Ex Parte Wood

Patent Trial and Appeal Board

Dec 29, 2016

13027422 (P.T.A.B. Dec. 29, 2016)

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.
13/027,422 02/15/2011 Brian O. Wood ROC920100161US1 6813
109773 7590
Roy W. Truelson
Registered Patent Attorney
558 21st Street NE
Rochester, MN 55906
12/30/2016 EXAMINER
RAHMAN, SM AZIZUR
ART UNIT PAPER NUMBER
2458
MAIL DATE DELIVERY MODE
12/30/2016 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 BRIAN O. WOOD
Appeal 2016-004092
Application 13/027,422
Technology Center 2400
Before KRISTEN L. DROESCH, JOHN A. EVANS, and ALEX S. YAP,
Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1-4, 7-11, and 14—18, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b)
We reverse.
1 According to Appellant, the real party in interest is International Business
Machines Corporation. (App. Br. 2.)
Appeal 2016-004092
Application 13/027,422
STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to a system and method “for registering
devices for network access.” (February 15, 2011, Specification (“Spec.”),
Abstract.) Specifically, a registration module receives a media access
control (MAC) address associated with a network adapter of a device and
registers the MAC address of the device for access to a network before the
time of registration of a guest. Claim 1 is illustrative, and is reproduced
below:
1. A method of registering devices for network access, the
method comprising:
receiving, by a registration module, a media access control
(MAC) address associated with a network adapter of a
device, the device being associated with a guest of a
lodging facility;
registering, by the registration module, the device,
including associating the MAC address received by said
receiving a MAC address associated with a network
adapter of a device with a guest account for said guest,
before the time of registration of said guest at said lodging
facility and by confirming that a user name associated with
the device is associated with said guest account; and
allowing, by the registration module, the registered device
to access a network at said lodging facility, including
adding, by the registration module, the MAC address of
the device to an authorized device list, the authorized
device list including multiple MAC addresses associated
with one guest account, each MAC address corresponding
to a different network adapter of one or more devices.
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Appeal 2016-004092
Application 13/027,422
Prior Art and Rejection on Appeal
The following table lists the prior art relied upon by the Examiner in
rejecting the claims on appeal:
Sakata et al.
(“Sakata”)
Grassu
US 2006/0031436 Al Feb. 9, 2006
US 2009/0307019 Al Dec. 10, 2009
Claims 1—4, 7—11, and 14—18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Sakata in view of Grassu. (See Final Office
Action (“Final Act.”) 2-6 (mailed Feb. 3, 2015).)
ANAFYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We are persuaded that the Examiner
erred in rejecting the claims on appeal.
With respect to claim 1, the Examiner finds that although Sakata
does not explicitly teach the registration of said guest at said
lodging facility and by confirming a user name associated with
the device is associated with said guest account.
Grassu[,] however[,] explicitly teaches before the time of
registration of said guest at said lodging facility and by
confirming that a user name associated with the device is
associated with said guest account.
It would have been obvious to a person of ordinary skill in
the art at the time the invention was made to modify the teaching
of Sakata in view of Grassu so that the MAC address can be
assigned to guest of a facility with the preregistration. One
would be motivated to do so because when a hotelier register the
guest by logging in to a website filling out a registration form
with the guest name and guest payment option, a guest service
device can send an DHCP (Dynamic Host Configuration
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Appeal 2016-004092
Application 13/027,422
Protocol) request to send and receive hotel datagrams over the
network. Upon receiving the DHCP request, if an MAC address
is not found in the active billing database, an IP address is
dynamically assigned to the device enabling the device to
transmit and receive over hotel network.
(Final Act. 3^4, original emphasis omitted.) Appellant contends that “even
assuming arguendo that the references were properly combinable, neither
reference discloses the key user interactive feature of [AJppellant’s
independent claims, specifically that the MAC address of a guest’s device is
pre-registered to the lodging facility before registration (i.e. check-in) of the
guest” (App. Br. 9-12, emphasis added.) The Examiner responds that
Grussu “teaches pre-registration procedure of the guest while the pre­
registration will require [the] guest’s name and the [guest’s] payment/billing
information.” (Ans. 4.) According to the Examiner:
We would use Grussu’s teaching of pre-registration to
improve Sakata’s registration system into a pre-registration
system through a remote Internet service. The result would be
Sakata’s registration service being available to be filled out
before the client/guest checks in through the internet connection.
The result of the combination would allow all the registration
data of Sakata to be pre-registered including the MAC address
registration.
It would have been obvious to a person of ordinary skill in
the art at the time the invention was made to modify the teaching
of Sakata in view of Grussu so that the MAC address can be
assigned to guest of a facility with the preregistration. . . .
(Ans. 5, emphasis added.)
We agree with Appellant that Grussu neither teaches nor suggests
“[pre-]registering [a] customer’s on-line data devices.” (App. Br. 11.)
Grussu teaches pre-registering basic customer information such as contact
and billing information for “marketing, buying, selling[,] and trading surplus
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Appeal 2016-004092
Application 13/027,422
and deficit inventory online[, which can include] hotel reservations as well
as other reservations and inventory in the travel and hospitality industries,
including, but not limited to, car rental, airline, theatre, restaurant and tours.”
(Grussu 11.) Although Sakata teaches the use of a MAC address, of a
customer’s network device, to control access to network resources, Sakata
does not teach nor suggest pre-registering the MAC address. Therefore, the
references do not offer any rationale for one of ordinary skill in the art to
pre-register a MAC address of a customer’s network device. Moreover, the
Examiner has not provided sufficient rationale for why a person of ordinary
skill in the art would find it obvious to pre-register a MAC address of a
customer’s network device as in claim 1. In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” (citations omitted)). Here, the Examiner merely states that
“[o]ne would be motivated to [register a MAC address of a customer’s
network device] during the pre-registration procedure” and then proceeds to
discuss how to use the MAC address to control access to network resources.
(Ans. 5.) The Examiner, however, does not articulate any reasoning for why
a person of ordinary skill in the art would want to pre-register a MAC
address of a customer’s network device as in claim 1.
For the foregoing reasons, we are persuaded of Examiner error in the
rejection of claim 1 and do not sustain the 35 U.S.C. § 103 rejection of claim
l.2 Independent claims 8, and 15 contain a similar limitation at issue and the
2 Because we do not sustain the Examiner’s rejection for the reasons
discussed herein, we need not address Appellant’s further arguments. See
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an
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Application 13/027,422
Examiner rejected these claims “under the same rationale.” (Final Act. 5.)
Thus, we do not sustain the 35 U.S.C. § 103 rejection of claims 8 and 15,
and of claims 2-4, 7, 9—11, 14, and 16—18, which depend from either claims
1, 8, or 15.
DECISION
We reverse the decision of the Examiner to reject claims 1—4, 7—11,
and 14—18.
REVERSED
administrative agency is at liberty to reach a decision based on “a single
dispositive issue”).
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