2020005937 (P.T.A.B. Nov. 4, 2021)

HTC Corporation

Patent Trials and Appeals BoardNov 4, 2021

2020005937 (P.T.A.B. Nov. 4, 2021)

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. 15/008,459 01/28/2016 Yung-Hsiang CHIU TWT04322/US 1403 60589 7590 11/04/2021 James Lynn O''Sullivan 12345 Lake City Way NE, No. 283 Seattle, WA 98125 EXAMINER JACKSON, JENISE E ART UNIT PAPER NUMBER 2439 NOTIFICATION DATE DELIVERY MODE 11/04/2021 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): ckchen@ckc-ip.com info@ckc-ip.com josullivan@ckc-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUNG-HSIANG CHIU, CHI-CHEN CHENG, CHIA- WEI CHEN, WEI-CHIH CHANG, YU-CHENG LEE, and CHUNG- YING YEH Appeal 2020-005937 Application 15/008,459 Technology Center 2400 Before MICHAEL J. STRAUSS, MINN CHUNG, and MICHAEL J. ENGLE, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–7, 9–14, and 16–21, constituting all 1 In this Decision, we refer to Appellant’s Appeal Brief filed March 13, 2020 (“Appeal Br.”) and Reply Brief filed August 18, 2020 (“Reply Br.”); the Examiner’s Non-Final Office Action mailed October 17, 2019 (“Non- Final Act.”) and Answer mailed June 22, 2020 (“Ans.”); and the Specification filed January 28, 2016 (“Spec.”). Rather than repeat the Examiner’s findings and Appellant’s contentions in their entirety, we refer to these documents. 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as HTC Corporation. Appeal Br. 2. Appeal 2020-005937 Application 15/008,459 2 pending claims in the application. Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection. CLAIMED SUBJECT MATTER The claims relate to “an Internet of Things (IoT)” in which network identifiers of a plurality of first electronic devices are made available to a second electronic device (e.g., smart phone) by reading a digital signature carrier (e.g., a printed bar or QR code) that may be supplied with the first devices. Spec. Abstract, ¶ 34. The second electronic device sends a command to pairs of first electronic devices to trigger the first electronic devices to “pair” and establish a wireless connection between each device of the pair. Claim 1, reproduced below with claim element labels added and a disputed limitation emphasized in italics, is illustrative: 1. A system, comprising: [(i)] a plurality of first electronic devices, each of the first electronic devices having a network identifier distinct from another; and [(ii)] a digital signature carrier, configured for recording a connective information list, the connective information list comprising the network identifiers of all of the first electronic devices; [(iii)] wherein [(a)] a second electronic device comprising a digital signature reader is configured to read the digital signature carrier by the digital signature reader, and in response to extracting the connective information list comprising the network identifiers, [(b)] the second electronic device automatically pairs with each of the first electronic devices which have not been connected to the second electronic device previously according to the network identifiers [(iv)] wherein [(a)] the connective information list further records a connective mapping between the first electronic Appeal 2020-005937 Application 15/008,459 3 devices and the connective mapping defines connective relationships of a mesh network between the first electronic devices; [(b)] in response to the connective mapping is read by the second electronic device, [(1)] the second electronic device sends a connective command to at least two of the first electronic devices have not been connected to each other before pairing with one another, [(2)] the connective command is configured to trigger the at least two of the first electronic devices to be paired with each other and establish a wireless connection between the at least two of the first electronic devices. Appeal Br. 17 (Claims App.). REFERENCES AND REJECTIONS The Examiner relies on the following references: Name3 Reference Date Killian-Kehr US 2006/0101067 A1 May 11, 2006 Nguyen US 2007/0036358 A1 Feb. 15, 2007 Sakpal US 2013/0334298 A1 Dec. 19, 2013 Chhabra US 2016/0100369 A1 Apr. 7, 2016 Reshef US 9,338,806 B2 May 10, 2016 The Examiner rejects claims 1, 7, 9, 11–14, 16, 17, 20, and 21 under 35 U.S.C. § 103 as obvious over the combined teachings of Sakpal and Reshef. Non-Final Act. 4–12. The Examiner rejects claims 2–6 under 35 U.S.C. § 103 as obvious over the combined teachings of Sakpal, Reshef, and Killian-Kehr. Non- Final Act. 13–15. The Examiner rejects claim 10 under 35 U.S.C. § 103 as obvious over the combined teachings of Sakpal, Reshef, and Chhabra. Non-Final Act. 15–16. 