Ex Parte YamamotoDownload PDFPatent Trial and Appeal BoardJan 31, 201812180096 (P.T.A.B. Jan. 31, 2018) Copy Citation 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. 12/180,096 07/25/2008 Tetsuya Yamamoto B588-440 (25815.448) 9365 26272 7590 02/02/2018 PATENT DOCKET CLERK COWAN, LIEBOWITZ & LATMAN, P.C. 114 WEST 47th STREET 21st FLOOR NEW YORK, NY 10036 EXAMINER HUYNH, NAM TRUNG ART UNIT PAPER NUMBER 2645 NOTIFICATION DATE DELIVERY MODE 02/02/2018 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): AXC@CLL.COM DXO@CLL.COM RAM@CLL.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TETSUYA YAMAMOTO Appeal 2017-009425 Application 12/180,096 Technology Center 2600 Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and JOHN P. PINKERTON, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-009425 Application 12/180,096 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1, 10, 12, 27-28, 30, 32-33, and 38-39. Claims 2-9, 11, 13-26,29, 31, and 34—37 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Exemplary Claim Exemplary claim 1 under appeal reads as follows (emphasis added)1; 1. A communication apparatus comprising: a first determination unit configured to determine whether a communication mode in a wireless LAN complying with IEEE802.11 standard, in which the communication apparatus is to participate, is a first communication mode2, in which the communication apparatus and a partner apparatus directly communicate with each other not via an access point, or a second 1 On August 29, 2016, Appellant filed a Response to Final Office Action (i.e., “Response”) as part of a Request for Consideration under the Post- Prosecution Pilot Program, where the Response included amendments to independent claims 1, 10, and 12, and the cancellation of claim 31. See Response 7—11. It is unclear from the record whether this amendment was entered, as the Examiner mailed an Advisory Action on September 7, 2016 (“Adv. Act.”) indicating the amendment was not entered for purposes of appeal (see Adv. Act. 1), but subsequently mailed a Notice of Decision from Post Prosecution Pilot Program Conference on October 3, 2016 (“Notice”) indicating that the amendment was entered for purposes of appeal. See Notice 1. For the purpose of this appeal, we treat Appellant’s aforementioned amendments to the claims as entered. 2 Appellant indicates that the claimed “first communication mode” is an ad hoc mode. See App. Br. 3 (citing Spec. 139). 2 Appeal 2017-009425 Application 12/180,096 communication mode3, in which the communication apparatus and a partner apparatus communicate via an access point; a second determination unit configured to determine, in a case where the first determination unit determines that the communication mode is the first communication mode, whether or not the communication apparatus creates a wireless LAN complying with IEEE802.il standard; a selection unit configured to select operating as a DHCP server in a case where the second determination unit determines that the communication apparatus creates a wireless LAN complying with IEEE802.il standard, to select operating as a DHCP client in a case where the second determination unit determines that the communication apparatus does not create a wireless LAN complying with IEEE802.il standard, and to select operating as the DHCP client in a case where the first determination unit determines that the communication mode is the second communication mode, wherein the DHCP server assigns an IP address to another communication apparatus operating as the DHCP client; and an operation unit configured to operate as the DHCP server in a case where the second determination unit determines that the communication apparatus creates a wireless LAN complying with IEEE802.11 standard, to operate as the DHCP client in a case where the second determination unit determines that the communication apparatus does not create a wireless LAN complying with IEEE802.11 standard, and to operate as the DHCP client in a case where the first determination unit determines that the communication mode is the second communication mode. 3 Appellant indicates that the claimed “second communication mode” is an infrastructure mode. See App. Br. 3 (citing Spec. 139). 3 Appeal 2017-009425 Application 12/180,096 App. Br. 39-40 (Claims Appendix 1—2). Rejection on Appeal4 The Examiner rejected claims 1, 10, 12, 27—28, 30, 32—33, and 38—39 under 35 U.S.C. § 103(a) as being unpatentable over Krantz et al. (US 2007/0002783 Al; published Jan. 4, 2007) (“Krantz”), Okanoue et al. (US 6,282,577 Bl; issued Aug. 28, 2001) (“Okanoue”) and Kim (US 2006/0146746 Al; published July 6, 2006) (“Kim”).5’6 See Final Act. 4; see also Ans. 2. 