Ex Parte Robertson

Patent Trial and Appeal Board

May 27, 2014

11359581 (P.T.A.B. May. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte IAN M. ROBERTSON
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Appeal 2011-010479
Application 11/359,581
Technology Center 2600
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Before KEVIN F. TURNER, PHILLIP J. KAUFFMAN, and
RAMA G. ELLURU, Administrative Patent Judges.

ELLURU, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant seeks relief under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 2 and 4-20.1 App. Br. 5.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
The Invention
The appealed claims are directed generally to communication in
small-scale networks, used primarily for small electronic devices such as
portable music players, cellular telephones, PDA’s, etc., that determine the
availability of these devices to form a network connection to another device
(e.g., a Bluetooth connection between a cellular phone and a personal
computer). Spec. ¶¶ [0001]-[0002]. According to the Specification, one of
the most well-known and basic Bluetooth security mechanisms is the ability
of a user to select whether a device is to be in the discoverable mode or in a
“non-discoverable” mode. Id. ¶ [0004]. Users place their device in non-
discoverable mode so that the Bluetooth address of their device may not be
provided to other, non-trusted devices.   Id. The Specification states that this
security mechanism is problematic because the Bluetooth address of the
second device is permanent, therefore, at a later time, even after the second
device has been placed in non- discoverable mode, the first device may still
initiate the pairing procedure, and thereby, form a connection with the

1 Application No. 11/359,581, titled Combination Modes for Network
Connection Management was filed on February 23, 2006. App. Br. 1. The
real party-in-interest is identified as Research in Motion Limited. Id. at 3.
2 Throughout this decision, we refer to the Appeal Brief filed December 24,
2010 (“App. Br.”), the Examiner’s Answer mailed April 1, 2011 (“Ans.”),
and the Reply Brief filed June 29, 2011 (“Reply Br.”). 
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second device. Id. ¶ [0005]. That problem can range in severity from
annoyance to “privilege escalation” (the user of the first device tricks the
user of the second device into allowing the connection). Id.
According to the Specification, maintaining a device in non-
discoverable mode has security benefits, but has the potential to make
pairing cumbersome when the user wants to make a legitimate connection.
Id. ¶ [0006]. It may be considered inconvenient for the user to have to
change to discoverable mode when the user wants to pair with another
device and then change back afterwards. Id. The Specification proposes
eliminating the inconvenience of the user needing to switch the device from
a combined non-discoverable/non-pairable (closed) mode, to a combined
discoverable/pairable (open) mode, and then back again, when making a
legitimate connection by maintaining the device in a discoverable (open)
mode for only a predetermined duration of time, and then automatically
returning the device to non-discoverable (closed) mode. Id. ¶ [0017].
Alternatively, the Specification proposes automatically returning the device
to a non-discoverable (closed) mode after a predetermined number of
pairings or a predetermined duration of time. Id.

Illustrative Claim
Claim 1, set forth below, is illustrative of the subject matter on appeal
and is reproduced below:
1. A method of enhancing security of wireless
communications at a device, comprising:

providing an open mode in which frequencies are
scanned for incoming address inquiries and pairing of said
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device with a requesting device may be initiated whenever a
request is received to establish wireless communications;

providing a closed mode in which frequencies are not
scanned for incoming address inquiries and pairing is not
initiated when a request is received to establish wireless
communications but existing pairings are maintained;

maintaining said closed mode absent a user input;

switching from said closed mode to said open mode
responsive to said user input; and after switching from said
closed mode to said open mode, reverting to said closed mode
after one of (i) a pre-determined duration and (ii) completing a
pre-determined number of pairings.

Prior Art Relied Upon
Honda US 2004/0072580 A1 April 15, 2004
Takayanagi US 6,970,726 B2 November 29, 2005

The Rejected Claims
Claims 1, 2 and 4-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Honda and Takayanagi.3 Ans. 3-10.
The Issues Presented
1. Whether the prior art teaches the limitation “switching from said
closed mode to said open mode responsive to said user input; and after
switching from said closed mode to said open mode, reverting to said closed
mode after one of (i) a pre-determined duration and (ii) completing a pre-

3 Though the Examiner rejects claim 3 (Ans. 5), the Examiner correctly
acknowledges that the rejection of claim 3 is not before us on appeal (Ans.
2). See also App. Br. 9 (listing the claims on appeal).
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determined number of pairings,” as required by independent claim 1. App.
Br. 11; Reply Br. 4-5.
2. Whether modifying Honda with Takayanagi would require
Takayanagi to perform a completely different function and cause a shutdown
of all existing communication in Honda. App. Br. 13.

