Ex Parte Kimura

Board of Patent Appeals and Interferences

May 8, 2007

09846907 (B.P.A.I. May. 8, 2007)

The opinion in support of the decision being entered today was not written

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
Ex A
Appeal No. 2007-0144
Application 09/846,907
Technology Center 2100

AHSHID D. SAADAT
and JEAN R. HOMERE, Administrative Patent Judges.
BARRY, Administrative Patent Judge.

t Examiner rejected claims 1 and 2. The Appellant appeals
erefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35
U.S.C. § 6(b).

for publication and is not binding precedent of the Board.
____________

AND INTERFERENCES
____________

parte SHINYA KIMUR
____________

____________
Decided: May 8, 2007
____________

Before LANCE LEONARD BARRY, M

I. STATEMENT OF THE CASE
A Paten
th
Appeal 2007-0144
Application 09/846,907

2
int device
r limiting unauthorized access of mobile stations to a radio-based, wireless
local a he
ered thereby is susceptible to association from
rminals of those with an evil intent. (Id. 8.) Accordingly, the Appellant's
nce of an
authenticatio rization
of an a

ch further illustrates the invention, follows.
vice having an interface function
with a network constructed of wired transmission channels and
establishing data link connection with a plurality of mobile
stations within the area of a radio LAN, the access point device
compr
A. INVENTION
The invention at issue on appeal invention is an access po
fo
rea network ("LAN"). In recent years, the explosive prevalence of t
Internet has increased the use of LANs in offices and homes. The need for
wireless LANs, in particular, has increased. (Specification 1.)

When a wireless LAN is constructed within a closed space, i.e., an
office or a home, the area cov
te
access point device notifies a network administrator of the prese
n-requesting mobile station so as to gain the final autho
uthentication. (Id.)
laim 1, whiC
1. An access point de
ising:

display means; and

input means,

wherein when performing an authentication procedure
before a particular mobile station initiates an association
Appeal 2007-0144
Application 09/846,907

3
he
trator
for final authorization of the authentication procedure when the
mobile station is in the area in
presence of the authentication requesting mobile station, and
B. REJECTIONS
aim nder 35 U.S.C. § 102(b) as anticipated
y U.S d"). We reject the same claims as
indefinite under 35 es the rejections in
the fol
initeness rejection
ipation rejection.

tly

54, 1361,
procedure, the display means displays information regarding t
mobile station requesting authentication to a LAN adminis
response to a notification of the
wherein an authentication-authorizing or rejecting instruction
for the mobile station displayed by the display means can be
entered via the input means by the network administrator.

Cl s 1 and 2 stand rejected u
b . Patent No. 5,539,824 ("Bjorklun
U.S.C. § 112, ¶2. Our opinion address
lowing order:
• indef
• antic
II. INDEFINITENESS REJECTION
Under 37 C.F.R. § 41.50(b) (2006), we enter a new rejection against
claims 1 and 2.
A. PRINCIPLES OF LAW
The second paragraph of 35 U.S.C. § 112 requires that a specification
conclude "with one or more claims particularly pointing out and distinc
claiming the subject matter which the applicant regards as his invention."
"The legal standard for definiteness is whether a claim reasonably apprises
those of skill in the art of its scope." In re Warmerdam, 33 F.3d 13
31 USPQ2d 1754, 1759 (Fed. Cir. 1994) (citing Amgen Inc. v. Chugai
Appeal 2007-0144
Application 09/846,907

4
the
ticularity." In re Moore, 439 F.2d
232, 1235, 169 USPQ 236, 238 (CCPA 1971). In particular, a claim is
indefinite "where the language ' ears in a dependent claim
, 3
"
in the
ill in the art would not understand whether these
xpressions refer to the same or different entities. Nor would they
unders ction"

ired
Pharmaceutical Co. Ltd., 927 F.2d 1200, 1217, 18 USPQ2d 1016, 1030
(Fed. Cir.1991)). The "inquiry therefore is merely to determine whether
claims do, in fact, set out and circumscribe a particular area with a
reasonable degree of precision and par
1
said lever' app
where no such 'lever' has been previously recited. . . ." Ex parte Moelands
USPQ2d 1474, 1476 (B.P.A.I. 1987).

B. ANALYSIS
Here, claim 1 recites in pertinent part "the network administrator.
No such "network administrator," however, was previously recited
claim. Furthermore, the relation between "the network administrator" and
the "LAN administrator," which was previously recited in the claim, is
uncertain. Those of sk
e
tand whether the "authentication-authorizing or rejecting instru
is input by the same entity to which the "information regarding the mobile
station" is displayed.

The claim's recitation of both "a network constructed of w
transmission," (pmbl.), and "a radio LAN," (id.), imply that the "network
administrator" and the "LAN administrator" are different entities that
Appeal 2007-0144
Application 09/846,907

5
trator" and the "LAN
dministrator" are the same entity that administer the same LAN. Under the

eated references to "the network administrator"
and the "LAN administrator" in contesting the Examiner's rejection, (Br. 17-
22; Reply Br. 4-5, 7, tand the scope of
nds
erefrom, as indefinite.
PA
ered in judging the patentability
f that claim against the prior art. If no reasonably definite meaning can be
ascribed to certain terms in the c ect matter does not become
administer the two different networks. In contrast, the specification's
mentions of "a network administrator administering the LAN,"
(Specification 8), may imply that the "network adminis
a
latter interpretation, however, it is unclear whether that LAN is the "Radio
LAN." It is also uncertain whether the "network administrator," the "LAN
administrator," or both administer the wired network.

