Ex Parte Wang et al

Patent Trial and Appeal Board

Oct 9, 2012

11350942 (P.T.A.B. Oct. 9, 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.
11/350,942 02/10/2006 James Wang 184607-370836 2572
27155 7590 10/09/2012
McCarthy Tetrault LLP
Box 48
Suite #4700 Toronto Dominion Bank Tower
TORONTO, ON M5K 1E6
CANADA
EXAMINER
SERRAO, RANODHI N
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
10/09/2012 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JAMES WANG and RUDY RAWLINS
____________________

Appeal 2010-0046841
Application 11/350,942
Technology Center 2400
____________________

Before JEAN R. HOMERE, ST. JOHN COURTENAY, III, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Research in Motion Ltd. (App. Br. 3.)

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-42. (App. Br. 2.) We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.
Appellants’ Invention
Appellants invented a method and system for conserving battery
power in a wireless device (210) operating in a local area network (LAN)
(430) wherein the wireless device (210) is coupled via an access point (410)
to a server (100), which is in turn coupled to at least a client device (440) on
the LAN. (Spec. ¶ [0001], Fig. 4.) In particular, upon receiving from the
wireless device (210) a message including the hardware address associated
therewith indicating that the wireless device desires to join the network, the
server (100) updates the list of hardware addresses (470) for all devices on
the network, and sends the updated address list to all the devices thereby
making it unnecessary for said devices to send request messages for
information contained in the updated list. (Spec., ¶ [0055].)

Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. A method for conserving battery power in a wireless
device coupled through an access point to a server in a network,
the server being coupled to at least one client in the network,
each of the wireless device, the at least one client, and the
access point having a respective hardware address, the method
comprising:
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receiving at the server through the access point a message
indicative of the wireless device joining the network and
providing the hardware address of the wireless device;

updating a list of hardware addresses for clients in the
network to include the hardware address of the wireless device,
the list including a respective Internet Protocol ("IP") address
for each hardware address; and,

sending from the server to at least one of the wireless
device, the at least one client, and the access point, the updated
list of hardware addresses to thereby reduce a number of
request messages broadcast on the network for information that
is contained in the updated list that the wireless device need
leave a sleep mode to process.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
CHARI US 2004/0264435 A1 Dec. 30, 2004
MEIER US 2005/0254444 A1 Nov. 17, 2005

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 29-42 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 1-4, 6-8, 11, 12, 14-18, 20-22, 25, 26, 28-32, 34-36, 39,
40, and 42 stand rejected under 35 U.S.C. § 102(e) as being anticipated by
Meier.
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3. Claims 5, 9, 10, 13, 19, 23, 24, 27, 33, 37, 38, and 41 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Meier and Chari.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the principal Brief, pages 12-26 and the Reply Brief, pages 12-29.
Non-statutory Subject Matter Rejection
Dispositive Issue 1: Have Appellants shown that the Examiner erred
in concluding that claims 29-42 are directed to non-statutory subject matter?
Appellants argue that because claims 29-42 recite a computer program
product that contains computer executable code for directing the computer to
conserve battery power, the claims are directed to statutory subject matter
consistent with Ex parte Bo Li, Appeal 2008-001213 (BPAI 2008).2 (App.
Br. 25, Reply Br. 29.)
In response, the Examiner finds that because the claims do not recite
that the computer codes are physically stored on a computer medium/
program product or that are they actually executed by the computer, the
codes do not cause functional changes to the computer medium. Therefore,
the instructions are not structurally and functionally interrelated to the
medium in order to constitute an article of manufacture within the meaning
of 101. (Ans. 22-23.)

2 The cited appeal is not precedential and therefore is not binding upon the
Patent Trial and Appeal Board.
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On the record before us, we agree with the Examiner’s conclusion that
the cited claims are directed to non-statutory subject matter. First, we note
that the claims recite a computer-program product having a computer
executable code that is merely comprised of a set of codes. That is, the
claims indicate the codes constitute the computer product as opposed to the
codes being embedded on the computer medium, and that the codes are
capable of being executed by the computer. In other words, the recited
computer program product is merely a set of instructions that may be
executed at some unspecified time in the future. We therefore conclude the
recitation computer executable code for directing a system to be a statement
of intended use,3 which cannot be properly relied upon to impart actual
functionality to the cited claims. Further, while Appellants’ Specification
indicates that the program instructions may be embodied in software
modules residing in a computer memory (Spec. ¶ [0025]), the claims are not
so limiting. The claims do not require that the instructions be stored on any
of the storage media recited in the Specification. Simply put, the claims are
directed to a data structure per se, which is not tangibly embodied in a
storage medium. Further, we note that the recited description of the details

3 See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We also note
that “[a]n intended use or purpose usually will not limit the scope of the
claim because such statements usually do no more than define a context in
which the invention operates.” See Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although
“[s]uch statements often . . . appear in the claim's preamble,” a statement of
intended use or purpose can appear elsewhere in a claim. In re Stencel, 828
F.2d 751, 754 (Fed. Cir. 1987).
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of the data structure solely in terms of the information (i.e., data) contained
therein is insufficient to impart functionality thereto. That is, assuming
arguendo that the data is capable of being executed by an unclaimed
computer having an underlying computer program to perform the desired
functionalities, these functionalities would still need to be recited in the
claim. Therefore, because the claims do not require that the set of
instructions, upon execution, cause the computer to perform certain
functions to thereby establish the requisite structural and functional
interrelationships between the computer and the stored instructions to permit
the computer’s functionality to be realized, the computer would not become
a special purpose computer (i.e., a new machine) once it receives the data.4
Consequently, we conclude that because the claimed computer program
product is directed to a mere set of instructions to be executed at some future
time, it is not directed to any of the four statutory classes of 35 U.S.C. § 101.
It follows that Appellants have not shown that the Examiner erred in
concluding that claims 29-42 are directed to non-statutory subject matter.

