Ex Parte Zhang et al

Patent Trial and Appeal Board

Mar 31, 2016

12760323 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121760,323 04/14/2010
63975 7590 03/31/2016
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK A VENUE, N.W.
WASHINGTON, DC 20005
Qin Zhang
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.
5607.085000 (P8751US1) 8814
EXAMINER
MIAH,LITON
ART UNIT PAPER NUMBER
2642
MAILDATE DELIVERY MODE
03/31/2016 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 QIN ZHANG and JASON SHI
Appeal2014-005528
Application 12/760,323
Technology Center 2600
Before KAMRAN JIV ANI, MONICA S. ULLAGADDI, and
JOYCE CRAIG, Administrative Patent Judges.
JIVANI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-7, 10-14and17-20, which are all the
claims pending in the present patent application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Apple, Inc. as the real party in interest. Br. 1.
Appeal2014-005528
Application 12/760,323
STATEMENT OF THE CASE
The present application relates to peer-to-peer assisted network
searching. Spec. i-f 4.
Claim 1 is illustrative (with a key disputed limitation emphasized):
1. A method, comprising:
requesting, by a first mobile device and
through a personal area network, cellular
connectivity configuration information from one or
more second mobile devices each of which is a peer
of the first mobile device on the personal area
network, the cellular connectivity configuration
information being different from configuration
information of the personal area network;
receiving, by the first mobile device, the
cellular connectivity configuration information
from the one or more second mobile devices;
identifying, by the first mobile device and
from the received cellular connectivity
configuration information, a roaming cellular
network that is compatible with the first mobile
device; and
configuring the first mobile device to
communicate with the identified roaming cellular
network usmg the cellular connectivity
configuration.
The Rejection
Claims 1-3, 10-12, and 17-19 stand rejected under 35 U.S.C.
§ 103(a) over Hong (US 7,430,181 Bl; Sept. 30, 2008) and Lilja (US
2005/0136993 Al; June 23, 2005).
Claims 4--7, 13, 14 and 20 stand rejected under 35 U.S.C. § 103(a) as
over Hong, Lilja, Kaplan (US 2004/0203941 Al; Oct. 14, 2004).
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Application 12/760,323
ANALYSIS
The Examiner finds Hong and Lilja together teach or suggest the
limitations of claim 1. Final Act. 3-5.
Appellants contend Hong does not recite the devices as arranged in
claim 1. Br. 11. Appellants further contend Hong "does not recite an [sic] a
requesting operation ... and/or identifying operation). Id. Additionally,
Appellants argue Lilja "does not describe the mobile device requesting
cellular connectivity configuration information (i.e., information that is
subsequently used to configure the first mobile device to communicate with
the identified roaming cellular network)." Id. at 13. Finally, Appellants
contend Lilja "does not recite an identifying and/or a configuring operation."
Id.
We have considered Appellants' arguments in the Brief, the
Examiner's Answer thereto, and the evidence of record. We are not
persuaded by Appellants' arguments. Rather, we agree with and adopt as
our own, the Examiner's findings and conclusions as set forth in the Final
Rejection and Answer. We further emphasize the following.
Initially, as a matter of claim construction, we find Appellants have
not directed us to an explicit definition in the claims or the Specification of
the term "cellular connectivity configuration information." We note claim 1
requires that the cellular connectivity configuration information is "different
from configuration information of the personal area network."
Given this determination, we are not persuaded by Appellants'
argument regarding the claimed cellular connectivity configuration
information. Appellants' narrow definition is set forth in their argument
without citing supporting evidence. Br. 13. Attorney argument cannot
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Appeal2014-005528
Application 12/760,323
substitute for evidence lacking in the record. Conversely, the Examiner
finds, and we agree, one of ordinary skill in the art would understand the
claimed "cellular connectivity configuration information" to encompass
Lilja's "cellular related information," which Lilja's teaches "comprises
cellular field strength data, cellular network identifiers, network cell
broadcast data or cellular connection quality data, for example." Final Act.
4 (citing Lilja, i-fi-16 and 38); Ans. 4--5.
We are similarly not persuaded by Appellants' remaining arguments.
The Examiner's comprehensive findings set forth in the Final Rejection and
further detailed in the Answer articulate "reasoning with some rational
underpinning to support the legal conclusion of obviousness." In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006). Rather than rebut the Examiner's
findings and analysis of particular teachings and suggestions meeting the
claim limitations, Appellants' remaining arguments reduce to assertions that
the claim limitations are not recited verbatim in the cited references. For
example, Appellants fail to explain why one of ordinary skill in the art
would not understand Hong's cited teaching of" generating a configuration
data message" and "transmitting the configuration data message" from one
device to another device as teaching or suggesting the claimed "receiving"
and "identifying." See, e.g., Hong 2:25-30. Such mere recitations of the
claim elements and naked assertions that the corresponding elements are not
found in the prior art is insufficient to show error. 37 C.F.R.
§ 41.37(c)(iv)(2012); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Moreover, Appellants' arguments are misguided because they are
contrary to the law of obviousness. A determination of obviousness does not
require the claimed invention to be expressly suggested by any one or all of
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Appeal2014-005528
Application 12/760,323
the references. See e.g., In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Indeed, "the [obviousness] 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." KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398 (2007). Appellants' arguments do not persuade us the Examiner's
proffered combination would have been "uniquely challenging or difficult
for one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at
418).
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of independent claim 1. Appellants advance no further arguments on
independent claims 10 and 1 7, nor on dependent claims 2-7, 11-14, and 18-
20. Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejections of
claims 2-7, 10-14, and 17-20 for the same reasons discussed above.
DECISION
We affirm the Examiner's decision rejecting claims 1-7, 10-14 and
17-20.
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
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