Itay Sherman

Patent Trials and Appeals Board

Mar 3, 2020

14540568 - (D) (P.T.A.B. Mar. 3, 2020)

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.
14/540,568 11/13/2014 Itay Sherman 547347USCON 8377
149118 7590 03/03/2020
Colby Nipper / Google
291 East Shore Drive
Suite 200
Eagle, ID 83616
EXAMINER
TSVEY, GENNADIY
ART UNIT PAPER NUMBER
2648
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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):
docket@colbynipper.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ITAY SHERMAN
Appeal 2018-005103
Application 14/540,568
Technology Center 2600
Before LARRY J. HUME, CARL L. SILVERMAN, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HUME, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Google Inc., appeals from
the Examiner’s decision rejecting claims 35–42, 44, 45 and 48–57, which
are all claims pending in the application. Appellant has canceled
claims 1–34, 43, 46, and 47. See Appeal Br. 32 et seq. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Google
Technology Holdings LLC. Appeal Br. 3.
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STATEMENT OF THE CASE2
The claims are directed to a wireless communicator for laptop
computers. See Spec. (Title). In particular, Appellant’s disclosed
embodiments and claimed invention relate to cellular communication. Spec.
¶ 2.
Claim 35, reproduced below, is representative of the subject matter on
appeal (emphasis and brackets added to contested prior-art limitations):
Exemplary Claims
35. A cellular communicator, comprising:
a baseband modem configured to:
connect the cellular communicator to the Internet through
a cellular network and an Internet gateway; and
provide a computer with Internet access through a short
range wireless communication between the baseband modem
and a wireless modem of the computer;
a connector configured to physically connect the cellular
communicator to the computer and provide the computer with
Internet access through the connector;
[L1] a bridge driver configured to enable both the short
range wireless communication and the connector to provide the
computer with Internet access during an ongoing Internet
session by switching between the short range wireless
communication and the connector, dependent on whether the

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Jan. 9, 2018); Reply Brief (“Reply Br.,” filed Apr. 18, 2018); Examiner’s
Answer (“Ans.,” mailed Mar. 14, 2018); Non-Final Office Action (“Non-
Final Act.,” mailed Aug. 28, 2017); and the original Specification (“Spec.,”
filed Nov. 13, 2014) (claiming benefit of US 61/069,987, filed
Mar. 19, 2008).
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cellular communicator is physically connected to the computer;
and
[L2] a unified communication device bridge driver
configured to automatically install on the computer and instruct
the wireless modem of the computer to transfer to a low-power
state when the cellular communicator is physically connected to
the computer via the connector.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Chang et al. (“Chang”) US 2003/0078036 A1 Apr. 24, 2003
Lee et al. (“Lee ‘446”) US 2006/0056446 A1 Mar. 16, 2006
Cheng US 2007/0008582 A1 Jan. 11, 2007
Karstens et al. (“Karstens”) US 7,242,963 B1 July 10, 2007
Fruhauf US 2007/0175994 A1 Aug. 2, 2007
Lee (“Lee ‘201”) US 2008/0031201 A1 Feb. 7, 2008
Wyld US 2008/0070501 A1 Mar. 20, 2008
Rejections on Appeal
R1. Claims 49 and 50 stand rejected under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre–AIA), first paragraph, as failing to comply with the
written description requirement. Non-Final Act. 9.
R2. Claims 35–42, 44, 45, 48, and 57 stand rejected under pre–AIA
35 U.S.C. § 103(a) as being unpatentable over the combination of Karstens,
Lee ‘446, Fruhauf, and either Cheng or Chang. Non-Final Act. 10.
R3. Claims 49, 50, 53 and 54 stand rejected under pre–AIA 35
U.S.C. § 103(a) as being unpatentable over the combination of Karstens, Lee
‘446, Fruhauf, either Cheng or Chang, and Wyld. Non-Final Act. 18.
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R4. Claims 51, 52, 55 and 56 stand rejected under pre–AIA 35
U.S.C. § 103(a) as being unpatentable over the combination of Karstens, Lee
‘446, Fruhauf, either Cheng or Chang, and Lee ‘201. Non-Final Act. 19.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 12–31) and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of
obviousness Rejection R2 of claims 35–42, 44, 45, 48, and 57 on the basis of
representative claim 35; and we decide the appeal of written description
Rejection R1 under pre-AIA 35 U.S.C. § 112, first paragraph, of claims 49
and 50 on the basis of claim 49.
Remaining claims 49–56 in obviousness Rejections R3 and R4, not
persuasively argued separately, stand or fall with the respective independent
claim from which they depend.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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We disagree with Appellant’s arguments with respect to claims 35–
42, 44, 45, and 48–57 and, unless otherwise noted, we incorporate by
reference herein and adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken, and (2) the
reasons and rebuttals set forth in the Examiner’s Answer in response to
Appellant’s arguments. We highlight and address specific findings and
arguments regarding claim 35 for emphasis as follows.
1. § 112, ¶ 1, Written Description Rejection R1 of Claims 49 and 50
Issue 1
Appellant argues (Appeal Br. 11–12; Reply Br. 2) the Examiner’s
rejection of claim 49 under 35 U.S.C. § 112, first paragraph, as lacking
written description support is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the negative limitation in claim 49 of
“wherein the bridge driver is configured to receive . . . information for
pairing the cellular communicator with the computer . . . without
necessitating a pairing request” (emphasis added) lacks written description
support in the originally-filed disclosure?
Analysis
The Examiner finds no support for the portion of the limitation
identified, i.e., “without necessitating a pairing request” in the Specification.
Non-Final Act. 9. “For example, the pairing request may have been sent
through the wired connection (‘through the connector’) on the basis of which
PIN code and timing data described in the applicant’s paragraph 0046 are
transmitted through the wired connection. Or the pairing request may have
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been sent through the wireless connection any time prior. The specification
does not state that there is no such request.” Id. The Examiner construes
this contested phrase as a negative limitation. Ans. 19 (citing Manual for
Patent Examining Procedure (“MPEP”) § 2173.05(i)). We agree with the
Examiner’s claim construction and factual findings, as discussed below.
In response, Appellant “asserts that support for the rejected claims
may be found throughout the specification as filed and in at least [0008] and
[0046].” Appeal Br. 11. We have reviewed these paragraphs relied upon by
Appellant as allegedly providing support for the contested “without
necessitating a pairing request,” and do not agree with Appellant’s
contentions.
For example, instead of disclosing that there is no pairing request,
Specification paragraph 8 discusses “automatic Bluetooth pairing,” and
paragraph 46 discloses “provid[ing a] mobile cell phone with the necessary
information for pairing with the laptop computer’s wireless transceiver[ and
s]uch information may . . . [thereby] simplify[] the manual intervention
required for pairing.” Id. (quoting Spec. ¶¶ 8 and 46).
We further find Appellant has not provided an explicit definition of
“Bluetooth pairing” in the Specification that would exclude “automatic
Bluetooth pairing” or simplified “manual intervention required for pairing”
from the Examiner’s broader reading of the claim.4