4 In the Final Office Action, the Examiner also rejected claim 31 under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. See Final Act. 2—3. As previously discussed, in Appellant’s Response, inter alia, Appellant cancelled claim 31. As also, previously discussed, we treat the cancellation of claim 31 as entered for purposes of appeal. In light of this, and in light of the fact that the Examiner failed to include the rejection of claim 31 under 35 U.S.C. § 112, first paragraph in the Examiner’s Answer (see e.g., Ans. 2), we treat the rejection of claim 31 under 35 U.S.C. § 112, first paragraph as being withdrawn by the Examiner. 5 In the Final Office Action, claim 31 was also rejected under 35 U.S.C. § 103(a). See Final Act. 4; see also Ans. 2. As previously discussed, Appellant cancelled claim 31 in Appellant’s response, and we threat the cancellation of claim 31 as entered for purposes of appeal. Thus, we also treat the rejection of claim 31 under 35 U.S.C. § 103(a) as being withdrawn by the Examiner. 6 The patentability of claims 10, 12, 27,-28, 33, 38, and 39 is not separately argued from that of claim 1. See App. Br. 13. Thus, except for our ultimate decision, claims 10, 12, 27, 28, 33, 38, and39 are not discussed further herein. 4 Appeal 2017-009425 Application 12/180,096 Issue on Appeal Did the Examiner err in rejecting claims 1,30, and 32 as being obvious? PRINCIPLES OF LAW The mere existence of differences between the prior art and the claim does not establish non-obviousness. See Dann v. Johnston, 425 U.S. 219, 230 (1976). Instead, the relevant question is “whether the difference between the prior art and the subject matter in question is a [difference] sufficient to render the claimed subject matter unobvious to one skilled in the applicable art.” Dann, 425 U.S. at 228 (internal quotations and citations omitted). Indeed, the Supreme Court made clear that when considering obviousness, “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Further, one cannot show non-obviousness by attacking references individually when the rejection is based on a combination of references. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d413, 425 (CCPA 1981). ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We disagree with Appellant’s contention that the Examiner erred. Instead, we concur with the conclusions reached by the Examiner. 5 Appeal 2017-009425 Application 12/180,096 A. Claim 1 Appellant contends the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: Okanoue does not disclose the terminal determining whether or not the terminal creates the ad hoc network. Rather, the terminal of Okanoue only determines whether there is an existing network to which it can connect and if not, whether the terminal should create an ad hoc network. In addition, the determination in Okanoue of whether the terminal should create an ad hoc network occurs if it is determined that there is no existing network, not if it is determined that the communication mode is an ad hoc mode. These determinations by the terminal in Okanoue do not equate to applicant’s limitation of determining, in a case where [it] is determined that the communication mode is the first communication mode (ad hoc mode), whether or not the communication apparatus creates a wireless LAN. In fact, since the procedure for connecting to the ad hoc network in Okanoue is the same regardless of whether or not the terminal creates the ad hoc network (see, Step 16a in FIG. 4), there is no need for the terminal in Okanoue to determine whether or not the terminal creates the ad hoc network. [T]he determination as to whether or not the communication apparatus should create the ad hoc network when it is determined that there is no existing network to which the apparatus can connect is not the same as applicant’s determination of whether or not the communication apparatus creates the ad hoc network when it is determined that the communication mode is the first communication mode (ad hoc mode). In addition, since the connection procedure for connecting to the ad hoc network in Okanoue is the same, regardless of whether or not the communication apparatus creates the ad hoc network, there is no reason or motivation for determining whether or not the communication apparatus creates the ad hoc network. Thus, in the combination of Krantz and Okanoue, the determination as to whether or not the communication apparatus creates the ad hoc network is unnecessary for achieving the purpose of 6 Appeal 2017-009425 Application 12/180,096 enabling the