3 All citations herein to the prior art are by reference to the first named inventor only. Appeal 2020-005937 Application 15/008,459 4 The Examiner rejects claims 18 and 19 under 35 U.S.C. § 103 as obvious over the combined teachings of Sakpal, Reshef, Chhabra, and Nguyen. Non-Final Act. 16–19. ISSUE Does the Examiner err in finding the combination of references teaches or suggests the functionality of the connective command is configured to trigger the at least two of the first electronic devices to be paired with each other and establish a wireless connection between the at least two of the first electronic devices, as recited in claim 1? ANALYSIS The Examiner rejects claim 1 as obvious over the combined teachings of Sakpal and Reshef. Non-Final Act. 4–6. The Examiner relies upon Sakpal’s disclosure of pairing devices via a digital barcode for teaching the limitations of claim 1’s elements (i), (ii), (iii)(a), and (iv)(a). Id. at 3–5 (citing Sakpal ¶¶ 7, 19, 21, 23–25, 27, 30; Figs. 1–3). Addressing the remaining elements, the Examiner relies upon Reshef’s disclosure of pairing a set of accessory devices with a source device using a unique device set identifier for teaching the limitations of claim element (iii)(b)4 and disputed element (iv)(b). Id. at 6 (citing Reshef 2:26–67; 3:1–3, 7–10; Fig. 1). 4 The Examiner does not explicitly address claim element (iii)(b) in the narrative explaining the rejection of system claim 1. See Non-Final Act. 4– 6. However, the Examiner addresses a corresponding limitation included in independent claim 11. Id. at 8. Therefore, for purposes of this appeal, we consider the Examiner’s basis for finding the corresponding language of claim 11 to be taught by Reshef also applies to claim 1’s element (iii)(b). Appeal 2020-005937 Application 15/008,459 5 According to the Examiner, one skilled in the art would have combined the teachings of Sakpal and Reshef to reduce and eliminate steps of the discovery process to provide a more efficient pairing of multiple devices. Id. (citing Reshef 1:6–22.) Appellant contends that, inter alia, the combination of Sakpal and Reshef fails to teach claim 1’s element (iv)(b)(2) reciting that “the connective command is configured to trigger the at least two of the first electronic devices to be paired with each other and establish a wireless connection between the at least two of the first electronic devices.” Appeal Br. 10. According to Appellant, Reshef discloses connecting a single source device 112, corresponding the claimed second electronic device, to a plurality of wireless accessory devices 102, corresponding to the claimed first electronic devices. Id. at 13. Appellant argues, however, “Reshef fails to disclose there is a Bluetooth pairing or a wireless connection between two of the device 102, 102B–102D,” that is, the reference does not describe “pairing and connecting between two devices of the set of wireless accessories.” Id. at 12, 14. Thus, Appellant argues, absent pairing of the accessory devices 102 with each other, Reshef fails to teach or suggest the limitation of claim 1’s element (iv)(b)(2). Id. at 14. The Examiner responds Reshef discloses at least two devices to be paired with each other and establish a wireless connection between the at least two of the first electronic devices, because Reshef discloses the set of devices work together to provide surround sound listening, and disclose a set of devices/accessories are packaged together in order to be paired (Reshef: col. 3, lines 62-65, col. 4, lines 1-3, 16-20). Further, Reshef discloses a set of wireless speakers, in a home audio system include a combination of Bluetooth, [WiGig] and Wi-Fi compatible devices (Reshef: col. Appeal 2020-005937 Application 15/008,459 6 2, lines 14-16), thus there is established a wireless connection between the at least two of the first electronic devices. Ans. 4. The Examiner further finds the newly cited “Kallai reference (PG- Pub 2015/0347085) is evidence and is not applied in rejecting claim language but buttressing the Examiner’s position when applying the Reshef reference to the claimed language.” Id. According to the Examiner “Kallai discloses when several playback devices want to have enhanced audio, the several devices can be paired with each other in order to produce the enhanced sound.” Id. (emphasis deleted). Appellant replies, emphasizing “device 102 in Reshef is not triggered to establish a connection to the device 102B, the device 102C or the device 102D” as required to teach the disputed limitation of claim 1. Reply Br. 4. Appellant further argues Examiner error in using Kallai as evidence because, inter alia, the publication date of Kallai is Dec. 3, 2015, which is later than the January 29, 2015 effective filing date of the subject application. “In other words, contents in Kallai are not well known or publicized to a skilled person in the art.” Id. at 5. Addressing the Examiner’s finding that Reshef discloses “a set of devices/accessories are packaged together in order to be paired,” Appellant argues Reshef’s pairing is “pairing of the wireless accessory (of set of accessories) with a source device. It is not about pairing or establishing a connection between two of accessories.” Id. at 5–6. We are persuaded by Appellant’s contentions because, as further explained below, the Examiner fails to provide sufficient evidence or reasoning to show that Reshef’s devices 102 are paired so as to directly communicate between each device of a pair of devices. Appeal 2020-005937 Application 15/008,459 7 Claim Interpretation We begin with claim construction because, before a claim is properly interpreted, its scope cannot be compared to the prior art. During prosecution, we interpret terms in a claim using the broadest reasonable interpretation in light of the Specification. