Ex Parte Tao

Board of Patent Appeals and Interferences

Jun 12, 2012

11469626 (B.P.A.I. Jun. 12, 2012)

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.
11/469,626 09/01/2006 Jimmy Tao 291010-00453 6742
7590 06/12/2012
Robert A. Diaz
Eckert Seamans Cherin & Mellott, LLC
44th Floor
600 Grant Street
Pittsburgh, PA 15219
EXAMINER
MAPA, MICHAEL Y
ART UNIT PAPER NUMBER
2617
MAIL DATE DELIVERY MODE
06/12/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JIMMY TAO
____________

Appeal 2010-002373
Application 11/469,626
Technology Center 2600
____________

Before JOSEPH L. DIXON, KARL D. EASTHOM, and
ROBERT A. CLARKE, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002373
Application 11/469,626

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1-14. (App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The ‘626 Specification describes “a method of transmitting a message
to a handheld electronic device that is beyond the coverage area of a wireless
network.” (Spec. ¶ 0001.) After determining that the intended handheld
electronic device is beyond the coverage area of an access point, the access
point sends a message to “a number of peer handheld electronic devices”
which then transmit the message copy to the intended handheld electronic
device. (Spec. ¶ 0016.)
Exemplary claim 1 follows:
1. In a system including a network and at least one wireless access
point in electronic communication with said network, wherein a handheld
electronic device and a plurality of peer handheld electronic devices are
registered with said system, a method for transmitting a message to said
handheld electronic device when said handheld electronic device is not
within communication range of any said wireless access point, comprising:
attempting to wirelessly transmit said message from said network to
said handheld electronic device through said at least one wireless access
point;
wirelessly transmitting said message from said at least one wireless
access point to one or more of peer handheld electronic devices that are
within communication range of said at least one wireless access point; and
wirelessly transmitting said message from at least one of said one or
more of said peer handheld electronic devices to said handheld electronic
device when said at least one of said one or more of said peer handheld

Appeal 2010-002373
Application 11/469,626

3
electronic devices is within communication range of said handheld
electronic device.
(App. Br. 17.)
The Examiner rejected, under 35 U.S.C. § 103(a) as obvious, claims
1-8 and 11-13 based on Kats1 and Knauerhase2; claims 9 and 14 based on
Kats, Knauerhase, and Kavanti3; and claim 10 based on Kats, Knauerhase,
and Hwang4. (Ans. 3-10.)

The ‘626 Specification
S1. As background, the Specification describes an example e-mail
type of electronic message involved in prior art data systems as follows:
a wireless network 1 that includes a handheld electronic
device 2 that is able to wirelessly communicate with a
network 4, such as a data network, when the handheld
electronic device 2 is within the coverage area . . . of a wireless
Access Point 8 that is in electronic communication with the
network 4. While the handheld electronic device 2 is within the
coverage area 6 of the Access Point 8, the handheld electronic
device 2 is able to receive an electronic message (e.g. e-mail
message) 10 that was sent from a sending source such 12 [sic]
as, without limitation, a remote device.
(See Spec. ¶ 0003.)
The Specification refers to “electronic messages” in several places.
(See, e.g., Spec. ¶¶ 0014-16.)
S2. The Specification also teaches that the handheld electronic
device employs a microprocessor for processing any number of received

1 U.S. Pub. No. 2004/0071107 A1 (Apr. 15, 2004).
2 U.S. Pub. No. 2004/0203617 A1 (Oct. 14, 2004).
3 U.S. Pub. No. 2007/0004333 A1 (Jan. 4, 2007).
4 U.S. Pub. No. 2006/0120338 A1 (June 8, 2006).
Appeal 2010-002373
Application 11/469,626

4
inputs and a cursor for selecting any number of program icons 54 to launch a
program. (Spec. ¶¶ 0027-28; Fig. 3.)
S3. The Specification cautions that “the figures and description are
not to be taken as restrictive on the scope of the disclosed and claimed, but
are to be understood as broad and general teachings.” (Spec. ¶ 0029.)
S4. The Specification also describes encryption of the electronic
message as a possible step to protect the privacy of the message. (Spec. ¶
0018).

