Ex Parte Chatterjee et alDownload PDFPatent Trial and Appeal BoardJan 29, 201612916388 (P.T.A.B. Jan. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/916,388 10/29/2010 Man jirnath Chatterjee 12811 7590 02/02/2016 Mahamedi Paradice LLP (QCA) 1901 S. Bascom Ave. Suite 600 Campbell, CA 95008 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. QCPl 42044B2B 1B3 9507 EXAMINER DAVID, MATTHEW ART UNIT PAPER NUMBER 2615 NOTIFICATION DATE DELIVERY MODE 02/02/2016 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): ocpat_uspto@qualcomm.com wparadice@mppatentlaw.com uspto@mppatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MANJIRNATH CHATTERJEE, ERIC LIU, and PETER SKILLMAN Appeal2014-003159 Application 12/916,388 1 Technology Center 2600 Before JEFFREYS. SMITH, KEVIN C. TROCK, and ADAM J. PYONIN, Administrative Patent Judges. TROCK, Administrative Patent Judge. DECISION ON APPEAL Introduction Appellants seek review under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-5, 7-14 and 16-32, which constitute all the claims pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b ). Claims 6 and 15 have been cancelled. We AFFIRM. 1 Appellants indicate the Real Party in Interest is Palm, Inc. App. Br. 3. 2 App. Br. 16-22. Appeal2014-003159 Application 12/916,3 88 Invention The claimed invention relates to a system and method for inductively pairing devices to share data or resources. Spec. ,-r 4. Exemplary Claim Exemplary claim 1 is reproduced below with disputed limitation emphasized: 1. A computing system comprising: a first computing device configured to inductively pair with a second computing device to transmit or receive data; wherein the first computing device is configured to respond to inductively pairing with the second computing device by (i) determining an identity or class of the second computing device, and (ii) performing a function for communicating with the second computing device, wherein performing the function includes prompting a user to accept a sharing mode with the second computing device; wherein the function is performed automatically and is based on the identity or class of the second computing device. App. Br. 16 (Claims Appendix). Applied Prior Art The Examiner relies on the following prior art in rejecting the claims: Dua Humphrey Wang US 2006/0258289 Al US 7,562,813 B2 US 7,808,664 B2 2 Nov. 16, 2006 Jul. 21, 2009 Oct. 5, 2010 Appeal2014-003159 Application 12/916,3 88 Rejections Claims 1-5, 7-14, 16-21, 23, and 28-32 stand rejected under 35 U.S.C. § 102(b) as anticipated by Dua. Claim 22 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Dua and Wang. Claims 24--27 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Dua and Humphrey. ANALYSIS We have reviewed the Examiner's rejections and the evidence of record in light of Appellants' arguments that the Examiner has erred. We disagree with Appellants' arguments and conclusions. We adopt as our own, ( 1) the findings and reasons set forth by the Examiner in the Office Action from which this appeal is taken and (2) the findings and reasons set forth in the Examiner's Answer. We concur with the conclusions reached by the Examiner and further highlight specific findings and argument for emphasis as follows. Independent Claim 1 Appellants contend the Examiner erred in rejecting independent claim 1, because Dua fails to disclose a first device to respond to inductively pairing by "performing a function for communicating with the second computing device, wherein performing the function includes prompting a user to accept a sharing mode with the second computing device." App. Br. 6-9; Reply Br. 4--7. Appellants argue that Dua, in paragraph 163, at best describes that a list of profiles are provided to a user and the user selects 3 Appeal2014-003159 Application 12/916,3 88 one of the profiles for a device to connect to. l ms is not equivalent to responding to inductively pairing with the second computing device by "performing a function for communicating with the second computing device, wherein performing the function includes prompting a user to accept a sharing mode with the second computing device," as recited in Claim 1. App. Br. 8. Appellants further argue that this portion of Dua only teaches that such profiles can be "selected by a user to connect to a device later on in the future," and that one cannot, therefore, reasonably conclude that this portion of Dua reads on claim 1. Reply Br. 5. Appellants also argue that Dua's user interface screen depicting device categories (Fig 12; i-fi-1 42 and 210), is not a "prompt" as described in Claim 1. App. Br. 9; Reply Br. 6 and7. The Examiner, however, finds that Dua discloses in response to the initial RFID (inductive) transaction (Fig. 8A, 505; Fig. 8B, 505) ... the user is prompted to select the profile from a list when within range of the device's RF signal as described in par. 163, and also in par. 165 step 540, which describes where the user is prompted to select the content source from which he wants to select a media asset to share with the target device. In this way, the user is prompted to select (and therefore, to accept) which particular content source is to be shared with the target device. Par. 166 further describes additional prompts which could be presented to the user, where the user selects the type of "live content" to share with the target device. Upon the user's selection, the selected content is shared with the target device as described in par. 172. Again, these prompts occur in response to the inductive pairing via RFID (step 505), which is a known inductive transmission method. Ans. 2. We agree with the Examiner that Dua's disclosure