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). The phrase at issue in claim 1 is “paired with each other” and, more particularly, what is required by the term “paired.” We first turn to the Specification which is, “[i]n most cases, the best source for discerning the proper context of claim terms.” Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1360 (Fed. Cir. 2004). Although not providing an explicit definition for pairing, the Specification describes the pairing of the first electronic devices as follows: According to the connective mapping demonstrated in Table 1, the first electronic devices 111 and 112 are triggered to be paired with each other, such that the wireless connection C13 is established. The first electronic devices 111 and 113 are triggered to be paired with each other, such that the wireless connection C11 is established. The first electronic devices 112 and 113 are triggered to be paired with each other, such that the wireless connection C12 is established. Spec. ¶ 40. Figure 3, reproduced below, further depicts Appellant’s pairing operation. Appeal 2020-005937 Application 15/008,459 8 Figure 3 is a schematic diagram illustrating a demonstrational case of the system 100 including first electronic devices 111, 112, and 113 with wireless connections C11, C12, and C13 therebetween and separate respective wireless connections C21, C22, and C23 with second electronic device 130. Claim 1 further recites that “the connective information list further records a connective mapping between the first electronic devices and the connective mapping defines connective relationships of a mesh network between the first electronic devices.” A mesh network can be defined as “[a] communications network having two or more paths to any node.”5 In comparison, a star network is defined as “[a] LAN (local area network) in which each device (node) is connected to a central computer in a star-shaped 5 MICROSOFT COMPUTER DICTIONARY 335 (5th ed. 2002). Appeal 2020-005937 Application 15/008,459 9 configuration (topology); commonly, a network consisting of a central computer (the hub) surrounded by terminals.”6 Examples of star and mesh networks are depicted in the following Figure. Examples of Star and Mesh Network Topologies (Led-professional.com. 2021. Qualified Bluetooth Mesh – Making Lighting Controls Future-Proof — LED professional - LED Lighting Technology, Application Magazine. [online] Available at: [Accessed 27 October 2021]). Based on the Specification’s description and the drawings depicting wireless connection between pairs of first electronic devices taken together with the requirement that the pairing be responsive to a mesh network connective mapping, we interpret the term pairing to require direct wireless 6 Id. at 496. Appeal 2020-005937 Application 15/008,459 10 connectivity between pairs of first electronic devices without going through a hub such as the recited second electronic device of claim 1. Obviousness The Examiner’s findings do not show that Reshef teaches or suggests pairing wherein direct wireless connectivity is established between pairs of devices 102B, 102C, and 102D corresponding to the first electronic devices of claim 1. Instead, Reshef discloses a star network topology in which devices 102B, 102C, and 102D have direct wireless connectivity with a central hub, i.e., source device 112, such that there is no direct wireless connectivity between devices 102B, 102C, and 102D. Reshef 3:12–14 (“The pairing mechanism may include establishing a communication link 114 between the source device 112 and the device 102”). Furthermore we find the Examiner’s use of the Kallai publication is to supply a missing limitation (i.e., that “several device can be paired with each other” (Ans. 4)) rather than, for example, to show how a person of ordinary skill in the art would have interpreted the Reshef disclosure. Because the Examiner does not include the Kallai publication amongst the prior art relied upon for teaching or suggesting the limitations of claim 1, we do not consider the publication for its disclosure of any elements otherwise missing from the combined teachings of Sakpal and Reshef and we need not address whether Kallai can be