communication apparatus to create an ad hoc network when there is no existing ad hoc network. App. Br. 21—22, 29 (Appellant’s emphasis omitted; panel’s emphasis added); see also Reply Br. 7—10. This argument is not persuasive. As the Examiner correctly found, Okanoue teaches a mobile terminal that determines whether there is a network to which the mobile terminal is to be connected. See Final Act. 5; see also Okanoue 5:45—64; Fig. 4, steps SI 1 and S12. If there is no network, the mobile terminal determines whether or not a new ad hoc network is to be formed. See Final Act. 5; see also Okanoue 5:65—67; Fig. 4, step S13. If a new ad hoc network is to be formed, the mobile terminal forms the new ad hoc network and connects to the newly formed ad hoc network. See Final Act. 5; see also Okanoue 6:3—9; Fig. 4, steps S15 and SI6. If a new ad hoc network is not to be formed, the mobile terminal does not form the new ad hoc network. See Final Act. 5; see also Okanoue 5:67—6:3; Fig. 4, step S14. We agree with the Examiner that one of ordinary skill in the art would understand that: if the mobile terminal taught by Okanoue creates the ad hoc network, the mobile terminal also automatically determines it created the ad hoc network; and if the mobile terminal does not create the ad hoc network, the mobile terminal also automatically determines it did not create the ad hoc network. See Ans. 4. Appellant further contends the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: [T]he “mobile communication terminal” of Kim is a separate and distinct apparatus from the “wireless terminal,” and Kim is silent as to any one terminal, i.e., the mobile communication terminal or the wireless terminal, being capable of selecting whether to operate as a DHCP server or as a DHCP client, let alone of 7 Appeal 2017-009425 Application 12/180,096 making this selection based on whether or not the terminal created the wireless network. Rather, from the Examiner’s interpretation in the Office Action, Kim merely teaches that in a wireless network, one terminal (“mobile communication terminal”) operates as the Pseudo-DHCP server and the other terminals (“wireless terminals”) operate as DHCP clients. [Kim] does not disclose the communication apparatus selecting to operate as a DHCP server in a case where it is determined that the communication apparatus [also] creates a wireless LAN for communicating in the ad hoc mode. . . . Kim does not disclose that the mobile communication terminal, which operates as the Pseudo-DHCP server, [also] creates the Adhoc network in which the wireless terminals communicate with each other directly. Based on [the teachings of Krantz, Okanoue, and Kim], it would not have been obvious to one of ordinary skill in the art at the time of the invention to include the feature of the terminal selecting whether to operate as a DHCP server or DHCP client in the ad hoc mode based on whether or not the terminal creates the ad hoc network. If the terminal of Krantz and Okanoue is modified using Kim to be able to perform the Pseudo-DHCP server function in order to assign IP addresses to wireless terminals incapable of accessing a mobile network, as argued by the Examiner, this terminal would still lack the feature of selecting, in the ad hoc mode, whether to operate as the DHCP server or the DHCP client. Instead, the terminal would merely have an added capability in the infrastructure mode of operating as the Pseudo-DHCP server, after connecting to a mobile communications network and downloading the necessary software from a DHCP server, for the purpose of assigning IP addresses to the wireless terminals that cannot access the Internet on their own. App. Br. 24—25, 31—32 (Appellant’s emphasis omitted; panel’s emphasis added); see also App. Br. 26, 33; Reply Br. 2—6. 8 Appeal 2017-009425 Application 12/180,096 This argument is also not persuasive. As previously discussed, the Examiner correctly found that Okanoue teaches a mobile terminal that forms, and connects to, an ad hoc network. See Final Act. 5; see also Okanoue 6:3—9; Fig. 4, steps S15 and SI6. The Examiner also correctly found that Kim teaches a mobile communication terminal that operates as a pseudo-DHCP server and further teaches wireless terminals that operate as DHCP clients and access the Internet via the pseudo-DHCP server using assigned public IP addresses. See Final Act. 7; see also Kim || 26—27. We agree with the Examiner that the Examiner relied upon the combination of Okanoue and Kim for teaching the claimed “selection unit” rather than solely relying upon Kim, and that Appellant’s argument attacks the