ANALYSIS
Based on the arguments presented, independent claim 1 is selected as
a representative claim for claims 1-8 and 11-13. The findings in the
Examiner’s Answer and Final rejection are hereby adopted and incorporated
by reference.
The primary issue on appeal with respect to claim 1 is whether
Appellant has shown that the Examiner erred in determining that the
combined teachings of Kats and Knauerhase render obvious using
Knauerhase’s handheld wireless devices in place of Kat’s generic wireless
devices. (See Ans. 4-5.) The Examiner reasons that using such handheld
mobile devices would provide “better ways to manage the ad hoc network.”
(Ans. 5.) The Examiner further explains that according to Figure 3 of
Knauerhase, using the handheld devices allows the combined system to send
coded (encrypted) messages to intended handheld devices that the system
can reach, otherwise, to broadcast the messages to peers, so as not to “waste
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Application 11/469,626

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the communication resources of all the other nodes/peers in the system.”
(See Ans. 12.)5
The Examiner’s reasoning is persuasive. Appellant argues that the
claimed combination would render either Kats or Knauerhase inoperable and
that the Examiner has failed to articulate a sufficient rationale for combining
the two systems. (App. Br. 12-15.) But Appellant does not provide a
persuasive showing as to how substituting Knauerhase’s handheld electronic
devices for Kats’s electronic devices, according to the Examiner’s rejection
(Ans. 4-5), would render Kat’s system inoperable. Appellant argues that
Kats “only discusses sensors and other devices that are stationary” (App.
Br. 9), but Appellant does not direct attention to a disclosure in Kats which
specifies any size for the electronic devices or otherwise specifies that the
devices must be stationary. (See App. Br. 9 (arguing that “although not
specifically stated, Kats appears to be limited to stationary nodes”).)
Appellant also contends that Kats requires an access point and
Knauerhase “cannot have a fixed access point” so that any combination
thereof would destroy Kats’s principle of operation. (App. Br. 13-14.)
Appellant bases this argument on the assertion that Knauerhase “relates only
to a mobile ad hoc network (MANET) wherein all the devices comprising
the network are mobile devices.” (App. Br. 14.) If Appellant is correct, then
Knauerhase’s wireless devices could not send and receive messages while
stationary (e.g., while a device user takes a call at a café), and a Kats
wireless device could never move. Appellant does not provide a logical

5 The Answer also more specifically relies on encryption (i.e., a type of
coding) in Knauerhase to reject claim 11. (Ans. 7.)
Appeal 2010-002373
Application 11/469,626

6
explanation as to why wireless devices cannot function while being
stationary or moving.
While Appellant points to example electronic devices in Kats as
monitoring vibration data, pressure data, CO data, and all manner of data
(App. Br. 9), skilled artisans would have recognized that if such devices
could not be handheld for inspecting sites on the fly, size alone would
preclude such devices from being handheld. Therefore, setting aside the
added beneficial reasons noted by the Examiner, the Examiner’s rejection
amounts to proposing a “mere substitution of one element for another known
in the field,” which does not “do more than yield a predictable result.” See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007.) This “mere
substitution” implicitly conveys the advantage of allowing rapid spot
monitoring and/or relocation of the electronic devices for monitoring
environmental conditions and communicating, whether the devices include
sensors or more generic message receivers. (See Ans. 11 (relying in part on
Kats’s radio communication device 160 to pass “information and
communication messages between each point”).)
As such, contrary to Appellant’s arguments alleging a lack of a prima
facie obviousness case by the Examiner (Reply Br. 5), the Examiner’s
rationale, based partly on a mere substitution of handheld electronic devices
for generic electronic devices, and partly on better network management as
noted, constitutes a sufficient showing which Appellant has failed to rebut.
As to the former reason, a “smaller” device carries an “implicit motivation.”
See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1367, 1368 (C.A.Fed.2006) (listing “stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more efficient” devices as
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Application 11/469,626