relied upon given its publication date. Because we agree with at least one of Appellant’s contentions of error, we do not reach the merits of Appellant’s other contentions. Accordingly, we do not sustain the rejection of independent claim 1, or the rejection of independent claims 8 and 15, which include language corresponding to the disputed limitation of claim 1. Nor do we sustain the Appeal 2020-005937 Application 15/008,459 11 rejection of dependent claims 2, 4–7, 9, 11–14, and 16–20, each of which stands with its respective base claim. NEW GROUND OF REJECTION We enter a new ground of rejection of claims 1–7, 9–14, and 16–21 under 35 U.S.C. § 112(b) pursuant to our authority under 37 C.F.R. § 41.50(b) for the following reasons. The following is a quotation of 35 U.S.C. § 112(b): (b) Conclusion.--The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. Claims 1–7, 9–14, and 16–21 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. The Federal Circuit has held that a claim is “indefinite when it contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014) (per curiam). Moreover, when a claim is amenable to two or more plausible claim constructions, the claim is indefinite for failing to particularly point out and distinctly claim the subject matter that an applicant considers to be the invention. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008). Claim 1 recites the limitation requiring that “in response to the connective mapping is read by the second electronic device, the second electronic device sends a connective command to at least two of the first electronic devices have not been connected to each other before pairing with one another.” Appeal Br. 17 (alteration added). There are at least three Appeal 2020-005937 Application 15/008,459 12 unclear aspects of this limitation. First, the phrase “in response to the connective mapping is read” requires correction to be grammatically correct and clarify what it intends to claim (e.g., “in response to the connective mapping being read”). Second, there appears to be a missing conjunction before “have not been connected” (e.g., “to at least two of the first electronic devices that have not been connected”). Third, it is not clear if the temporal limitation imposed by the phrase “before pairing with one another” is (1) restrictive of the sending action of the second electronic device or (2) restrictive of a time period in which the first electronic devices have not been connected to each other. That is, the phrase might be interpreted to mean either (1) before at least two first electronic devices, that have not been connected to each other, pair with one another, the second electronic device sends a connective command to the first electronic devices, or (2) the second electronic device sends a connective command to at least two of the first electronic device, the first electronic devices identified by the requirement that they not have been connected to each other before having been paired with one another. Because of the aforementioned claim language, claim 1 is subject to multiple plausible interpretations, and is therefore indefinite. Accordingly, pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under 35 U.S.C. § 112(b) of independent claim 1 as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Because they include corresponding problematic language, we further enter a new ground of rejection under 35 U.S.C. § 112(b) of independent claims 11 and 16 together with dependent claims 2–7, 9, 10, 12–14, and 17–21 Appeal 2020-005937 Application 15/008,459 13 which are indefinite by virtue of dependency from their respective base claims. CONCLUSION We reverse the Examiner’s rejections of claims 1, 7, 9, 11–14, 16, 17, 20, and 21 under 35 U.S.C. § 103 as obvious over the combined teachings of Sakpal and Reshef; claims 2–6 under 35 U.S.C. § 103 as obvious over the combined teachings of Sakpal, Reshef, and Killian-Kehr; claim 10 under 35 U.S.C. § 103 as obvious over the combined teachings of Sakpal, Reshef, and Chhabra; and claims 18 and 19 under 35 U.S.C. § 103 as obvious over the combined teachings of Sakpal, Reshef, Chhabra, and Nguyen. Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we newly reject claims 1–7, 9–14, and 16–21 under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Appeal 2020-005937 Application 15/008,459 14 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 7, 9, 11–14, 16, 17, 20, 21 103 Sakpal, Reshef 1, 7, 9, 11–14, 16, 17, 20, 21 2–6 103 Sakpal, Reshef, Killian-Kehr 2–6 10 103 Sakpal, Reshef, Chhabra 10 18, 19 103 Sakpal, Reshef, Chhabra, Nguyen 18, 19 1–7, 9– 14, 16–21 112(b) Indefiniteness 1–7, 9– 14, 16– 21 Overall Outcome 1–7, 9– 14, 16– 21 1–7, 9– 14, 16– 21 TIME PERIOD FOR RESPONSE This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2020-005937 Application 15/008,459 15 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b)