Ex Parte Karaoguz et al

Patent Trial and Appeal Board

Jan 24, 2013

11099457 (P.T.A.B. Jan. 24, 2013)

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.
11/099,457 04/06/2005 Jeyhan Karaoguz 14528.00130 1751
16378 7590 01/25/2013
Broadcom/BHGL
P.O. Box 10395
Chicago, IL 60610
EXAMINER
IQBAL, KHAWAR
ART UNIT PAPER NUMBER
2646
MAIL DATE DELIVERY MODE
01/25/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEYHAN KARAOGUZ and NAMBI SESHADRI
____________

Appeal 2010-009413
Application 11/099,457
Technology Center 2600
____________

Before JOSEPH L. DIXON, THU A. DANG, and
JAMES R. HUGHES, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009413
Application 11/099,457

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-63. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to accessing a wireless hotspot. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A process of billing for access to and use of a
wireless hotspot by a portable device, said process comprising:

supplying account information to an access providing
entity;

awaiting a billing authorization from the access providing
entity; and

communicating data with the wireless hotspot by the
portable device when the billing authorization is received from
the access providing entity,

wherein the account information is used to keep track of
charges accrued through the access to and use of the wireless
hotspot by the portable device, and

wherein access to the wireless hotspot is maintained until
one or both of a specific period of inactivity is detected and a
disconnect request is made by either the wireless hotspot or the
portable device.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hollenbeck

US 2005/0102354 A1

May 12, 2005
(cont. of 09/556,830,
filed Apr. 21, 2000)
Appeal 2010-009413
Application 11/099,457

3
Uhlik US 2007/0112948 A1 May 17, 2007
(cont. of 10/334,994,
which claims priority
from prov. app.
60/344,899, filed Dec.
31, 2001)

REJECTIONS1
Claims 1-63 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
Claims 1-63 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Uhlik and Hollenbeck.

ANALYSIS
Claims 1-3, 7-12, 16-24, 28-33, 37-45, 49-54, and 58-63
Appellants contend that the combination of Uhlik and Hollenbeck
fails to disclose “wherein access to the wireless hotspot is maintained until

1 In the Office Action mailed October 15, 2008, the Examiner rejected
claims 1-63 for lack of enablement under 35 U.S.C. § 112, first paragraph.
Although the Examiner did not reiterate this rejection in the subsequent
Final Office Action mailed May 27, 2009, the Examiner stated the
following, “In response to applicants’] arguments against, 35 U.S.C. §]112,
first paragraph, applicants’] argument [is] that examiner misinterpreted
claim. . . . Examiner respectfully disagrees with this argument . . . .” (Final
Rej. 13). We find that the Examiner’s response to Appellants’ arguments
provided sufficient notice to Appellants that the rejection was maintained
and had not been expressly withdrawn. See MPEP § 706.07, page 700-81,
Rev. 9 (August 2012) (“[W]here a single previous Office action contains a
complete statement of a ground of rejection, the final rejection may refer to
such a statement and also should include a rebuttal of any arguments raised
in the applicant’s reply.”). Appellants’ Appeal Brief does not address the
rejection under § 112, first paragraph, and it is therefore summarily
affirmed..
Appeal 2010-009413
Application 11/099,457

4
one or both of a specific period of inactivity is detected and a disconnect
request is made by either the wireless hotspot or the portable device,” as
recited in claim 1 (App. Br. 13-17). Specifically, Appellants argue that
“Hollenbeck does not contain the term ‘wireless,’ the term ‘hotspot,’ or any
terms synonymous with ‘a wireless hotspot’” (App. Br. 15-16).
However, the Examiner relies on the collective teachings of Uhlik and
Hollenbeck for disclosing the disputed limitations. Uhlik discloses a
connection between a User Terminal (UT), i.e., “a portable device,” and an
access point, i.e., “a wireless hotspot” (Ans. 3-4, 13 citing Uhlik, ¶¶ 0018]-
0022] and Figure 1). Hollenbeck teaches the general idea of disconnecting
a session between client and server devices upon timeout, or by request of
the client device (Hollenbeck, ¶ 0107]).
“I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007) (citations omitted). Appellants have not specifically
explained why it would have been beyond the ordinary skill in the art to
apply Hollenbeck’s technique to Uhlik’s connection between a UT and
access point. Accordingly, regardless of whether Hollenbeck discloses “a
wireless hotspot,” as Appellants argue (App. Br. 15-16), we are not
persuaded that the Examiner erred in finding that the combination of Uhlik
and Hollenbeck discloses “wherein access to the wireless hotspot is
maintained until one or both of a specific period of inactivity is detected and
a disconnect request is made by either the wireless hotspot or the portable
device” (claim 1).
Appeal 2010-009413
Application 11/099,457