of wirelessly connecting ("inductively pairing") a media device (100) ("the first 4 Appeal2014-003159 Application 12/916,3 88 computing device") with a target device ("the second computing device") in order to transmit certain media assets to the target device, wherein the media player (100) prompts the user ("prompting a user") to select a media asset to transmit to the target device ("to accept a sharing mode with the second computing device") reads on the disputed claim language of independent claim 1. Ans. 2 and 3 (citing Dua Figs. 8A, 8B, 12-19; i-fi-f 163, 165, 166, 172). We note that Appellants' Specification explains that, "[i]n a sharing mode, a data resource of the computing device is shared with or communicated to the paired computing device." Spec. i120. The Specification further provides examples as to how the "sharing mode" can be implemented on two devices, including, "[t]he user may open a record (e.g. task, calendar entry, contact record) and optionally enter input (e.g. press soft key) for transferring the data to the device identified by the inductive pairing." Id. at i133. Thus, we find the Examiner has reasonably construed the claim terms, in light of the Specification, to encompass the disclosure of Dua. Accordingly, we are not persuaded by Appellants' arguments that the Examiner erred in finding Dua discloses "the first computing device is configured to respond to inductively pairing with the second computing device by . . . performing a function for communicating with the second computing device, wherein performing the function includes prompting a user to accept a sharing mode with the second computing device," as recited in independent claim 1 Therefore, we sustain the Examiner's rejection of claim 1. 5 Appeal2014-003159 Application 12/916,3 88 Dependent Claim j 0 Appellants also contend the Examiner erred rejecting dependent claim 10, because Dua fails to disclose that the first computing device determines "based at least in part on either the determined identity or class of the second computing device, whether to inductively transmit power to or receive power from the second computing device." App. Br. 10 and 11; Reply Br. 7 and 8. Appellants argue that, in Dua, the RFID tag reader is activated to read the RFID tag in order to exchange communications, and that no identity or class information is used to determine "whether to inductively transmit power to or receive power from" the second device. App. Br. 11 (citing Dua, i-f 160). Appellants also argue that [t]he Examiner's argument, however, is premised on the incorrect assumption that the RFID devices behave in a specified fashion based on its predetermined operating settings, i.e., whether a device is inherently a tag reader or an RFID tag. Such an interpretation taken by the Examiner fails to consider what is recited in the features of Claims 1 and 10 - that the first device responds to inductively pairing with the second device to determine the identity or class, and that this determined identity is used to determine whether to inductively transmit power or receive power from the second device. Reply Br. 8. The Examiner finds, however, and we agree, Dua implicitly teaches that the first computing device determines whether to inductively transmit power or to receive power from the second computing device based at least in part on the class of the second computing device. Since the first computing device is provided with a tag 6 Appeal2014-003159 Application 12/916,3 88 reader module 113, it is configured to determine to provide power via power supply 103 for transmitting interrogation signals to a target passive RFID device (par. 71; also par. 101 and par. 120). Similarly, when the tag mode is switched on, it is configured to determine to receive power (par. 94). Both transmitting and receiving power in this way are based on the second computing device being a RFID-class device. No manner of configuration or determination is described in the claims. Therefore, because the first and second computing devices operate as RFID-class devices, they are configured for, and predetermined to transmit or receive power in accordance with RPI D operating procedures. Ans, 3 and 4 (citing Dua, i1i171, 94, 101, 120). We agree with both the Examiner and Appellants that a passive RFID tag receives power from an RFID tag reader. Ans 3; App. Br. 11. We also agree with the Examiner that the claimed determination of "identity or class of the second computing device" necessarily flows from the disclosure in Dua that an RFID tag reader module (113) comprises a radio frequency ID (identity) transponder which conforms to the principals of RFID technology and known standards, and that the module also includes a reader component used for transmitting interrogation signals via its antenna to an external electronic device's RFID tag when in close proximity, and receiving a response signal from the RFID tag. Ans. 3; Dua i1 71; see also Dua, i1i1 94, 101, 120. Thus, we agree with the Examiner that the claimed determination of the identity or class of the second computing device is implicitly or inherently disclosed in the normal operation of the RFID tag reader module described in Dua. See, In re King, 801 F.2d 1324 (Fed. Cir. 1986). Accordingly, we are not persuaded by Appellants' arguments that the Examiner erred in finding that Dua discloses "the first computing device is 7 Appeal2014-003159 Application 12/916,3 88 configured to determine, based at least in part on either the determined identity or class of the second computing device, whether to inductively transmit power to or receive power from the second computing device," as