Prior Art Rejections
Dispositive Issue 2: Have Appellants shown that the Examiner erred
in finding that Meier describes a server sending an updated list of hardware
addresses for clients in a network to a wireless device, a client, and an
access point, as recited claim 1?

4 See In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir 1994). See also MPEP
2106.1.
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Appellants argue that the Examiner erred in finding that Meir’s
disclosure describes the disputed limitations emphasized above. In
particular, Appellants argue that Meier discloses a partial list of multicast
addresses of stations for which an access point has buffered frames. (Reply
Br. 24.) However, Appellants argue that disclosed list does not contain the
address of each client in the network, and that the disclosed multicast
addresses do not describe the claimed hardware addresses. (Id.) Further,
Appellants argue that while Meier discloses a proxy server that manages the
addresses, the proxy server does not send the list of addresses to the clients
because the proxy server acts as a proxy for the client, and needs not send
the message thereto. (Id. at 25-27.) Rather, the client receives its messages
from the access point, and not the server, as claimed. (Id. at 21.)
In response, the Examiner finds that the claim does not require a list
of hardware addresses for each client on the network. Rather, the claim
requires a list of hardware addresses for clients (two or more) on the
network. (Ans. 23-24.) Consequently, the Examiner finds that Meier’s
disclosure of an MTM list of multicast addresses for which multicast frames
are buffered in the access point describes the list of addresses for the clients.
(Id. at 24.) Further, the Examiner finds that because Meier discloses the
multicast addresses as MAC addresses for the stations, they qualify as
hardware addresses. (Id.) Additionally, the Examiner finds that because the
ARP server is with the access point, and provides replies on behalf of the
client, the client’s response to an address resolution request teaches sending
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the client list. (Id. at 26.) Therefore, the Examiner finds that Meier’s proxy
server teaches the disputed limitations. (Id.)
On the record before us, we find error in the Examiner’s findings and
ultimate determination of anticipation. Meier discloses a power save method
whereupon receiving an IP multicast stream from a remote location, an
access point reviews a list of IP hardware addresses in its ARP cache to
determine whether the IP address already exists in the cache. If the access
point finds a match in the address list stored in the cache, the access point
does not disturb the client stations. However, if the IP address is not found
in address list stored in the cache, the access point broadcasts a message to
client stations to check for a match therewith, and subsequently updates the
address list stored in the cache. (Abstr., ¶¶ [0014], [0018], [0070].) Further,
Meier discloses a proxy server that, after authenticating the wireless client
stations, responds on behalf of the client stations to IP address inquiries
received from the access point. (¶¶ [0049], [0050].) We find that Meier
discloses, at best, an access point updating a list of hardware client addresses
stored in a network, and a proxy server for reducing the number of messages
a sleeping client station receives. However, we find that Meier’s disclosure
does not teach sending the updated list to the client stations. Rather, the list
is permanently located in the access point, wherein the list is updated.
Therefore, even if the server were located within the access point as
proposed by the Examiner, we find that the updated list of hardware
addresses is never circulated to other devices within the network. We thus
agree with Appellants that the server does not maintain the address list nor
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does it send the list to the clients the wireless device, and the access point as
required by the disputed limitations. Because Appellants have shown at
least one error in the Examiner’s rejection of claim 1, we need not address
Appellants’ other arguments. It follows that Appellants have shown error in
the Examiner’s rejection of claim 1.
Claims 1-4, 6-8, 11, 12, 14-18, 20-22, 25, 26, 28-32, 34-36, 39, 40,
and 42 also recite the disputed limitations of claim 1 above. Similarly,
claims 5, 9, 10, 13, 19, 23, 24, 27, 33, 37, 38, and 41 recite the limitations of
claim 1, and the secondary reference relied upon by the Examiner does not
cure the aforementioned deficiencies. Accordingly, Appellants have
similarly shown error in the Examiner’s rejection of claims 2-42 for the
same reasons set forth above.
DECISION
We affirm the Examiner’s rejection of claims 29-42 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
We reverse the Examiner’s rejection of claims 1-4, 6-8, 11, 12, 14-18,
20-22, 25, 26, 28-32, 34-36, 39, 40, and 42 under 35 U.S.C. § 102(e) as
being anticipated by Meier.
We reverse the Examiner’s rejection of claims 5, 9, 10, 13, 19, 23, 24,
27, 33, 37, 38, and 41 under 35 U.S.C. § 103(a) as being unpatentable over
the combination of Meier and Chari.
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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)(2012).

AFFIRMED-IN-PART

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