references individually, rather than the combination of the cited references. See Ans. 4—5. Appellant also contends the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: [T]he Examiner’s interpretations of Krantz, Okanoue and Kim appear to be based on applicant’s disclosure in claims and are believed to be motivated by the Examiner’s attempt to meet the terms of applicant’s claims, as opposed to what the references actually teach to the skilled artisan or what the skilled artisan would be led to or would find obvious, upon considering the prior art. The Examiner’s reconstruction of the cited art is, therefore, at best no more than an improper use of hindsight. App. Br. 35 (Appellant’s emphasis omitted; panel’s emphasis added). We do not agree with Appellant that the Examiner has utilized any improper hindsight in combining the cited prior art references. Appellant has failed to provide any persuasive arguments or evidence that the Examiner’s combination relies upon knowledge obtained solely from Appellant’s disclosure, as opposed to knowledge which was within the grasp 9 Appeal 2017-009425 Application 12/180,096 of a person of ordinary skill in the art at the time the claimed invention was made. In light of the above, Appellant has not shown that the Examiner erred in finding that the combination of cited references teaches or suggests the limitations of claim 1. Therefore, we sustain the rejection of claim 1 under 35 U.S.C. § 103(a). B. Claims 30 and 32 Appellant further contends the Examiner erred in rejecting claims 30 and 32 under 35 U.S.C. § 103(a) because: [Regarding claim 30,] although Krantz discloses that the terminal acquires a network address from the DHCP server in the infrastructure communication mode when the terminal operates as the DHCP server, Krantz does not disclose that the DHCP server is connected to a wired network. Moreover, paragraph [0048] of Krantz discloses that in step 510, a network address may be acquired from an infrastructure network resource, such as a DHCP server. However, Krantz does not mention the DHCP server or any other infrastructure network resource being connected to a wired network. [Regarding claim 32], Krantz teaches in paragraph [0018] that the computer includes any device that electronically executes one or more programs, such as personal computers (PCs), hand-held devices, multi-processor systems, micro-processor based programmable consumer electronics, network PCs, minicomputers, tablet PCs, laptop computers, consumer appliances having a microprocessor or microcontroller, routers, etc. Moreover, paragraph [0022] of Krantz teaches that the computer may have output devices such as a printer, etc. However, Krantz does not specifically disclose that the computer includes a camera or a printer, and instead, only generally refers to “consumer electronics” and “consumer appliances.” 10 Appeal 2017-009425 Application 12/180,096 Moreover, paragraph [0022] teaches that the computer may include a printer, but does not disclose that the communication apparatus (computer) itself is a printer or that the printer has a wireless communication function. App. Br. 36—37 (Appellant’s citations and emphasis omitted; panel’s emphasis added). This argument is not persuasive. Regarding claim 30, we agree with the Examiner that Krantz teaches an infrastructure resource characterized as a DHCP server, and that one of ordinary skill in the art would understand that the DHCP server is capable of being connected to a wired network. See Ans. 8—9; see also Krantz 148. Regarding claim 32, we agree with the Examiner that Krantz teaches a computer that includes any device that electronically executes programs, such as consumer appliances having a microprocessor or microcontroller, and that one of ordinary skill in the art would understand that the disclosed computer can be a printer or camera having a wireless communication function, as such devices are examples of consumer appliances having a microprocessor or microcontroller. See Ans. 9; see also Krantz 118. Therefore, we sustain the rejection of claims 30 and 32 under 35 U.S.C. § 103(a). CONCLUSIONS (1) The Examiner has not erred in rejecting claims 1,10, 12, 27—28, 30, 32—33, and 38—39 as being unpatentable under 35 U.S.C. § 103(a). (2) Claims 1, 10, 12, 27—28, 30, 32—33, and 38—39 are not patentable. 11 Appeal 2017-009425 Application 12/180,096 DECISION We affirm the Examiner’s rejection of claims 1,10, 12, 27—28, 30, 32—33, and 38—39 as being unpatentable under 35 U.S.C. § 103(a). 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 12 Copy with citationCopy as parenthetical citation