The Appellant's rep
9-11), emphasize the need to unders
these terms. Therefore, we reject claim 1 and claim 2, which depe
th

III. ANTICIPATION REJECTION
We now turn to the Examiner's rejection of claims 1 and 2.

A. PRINCIPLES OF LAW
An art rejection should not be based on "speculations and
assumptions." In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CC
1962). "All words in a claim must be consid
o
laim, the subj
Appeal 2007-0144
Application 09/846,907

6
obviou
ction,
a the anticipation rejection of the
dependent claim and of claim 2, which depends therefrom. We emphasize
that our reversal is erits of the
rejecti be
of
ferenced in APPELLANT'S SUMMARY OF THE CLAIMED SUBJECT
MATTER as originally filed N APPEAL, that the
SUMA ATTER as presented in
its BRIEF ON APPEAL is appropriate under the Rules." (Reply Br. 2.)

s -- the claim becomes indefinite." In re Wilson, 424 F.2d 1382,
1385, 165 USPQ 494, 496 (CCPA 1970).

B. ANALYSIS
Here, for the reasons mentioned regarding the indefiniteness reje
speculations and assumptions would be required to decide the scope of
claim 1. Therefore, we reverse pro form
in
based on procedure rather than on the m
on. The reversal does not mean that we consider the claims to
patentable vel non as presently drafted.

IV. ADDITIONAL OBSERVATIONS
The Examiner objected to the Appellant's Brief on Appeal for
"fail[ing] to include much material being referenced from the specification."
(Answer 3.) "It is Appellant's belief[, however,] that particularly in view
the short nature of the present specification and the concentration of the
description of its operation at the sections of the specification specifically
re
as part of its BRIEF O
RY [sic] OF THE CLAIMED SUBJECT M
Appeal 2007-0144
Application 09/846,907

7
)(1)(vii) of this section, every means plus function
and step plus function as permitted by 35 U.S.C. 112, sixth
7 C.F.R. § 41.37(c)(1)(v)(2005).1 Such identification is "considered
important to enable the Board to determine where the claimed
subjec (8th ed.,
on

A. PRINCIPLE OF LAW
The following rule applies to appeal briefs.
For each independent claim involved in the appeal and for each
dependent claim argued separately under the provisions of
paragraph (c
paragraph, must be identified and the structure, material, or acts
described in the specification as corresponding to each claimed
function must be set forth with reference to the specification by
page and line number, and to the drawing, if any, by reference
characters.

3
more quickly
t matter is described in the application." M.P.E.P. § 1205.02
Rev. 2, Aug. 2005). 2

B. ANALYSIS
Here, claim 1 included means-plus-function elements. The
Appellant's SUMMARY OF CLAIMED SUBJECT MATTER, (Br. 5-7),
however, fails to identify these elements and to set forth the structure
described in the specification as corresponding to each claimed functi

1 We cite to the version of the Code of Federal Regulations in effect at the
time of the Appeal Brief.

2 We cite to the version of the Manual of Patent Examining Procedure in
effect at the time of the Appeal Brief.
Appeal 2007-0144
Application 09/846,907

8
n about

apping of each of the claimed limitations to specific reference characters
of the drawings and pages and lines of the specification and is needed for a
eani
V. CONCLUSION
2, & 2
ounds of
rejecti n pur udicial
review the
date o tions
to avoid termination of proceedings of the rejected claims:
o

with reference to the specification by page and line number, and to the
drawings by reference characters. We decline to substitute speculatio
where the structure corresponding to the claimed subject matter is described
in the application for the greater certainty that should come from the
Appellant. He should read independent claim 1 and any separately argued
dependent claims on the specification and drawings. In particular, a
m
m ngful review. Fortunately, the Appellant did so in "the APPENDIX to
this REPLY TO THE EXAMINER'S ANSWER. . . ." (Reply Br. 2.)

In summary, a rejection of claims 1 and 2 under 35 U.S.C. § 11
is added. The rejection of the same claims under § 102(b) is reversed pro
forma.

37 C.F.R. § 41.50(b)(2006) provides that "[a] new gr
o suant to this paragraph shall not be considered final for j
." Section 41.50(b) also provides that, within two months from
f the decision, the appellant must exercise one of the following op
(1) Submit an appropriate amendment of the claims s

Appeal 2007-0144
Application 09/846,907

9
d, or
reconsidered by the examiner, in
(2) Request that the proceeding be reheard under 37
C.F.R. § 41.52 by the Board upon the same record. . . .

No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).
rejected or new evidence relating to the claims so rejecte
both, and have the matter
which event the proceeding will be remanded to the examiner. .
. .

Appeal 2007-0144
Application 09/846,907

10
REVERSED
41.50(b)

Kis/gw

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