4 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
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The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he level of detail
required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability
of the relevant technology.”
We further note the disputed negative limitation was added during
prosecution, and forms no part of the original disclosure. Regarding the
amount of patentable weight to be given to the negative limitation at issue,
we find Appellant’s proffered support in the Specification in paragraphs 8
and 46 does not identify any “descri[ption of] a reason to exclude the
relevant limitation.” Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d
1344, 1351 (Fed. Cir. 2012). (“Negative claim limitations are adequately
supported when the specification describes a reason to exclude the relevant
limitation. Such written description support need not rise to the level of
disclaimer. In fact, it is possible for the patentee to support both the
inclusion and exclusion of the same material.”).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s finding that the disputed limitation

words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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lacks adequate written description support, and we sustain the Examiner’s
written description Rejection R1 of claims 49 and 50.5
2. § 103 Rejection R2 of Claims 35–42, 44, 45, 48, and 57
Issue 2
Appellant argues (Appeal Br. 12–17; Reply Br. 2–4) the Examiner’s
rejection of claim 35 under 35 U.S.C. § 103(a) as being obvious over the
combination of Karstens, Lee ‘446, Fruhauf, and either Cheng or Chang is in
error. These contentions present us with the following issues:
(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests “[a] cellular communicator” that includes, inter alia, the
limitations of:
[L1] a bridge driver configured to enable both the short
range wireless communication and the connector to provide the
computer with Internet access during an ongoing Internet
session by switching between the short range wireless
communication and the connector, dependent on whether the
cellular communicator is physically connected to the computer
. . .
[L2] a unified communication device bridge driver
configured to automatically install on the computer and instruct
the wireless modem of the computer to transfer to a low-power
state when the cellular communicator is physically connected to
the computer via the connector,

