10153095 (B.P.A.I. Mar. 23, 2011)

Ex Parte Wee et al

Board of Patent Appeals and InterferencesMar 23, 2011

10153095 (B.P.A.I. Mar. 23, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _____________ Ex parte SUSIE J. WEE, JOHN APOSTOLOPOULOS, MARC P. SCHUYLER, and JASON BROWN _____________ Appeal 2009-008295 Application 10/153,095 Technology Center 2600 ______________ Before, JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and MARC S. HOFF, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL1 1The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-008295 Application 10/153,095 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 1-16, 18-25, and 27-28.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse the Examiner’s rejection of these claims. INVENTION The invention is directed to a method and system of using a portable wireless system to relay third party wireless communications. See Spec: 2-4. Claim 1 is representative of the invention and is reproduced below: 1. A portable wireless system, comprising: a controller operable to selectively configure the portable wireless system as a portable electronic appliance or a third party wireless repeater configured to relay wireless signals between a third party electronic appliance and a wireless telecommunication network, wherein the controller additionally is operable to wirelessly solicit the third party electronic appliance for a payment in exchange for relaying wireless signals between the third party electronic appliance and the wireless telecommunication network through the portable wireless system. REFERENCES Umstetter US 2002/0115455 A1 Aug. 22, 2002 (filed Feb. 22, 2001) Tamaki US 2003/0054795 A1 Mar. 20, 2003 (filed Feb. 4, 2002) 2 Claims 17 and 26 were previously cancelled. Appeal 2009-008295 Application 10/153,095 3 Kourtis WO 02/51038 A1 Jun. 27, 2002 (filed Nov. 5, 2001) REJECTIONS AT ISSUE Claims 27-28 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Ans. 3-4. Claims 1-13 and 15-16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Umstetter in view of Tamaki. Ans. 4-8. Claims 14 and 18-25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Umstetter in view of Tamaki and Kourtis. Ans. 8-11. ISSUES 35 U.S.C. § 112 rejection Appellants argue on pages 4-10 of the Appeal Brief and pages 1-4 of the Reply Brief that the Examiner’s 35 U.S.C. § 112, first paragraph, rejection is in error. Appellants argue that Appellants’ Specification contains support for both a direct and an indirect connection between a controller and a wireless telecommunications network at the same time. App. Br. 8; Reply Br. 3-4. Thus, with respect to claims 27-28, Appellants’ contention presents us with the issue: Did the Examiner err in finding that the Specification does Appeal 2009-008295 Application 10/153,095 4 not contain support for a simultaneous direct and indirect connection between a controller and a wireless telecommunications network?3 35 U.S.C. § 103(a) rejections Appellants argue on pages 11-24 of the Appeal Brief and pages 4-10 of the Reply Brief that the Examiner’s rejection of claims 1-16 and 18-25 is in error. Appellants argue that Examiner has not provided sufficient motivation to combine Tamaki with Umstetter. App. Br. 17; Reply Br. 6. Thus, with respect to claims 1-16 and 18-25, Appellants’ contention presents us with the issue: Did the Examiner err in combining Tamaki with Umstetter?4 ANALYSIS 35 U.S.C. § 112 rejection Appellants’ arguments have persuaded us of error in the Examiner’s rejection of claims 27-28. The Examiner finds that Appellants’ Specification does not describe a direct connection between a relaying device and a wireless telecommunications network and a simultaneous indirect connection between the relaying device and a wireless telecommunications network. Ans. 12. The Examiner’s finding is based upon a misconstruction of the claim. App. Br. 9-10. Claim 27 does not require that the relaying device contain a simultaneous direct and indirect 3 The Examiner has indicated claims 27 and 28 as containing allowable subject matter. Ans. 3. 4 Appellant makes additional arguments regarding claims 1-16 and 18-25. App. Br. 11-24; Reply Br. 4-10. We do not reach these additional issues since the issue of whether it would have been obvious to combine Tamaki with Umstetter is dispositive of the case. Appeal 2009-008295 Application 10/153,095 5 connection. App. Br. 9-10. Claim 27 requires both a direct and an indirect connection between a controller of a portable wireless system and a wireless telecommunications network. App. Br. 9-10. The indirect connection is made through a relaying device. App. Br. 10. We agree with Appellants’ interpretation of the claim. The portable wireless system described in claim 27 is not the relaying device, as indicated by the Examiner. As such, Appellants’ Specification only needs to disclose a system wherein a telecommunications network is connected directly and indirectly, at the same time, with a portable wireless system. Appellants correctly point to page 6, lines 25-30 of their Specification to show where this is found. App. Br. 7; Reply Br. 3. The Examiner is correct that the claim term “simultaneous” is not disclosed in this portion of the Specification or anywhere in the Specification. Ans. 12. However, the portion of the Specification cited by Appellants indicates that both a direct connection and an indirect connection is made with the third party electronic appliance at the same time, since the indirect connection is stated to increase effective bandwidth even though a direct connection is made. Therefore, we will not sustain the Examiner’s rejection of claims 27- 28 under 35 U.S.C. § 112, first paragraph. 35 U.S.C. § 103(a) rejections Appellants’ arguments have persuaded us of error in the Examiner’s rejection of claims 1-16 and 18-25. Claim 1 requires a controller to solicit a third party electronic appliance for payment for relaying services. Independent claim 10 contains a similar limitation. Claims 2-9, 11-16, and 18-25 are dependent upon claims 1 and 10. The Examiner finds that Tamaki discloses a payment method related to relaying services. Ans. 5-6. Appeal 2009-008295 Application 10/153,095 6 Therefore, the Examiner finds that the combination of Tamaki’s payment method with Umstetter’s repeater system discloses the invention recited in claim 1. Ans. 6. The Examiner finds that it would have been obvious to combine these two references “in order to provide the system with a payment method.” Ans. 6. Appellants argue that this is insufficient motivation. App. Br. 17; Reply Br. 6. We agree with Appellants. Appellants argue that there is no motivation to combine the references since Tamaki discloses cordless handsets that are owned by the same entity. App. Br. 18; Reply Br. 7. As such, there would be no reason to solicit payment for relaying services. App. Br. 18; Reply Br. 7. The Examiner has failed to address Appellants’ argument.5 While we recognize that motivation is not a requirement, nonetheless the Examiner’s reasoned statement is insufficient given Appellants’ arguments. Therefore, the Examiner has not shown that it would have been obvious to combine Tamaki with Umstetter. Subsequently, we will not sustain the Examiner’s rejection of claims 1-17 and 18-25. CONCLUSION The Examiner erred in finding that the Specification does not contain support for a simultaneous direct and indirect connection between a controller and a wireless telecommunications network. The Examiner erred in combining Tamaki with Umstetter. 5 In the Answer the Examiner argues that Nishikado was not used to reject claim 1 as indicated in Appellants’ heading for the rejection in the Appeal Brief. Ans. 14. We note that this was a typo by Appellants as the argument portion following the heading discusses the rejection using Tamaki. Appeal 2009-008295 Application 10/153,095 7 SUMMARY The Examiner’s decision rejecting claims 1-16, 18-25, and 27-28 is reversed. REVERSED ELD HEWLETT PACKARD COMPANY 3404 E. HARMONY ROAD, MAIL STOP 35 INTELLECTUAL PROPERTY ADMINISTRATION FORT COLLINS, CO 80528