recited in dependent claim 10. Therefore, we sustain the Examiner's rejection of claim 10. Dependent Claim 24 Appellants contend the Examiner erred rejecting dependent claim 24 because Dua and Humphrey fail to teach or suggest "maintaining the first computing device in an active or low-power state, and waking the first computing device in response to detecting a trigger." App. Br. 11-13; Reply Br. 8-10. Appellants argue a computing device that includes the RFID tag, such as described in Humphrey, can be in an active mode whether or not the RFID tag is in a sleep mode or an awake mode. The fact that the RFID tag in Humphrey is "asleep" or "awake" does not influence or cause the "first computing device" to be "in an inactive or low- power state." The Examiner cannot point to a media player device, such as described in Dua, as being equivalent to "a first computing device," and then concurrently (and contradictorily) allege that a passive RFID tag is equivalent to the first computing device. App. Br. 12. Appellants further argue that what is explicitly taught by Humphrey is that the RFID device 120 can be "asleep," but makes no mention of the "phone 102" being asleep or in a low-power state. The fact that the RFID device 120 in Humphrey can be "asleep" is insufficient disclosure to assume that the phone 102 is also "in an inactive or low-power state." Reply Br. 9. The Examiner finds, however, and we agree, 8 Appeal2014-003159 Application 12/916,3 88 Humphrey describes that, " ... device 120 ... " (corresponding to the first computing device), " ... may be a hybrid RFID device that is "asleep" (and draws no power) until either deliberately turned on ... or upon being placed in proximity to an RFID reader, which reader provides sufficient power through radio signals to "wakeup" the RFID device and thereafter cause it to be powered by its own source ... " It is clear from this passage that Humphrey teaches a computing device which can be maintained in an inactive or low-power state ("asleep"), and can be awoken to a full-power mode by detecting a trigger from a proximate RFID reader. Ans. 4 (citing Humphrey, col. 3, 11. 60-65.) That is, the Examiner finds, and Appellants do not dispute, that Humphrey discloses a "hybrid RFID device" may be "asleep". Id. We agree with the Examiner that the recited low power state for a device encompasses such "asleep" state. See Ans. 4--5. Accordingly, we are not persuaded by Appellants' arguments that the Examiner erred in finding that the combination of Dua and Humphrey teaches or suggests "maintaining the first computing device in an inactive or low-power state; and waking the first computing device in response to detecting a trigger that," as recited in dependent claim 24. Therefore, we sustain the Examiner's rejection of claim 24. Dependent Claim 26 Appellants contend the Examiner erred in rejecting dependent claim 26 because the combination of Dua and Humphrey fails to disclose that "detecting that the strong wireless radio-frequency signal is present includes detecting a signal that exceeds a minimum threshold for a communication medium that corresponds to one of Bluetooth, 802.11 or cellular."" App. Br. 13 and 14; Reply Br. 10 and 11. Appellants argue that while Humphrey 9 Appeal2014-003159 Application 12/916,3 88 discloses different wireless signals to encode the payment instrument, it does not suggest or disclose "detecting that the strong wireless radio-frequency signal is present includes detecting a signal that exceeds a minimum threshold for a communication medium that corresponds to one of Bluetooth, 802.11 or cellular," much less waking the first computing device "in response to detecting a trigger" where detecting the trigger includes "detecting that a strong wireless radiofrequency signal is present." App. Br. 14. Appellants also argue that Humphrey does not teach that the RFID device 120 is woken up in response to detecting a trigger. Reply Br. 11. The Examiner finds, however, and we agree, that [b ]ecause Humphrey et al. teach[ es] Bluetooth, it implicitly teaches detecting a signal that exceeds a minimum threshold because the system as disclosed is presumed to be operative. If the Bluetooth signal did not exceed a minimum threshold, or in other words, the signal was too weak to be received; the system commtmication function would fail to operate. Therefore, this limitation is implicitly required by Humphrey. Ans. 5; see also Humphrey 3:60-65 (stating the "reader provides sufficient power through radio signals to 'wakeup' the RFID device") and 8:27-31 (stating "while the illustrated embodiments use RFID device using NFC protocols and standards, many other forms of wireless signaling could be used to encode the payment instrument (Bluetooth ... etc.)"). Accordingly, we are not persuaded by Appellants' arguments that the Examiner erred in finding the combination of Dua and Humphrey teaches or suggests "the first computing device is configured to determine ... whether 10 Appeal2014-003159 Application 12/916,3 88 to inductively transmit power to or receive power from the second computing device," as recited in dependent claim 26. Therefore, we sustain the Examiner's rejection of claim 26. Remaining Claims Appellants have not presented separate, substantive arguments with respect to remaining claims 2-5, 7-9, 11-14, 16-23, 25, and 27-32. See App. Br. 6-12. Accordingly, we sustain the Examiner's rejection of these claims. See 37 C.F.R. § 41.37(c)(l)(iv) (2012). DECISION We affirm the Examiner's rejection of claims 1-5, 7-14 and 16-32. 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 11 Copy with citationCopy as parenthetical citation