5 In the Reply Brief, Appellant asserts, “the Examiner did not respond to
Appellant’s remarks regarding the § 112 rejection of claim 50. It is therefore
assumed that Appellant’s remarks regarding claim 50 were determined to be
persuasive by the Examiner, and thus, the Examiner agrees that the § 112
rejection of claim 50 is improper.” Reply Br. 2. We disagree with
Appellant’s argument because, on its face, dependent claim 50 inherits the
deficiency of claim 49 with respect to lack of written description support.
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as recited in claim 35?
(b) Did the Examiner err in combining the cited prior art because it
would not have been obvious to combine these references in the manner
suggested?
Analysis
With respect to Rejection R2, Appellant generally contends, “the
Examiner has failed to establish a prima facie case of obviousness with
respect to these claims.” Appeal Br. 12.
(a) All Limitations are Taught or Suggested
Limitation L1: “bridge driver”
Appellant contends:
While it is true that the device of Karstens may be configured as
either a wired device or a wireless device, there is no mention,
embodiment, or suggestion of a device in Karstens that
incorporates both wired and wireless connections in the same
device, much less switching between them based on whether
the device is connected to the computer. Thus, while Karstens
may be applied to a wireless or a wired connection, it simply
cannot provide a basis for “enabl[ing] both the short range
wireless communication and the connector . . . by switching
between the short range wireless communication and the
connector.”
Appeal Br. 13.
The Examiner first responds by stating “the appellant alleges that,
according to the examiner, Karstens teaches the whole of limitation of
claim 35 in the paragraph starting with the words ‘a bridge driver’. This is
incorrect.” Ans. 20. “The examiner never stated that Karstens teaches that
the switching is based on whether or not the cellular communicator is
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physically connected to the computer, nor did the examiner state that the
switching is performed during on ongoing Internet session. These features
were disclosed by other cited references, but not Karstens.” Id.
The test for obviousness is what the combined teachings of the prior
art would have suggested to the hypothetical person of ordinary skill in the
art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
We find Appellant’s arguments are not responsive to the rejection as
articulated by the Examiner (see Non-Final Act. 12–13), and we agree with
the Examiner’s analysis and findings, which determined the combination of
Karstens and Lee teaches or suggests contested limitation L1. See Non-
Final Act. 11–13. “Karstens does not teach that the connection is switched
‘during an ongoing Internet session’, ‘dependent on whether the cellular
communicator is physically connected to the computer,’” but the Examiner
instead finds that Lee teaches these limitations in the Abstract and in
paragraphs 31, 56, 58, and 74. Non-Final Act. 12.
In the Reply Brief, Appellant continues the mistaken line of argument
by ignoring the combination of references relied upon in the specific
rejection articulated by the Examiner, i.e., by stating “Karstens simply
cannot teach automatically (e.g., a computer-implemented method for)
switching between a wired and wireless connection in a same device.”
Reply Br. 2–3.
Therefore, we agree with the Examiner’s finding that the combination
of Karstens and Lee teaches or suggests disputed limitation L1.
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Limitation L2: “device bridge driver configured to automatically install”
Appellant contends:
There is simply no mention or suggestion in Fruhauf of
changing an operation of the smart card reader at all, much less
based on the smart card apparatus. Accordingly, Fruhauf does
not correct the defect in Karstens, as it does not teach or
suggest, “a driver configured to automatically install on the
computer” from the cellular communicator “and instruct the
wireless modem to transfer to a lower-power state when the
cellular communicator is physically connected to the
computer,” as recited in claim 35.
Appeal Br. 14.
In response, the Examiner states “appellant appears to imply that the
examiner cited Fruhauf as teaching the whole of the last paragraph of
claim 35 starting with the words ‘a unified communication device bridge’.
This is incorrect.” Ans. 24. “In this portion, the examiner did not address
the feature of automatic installation of the driver which is disclosed by
another cited reference [either Chang or Cheng].” Id.
The Examiner further finds:
In analyzing the claimed feature [of two types of interfaces —
wired and wireless], the examiner stated that it is well known in
the art that if any components of a circuitry are not used in a
certain operational mode, to switch off, disable or put in low
power or sleep mode those components to save power, which is
even more important in a battery powered devices, such as a
laptop computer disclosed by Karstens (col. 5 lines 30–32) and
PDA 100d. The fact that this feature is well known may be
evidenced by paragraph 0042 of Fruhauf, which states that as
soon as the communication between two devices (the devices
being capable of communicating using wired and wireless types
of connections) is performed through wired connection, the
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circuitry responsible for wireless connection between the
devices is placed in a standby mode . . . .
Ans. 25.
With respect to the portion of limitation L2 directed to automatic
installation,
the examiner never relied on Fruhauf to disclose or suggest this
specific feature. Instead, the examiner relied on either Cheng,
who in paragraph 0005 teaches a peripheral device utilizing the
USB connection port to install a driver stored on the peripheral
device on the computer upon connection, or Chang[], who in
paragraph 0003 teaches that if a new device with driver inside
is connected with computer, the driver will be transmitted and
installed automatically, without user operations, to support
operation of the new device.
Ans. 27.
Again, we find Appellant’s arguments are not responsive to the
rejection as articulated by the Examiner (see Non-Final Act. 13–16), and we
agree with the Examiner’s analysis and factual findings, which determined
the combination of Fruhauf with Cheng or Chang teaches or suggests
contested limitation L2. See Non-Final Act. 14–15.
Therefore, we agree with the Examiner’s finding that the combination
of Karstens with Fruhauf and either Cheng or Chang teaches or suggests
disputed limitation L2.
(b) The Examiner Provided Proper Motivation to Combine
“Appellant respectfully submits that a prima facie case of obviousness
cannot be established based on the combination of Karstens, [Lee ‘446],
Fruhauf, and Cheng or Chang[] for at least the reason that it would not have
been obvious to combine [these references].” Appeal Br. 14.
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Appellant argues, “there is no suggestion by Karstens of enabling
both the short range wireless communication and the connector to provide
the computer with Internet access during an ongoing Internet session.
Rather, Karstens is directed to a software bridge that communicatively links
the PDA ‘to the host computer system 56 using one of a variety of different
communication mechanisms.’” Appeal Br. 15. “[B]oth Karstens and
Fruhauf are generally directed to use of a single wired or wireless
connection and do not suggest any condition requiring both a wired network
connection and a wireless connection.” Id.
The Examiner responds by observing, “[t]he appellant’s argument is
built on the wrong interpretation of claim 35 that both interfaces, wireless
and wired, must be active at the same time.” Ans. 28. The Examiner
supports this observation by quoting Appellant’s argument, i.e., “‘Appellant
. . . submits that there is no described enablement for how Karstens can use
multiple communication mechanisms at the same time by incorporating
Lee’s communication adapter.’” Ans. 29 (quoting Appeal Br. 16–17).
Our reviewing court held that the relevant inquiry is whether the
Examiner has set forth “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007)).
We find the Examiner has provided sufficient articulated reasoning
with rational underpinning to support the combination of the cited prior art
references and the Examiner’s legal conclusion of obviousness. See Non-
Final Act. 12–13 (providing reasoning concerning the combination of
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Karstens with Lee); id. at 15 (providing reasoning concerning the
combination of Karstens, Lee, Fruhauf, and Cheng or Chang).
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitations of claim 35, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 35, and grouped
claims 36–42, 44, 45, 48, and 57, which fall therewith. See Claim Grouping,
supra.
3. § 103 Rejections R3 and R4 of Claims 49–56
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R3 and R4 of claims 49–56 under § 103 (see
Appeal Br. 23–31), we sustain the Examiner’s rejections of these claims.
Arguments not made are waived.6
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2–6) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s

