Ex Parte Tarnanen et alDownload PDFPatent Trial and Appeal BoardMay 15, 201811070669 (P.T.A.B. May. 15, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/070,669 03/03/2005 71867 7590 05/17/2018 BANNER & WITCOFF, LTD ATTORNEYS FOR CLIENT NUMBER 007412 1100 13th STREET, N.W. SUITE 1200 WASHINGTON, DC 20005-4051 FIRST NAMED INVENTOR Teemu Tarnanen 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. CONFIRMATION NO. 007412.01309 1769 EXAMINER KANG, SUK JIN ART UNIT PAPER NUMBER 2477 NOTIFICATION DATE DELIVERY MODE 05/17/2018 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): PTO-71867@bannerwitcoff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TEEMU TARNANEN and ABBAS MOSLEMIE Appeal2017-011182 Application 11/070,669 Technology Center 24 77 Before JEFFREY S. SMITH, JOHNNY A. KUMAR, and NORMAN H. BEAMER, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-011182 Application 11/070,669 STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § I34(a) from a Final Rejection of claims 20, 23, 25-30, 32, 34--37, and 40-50. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Exemplary Claim Exemplary claims 20, 23, 42, and 45 under appeal reads as follows: 20. A server comprising: memory storing one or more web pages, wherein each of the web pages comprises at least one wireless access point setting; and a processor configured to cause the server to: receive a request for a wireless access point setting from a service center connected to a mobile communications network, the request comprising a web page address determined based on a user input into a mobile station seeking the wireless access point setting, select a web page among the one or more web pages stored in memory based on the web page address of the request, and send the selected web page comprising the wireless access point setting to the service center. 23. An apparatus comprising: a processor configured to cause the apparatus to: connect to a mobile communication network, connect to a data network comprising a plurality of Internet access points, receive, from a mobile station via the mobile communication network, a request for an Internet access point setting associated with at least one of the plurality of Internet access points, the request comprising information input into the mobile station by a user, 2 Appeal 2017-011182 Application 11/070,669 determine a web page address based on the information input by the user, send, to a server, a request for a web page associated with the web page address, receive, from the server, the web page, the web page comprising settings of a plurality of Internet access points, identify, from the web page, settings of the at least one Internet access point from among the settings of the plurality of Internet access points, and send the settings of the at least one Internet access point to the mobile station via the mobile communication network. 42. The apparatus of claim 23, wherein the information input into the mobile station by the user comprises a keyword, and wherein the processor is configured to determine the web page address based on the keyword using a table linking keywords and web page addresses. 45. The server of claim 20, wherein the user input into the mobile station comprises a keyword, and wherein the web page address is determined using a table that links keywords to web page addresses. Rejections Claims 20, 27, 34, 45, and 46 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Stewart (U.S. 5,835,061; Nov. 10, 1998) in view of Mellquist (U.S. 6, 115,545; Sept. 5, 2000), and further in view of Bannister et al. (hereinafter Bannister) (U.S. 5,943,399; Aug. 24, 1999). 3 Appeal 2017-011182 Application 11/070,669 Claims 23, 25, 26, 28, 29, 32, 35-37, 40-44, and 47-50 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Bannister in view of Stewart and further in view of Mellquist. Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Stewart in view of Mellquist and Bannister and further in view of Mahany et al. (hereinafter Mahany) (U.S. 5,790,536; Aug. 4, 1998). ISSUE Appellants have presented several arguments as to why the combination of the references does not teach or suggest the features recited in claims 20, 23, 42, and 45. 1 These contentions present us with the issue: Did the Examiner err in finding that the combination of Stewart, Mellquist, and Bannister teaches or suggests the features recited in claims 20, 23, 42, and 45? ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' contentions the Examiner erred. Further, we have reviewed the Examiner's response to claims 20, 23, 42, and 45 that Appellants have argued. App. Br. 5-16; Reply Br. 2-6. The Examiner has provided a comprehensive response to each argument presented by the Appellants on pages 14 through 29 of the Answer. We have reviewed this response and concur with the Examiner's 1 Throughout this opinion we refer to the Appeal Brief dated (Feb. 28, 2017), and Reply Brief dated (Aug. 30, 2017). 4 Appeal 2017-011182 Application 11/070,669 findings and conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner's Final Action and Answer in response to Appellants' Appeal Brief. Final Act. 2-21; Ans. 14-- 29. In the Reply Brief, Appellants argue "[ c ]ontrary to Office's position, the 'essential information' provided by the server to the mobile unit in Stewart includes information related to services such as car and rental agencies; it does not include 'information for linking to an access point,' as alleged by the Office." Reply Br. 2-3. However, Appellants' arguments are not commensurate with the scope of the claim language because Appellants' claim 20 does not preclude Stewart's essential information. We have considered the rest of Appellants arguments in the Reply Brief (Reply Br. 3---6) but find them unpersuasive to rebut the Examiner's responses. We conclude that Appellants' arguments in their contentions ignore the actual reasoning of the Examiner's rejection. Instead, Appellants attack a reference individually for lacking a teaching that the Examiner relied on a combination of references to show. It is well established that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413,426 (CCPA 1981); In re Merck& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The effect of Appellants' argument is to raise and then knock down a straw man rejection of each of claims 20, 23, 42, and 45 that was never made by the Examiner, in that the Examiner did not rely solely on the one reference as argued. In other words, Appellants argue Examiner's findings that were never made. This form of argument is inherently 5 Appeal 2017-011182 Application 11/070,669 unpersuasive to show Examiner error. Our reviewing court requires that references must be read, not in isolation, but for what they fairly teach in combination with the prior art as a whole. Merck, 800 F .2d at 1097. Consequently, we conclude there is no reversible error in the Examiner's rejections of claims 20, 23, 25-30, 32, 34--37, and 40-50. DECISION We affirm the Examiner's rejections of claims 20, 23, 25-30, 32, 34-- 37, and 40-50. 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 6 Copy with citationCopy as parenthetical citation