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providing implicit motivation and noting that “[o]ur suggestion test is in
actuality quite flexible and not only permits, but requires, consideration of
common knowledge and common sense”); Alza Corp. v. Mylan Labs., Inc.,
464 F.3d 1286, 1291 (2006) (“There is flexibility in our obviousness
jurisprudence because a motivation may be found implicitly in the prior
art.”).
Appellant also argues that “it is evident that the word ‘message’ as
used in Kats has a different meaning than the meaning recited in the claims
of the present application.” (App. Br. 10 (emphasis by Board except as to
Kats).) Appellant seeks to limit the claimed messages to “a specific
meaning, a personal communication.” (App. Br. 11.) But Appellant does
not proffer a special definition appearing in the Specification; therefore,
claim terms follow the ordinary meaning read in the context of the
specification. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
2005) (en banc).
According to Appellant, “Kats discloses . . . system messages that are
broadcast and rebroadcast.” (App. Br. 10 (emphasis by Board except as to
Kats).) Appellant notes that Kats’s “messages” include sending “a broadcast
of data packet[s] to all nodes, or, a transmission of a data packet to a distant
node.” (App. Br. 8-9.) Appellant’s arguments show that the term
“message,” as understood my skilled artisans as evidenced by Kats, carries a
broad meaning which includes data packets and is not limited to personal
messages. See also McGraw-Hill Dictionary of Scientific and Technical
Terms 1247 (1994 5th Ed.) (“message . . . . A series of words or symbols,
transmitted with the intention of conveying information. . . . An arbitrary
amount of information with beginning and end defined or implied . . . .”)
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Therefore, Appellant attempts to limit the ordinary claim term
“message” to exclude packets or other known message formats. However,
the Federal Circuit
recently reiterated the stringent standard for narrowing a claim
term beyond its plain and ordinary meaning in Thorner v. Sony
Computer Entertainment America L.L.C., 669 F.3d 1362 (Fed.
Cir. 2012). There, we explained that we will only interpret a
claim term more narrowly than its ordinary meaning under two
circumstances: “1) when a patentee sets out a definition and
acts as [its] own lexicographer, or 2) when the patentee
disavows the full scope of a claim term either in the
specification or during prosecution. Id. at 1365.

Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012).
There is no clear disavowal involved here, and to act as a
lexicographer, an applicant must define claim terms with “reasonable clarity,
deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed.
Cir. 1994). The disclosed prior art "electronic message" or “e-mail”
example relied upon by Appellant (App. Br. 3; S1) does not constitute a
definition of the broader term "message", let alone a precise one, because
“‘[i]t is ... not enough that the only embodiments, or all of the embodiments,
contain a particular limitation’ to limit a claim term beyond its ordinary
meaning.” Pharma, 675 F.3d at 1330 (quoting Thorner, 669 F.3d at 1366).
In other words, Appellant’s reliance on a prior art e-mail example
disclosed in the Specification amounts to an improper attempt to limit the
claims, even if the prior art example could be deemed a preferred
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Application 11/469,626

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embodiment.6 See In re American Academy of Science, 367 F.3d 1359, 1369
(Fed. Cir. 2004) (“We have cautioned against reading limitations into a
claim from the preferred embodiment described in the specification, even if
it is the only embodiment described, absent clear disclaimer in the
specification.”); accord In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
(“Absent claim language carrying a narrow meaning, the PTO should only
limit the claim based on the specification or prosecution history when those
sources expressly disclaim the broader definition.”)
As noted above, the Examiner’s interpretation is supported by the
teachings of Kats and a trade dictionary. “Absent an express definition in
their specification, the fact that appellants can point to definitions or usages
that conform to their interpretation does not make the PTO's definition
unreasonable when the PTO can point to other sources that support its
interpretation.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
The Examiner’s interpretation is also not inconsistent with the
Specification. The Specification contemplates “electronic message[s]”
including data from any number of “program[s]” in the disclosed electronic
device (S2), receiving messages in a “data network” from any source
“without limitation,” (S1) and specifically cautions against doing what
Appellant attempts here - importing limitations to narrow the clams (S3).
And even under a more narrow interpretation, the Examiner’s
rationale includes deleting messages based on teachings in Knauerhase. (See
Ans. 5 (discussing rejection of dependent claims 2 and 3).) Appellant

6 The relied-upon e-mail example is discussed in the Background section of
the Specification. (See S1; see also Reply Br. 3-4 (relying on Spec. at
¶ 0002 (i.e., the Background section).)
Appeal 2010-002373
Application 11/469,626

