Ex Parte Polo et al

Patent Trial and Appeal Board

Dec 16, 2016

13286018 (P.T.A.B. Dec. 16, 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.
13/286,018 10/31/2011 Angel Polo BP23504 1136
51472 7590 12/20/2016
GARLICK & MARKISON (BRCM)
P.O. BOX 160727
AUSTIN, TX 78716-0727
EXAMINER
MATHEW, MAX
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
12/20/2016 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):
MMURDOCK@ TEXASPATENTS .COM
ghmptocor@texaspatents.com
bpierotti @ texaspatents .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANGEL POLO, YUAN ZHUANG, CHIKAN KWAN,
GUOXIN XIE, ARTHUR JIN, and CINDY (XIN) TIAN 1
Appeal 2015-004889
Application 13/286,018
Technology Center 2600
Before KRISTEN L. DROESCH, JAMES W. DEJMEK, and
JOHN D. HAMANN, Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1—20, all of the pending claims in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants indicate the real party in-interest is Broadcom Corporation.
App. Br. 3.
Appeal 2015-004889
Application 13/286,018
BACKGROUND
The disclosed invention relates to “[a] technique to open a single
receiving window to perform scanning and initiating operations in a
Bluetooth Low Energy [(BLE)] compliant device, instead of using two
separate receiving windows.” Spec. Abstract, 2:28—27.
Representative claims 1 and 14, reproduced from the Claims
Appendix of the Appeal Brief, read as follows (disputed limitations in
italics)'.
1. A method comprising:
opening a receiving window in a device to receive a packet
transmission according to a proximal wireless transmission protocol
compliant with a Bluetooth Low Energy wireless specification;
using the receiving window to identify an address of the packet
transmission to perform an initiating operation to connect to a remote
device;
using the receiving window to identify an address of the packet
transmission to perform a scanning operation; and
performing both the scanning operation and the initiating
operation utilizing the same receiving window while the receiving
window is open, instead of opening two receiving windows to perform
separate scanning and initiating operations.
14. An apparatus comprising:
a radio frequency front end to function as a Physical
(PHY) layer for wireless communication; and
a baseband module coupled to the radio frequency front
end to function as a LINK layer for the wireless
communication, the LINK layer to:
open a receiving window in a device to receive a
transmitted advertisement packet that is transmitted in
accordance with a Bluetooth Low Energy wireless
specification;
identify an address of the advertisement packet
when the receiving window is open to perform an
initiating operation to connect to a remote device;
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Application 13/286,018
identify an address of the advertisement packet
when the receiving window is open to perform a
scanning operation; and
perform both the scanning operation and the
initiating operation utilizing the same receiving window
while the receiving window is open, instead of opening
two receiving windows to perform separate scanning and
initiating operations.
REJECTION AND PRIOR ART
Claims 1—20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Hillyard (US 2013/0040574 Al; Feb. 14, 2013), Linde
(US 2013/0090061 Al; Apr. 11, 2013), and Masuda (US 2012/0195387 Al
Aug. 2, 2012).
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Brief, the Answer, and the arguments in the Reply Brief.
We are not persuaded by Appellants’ arguments addressing claims 14—20.
We agree with and adopt as our own the Examiner’s findings and
conclusions of law addressing claims 14—20. We are, however, persuaded
by Appellants’ arguments addressing claims 1—13. We highlight and
address specific findings and arguments below for emphasis.
Claims 1—13
The Examiner finds both Hillyard and Linde do not teach explicitly
that the initiations and scanning operations are performed in the same
receiving window while the receiving window is open. See Final Act. 4.
The Examiner finds that Masuda teaches that both operations are performed
in the same window. See id. (citing Masuda 49, 50, 56). The Examiner
further finds:
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Application 13/286,018
Masuda teaches the communication devices 100 transmitting
connection requests, and starts scan operation [par.56]. Fig.2
shows the communication device 100 has only one display that
means for both operations the communication device using only
one display. Although, Masuda does not specifically recite the
term window, Masuda's display is a “display” window. Please
see par.56, fig.2, element 140. That means performing both the
scanning operation and initiating request operation utilizing the
same display window of communication device 100. Masuda
does teach (see par.56) that an initiation operation (read as
connection request), and a scan operation are performed at the
same time for Bluetooth low energy device. It is considered that
“at the same time” in paragraph 56 refers to both the initiation
operation and the scan operation occurring simultaneously,
therefore occurring within the same receiving window.
Ans. 2—3.
We are persuaded by Appellants’ argument that the Examiner erred by
equating the display and the inferred visual graphical window of Masuda to
the time-based communication windows of the claims. See Reply Br. 3.
Appellants direct attention to Figure 13 of the Specification, and explain that
