10881367 (B.P.A.I. Sep. 22, 2009)

Ex Parte Roe et al

Board of Patent Appeals and InterferencesSep 22, 2009

10881367 (B.P.A.I. Sep. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte BRYAN Y. ROE, YLIAN SAINT-HILAIRE, and NELSON F. KIDD ____________ Appeal 2009-007841 Application 10/881,3671 Technology Center 2100 ____________ Decided: September 22, 2009 ____________ Before JOSEPH L. DIXON, JOHN A. JEFFERY, and CAROLYN D. THOMAS, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL 1 Application filed June 30, 2004. The real party in interest is Intel Corporation. Appeal 2009-007841 Application 10/881,367 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-23 mailed April 1, 2008, which are all the claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. A. INVENTION Appellants invented a system, method, and computer readable medium including a Universal Plug and Play (UPnP) device having a power management service for indicating the power mode in which a device is operating. The system includes a monitoring system to track the power mode of the device and to power on the device whenever the device is in an Off mode. (Spec. 17, Abstract.) B. ILLUSTRATIVE CLAIM The appeal contains claims 1-23. Claims 1, 10, 13, 17 and 19 are independent claims. Claim 1 is illustrative: 1. A system comprising: a first Universal Plug and Play (UPnP) device of a plurality of devices having a power management service to indicate the power mode in which the device is operating; a network coupled to the device; and a router, coupled to the network, having a monitoring system to track the power modes of the devices by transmitting heartbeat signals received back from the first UPnP device when the first UPnP device is online, and to power on the first UPnP device whenever the device is in an Off mode. Appeal 2009-007841 Application 10/881,367 3 C. REFERENCES The references relied upon by the Examiner as evidence in rejecting the claims on appeal are as follows: Daniels-Barnes US 6,571,277 B1 May 27, 2003 Milton US 2003/0117433 A1 Jun. 26, 2003 Windows XP Technical Overview, Published: May 1, 2001 (hereinafter “Windows XP”), http://technet.microsoft.com/en- us/library/bb457060.aspx. D. REJECTIONS The Examiner entered the following rejections which are before us for review: (1) Claims 1-3 and 6-23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Windows XP in view of Daniels-Barnes; and (2) Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Windows XP in view of Daniels-Barnes, and further in view of Milton. II. FINDINGS OF FACT The following findings of fact (FF) are supported by a preponderance of the evidence. Windows XP 1. Windows XP discloses the addition of Universal Plug and Play capabilities to the operating system (Windows XP, Improved Networking and Communications, Universal Plug and Play: page 11). Appeal 2009-007841 Application 10/881,367 4 2. In Windows XP, the Universal Plug and Play “is designed to support zero-configuration, ‘invisible’ networking and automatic discovery.” (Id.) 3. Window XP discloses that “[w]ith Universal Plug and Play, a device can dynamically join a network, obtain an IP address, convey its capabilities, and learn about the presence and capabilities of other devices- all automatically . . . enabling peer to peer networking.” (Id.) 4. Windows XP discloses “CardBus Wake-on-LAN, a technology that allows IT departments to better manage notebook computers plugged into corporate networks. With CardBus Wake-on-LAN, notebook computers in Standby mode can be ‘woken up’ for system updates . . . without requiring the notebooks to be left on full power.” (Id. Improved Mobile Computing, Power Management: page 15.) Daniels-Barnes 5. Daniels-Barnes discloses “providing plug and play services in a distributed data processing system.” (Col. 1, ll. 18-19.) 6. Daniels-Barnes discloses “monitoring the ‘heartbeat’ of the proxy” and that “[t]he heartbeat is generated using messages that are periodically multicast by the proxy. This monitoring is performed by a monitor.” (Col. 8, ll. 23-26.) III. PRINCIPLES OF LAW “What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be Appeal 2009-007841 Application 10/881,367 5 “more than the predictable use of prior art elements according to their established functions.” Id. at 417. Appellants have the burden on appeal to the Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection [under § 103] by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). Therefore, we look to Appellants’ Brief to show error in the proffered prima facie case. Only those arguments actually made by Appellants have been considered in this decision. Arguments which Appellants could have made but chose not to make in the Brief has not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008). IV. ANALYSIS Grouping of Claims In the Brief, Appellants argue claims 1-23 as a group (App. Br. 7-12). For claims 2-23, Appellants repeat the same argument made for claim 1. We will, therefore, treat claims 2-23 as standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2008). See also In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991.) The Obviousness Rejection We now consider the Examiner’s rejection of the claims under 35 U.S.C. § 103(a). Appeal 2009-007841 Application 10/881,367 6 Appellants contend that “neither Windows XP nor Daniels-Barnes disclose or suggest a power management service to indicate a power mode in which a device is operating.” (App. Br. 10.) Appellants further contends that “the section [of Windows XP] provides no reasonable suggestion of tracking a power mode of a device by transmitting signals (heartbeat or any other type) from a first UPnP device.” (App. Br. 11-12.) The Examiner found that Windows XP discloses a power management system on page 16 and Daniels-Barnes discloses transmitting heartbeat signals. (Ans. 5.) Issue: Have Appellants shown that the Examiner erred in finding that the combination of Windows XP and Daniels-Barnes discloses a UPnP device having a power management system to indicate the power mode and transmitting heartbeats signals received back from the UPnP device, as set forth in claim 1? Windows XP discloses both UPnP capabilities and power management scenarios in Windows XP (FF 1 and FF 4). For example, Windows XP discloses that the UPnP device supports automatic discovery, can convey its capabilities, and can learn about the presence and capabilities of other devices (FF 2-4). In other words, a UPnP device can automatically indicate that it is powered on. Similarly, Daniels-Barnes discloses providing plug and play services in a distributed data processing system where the system monitors heartbeats from a proxy (FF 5-6). Appeal 2009-007841 Application 10/881,367 7 The Examiner found that the combination of these teachings discloses that it would have been obvious to have a power management service to indicate the power mode of a UPnP device and a monitoring system to track the power modes of the devices by transmitting heartbeats signals (Ans. 4- 6). We agree. Appellants do not allege that they have invented a new type of UPnP nor are transmitting any special type of heartbeats, nor demonstrate any architecture that would be unexpected to the artisan in its use. A person having ordinary skill in the art uses known elements for their intended purpose. Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969) (radiant-heat burner used for its intended purpose in combination with a spreader and a tamper and screed). “[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). Here, we simply find an arrangement of old elements, i.e., power monitoring, UPnPs capabilities, and heartbeat signals, with each performing the same function it had been known to perform. Thus, Appellants have not persuaded us of error in the Examiner’s conclusion of obviousness for representative claim 1. Therefore, we affirm the Examiner’s § 103 rejection of independent claim 1 and of claims 2-23, which fall therewith. Appeal 2009-007841 Application 10/881,367 8 V. CONCLUSION We conclude that Appellants have not shown that the Examiner erred in rejecting claims 1-23. Thus, claims 1-23 are not patentable. VI. DECISION In view of the foregoing discussion, we affirm the Examiner’s rejection of claims 1-23. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2008). AFFIRMED llw INTEL/BSTZ BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP 1279 OAKMEAD PARKWAY SUNNYVALE CA 94085-4040