Ex Parte Reunamäki et al

Patent Trial and Appeal Board

May 6, 2016

13049429 (P.T.A.B. May. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/049,429 03/16/2011
10928 7590
Locke Lord LLP
IP Docket Department
3 World Financial Center
New York, NY 10281-2101
06/23/2016
FIRST NAMED INVENTOR
Jukka Reunamiiki
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
ATTORNEY DOCKET NO.
1004289.556US
(4208-4596)
CONFIRMATION NO.
1653
EXAMINER
JUSTUS, RALPH H
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
06/23/2016 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):
ptopatentcommunication @lockelord.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUKKA REUNAMAKI and ARTO PALIN
Appeal2014-005866
Application 13/049,429
Technology Center 2600
Before ERIC S. FRAHM, JEFFREY A. STEPHENS, and
CARLL. SILVERMAN, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants requested rehearing under 37 C.F.R. § 41.52 on May 20,
2016 ("Request") from our Decision on Appeal mailed May 10, 2016
("Decision"), 1 wherein we affirmed the obviousness rejections of claims 1,
2, 4, 5, 7, 8, 10-13, and 15-23. See Decision 1, 6.
1 A request for rehearing "'must state with particularity the points believed
to have been misapprehended or overlooked by the Board'" and "must
specifically recite 'the points of law or fact which appellant feels were
overlooked or misapprehended by the Board."' Ex Parte Quist, 95 USPQ2d
1140, 1141(BPAI2010) (precedential) (quoting MPEP § 1214.03).
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Application 13/049,429
Specifically, the original panel affirmed the Examiner's final rejection
of claims 1, 2, 4, 5, 7, 8, 10-13, and 15-23 under 35 U.S.C. § 103(a) as
being unpatentable over the base combination of Miyabayashi and Tada. 2
Id.
Appellants' Contentions
Appellants have requested rehearing of the Decision of the original
panel affirming the obviousness rejections of claims 1, 2, 4, 5, 7, 8, 10-13,
and 15-23 over the base combination of Miyabayashi and Tada, primarily
arguing that the Board made factual errors in overlooking arguments
presented by Appellants in the Reply Brief that the Examiner (i)
mischaracterized the Miyabayashi and Tada references (Reply Br. 4--9;
Request 1--4); and (ii) made "factual errors in characterizing combining the
Miyabayashi and Tada references" (Request 4--6).
Appellants contend that the Board, in its original Decision, made
erroneous determinations by overlooking and/or misapprehending that none
of Miyabayashi, Tada, or a combination of Miyabayashi, teaches or suggests
a "response to the received confirmation of a carrier switch," as recited in
independent claim 1 (Request 2---6; Reply Br. 4--9). More specifically,
Appellants contend the Board overlooked that Miyabayashi's paragraph 81
fails to disclose a received confirmation (Request 2-3). Appellants also
contend the Board overlooked that Tada fails to disclose receiving a
confirmation from another device to adjust a time interval, and instead uses
2 The Examiner rejected claims 1, 2, 4, 5, 7, 8, 10-13, and 15-23 as being
unpatentable under 35 U.S.C. § 103(a) over Miyabayashi (US 2009/0227282
Al; published Sept. 10, 2009) and Tada (US 7,020,467 B2; issued Mar. 28,
2006). Final Act. 3-22; Ans. 2-19.
2
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Application 13/049,429
its own tratlic monitoring measurements to adjust the time interval of its
own inquiry scan (Request 4). Finally, Appellants contend the Board
overlooked or misapprehended Appellants' arguments in the Reply Brief
"concerning the Examiner's factual errors in characterizing combining the
Miyabayashi and Tada references" (Request 4---6) (this last argument is
primarily based on the first two arguments regarding Miyabayashi and
Tada).
Accordingly, this rehearing decision reconsiders our Decision with
regard to the specifically contested issues in the Request as to Appellants'
contentions relating to our affirmance of the Examiner's obviousness
rejection of claims 1, 2, 4, 5, 7, 8, 10-13, and 15-23 under§ 103(a).
Exemplary Claim
Exemplary independent claim 1 reads as follows (emphasis added):
1. A method, comprising:
transmitting, by a first device via an out-of-band short-
range communication carrier, an indication to a second device
that a carrier switch from the out-of-band short-range
communication carrier to an in-band short-range
communication carrier is desired;
receiving in response to the transmitted indication, a
response from the second device via the out-of-band short-
range communication carrier including an indication that the
carrier switch from the out-of-band short-range communication
carrier to the in-band short-range communication carrier is
confirmed; and
modifying, by the first device, in response to the received
confirmation of the carrier switch from the second device, device
detection procedure associated with the in-band short-range
communication carrier, by at least one of increasing a duration
of a page scanning window and decreasing a duration of a page
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Application 13/049,429
scanning interval, to improve detection of paging signals on the
in-band short-range communication carrier.
Analysis
We have reconsidered our Decision of May 10, 2016, in light of
Appellants' contentions in the Request (see Request 2---6, alleging Board's
failure to address Appellants' arguments that none ofMiyabayashi, Tada, or
a combination of the two prior art references teach or suggest a "response to
the received confirmation of a carrier switch," as recited in representative
independent claim 1; Reply Br. 4--9). We find Appellants have not
identified any points of law or fact which were overlooked or
misapprehended by the Board in the Board's original Decision with regard
to Appellants' contentions. Therefore, we decline to change our prior
decision with respect to our affirmance of the obviousness rejections of
claims 1, 2, 4, 5, 7, 8, 10-13, and 15-23. We address Appellants'
contentions as follows.
