Ex Parte Patel et al

Board of Patent Appeals and Interferences

Dec 16, 2009

10483000 (B.P.A.I. Dec. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DIPAK PATEL and ROBIN T. MANNINGS
____________

Appeal 2009-002949
Application 10/483,000
Technology Center 2600
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Decided: December 16, 2009
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Before KENNETH W. HAIRSTON, MAHSHID D. SAADAT, and
MARC S. HOFF, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 17-26. Claims 1-16 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Appellants’ invention relates to an interactive information delivery
terminal, comprising a user interface, capable of using short range wireless
interconnectivity systems, such as “Bluetooth” (Spec. 2:28-30, 3:4-6). By
transmitting control commands over the user interface, Appellants’ invention
places the information display unit in a secure position, without the need for
the user to make a network connection (Spec. 2:30–3:6). According to
Appellants, the user does not even need to actively express an intention to
use the system: the mere physical presence of the user’s handheld device is
sufficient to establish a piconet connection with a nearby terminal without
the need for any preliminary connection procedure with the fixed terminal
(Spec. 3:16-20). Additionally, the fixed terminal, recognizing the presence
of the user device when the piconet connection is first established, may
display an alert signal to the user to indicate the availability of the service
(Spec. 3:20-24). Claim 17, which is illustrative of the invention, reads as
follows:
17. An interactive information delivery terminal comprising:
an information display unit;
retrieval means for generating control commands for
transmission to an information store over a first communications link
and for retrieval of information therefrom;
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a user interface for receiving control commands over a second
communications link for controlling the retrieval means, the user
interface having means for recognizing the presence of a user device
and establishing a connection with the user device using the second
communications link and means for generating an alert to indicate to a
user that the connection has been established, said alert being
displayed on an output display unit of the user device; and
means for determining capabilities of the user device using the
second communications link and for thereafter selectively transmitting
information to the user device retrieved from the information store in
dependence on the determined capabilities.
The Examiner relies on the following prior art in rejecting the claims:
Ritter WO 99/67904 Dec. 29, 1999
Treyz US 6,587,835 B1 Jul. 1, 2003
Claims 17-26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ritter and Treyz.
Rather than repeat the arguments here, we make reference to the
Briefs and the Answer for the respective positions of Appellants and the
Examiner.

ISSUE
Appellants argue that Ritter does not disclose a user interface having
means for recognizing the presence of a user device, as required by claim 17
(App. Br. 12; Reply Br. 2). Appellants further assert that the contact-free
interface 15 and/or infrared transmitter 16 of Ritter have no means for
establishing a connection with the user device over the second
communication link (Reply Br. 3). Additionally, Appellants argue that
Ritter provides no disclosure related to the claimed “means for determining
capabilities of the user device using the second communications link”
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(Reply Br. 4). Therefore, Appellants’ contentions present the following
issue:
Have Appellants shown that the Examiner erred in combining the
teachings of Ritter and Treyz to arrive at the claimed invention? The issue
specifically turns on whether the combination of references teaches or
suggests a user interface having means for recognizing the presence of a user
device and means for determining the capabilities of the user device using
the second communications link.