5
We are therefore not persuaded that the Examiner erred in rejecting
claim 1, and claims 2, 3, 7-12, 16-24, 28-33, 37-45, 49-54, and 58-63 not
separately argued.
Claims 4, 13, 25, 34, 46, and 55
Appellants contend that Uhlik does not disclose supplying account
information that is either “a wireless telephone number,” or “a wireless
telephone account number,” as recited in claim 4 (App. Br. 17-18).
We find that the limitations “a wireless telephone number” and “a
wireless telephone account number” are merely non-functional descriptive
material. That is, the nature of the actual data used as account information
does not functionally distinguish the claimed invention. Thus, we do not
give these limitations patentable weight.
Moreover, even if we did give weight to these limitations, they do not
distinguish claim 4 over the cited art. Uhlik requires that some account
number be provided by the UT, otherwise there would be no way to
accomplish Uhlik’s goal of tracking the UT’s usage of the access point for
billing purposes (see Uhlik, ¶ 0023]). Where Uhlik’s UT can be a cellular
telephone (Uhlik, ¶ 0020]), one of ordinary skill in the art would have
recognized that the account number provided for access and billing would be
the account number for the cellular telephone service, i.e., “a wireless
telephone account number.”
We are therefore not persuaded that the Examiner erred in rejecting
claim 4, and claims 13, 25, 34, 46, and 55 not separately argued.
Appeal 2010-009413
Application 11/099,457

6
Claims 5, 14, 26, 35, 47, and 56
Appellants contend that Uhlik does not disclose supplying account
information that is either “a landline telephone number,” or “a landline
telephone account number,” as recited in claim 5 (App. Br. 18-19).
We find that the limitations “a landline telephone number” and “a
landline telephone account number” are merely non-functional descriptive
material. That is, the nature of the actual data used as account information
does not functionally distinguish the claimed invention. Thus we do not
give these limitations patentable weight.
Moreover, even if we did give weight to these limitations, they do not
distinguish claim 5 over the cited art. Uhlik’s UT subscriber can have
access to Voice over Internet Protocol (VoIP), a service that enables
telephone calls over the Internet (Uhlik, ¶ 0018]), where the Internet link
can be cable modem, xDSL line, or dial-up (Uhlik, ¶ 0021]), i.e., a landline
link. Further, Uhlik discloses that “[t]he authenticator also collects billing
information (for example, VoIP telephone call detail records) from the ISP’s
i.e., Internet Service Providers] for each user terminal session” (Uhlik,
¶ 0042]). One of ordinary skill in the art would have recognized that the
account number for the VoIP service, i.e., “a landline telephone account
number” would have to be provided for recording VoIP call details for the
account associated with the UT.
We are therefore not persuaded that the Examiner erred in rejecting
claim 5, and claims 14, 26, 35, 47, and 56 not separately argued.
Claims 6, 15, 27, 36, 48, and 57
The Examiner finds that Uhlik discloses a bank that can provide data
to an access point of an ISP in response to receiving account information
Appeal 2010-009413
Application 11/099,457

7
from a subscriber (Ans. 16). Specifically, Uhlik discloses that when
attempting to access the Internet through the access point, the subscriber
sends a certificate, for example, a certificate representing 1000 units, to an
online bank along with a request to use a certain number of units, for
example, 2 units. The online bank subtracts the requested number of units
from the certificate, and issues two new certificates: a certificate of 998 units
to the subscriber representing the subscriber’s new balance, and a certificate
of 2 units to the access point representing the amount of Internet usage to
which the subscriber is entitled. (Uhlik, ¶¶ 0051]-0053]).
Appellants do not specifically explain why the operations of Uhlik’s
online bank as detailed above fail to disclose the disputed limitations,
namely, “supplying the account information to a third party service provider,
wherein the third part service provider receives the account information and
transfers data specific to one of a landline telephone service provider, a
wireless telephone service provider and an internet service provider . . . .”
(Reply Br. 6) (emphasis omitted). We are therefore not persuaded that the
Examiner erred in rejecting claim 6, and claims 15, 27, 36, 48, and 57 not
separately argued.

CONCLUSION OF LAW
The Examiner did not err in rejecting claims 1-63 under 35 U.S.C.
§ 112, first paragraph, and the Examiner did not err in rejecting claims 1-63
under 35 U.S.C. § 103(a).

Appeal 2010-009413
Application 11/099,457

8
DECISION
For the above reasons, we affirm the rejection of claims 1-63.
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

llw