6 With respect to dependent claim 49 in Rejection R3, Appellant merely
argues limitations found in independent claim 35 from which claim 49
depends and, with respect to dependent claim 51 in Rejection R4, Appellant
also argues limitations found in independent claim 35 from which claim 51
depends. Appeal Br. 23–31. We determine these arguments are not separate
arguments for patentability, but instead reiterate the argument concerning
the Examiner’s rejection of independent claim 35.
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Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) The Examiner did not err with respect to written description
Rejection R1 of claims 49 and 50 under pre-AIA 35 U.S.C. § 112, first
paragraph, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2–R4 of claims 35–42, 44, 45, and 48–57 under 35 U.S.C.
§ 103(a) over the cited prior art combinations of record, and we sustain the
rejections.

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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References
Affirmed Reversed
49, 50 112, ¶ 1 Written
Description
49, 50
35–42, 44, 45,
48, 57
103(a) Obviousness
Karstens, Lee
‘446, Fruhauf,
and either Cheng
or Chang
35–42, 44,
45, 48, 57

49, 50, 53, 54 103(a) Karstens, Lee
‘446, Fruhauf,
either Cheng or
Chang, Wyld
49, 50, 53,
54

51, 52, 55, 56 103(a) Karstens, Lee
‘446, Fruhauf,
either Cheng or
Chang, Lee ‘201
51, 52, 55,
56

Overall
Outcome
35–42, 44,
45 48–57

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED