Ex Parte Kirke

Patent Trial and Appeal Board

Nov 1, 2013

11422657 (P.T.A.B. Nov. 1, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TONY KIRKE
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Appeal 2011-004462
Application 11/422,657
Technology Center 2600
____________

Before JOSEPH F. RUGGIERO, JOHNNY A. KUMAR,
and MICHAEL J. STRAUSS, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/422,657

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-34. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (“App. Br.”) filed August 4, 2010, the Answer
(“Ans.”) mailed October 13, 2010, and Reply Brief (“Reply Br.”) filed
November 22, 2010, for the respective details. We have considered in this
decision only those arguments Appellant actually raised in the Briefs. Any
other arguments which Appellant could have made but chose not to make in
the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellants’ Invention
Appellant’s invention involves a handheld communication device that
detects a first network at a first location, and establishes a communication
link with the detected first network. See Fig. 5. The handheld
communication device utilizes the first network in exchange for allowing the
first network to send messages associated with the location of the first
network to the handheld communication device. The first network may be
located in a store in a mall or a department in a store. The messages sent to
the first handheld communication device may be advertisements or coupons
associated with the location where the first network may be present. When
the handheld communication device is moved from one location to another,
the handheld communication device detects a second network at the other
location, and establishes a connection with the second network in exchange
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for allowing messages associated with the location of the second network,
which may be another store in the mall or another department within the
store. See generally Spec. ¶¶ [0015], [0030].

Claim 1 is illustrative of the invention and reads as follows:
1. A method for communicating information in a
communication system, the method comprising:
detecting by a first wireless handheld communication
device (WHCD), a first wireless network at a first location
comprising a first wireless access device;
establishing by said first WHCD, a communication link
with the first wireless network via the first wireless access
device; and
receiving by said first WHCD, when the first WHCD is
within operating range of the first wireless network at the first
location, wirelessly targeted services offered by the first
wireless network at the first location, in exchange for the first
WHCD being granted free access rights to utilize the first
network to access another network communicatively coupled to
the first wireless network at the first location.

The Examiner’s Rejections
The Examiner rejected claims 1-8 and 13-20 under 35 U.S.C. § 102(e)
as being anticipated by Stewart (US 2006/0183467 A1, Aug. 17, 2006).
Ans. 4.
The Examiner rejected claims 9, 10, 21, and 22 under 35 U.S.C.
§ 103(a) as being unpatentable over Stewart in view of Crolley (US
2006/0242010 A1, Oct. 26, 2006). Ans. 6.
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The Examiner rejected claims 11, 12, 23, and 24 under 35 U.S.C.
§ 103(a) as being unpatentable over Stewart in view of Barnes (US
2003/0220835 A1, Nov. 27, 2003). Ans. 7.
The Examiner rejected claims 27, 31, 33, and 34 under 35 U.S.C.
§ 103(a) as being unpatentable over Stewart in view of Rissanen (US
7,308,254 B1, Dec. 11, 2007). Ans. 8.
The Examiner rejected claims 25, 26, 28, 29, 30, and 32 under
35 U.S.C. § 103(a) as being unpatentable over Stewart in view of Rissanen,
and further in view of Ma (US 2007/0249286 A1, Oct. 25, 2007). Ans. 10.

ANALYSIS
We adopt as our own the findings and reasons set forth in the
Examiner’s Answer (see Ans. 4-18). We highlight and address specific
findings and arguments for emphasis as follows.
Appellant first contends that the Examiner erred in rejecting
independent claims 1 and 13 because Stewart does not disclose that “the first
WHCD alone, is the device which carries out the ‘detecting’ operation,” or
that “only the first WHCD carries out the detection operation in the first
wireless network.” App. Br. 11-12 (emphasis in original omitted, emphasis
ours). Appellant also contends that the Examiner erred in rejecting claims 1
and 13 because Stewart does not disclose “Appellant’s invention that the
WHCD 502 is the only one device which first ‘detects’ the presence of the
interenet/WLAN 504, then ‘establishes’ a communication link with the
internet/WLAN 504.” App. Br. 16 (emphasis in original omitted, emphasis
ours). Appellant’s arguments are not commensurate with the scope of the
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claims. Neither of claims 1 or 13 recites “alone,” “only,” “first detects,” or
“then establishes.”
Regarding dependent claim 7, Appellant contends that “Stewart
simply does not disclose or suggest storing the MU ID at that instant in
order to grant the alleged ‘access rights’.” App. Br. 18 (emphasis ours).
Appellant’s arguments are not commensurate with the scope of the claim.
Claim 7 does not recite “at that instant.”
Regarding remaining dependent claims, while Appellant raised
additional arguments for patentability of the cited dependent claims (App.
Br. 19-28), we find that the Examiner has rebutted in the Answer each and
every one of those arguments supported by sufficient evidence. Ans. 14-17.
As to Appellant’s contentions that the references are not combinable, we
find that the Examiner’s suggestion for the proposed modification in the
prior art suffices as an articulated reason with some rational underpinning to
establish the prima facie case of obviousness. Ans. 7-11. Therefore, we
adopt the Examiner’s findings and underlying reasoning, which are
incorporated herein by reference.
Consequently, we find no error in the Examiner’s rejection of the
claims.

CONCLUSION
The Examiner did not err in rejecting claims 1-8 and 13-20 under
35 U.S.C. § 102(e) as being anticipated by Stewart.
The Examiner did not err in rejecting claims 9, 10, 21, and 22 under
35 U.S.C. § 103(a) as being unpatentable over Stewart in view of Crolley.
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The Examiner did not err in rejecting claims 11, 12, 23, and 24 under
35 U.S.C. § 103(a) as being unpatentable over Stewart in view of Barnes.
The Examiner did not err in rejecting claims 27, 31, 33, and 34 under
35 U.S.C. § 103(a) as being unpatentable over Stewart in view of Rissanen.
The Examiner did not err in rejecting claims 25, 26, 28, 29, 30, and 32
under 35 U.S.C. § 103(a) as being unpatentable over Stewart in view of
Rissanen, and further in view of Ma.

DECISION
We affirm the Examiner’s decision rejecting claims 1-34.
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).

AFFIRMED

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