ANALYSIS
35 U.S.C. § 103(a): Rejection of Claims 1, 2 and 4-20 as unpatentable over
Honda and Takayanagi
Appellant initially argues that the Examiner has not shown how the
combination of Honda and Takayanagi teaches the limitation “switching
from said closed mode to said open mode responsive to said user input; and
after switching from said closed mode to said open mode, reverting to said
closed mode after one of (i) a pre-determined duration and (ii) completing a
pre-determined number of pairings,” as required by independent claim 1.
App. Br. 11; Reply Br. 4-5. Specifically, Appellant argues that Honda fails
to teach that a device once switched to open mode should automatically
return to closed mode after a predetermined time or predetermined number
of pairings,4 and that Takayanagi fails to teach “a closed mode in which
frequencies are not scanned” and “an open mode in which frequencies are
scanned,” as recited in claim 1. App. Br. 12.

4 The claims require reverting to “closed mode” after “one of (i) a pre-
determined duration and (ii) completing a pre-determined number of
pairings” (emphasis added). As the claim requires only “one of” two
options, the Examiner finds that the combination of the asserted references
teaches the first option, i.e., reverting to “closed mode” after a pre-
determined duration of time. Ans. 11.
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Appellant’s argument is misplaced because Appellant argues against
the teachings of the references individually, as opposed to considering the
combination of Honda and Takayanagi. See In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot show nonobviousness by
attacking the references individually where the rejection is based on a
combination of references). The Examiner refers to Honda, not Takayanagi,
to teach the recited “closed mode” and “open mode” limitations, and refers
to Takayanagi, and not Honda, to teach switching between modes after a
predetermined time. Ans. 4, 10, 11.
Honda relates to an apparatus having a device discovery function of
discovering a new device that is present within a wireless communication
area of the apparatus and a method that is applied to the apparatus. Honda
¶ [0003]. As the Examiner explains (Ans. 4, 11), Honda teaches a
“discoverability mode” (i.e., the claimed “open” mode) in which a local
device is able to be detected/discovered by a remote device and the local
device responds to a discovery request from the remote device. Honda
¶¶ [0053]-[0056]; Fig. 4. The response by the local device allows the
remote device to “discover” the local device. Id. ¶ [0056]. Honda also
teaches a “pairing mode” (i.e., the claimed “closed” mode) which is a setting
for specifying whether to allow an authentication process to be performed
between the local device and the remote device. Id. ¶ [0065]. The pairing
mode allows pairing between the local device and the remote device to be
performed. Id. ¶¶ [0065]-[0067]; Fig. 4.
For the maintaining and switching mode limitations, the Examiner
refers to Takayanagi. Ans. 4 (citing Takayanagi Abstract; 8:14-55; Fig. 6).
Takayanagi describes switching capability of a short-range radio function to
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conserve power. Takayanagi 3:3-10. Specifically, Takayanagi teaches that
the RF radio station is “off” and the user turns “on” the radio section (i.e.,
maintaining closed mode absent user input). Takayanagi 8:11-23.
Takayanagi further teaches that after a predetermined amount of time, the
control circuit shuts down or turns “off” the radio section (i.e., reverting to
initial mode after a predetermined duration of time). Id. at 8:24-53.
Appellant further contends that a person of ordinary skill in the art
would not have had a reason to combine the asserted references because the
elements do not perform the same functions in the proposed combination as
they do separately. App. Br. 12. Specifically, Appellant argues that
modifying Honda with Takayanagi as proposed by the Examiner would shut
down all existing communication in Honda and require the elements to
perform a completely different function. Id. at 13. Appellant also argues
that a skilled artisan would not look to a teaching relating to how to switch
amongst three modes, as taught by Takayanagi, if trying to modify switching
amongst four different location-based modes, as taught by Honda. Id.
Appellant’s arguments are misplaced.
As noted above, the Examiner refers to Honda for teaching the
claimed “closed” and “open” modes. The Examiner further refers to
Takayanagi’s teachings relating to “switching” between modes, not the
modes themselves disclosed in Takayanagi. In particular, Takayanagi
teaches reverting back to an initial mode (“off” mode) after a predetermined
amount of time. Takayanagi 8:24-53. Moreover, we find persuasive
Examiner’s explanation that while Takayanagi teaches that power is turned
off and no communication is possible in the “off” mode, pairings between
devices in the proposed combination will still be maintained. Ans. 11. As
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explained by the Examiner, pairings are a function of memory, and thus,
once two Bluetooth devices, for example, have paired the settings are saved
in memory. Id. Thus, the pairings will be maintained in the proposed
combination, and no changes would have to be made to Honda. Id.
Accordingly, we affirm the rejection of claim 1. Appellant repeats the
same argument made in support of claim 1 for independent claims 10 and
11, an argument we determine is unpersuasive for the reasons discussed
above. Furthermore, Appellant does not make separate patentability
arguments for claims 2 and 4-9, and12-20 (App. Br. 14). Therefore, those
claims fall for the same reasons as claim 1, and we affirm the rejections of
claims 2 and 4-20 for the reasons discussed.

DECISION
We affirm the Examiner’s rejection of:
Claims 1, 2 and 4-20 under 35 U.S.C. § 103(a) as unpatentable
over Honda and Takayanagi.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. §1.136(a).

AFFIRMED

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