LISNR, Inc.Download PDFPatent Trials and Appeals BoardOct 22, 20212021000687 (P.T.A.B. Oct. 22, 2021) 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. 15/864,797 01/08/2018 William Knauer LISNR 10US 4204 26875 7590 10/22/2021 WOOD, HERRON & EVANS, LLP 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OH 45202 EXAMINER KUNWAR, BINOD J ART UNIT PAPER NUMBER 2449 NOTIFICATION DATE DELIVERY MODE 10/22/2021 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): usptodock@whe-law.com wjacobs@whe-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WILLIAM KNAUER, IAN ANDREW BIRNAM, AUSTIN ANDREW TEAMES, JOSHUA MATTHEW GLICK, and RODNEY B. WILLIAMS ____________________ Appeal 2021-000687 Application 15/864,797 Technology Center 2400 ____________________ Before JAMES R. HUGHES, ERIC S. FRAHM, and BETH Z. SHAW, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of claims 1–18, 20–24, and 26, which constitute all pending claims on appeal. Claims 19 and 25 have been canceled (see Appellant’s 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2017). “The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as LISNR, Inc. (Appeal Br. 2). Appeal 2021-000687 Application 15/864,797 2 Amendment filed March 21, 2019, pp. 15, 16; see also Final Act. 2, 3; Appeal Br. 13, 14). We have jurisdiction under 35 U.S.C. § 6(b). We conducted an oral hearing on September 15, 2021.2 We affirm. DISCLOSED AND CLAIMED INVENTION According to Appellant, the disclosed invention, entitled “Pairing and Gateway Connection Using Sonic Tones” (see Title), “generally relates to systems and methods for using sonic tones to communicate digitized information, and specifically the use of sonic tones in wireless connection or pairing of a networkable device to a wireless network” (Spec. ¶ 2). More particularly, “the sonic tone may be embedded in audio content that is received by a microphone of the networkable device” (Spec. ¶ 3), and may be “signals that are outside the range of human hearing or other signals not otherwise detectable by humans” (Spec. ¶ 5), such as “frequencies near to 20,000 Hz or less than 20 Hz, or in a frequency band near to 20,000 Hz or near to 20 Hz which is generally sonic” (Spec. ¶ 5). In this manner, a wireless device may be connected to a wireless network communicating in a Wi-Fi network or a wireless Bluetooth network (see Spec. ¶¶ 9, 38). Appellant discloses and claims an apparatus (claim 14) and a method (claim 1), for coupling a networkable device to a wireless network by broadcasting a sonic tone that includes two pieces of information: (1) a network identifier such as a Service Set Identifier (SSID) or Media Access 2 Thomas W. Humphrey, USPTO Registration No. 34,353 represented Appellant at the oral hearing. A transcript of the Oral Hearing will be made of Record in due course (see Oral Hearing Transcript, pp. 1–14). Appeal 2021-000687 Application 15/864,797 3 Control (MAC) address; and (2) a password, shared key (see Spec. ¶ 55) (describing shared keys used between a mobile device and a vehicle), or personal identification number (PIN), for connecting to the wireless network (see Fig. 2, step 2006; Spec. ¶¶ 9, 41, 47; claims 1, 14). Appellant discloses that in a Wi-Fi implementation “a Wi-Fi network SSID and optional password” are used, whereas in a Bluetooth implementation for a personal area network (PAN) “a Bluetooth identifier/MAC and OPTIONAL PIN” are used (Spec. ¶ 41; see also ¶¶ 23, 57, 49). Independent claim 1 is illustrative of the claimed subject matter: 1. A method of coupling a networkable device to a wireless network, comprising a. broadcasting a sonic tone which encodes a symbol sequence representing a binary message, the binary message including digitized information useful for implementing connection to the wireless network comprising [1] a network identifier, Service Set Identifier (SSID) or Media Access Control address (MAC) and [2] password, shared key or PIN for connection to the wireless network; b. receiving the sonic tone and decoding the binary message to obtain the SSID or MAC and password, shared key or PIN from the sonic tone; c. using the SSID or MAC and password, shared key or PIN decoded from the binary message to implement a connection between the networkable device and the wireless network. Appeal Br. 10, Appendix A (formatting and emphases added). Appeal 2021-000687 Application 15/864,797 4 REJECTION The Examiner made the following rejection: Claims 1–18, 20–24, and 26 stand rejected under 35 U.S.C. § 103 as being unpatentable over Paulson (US 8,711,656 B1; issued April 29, 2014) and Gupta et al. (US 2010/0165879 A1; published July 1, 2010) (hereinafter, “Gupta”). Final Act. 4–37; Ans. 4–14. Appellant’s Contentions With regard to the obviousness rejections of claims 1–18, 20–24, and 26, Appellant primarily argues elements set forth in independent claims 1 and 14 without arguing any specific claim (see Appeal Br. 5–9; Reply Br. 1– 3). Appellant primarily contends (Appeal Br. 10; Reply Br. 2–3) that the Examiner erred in rejecting the claims under 35 U.S.C. § 103 because (i) Paulson, and thus the combination of Paulson and Gupta, fails to teach or suggest a sonic transmission including both (1) a network identifier, SSID, or MAC, and (2) a password, shared key, or PIN (see Appeal Br. 5; Reply Br. 1–2) as recited in the claims; and (ii) (ii) it would not have been obvious to combine Paulson and Gupta to produce Appellant’s invention (see Appeal Br. 8–9; Reply Br. 1–2). Based on Appellant’s obviousness arguments, and because claims 1– 18, 20–24, and 26 contain commensurate limitations, we select claim 1 as representative of claims 1–18, 20–24, and 26 rejected under 35 U.S.C. § 103 for obviousness over the combination of Paulson and Gupta. Principal Issue on Appeal Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 4–9) Appeal 2021-000687 Application 15/864,797 5 and the Reply Brief (Reply Br. 1–3), the following principal issue is presented on appeal: Has Appellant shown that the Examiner erred in rejecting claims 1– 18, 20–24, and 26 as being unpatentable under § 103 over the combination of Paulson and Gupta, because the resultant combination fails to teach or suggest broadcasting a sonic tone, used for connecting to a wireless network, including both (1) a network identifier, SSID, or MAC, and (2) a password, shared key, or PIN, as recited in representative claim 1? ANALYSIS We have reviewed the Examiner’s obviousness rejection of representative claim 1 (Final Act. 4–8) and response to Appellant’s arguments in the Appeal Brief (Ans. 3–14), in light of Appellant’s arguments in the Appeal Brief (Appeal Br. 4–9) and the Reply Brief (Reply Br. 1–3) that the Examiner has erred. With regard to representative independent claim 1, we adopt as our own (1) the findings and reasons set forth by the Examiner in the Action from which this appeal is taken (Final Act. 4–8), and (2) as amplified by the findings and reasons set forth by the Examiner in the Examiner’s Answer (Ans. 4–14) in response to Appellant’s Appeal Brief. Appellant has the opportunity on appeal to this Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985–86 (Fed. Cir. 2006) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). Analysis of whether a claim is patentable over the prior art under 35 U.S.C. § 103 begins with a determination of the scope of the claim. We determine the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable Appeal 2021-000687 Application 15/864,797 6 construction 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). At the outset, we note our agreement with Appellant’s interpretation of claim 1 (see Reply Br. 3), namely that claim 1 requires a sonic broadcast having two pieces of information: (1) a network identifier, SSID, or MAC, and (2) a password, shared key, or PIN. However, we agree with the Examiner (see Ans. 13–14) that this is met by Paulson alone,3 and also by Paulson taken with Gupta. Notably, we agree with the Examiner’s finding that Paulson (see Fig. 12; col. 23, ll. 6–8; col. 24, ll. 38–42; col. 27, ll. 59–63; col. 28, ll. 30–35) teaches broadcasting and connecting using a sonic signal (see col. 5, ll. 3–6; col. 12, l. 66–col. 13, l. 2). As explained by the Examiner, Paulson’s signal has a first part including a network identifier such as a MAC (see col. 23, ll. 49–50; col. 25, ll. 10–12). We also agree with the Examiner (see Final Act. 6–8; Ans. 9, 12–13) that Gupta teaches connecting a wireless device to a network using a network identifier or SSID (see ¶¶ 29, 30) and a PIN (see ¶¶ 6, 34, 37). 3 Paulson (i) suggests sending “other predetermined parameters” along with the wireless identifier (see col. 23, ll. 7–8); (ii) discloses transmitting “a wireless identifier and the authentication key in a[n] sonic Bluetooth code over the sonic carrier signal” (col. 24, ll. 39–41); (iii) discloses “incorporate[ing] the authentication key as part of the sonic Bluetooth code transmitted . . . over the sonic carrier signal” (col. 27, ll. 61–63); and (iv) discloses that “an alternate implementation of the present invention may include the wireless identifier and authentication key in the sonic Bluetooth code transmitted” (col. 28, ll. 36–39) in the sonic carrier signal 1212 (see col. 28, l. 43). Appeal 2021-000687 Application 15/864,797 7 We disagree with Appellant’s arguments (see Appeal Br. 4–9; Reply Br. 1–3). We concur with the findings and conclusions reached by the Examiner, and conclude that it would have been obvious and predictable to one of ordinary skill in the art to connect a wireless device to a wireless network by broadcasting a sonic tone that includes (1) a network identifier, SSID, or MAC, and (2) a password, shared key, or PIN.4 Appellant’s arguments that it would not have been obvious to combine Paulson and Gupta (see Appeal Br. 7–9; Reply Br. 2) are unpersuasive, at least because both Paulson and Gupta, as well as Appellant’s disclosed invention, are directed to wireless Bluetooth communication where a wireless connection is formed by transmitting and receiving a wireless signal containing a wireless identifier and a shared key or PIN in order to connect a wireless device to a wireless network. Appellant’s contentions (see Appeal Br. 7–8) that both Paulson and Gupta teach wirelessly connecting a device to a network through the use of two separate signals (i.e., a challenge-response protocol), are unpersuasive for at least two reasons. First, with regard to Paulson, Appellant relies upon a disclosure pertaining to an alternative embodiment that is not relied on by the Examiner, namely column 30, lines 9 through 12. Appellant, in the Reply Brief, does not dispute the Examiner’s reliance on other embodiments. Specifically, the Examiner relies on Paulson’s columns 23, 24, 27, and 28 and Figures 9 through 13 (see Final Act. 5–6; Ans. 11, 13– 14), for teaching or suggesting the broadcast of a sonic connection signal 4 “‘[T]he question under 35 USC 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made.’” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)) (emphasis added). Appeal 2021-000687 Application 15/864,797 8 that contains two elements, (1) a wireless identifier or MAC, and (2) a shared key (here, Paulson’s authentication key). Second, the Examiner did not rely on Gupta to teach sonic transmission of two items for making a connection. Rather, the Examiner relied on Paulson (supra). And, Paulson is fully capable of providing a secure private connection (see Paulson col. 8, ll. 18–24), just as Appellant’s disclosed invention, because the sonic signal is sent outside of the human hearing range (see Paulson col. 8, ll. 18–24). Appellant presents only attorney arguments (see Oral Hearing Transcript 10:6–11:20) regarding (i) a link key being the same as an authentication key; and (ii) neither a link nor an authentication key being the same as the recited shared key. Appellant provides no evidence on this record to support the assertion that a link key is the same as an authentication key, or that an authentication key is not the same as a shared key, apart from mere conclusory statements. It is well settled that mere lawyer’s arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value (In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)), and that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602 (CCPA 1965). Further, the evidence of record, namely Paulson, teaches that a link key and an authentication key are different things that serve different purposes (see generally Paulson Fig. 12; cols. 24, 27, 28). In addition, Appellant’s assertion at Oral Hearing that authentication in a Bluetooth connection can be performed using a PIN (see Oral Hearing Transcript 10:8– Appeal 2021-000687 Application 15/864,797 9 10) actually supports a conclusion that Paulson’s authentication key is analogous to a shared key or PIN as claimed. Therefore, we accord little probative value to Appellant’s conclusory statements at Oral Hearing (see Oral Hearing Transcript 10:5–11:20) that (i) an authentication key (as taught by Paulson) is the same as a link key (as also taught by Paulson); and/or (ii) Paulson’s authentication/link key is not equivalent to Appellant’s disclosed and claimed shared key (as recited in Appellant’s claim 1 and described in Appellant’s Specification in paragraph 55). Because Paulson teaches connecting a wireless device to a wireless network by using a sonic signal containing both a wireless identifier or MAC and an authentication key (i.e., the recited shared key), in other words, all of the claimed elements, Gupta is not necessary for a proper rejection under 35 U.S.C. § 103 of representative claim 1, because Paulson teaches or at least suggests all that is claimed.5 In this light, Appellant’s arguments that Paulson and Gupta do not teach or suggest all of claim 1 are not persuasive. In any event, the Examiner relies on Gupta for teaching connecting wirelessly using a SSID and a PIN,6 and Gupta teaches that the wireless 5 In the instant case, Paulson meets all of the limitations of, and therefore at least suggests, claim 1. In addition, the Board may rely on less than all of the references applied by the Examiner in an obviousness rationale without designating it as a new ground of rejection. In re Bush, 296 F.2d 491, 496 (CCPA 1961); see also In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966). And, no motivation to combine is required when a first reference discloses each element of the claims and a second reference is used solely to explain some aspect of the first reference – as opposed to use of the second reference to show an additional element or teaching. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1373 (Fed. Cir. 2019). 6 Notably, Appellant does not dispute that Gupta teaches creating a wireless connection using a wireless identifier SSID and PIN. Appeal 2021-000687 Application 15/864,797 10 network can be a Bluetooth network (see Gupta ¶ 48). Therefore, it would have been obvious that Paulson’s “other predetermined parameters” (see Paulson col. 23, ll. 7–8) used to complete the connection process could be either an authentication key (as taught by Paulson in columns 24, 27, and 28) or a PIN as taught by Gupta. In summary, Appellants’ arguments in the Appeal Brief (Appeal Br. 4–9) and Reply Brief (Reply Br. 1–3) do not persuade us the Examiner erred in rejecting representative claim 1 as being unpatentable under 35 U.S.C. § 103. Therefore, we sustain the obviousness rejection of representative claim 1, as well as claims 2–18, 20–24, and 26 grouped therewith, as being obvious over the combination of Paulson and Gupta. CONCLUSION For all of the reasons above, we hold as follows: In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–18, 20–24, 26 103 Paulson, Gupta 1–18, 20–24, 26 Overall Outcome 1–18, 20–24, 26 TIME PERIOD FOR 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). See 37 C.F.R. §§ 41.50(f), 41.52(b) (2013). AFFIRMED Copy with citationCopy as parenthetical citation