Ex Parte Zhang et al

Patent Trial and Appeal Board

Jun 21, 2016

12344994 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/344,994 12/29/2008 Jiang Zhang
26227 7590 06/23/2016
FISH & RICHARDSON P,C
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
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.
16113-6222001 7079
EXAMINER
BARAKAT, MOHAMED
ART UNIT PAPER NUMBER
2689
NOTIFICATION DATE DELIVERY MODE
06/23/2016 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIANG ZHANG and PETR PETERKA
Appeal2014-009685
Application 12/344,994
Technology Center 2600
Before HUNG H. BUI, JON M. JURGOVAN, and NABEEL U. KHAN,
Administrative Patent Judges.
JURGOVAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse. 2
1 Appellants identify Motorola Mobility LLC as the real party in interest.
(App. Br. 3.)
2 Our Decision refers to the Specification (filed Dec. 29, 2008) ("Spec."), the
Final Office Action (mailed Jan. 2, 2014) ("Final Act."), the Appeal Brief
(filed June 12, 2014) ("App. Br."), the Examiner's Answer (mailed July 16,
2014) ("Ans."), and the Reply Brief (filed Sept. 16, 2014) ("Reply Br.").
Appeal2014-009685
Application 12/344,994
STATEMENT OF THE CASE
The claims are directed to a method of targeted discovery of devices
in a network. (Spec. Title, Abstract.) Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of targeted discovery in a network, the method
compnsmg:
determining an identifier for a second device at a first
device;
sending a device discovery message to the second device
using the identifier for the second device, wherein the second
device is configured to verify if the device discovery message
includes a correct identifier of the second device, further wherein
the second device is configured to respond to the device
discovery message when the device discovery message includes
the correct identifier for the second device;
receiving a response to the device discovery message from
the second device; and
transmitting, by the first device, a registration key to the
second device in response to receiving the response.
(App. Br. 28 (Claims App).)
REJECTIONS
(1) Claims 1, 2, 6, 8-10, 14, 16, and 18 stand rejected under 35
U.S.C. § 103(a) based on Elberty (US 6,084,512, iss. July 4, 2000) and
Simons (US 2003/0045280 Al, publ. Mar. 6, 2003). (Final Act. 2--4.)
(2) Claims 3, 4, 11, 12, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) based on Elberty, Simons, and Ishihara (US 2008/0079601 Al,
publ. Apr. 3, 2008). (Final Act. 5.)
(3) Claims 5, 7, 13, 15, and 17 stand rejected under 35 U.S.C.
§ 103(a) based on Elberty, Simons, and Oh (US 2007 /0150720 Al, publ.
June 28, 2007). (Final Act. 5---6.)
2
Appeal2014-009685
Application 12/344,994
ANALYSIS
Claims 1, 9, and 16
Appellants argue Elberty and Simons fail to teach or suggest the
claimed transmission of a registration key. (App. Br. 17-21 (citing Final
Act. 3), Reply Br. 3--4.) Appellants further argue the Examiner's
modification of Simons so that its mobile device (cellphone) could transmit
an identifier and then receive an inquiry key would render Simons
unsatisfactory for its intended purpose. (App. Br. 21-24 (citing Simons
i-fi-141, 42, Elberty 14:20-25), Reply Br. 4--5.)
We agree with Appellants' arguments. As the Examiner
acknowledges, Elberty is silent regarding transmission of a registration key
(Final Act. 3). The cited sections of Elberty pertain to frequency reuse by
determining the location of subscribers in sub-regions of the same cell using
tags associated with their cellphones. (Elberty 1:29-55, 5:3-8, 5:32--47,
13:46-53, and 14:20-25.) Simons teaches a registration beacon provides an
inquiry key to a context-aware (CA) terminal, which responds with its
identifier to register for a service. (Simons i-fi-1 41--42.) This is essentially the
opposite flow to what is claimed. Specifically, in the claims, the first device
determines and sends an identifier to the second device, and the second
device responds with a registration key. The Examiner fails to explain how
determining cell phone location before or after assigning a frequency
channel relates to Simons' registration beacon broadcasting an inquiry key
to a CA terminal which responds with its identifier to register for a service.
(See Ans. 4--8 (citing Elberty 1:29-35, 47---62, 5:3-8, 32--47, 13:46--47, 51-
53, 14:20-24, and Simons i-fi-141--42).)
Moreover, we agree with Appellants that modifying Simons so that
the mobile device (cellphone) could transmit an identifier and then receive a
3
Appeal2014-009685
Application 12/344,994
registration key, would render Simons unsatisfactory for its intended
purpose. If a proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, then there is no
suggestion or motivation to make the proposed modification. In re Gordon,
733 F.2d 900, 902 (Fed. Cir. 1984). As Appellants noted, Simons teaches
that the CA terminal receives the registration key when it is in the interaction
zone and thus within range of the registration beacon. (App. Br. 23-24
(citing Simons i-fi-141--42).) Turning this around to require the registration
beacon to receive an identification from the CA terminal to determine when
the CA terminal is in range would require the CA terminal to repeatedly
send its identification even when not within range of the registration beacon,
a circumstance that would be undesirable when these mobile terminals have
limited power sources. We also note that the identification sent in Simons is
that of the CA terminal, not the registration beacon, contrary to the claims.
Thus, we agree with Appellants that the Examiner's proposed modification
would render Simons unsatisfactory for its intended purpose, and we find
Appellants' arguments persuasive to show Examiner error.
Remaining Claims
We do not sustain the rejection of the remaining dependent claims for
the reasons stated with respect to independent claims 1, 9, and 16.
DECISION
We reverse the rejection of claims 1-20 under 35 U.S.C. § 103(a).
REVERSED
4