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maintains that “[a]s is well known by those skilled in the art, personal
communications are processed in a manner different than a system
communication.” (App. Br. 11.)
But Kats discloses a variety of known modulation schemes which can
carry all manner of wireless “information message[s].” (Kats ¶¶ 0002.)
According to Kats, “persons having ordinary skill in the art will recognize
that the present invention is independent of the communication methods
and/or modulation schemes utilized, such as for example, phase modulation
schemes, frequency modulation schemes, amplitude modulation schemes . . .
. (Kats ¶¶ 0056.) Kats also discloses that the system is “communicatively
coupled to other computers, for example via an Internet connection” and “is
operable to provide services to users wishing to control the ad hoc wireless
network.” (Kats ¶ 0049). Thus, the record shows that even under a more
restrictive definition of “message,” skilled artisans would have been able to
modify the Kats system so that the electronic devices disclosed there,
including the radio relied upon by the Examiner (Ans. 11), would have been
capable of receiving all manner of “information message[s]” as Kats teaches
- including the e-mail messages taught by Knauerhase (Knauerhase ¶ 0018).
Based on the foregoing discussion, Appellant has not shown error in
the rejection of claim 1 and claims 2-8 and 11-13 which were not argued
separately from claim 1.
With respect to claims 9 and 14, Appellant relies on arguments
presented with respect to claim 1, and further, or cumulatively, argues that
Kats cannot be modified as proposed because Kats does not “broadcast” a
message. (App. Br. 15-16.) This argument is not entirely clear, because as
noted supra, Appellant states that Kats’s system sends “a broadcast of data
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11
packet[s] to all nodes.” (App. Br. 8.) Further, representative claim 9, which
depends from claims 8 and 1, does not specifically recite or require any
“broadcast.” Claim 14 may be more restrictive than claim 9, and by its
dependency on claim 13, requires transmission to “one or more peers” - i.e.,
not necessarily a broadcast. (Emphasis added to claim 13.)
In other words, if Appellant means that the claimed method requires
sending a message to multiple devices or requires some type of
omnidirectional broadcast, it is not clear why claims 9 or 14 require any
such “broadcast.” Hence, the arguments fail to particularly point out what
the claims require and are not commensurate in scope therewith. Assuming
for the sake of argument that claims 9 and 14 implicitly require some type of
“broadcast” to multiple devices, the Examiner persuasively addresses
Appellant’s arguments and explains that the individual and collective
teachings suggest the encryption of signals which can be broadcasted to
multiple peers and then decoded by the intended recipients. (See Ans. 12-
13; accord Kats ¶ 0053 (disclosing spread spectrum message coding);
Knauerhase ¶¶ 0003; 0015 (disclosing omnidirectional broadcast and
encrypted messages).) The Specification also contemplates encryption.
(S4.)
Appellant also argues that the Examiner fails to provide sufficient
rationale for the proposed combination, but the Examiner’s rationale,
discussed briefly supra, is sufficient. (Compare App. Br. 15-16 with
Ans. 12-13 (articulating how the proposed art combination renders the Kats
system efficient).)
With respect to claim 10, Appellant makes arguments similar to those
presented for claim 1 and maintains that Hwang and Kats disclose fixed
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Application 11/469,626

12
access point systems while Knauerhase does not, and as such, the
Examiner’s rejection is improper and lacks sufficient rationale. (App. Br.
16.) Contrary to Appellant’s arguments, as discussed supra, the Examiner
persuasively articulates reasons for using Knauerhase’s handheld devices in
Kats’s fixed access point system. (See Ans. 5, 10.) The Examiner also
provides persuasive rationale to combine the teachings of Hwang with Kats
and Knauerhase. (See Ans. 9-10, 13-14.) Appellant’s truncated arguments
fail to show error and in particular, how the claimed combination results in
more than the predictable use of prior art methods according to established
functions.
Based on the foregoing discussion, Appellants have not shown error
in the Examiner’s obviousness rejections of claims 1-14.
DECISION
We affirm the Examiner’s decision rejecting claims 1-14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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MCGRAW-Hill

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Fifth Edition

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Editor in Chief
McGraw-Hili, Inc.

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