The Examiner found (Ans. 3; Final Act. 4), and the Board agreed
(Decision 3--4 ), that Miyabayashi teaches or suggests a "response to the
received confirmation of a carrier switch." Our original decision (Decision
4) stated that Miyabayashi (i-fi-f 5, 55, 57, 97, 123-24) taught or suggested the
entirety of claim 1, with the exception of increasing or decreasing a duration
of a page scanning interval to improve detection of paging signals on the in-
band short-range communication carrier. Notably, the Board did not rely
upon paragraph 81 in making this determination of fact and/ or reaching a
conclusion of obviousness with respect to the combination of Miyabayashi
and Tada. Specifically, Miyabayashi states (i-f 97), "[m]ore specifically, the
record type states an Hq (Handover Request) indicating that the NDEF
message is a message for handover request or an Hs (Handover Select)
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indicating that the NDEF message is a response message for a request"
(emphasis added). Miyabayashi (i-f 124) further states the communication
device (first device) then receives a handover message (an NFC
communication packet) from the peer communication device (second
device). Therefore, Appellants' arguments relating to any failure of
paragraph 81 ofMiyabayashi to disclose a claimed feature and/or subject
matter are misplaced.
As to Tada and the motivation to combine the references, the Board
adopted the Examiner's findings and conclusions, limited merely to the
teaching and suggestion of Tada to increase/ decrease a scanning interval in
order to improve paging signal detection (Decision 4, citing Tada col. 9, 11.
12-30). In this respect, the Examiner determined the following as to Tada:
However, Tada discloses: 1) optimizing these parameters
for connection control (columns 8-10), and specifically to those
relating to Page Scan interval and duration for to improve
Bluetooth connections (Fig. 8 (204)) (By setting the timing and
time interval of Inquiry Scan/Page Scan in accordance with an
explicit instruction from the user, a deterioration in
communication performance which is not intended by the user
can be prevented.) (column 10 lines 61-64); 2) optimizing time
intervals in accordance with the state of a device and the state
of connection (by using a data traffic monitor section &
Inquiry/Inquiry Scan/Page Scan interval decision section 204)
(column 9 lines 14-16), and; 3) at least one of increasing a
duration of a page scanning window and decreasing a duration
of a page scanning interval (the time intervals of Inquiry Scan
and Page Scan are minimized) (column 9 lines 21-22), and; 4)
using these to improve system performance (By determining
the timings and time intervals of Inquiry, Inquiry Scan, and
Page Scan ... the use of the radio communication resource is
optimized, and the communication performance can be
improved.) (column 9 lines 26-30). Tada and Miyabayashi are
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Application 13/049,429
analogous art in that it would have been obvious to a person
having ordinary skill in the art to combine the teachings of the
page procedure adjustment and modification of scanning
interval and duration settings for system improvement of Tada
with the dual communications system and modification of the
Bluetooth setting information sent by the first device of
Miyabayashi in order to improve system performance.
Ans. 4.
We agree with the Examiner as to representative claim 1
(Final Act. 3--4; Ans. 2-3) that Miyabayashi (i-fi-f 5, 55, 57, 97,
123-24) teaches or suggests the entirety of claim 1 except for
increasing or decreasing a duration of a page scanning interval
to improve detection of paging signals on the in-band short-
range communication carrier, which is taught by Tada (col. 9,
11. 12-30). We further agree with the Examiner (Final Act. 5;
Ans. 4 and 21; Adv. Act. 2, item 12) that a person having
ordinary skill in the art at the time of invention would have
been motivated to combine Miyabayashi and Tada because
doing so would have led to improved system performance
(Tada col. 9, 11.26-30).
Decision 4 (emphasis added). In view of the above, the Examiner did not
rely upon, and the Board did not overlook or misapprehend, Tada as
disclosing using its own traffic measurements to make an adjustment. In
addition, we note claim 1 fails to recite or require that any adjustment must
be either (i) received from another device, or (ii) based on its own
measurements, as argued by Appellants. Therefore, Appellants' arguments
relating to Tada (i) are not commensurate in scope with the actual language
of claim 1, and (ii) do not show that the Board misapprehended or
overlooked any facts regarding Tada or the motivation to combine when
affirming the Examiner's obviousness rejection.
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Application 13/049,429
Thus, we remain unpersuaded by Appellants' contentions that
Miyabayashi (or a combination ofMiyabayashi and Tada) fails to teach or
suggest a "response to the received confirmation of a carrier switch." As
such, Appellants do not state with particularity any misapprehension or error
overlooked in the Board's Decision.
In view of our agreement with the Examiner's findings and
conclusions with regard to the obviousness rejections of claims 1, 2, 4, 5, 7,
8, 10-13, and 15-23 (Decision 4 citing Final Act. 3-13; Ans. 2-22), we
conclude that the Board's original Decision did not overlook or
misapprehend Appellants' contentions. Consequently, Appellants have not
identified any points misapprehended or overlooked in our Decision.
Summary
Appellants' Request for Rehearing has been granted to the extent that
our decision has been reconsidered. However, such request is denied with
respect to making any modifications to the original Decision, which affirmed
the Examiner's obviousness rejections of claims 1, 2, 4, 5, 7, 8, 10-13, and
15-23.
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).
REQUEST FOR REHEARING
DENIED