7; Ans. 3—11)—a thorough and cogent analysis that we adopt as our own.
As the Examiner explains, Kawakami’s terminal 14 receives
provisional setting information 12 in Figure 3 A, and automatically generates
setting information 16 which, as shown in Figure 3B, includes an SSID, key,
and IP address. Ans. 5 (citing Kawakami Abstract; 127); accord App. Br. 6
(acknowledging these three elements of Kawakami’s generated setting
information). Although Kawakami is short on specifics regarding how this
setting information is generated, it is nonetheless generated automatically in
response to receiving the provisional setting information. See Kawakami
127. Kawakami, then, at least suggests that terminal 11 ’s provisional
setting information is used to automatically generate terminal 14’s setting
information, particularly upon comparing this information in Kawakami’s
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Application 12/705,230
Figures 3A and 3B. Although some elements, including the SSID, are the
same in both figures as Appellants indicate (Reply Br. 3), Kawakami still at
least suggests automatically generating—or regenerating—this duplicate
information in Figure 3B responsive to receiving the provisional setting
information in Figure 3 A.
Even assuming, without deciding, that Kawakami uses only the
provisional SSID to generate the SSID of the setting information as
Appellants contend (App. Br. 6), nothing in the claim requires using an ESN
or phone number to generate the SSID, key, or IP address. Although the
claim requires using acquired information about the portable terminal to
automatically generate these three elements, and an ESN or phone number is
included in that information, the claim does not preclude using acquired
terminal information other than the ESN or phone number to automatically
generate the three elements. Although the ESN or phone number would be
an adjunct to other acquired terminal data that is used in this automatic
generation process, it is still part of the acquired information about the
portable terminal under the Examiner’s proposed combination. The
Examiner’s point in this regard (Ans. 8—9) is well taken.
Nor do we see any reason why an ESN or phone number could not be
included in this acquired data for identification purposes as the Examiner
proposes, particularly in light of Amin. Final Act. 7; Ans. 6—7. First,
Appellants’ theory that an ESN is allegedly unnecessary in Kawakami’s
infrared communications (Reply Br. 3) is unsubstantiated on this record and,
therefore, has little probative value. See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997). Second, the Examiner’s proposed enhancement to
Kawakami, namely to include an ESN or phone number as suggested by
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Application 12/705,230
Amin, uses prior art elements predictably according to their established
functions—an obvious improvement yielding a predictable result. See KSR
Inti Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
Lastly, Appellants’ contention that Kawakami’s provisional setting
information is not information “about the portable terminal” (App. Br. 6) is
unavailing and not commensurate with the scope of the claim as the
Examiner indicates. Ans. 10—11.
Therefore, for the reasons noted above and by the Examiner, we are
not persuaded that the Examiner erred in rejecting claim 1, and claims 2, 6—
8, 10, 13, 14, 16—18, and 21—24 not argued separately with particularity.
THE OTHER OBVIOUSNESS REJECTION
We also sustain the Examiner’s obviousness rejection of claims 4, 5,
11, 12, 19, and 20. Final Act. 11—14. Despite nominally arguing these
claims separately, Appellants reiterate similar arguments made in connection
with claim 1, and allege that the additional cited references fail to cure those
purported deficiencies. App. Br. 8. We are not persuaded by these
arguments for the reasons previously discussed.
CONCLUSION
The Examiner did not err in rejecting claims 1,2, 4—8, 10—14, and lb-
24 under § 103.
DECISION
The Examiner’s decision rejecting claims 1, 2, 4—8, 10-14, and 16—24
is affirmed.
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Application 12/705,230
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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