the term window refers to a communications time-based window, not a
graphical user interface (GUI) of the display. See id. We agree that the
broadest reasonable construction of the term “window,” when read in light
of Appellants’ Specification (see Spec. 11:17—12:16, 20:17—21, Figs. 12—
13), does not encompass a display, visual graphical window, or GUI of the
display.
We also agree with Appellants’ argument that Masuda does not teach
the claimed receiving window with both scanning and initiating, because
Masuda’s teachings are limited to setting a sending function “advertising
state” at Device A for transmitting advertising containing a
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Application 13/286,018
detectable/connectible state for Device B, and starting its own low energy
(LE) scan together (i.e., at the same time). See Reply Br. 4 (citing Masuda
Fig. 6); see also Masuda 1 56. We further agree that Masuda teaches Device
B stops its own LE scan before entering the connectible state (i.e., initiating
operation). See id.', Masuda 59, 61, 62, Fig. 6. We further note that
Masuda teaches that Device A stops the LE Scan and operation before
sending a connection request (i.e., initiating operation) to device B. See
Masuda Tflf 60-62, Fig. 6.
For the foregoing reasons, we reverse the Examiner’s rejection of
claims 1—13.
Claims 14—20
With respect to independent claim 14, Appellants argue that the cited
references do not disclose both scanning and initiating in the same receiving
window. See App. Br. 14. Appellants’arguments are not persuasive
because the disputed limitations are not entitled to patentable weight. The
disputed limitations do not limit the structures of the radio frequency front
end and the baseband module coupled to the radio frequency front end of the
apparatus recited in claim 14. The disputed limitations merely recite the
uses or functions of the baseband module. Although applicants are free to
define something by what it does rather than by what it is, there is inherent
risk in doing so. See In re Swinehart, 439 F.2d 210, 212 (CCPA 1971). One
risk is that the recited use will cover any and all embodiments capable of
performing the recited use or function. See id. at 213; see also In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“Schreiber’s contention
that his structure will be used to dispense popcorn does not have patentable
weight if the structure is already known, regardless of whether it has ever
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Application 13/286,018
been used in any way in connection with popcorn.”). “[Apparatus claims
cover what a device is, not what a device does.” Hewlett-Packard co. v.
Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); but cf. In re
Giannelli, 739 F.3d 1375, 1378 (Fed. Cir. 2014) (“adapted to” clause limited
a machine claim where “the written description makes clear that ‘adapted
to,’ as used in the . . . application, has a narrower meaning, viz., that the
claimed machine is designed or constructed to be used as a rowing machine
whereby a pulling force is exerted on the handles.”)
We agree with, and adopt as our own, the Examiner’s findings that
Hillyard teaches or suggests an apparatus comprising a radio frequency front
end and a baseband module coupled to the radio frequency front end. See
Final Act. 9 (citing Hillyard || 2, 14). The remaining limitations recited in
claim 14 do not patentably distinguish the claimed invention over the
combined teachings of Hillyard, Linde, and Masuda because they describe
the intended use or function of the baseband module. For these reasons, we
are not persuaded of error in the Examiner’s rejection of claim 14, and
dependent claims 15 and 16, which are not argued separately.
Appellants further argue that none of the cited references disclose:
(1) “further comprising an initiating white list and a scanning white list to
compare a received address with address entries in at least one of the
initiating or scanning white lists to filter for addresses,” as recited in
dependent claim 18; (2) “wherein separate filtering lists are used for the
initiating white list and scanning white list,” as recited in dependent claim
19; and (3) “wherein one filtering list is used and attributes are attached to
entries in the one filtering list to identify if a particular entry belongs in one
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or both of the initiating white lists and scanning white list,” as recited in
dependent claim 20. See App. Br. 16—18.
Appellants’ arguments are not persuasive because the limitations of
claims 18—20 are not entitled to patentable weight. The limitations do not
limit the structures of the radio frequency front end and the baseband
module coupled to the radio frequency front end of the apparatus recited in
claim 14. The limitations of claims 18—20 also do not recite additional
structure beyond the radio frequency front end and the baseband module
coupled to the radio frequency front end recited in claim 14. The limitations
of claims 18—20 merely recite the uses or functions of the baseband module.
Accordingly, for these reasons, in addition to the reasons given above
addressing independent claim 14, we are not persuaded of error in the
Examiner’s rejection of dependent claims 18—20.
DECISION
We AFFIRM the rejection of claims 14—20
We REVERSE the rejection of claims 1—13.
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-IN-PART
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