FINDINGS OF FACT
The following findings of fact (FF) are relevant to the issue involved
in the appeal.
1. The Examiner characterizes elements 15 and 16 of Ritter as the
claimed user interface for communicating with the mobile device 3 (Ans.
10).
2. The Examiner further asserts that receiving selective portions of
the transmission by the mobile device 3 meets the claim limitation of
“selectively transmitting information to the user device” (Ans. 12).
3. The Examiner finds that transmitting all types of information so
that the user device receives the information it is capable of receiving in
Ritter is the same as selectively transmitting information since pages 8 and 9
of Appellants’ Specification describes sending both video and sound to a
head set that can only receive an audio signal (id.).
4. As shown in the Figure of Ritter, the contact-free interface
comprises a coil 15 for transmitting data as electromagnetic waves and/or an
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infrared transmitter 16 for transmitting data as infrared beams (p. 8, ll. 20-
27).
5. Ritter further discloses that the mobile device 3 also includes an
infrared transceiver 31 and/or a coil 32, which are integrated into the mobile
device (p. 9, ll. 15-29).
6. Ritter discloses that the data stored in the processing module 17
is transmitted with a transmission power greater than that of the mobile
device 3 so that the data is received by the mobile device in such
transmission range (p. 10, ll. 26-31).
7. Ritter discloses that the data is also filtered on the basis of the
user profile stored on a chipcard 35 included in the mobile device 3 (p. 10,
ll. 31-32) so that only the data in which the user is interested according to its
user profiles or depending on registered and paid for applications is received
by the mobile device (p. 11, ll. 5-7).
8. Treyz relates to a handheld device that provides a user with
shopping assistance services (Abstract) and an alert as to whether the local
wireless link or the shopping assistance service is available when the user
arrives at a store (col. 49, ll. 19-29).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis in order to support the legal conclusion
of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C.
§ 103 leads to three basic factual inquiries: the scope and content of the prior
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art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). “[T]he examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006); In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425 (CCPA 1981).

ANALYSIS
After reviewing the references, we find that the evidence of record
supports Appellants’ position that the combination of the references does not
teach or suggest a user interface having means for recognizing the presence
of a user device and means for determining the capabilities of the user
device using the second communications link. The Examiner’s
characterization of elements 15 and 16 of Ritter as the claimed user interface
(FF 1) ignores the required means for recognizing the presence of a user
device. In fact, Ritter discloses no such capability associated with coil 15 or
infrared transmitter 16 (FF 4). Therefore, while interface 16 and coil 15
transmit data to transceiver 31 and coil 32 in the user device 3 (FF 5), Ritter
discloses no specific functionality associated with the interface that results in
recognizing the presence of the user device and establishing a connection
with that device.
Additionally, as argued by Appellants (App. Br. 14; Reply Br. 4-5),
Ritter determines the capabilities of the user, and not the user device,
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because Ritter filters the transmitted data based on user profiles, registration,
and/or payment (FF 7). We disagree with the Examiner’s position (FF 2-3)
that receiving selective portions of the transmission by the mobile device
necessarily means that the data is selectively transmitted. Ritter transmits
pre-stored data such that any mobile device positioned within the
transmission range receives the data (FF 6). Although Ritter filters the data
based on what the user is interested in or has paid for (FF 7), the Examiner
has not pointed to any part of Ritter for teaching that the capabilities of the
user device are determined using the second communication link.
We also find that even if Ritter is modified by Treyz to alert the user
of a local wireless link or shopping assistance service, the teachings of Treyz
do not direct one of ordinary skill in the art to provide a user interface
having means for recognizing the presence of a user device or a means for
determining the capabilities of the user device (FF 8). Contrary to the
Examiner’s argument that receiving a part of the transmitted data is the same
as selectively transmitting information (FF 3), Appellants’ claim 17 recites
“selectively transmitting information . . . in dependence on the determined
capabilities,” which excludes transmitting all the data that is stored in the
processing module 17 and allowing the mobile device to only receive parts
of the transmission.
Therefore, we agree with Appellants that, since Ritter does not teach
or suggest a user interface having means for recognizing the presence of a
user device and means for determining the capabilities of the user device and
Treyz does not cure the above-noted deficiencies, the proposed combination
fails to render obvious claim 17, as well as independent claim 22, which
includes a similar limitation.
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CONCLUSION
On the record before us, we find that Appellants have shown that the
Examiner erred in combining the teachings of Ritter and Treyz to arrive at
the claimed invention. Therefore, in view of our analysis above, the
35 U.S.C. § 103 rejection of claims 17-26 over Ritter and Treyz cannot be
sustained.

ORDER
The decision of the Examiner rejecting claims 17-26 is reversed.

REVERSED

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