Ex Parte Lagnado et alDownload PDFPatent Trial and Appeal BoardJul 29, 201311345889 (P.T.A.B. Jul. 29, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ISAAC LAGNADO and TIMOTHY NEILL ____________ Appeal 2010-008951 Application 11/345,889 Technology Center 2600 ____________ Before MAHSHID D. SAADAT, MICHAEL J. STRAUSS, and LARRY J. HUME, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008951 Application 11/345,889 2 Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1-6, 9-13, and 16-19. 1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm, and enter new grounds of rejection in accordance with 37 C.F.R. § 41.50(b). STATEMENT OF THE CASE Introduction Appellants’ invention relates to wireless communication devices communicating with network nodes such as access points (see Spec. ¶ [0001]). Exemplary independent claims 1 and 9 read as follows: 1. A method, comprising: receiving a data communication from a first access point on a first receiver associated with a wireless device; and while receiving said data communication, using a second receiver associated with said wireless device to scan for another access point; wherein said first access point and said other access points are part of a common network. 9. A wireless device, comprising: a plurality of receivers; and logic coupled to said receivers, said logic causes at least one receiver to receive data communications from an access point on a network while at least one other receiver concurrently scans for another access point on the same network. 1 Claims 7, 8, 14, and 15 have been canceled, claims 22 and 23 have been indicated as allowable, and claims 20 and 21 have been objected to for being dependent upon a rejected base claim but otherwise allowable. Appeal 2010-008951 Application 11/345,889 3 The Examiner’s Rejections Claims 1, 9, and 16 stand rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. (See Ans. 8). Claims 1-6, 9-13, and 16-19 stand rejected under 35 U.S.C. 103(a) as being unpatentable over Crisler (US 5,179,559), McAlinden (US 5,946,633), Grilli (US 6,438,117 B1) and further in view of Smith (US 2004/0157645 A1) or Giannetti (US 6,288,678 B1) or Rune (US 2003/0060222 A1). (See Ans. 8-14). ISSUES Appellants’ contentions present us with the following issues: 1. Under the second paragraph of 35 U.S.C § 112, with respect to appealed claims 1, 9, and 16, would the claims reasonably apprise those of skill in the art of their scope? 2. Under 35 U.S.C § 103(a), with respect to appealed claims 1-6, 9-13, and 16-19, would one of ordinary skill in the art at the time of the invention have found it obvious to combine Crisler, McAlinden, and Grilli with one of Smith or Giannetti or Rune to render the claimed invention unpatentable? PRINCIPLES OF LAW Indefiniteness The general rule is that a claim must set out and circumscribe a particular area with a reasonable degree of precision and particularity when Appeal 2010-008951 Application 11/345,889 4 read in light of the disclosure as it would be by the artisan. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). Acceptability of the claim language depends on whether one of ordinary skill in the art would understand what is claimed in light of the specification. Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). See also Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1366 (Fed. Cir. 2004): The requirement to “distinctly” claim means that the claim must have a meaning discernible to one of ordinary skill in the art when construed according to correct principles . . . . Only when a claim remains insolubly ambiguous without a discernible meaning after all reasonable attempts at construction must a court declare it indefinite. (Citations omitted). Obviousness The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art. See In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006), In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991), and In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Supreme Court has explained “if 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). The Examiner can satisfy this burden by showing some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. KSR Int’l. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Appeal 2010-008951 Application 11/345,889 5 ANALYSIS Rejection under 35 U.S.C. § 112, second paragraph The Examiner’s underlying basis for support of this rejection is that the claim terms “common network” (recited in claim 1) and “same network” (recited in claims 9 and 16) are indefinite as it is not clear what constitutes a common/same network (Ans. 7-8). Appellants contend that the Specification, at page 3, paragraph 11, explains the term “common network” (or “same network”) by providing examples such as “a group of wireless access points that provide communication over a set of channels” or the access points within a business” (App. Br. 10). We disagree with Appellants’ reasoning and rebuttal that paragraph 11 of their Specification explains the disputed terms. The referred-to disclosure and Figure 2 merely disclose multiple access points. However, the Specification does not define what type of network constitutes a “common network” or “same network,” nor explains how the access points are related to each other in a “common network” or “same network” in contrast with other types of access points in other networks. As such, the skilled artisan, upon reading the claims in light of the Specification, would not be able to ascertain the scope of the claimed invention, specifically the term “part of a common network” or “on the same network” recited in claims 1, 9, and 16. Therefore, we sustain the rejection of claim 1, 9, and 16 under the second paragraph of 35 U.S.C. § 112. Rejection under 35 U.S.C. § 103(a) Appellants argue that the combination of the references fails to teach or suggest “the technique of using a second receiver to scan for another access point while a first receiver continues receiving data communication Appeal 2010-008951 Application 11/345,889 6 from a current access point” (App. Br. 10). Appellants assert that Crisler merely discloses “ a cell site (a cell tower to each [sic] a cellular phone communicates) that sends an interrupt signal to a cell phone which then causes the phone to begin scanning for another cell site” (id.). Similarly, Appellants acknowledge that McAlinden discloses simultaneously using multiple transceivers for higher bandwidth while Smith, Giannetti, or Rune provide for use of multiple transceivers (App. Br. 11). However, Appellants assert that the combination is improper as “the Examiner has not established any reason whatsoever to justify why the combination would have been obvious” (id.). Appellants’ arguments are not persuasive. We find no error in the Examiner’s determination that, while Crisler’s receiver may briefly interrupt the data communication to scan the adjacent cell sites, simultaneously using McAlinden’s multiple transceivers provides for one of the transceivers scan for another access point while another receiver is receiving data transmission from an access point (Ans. 4-5). In other words, we concur with the Examiner’s conclusion that an ordinarily skilled artisan would have recognized and appreciated the obviousness of using multiple transceivers in the communication system of Crisler such that, while one receiver is receiving a data communication from a first access point, another receiver, albeit interrupted, is used to scan for another access point (see Crisler, col. 1, ll. 44-54). We also note that scanning for another access point after the data communication is interrupted in the second receiver is not precluded by the claims. When combining Crisler’s and McAlinden’s teachings with Grilli, and one of Smith or Giannetti or Rune, the combination would predictably yield Appeal 2010-008951 Application 11/345,889 7 no more than what one would expect from such a combination, such as providing additional receivers for scanning while another receiver receives data communication. See KSR, at 417. Further, contrary to Appellants’ contention, no evidence has been found that an ordinarily skilled artisan would be unable to recognize the benefit of using McAlinden’s multiple transceivers or to implement its application. Indeed, in consonance with the record, the Supreme Court has indicated that: [It is error to] assum[e] that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem . . . . Common sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. Id. at 420 (citation omitted). We also find that the Examiner (see Ans. 4, 13, and 14) has provided an articulated line of reasoning with a rational underpinning to support the conclusion of obviousness for the proposed combination of Crisler and McAlinden. KSR, at 418. We agree with the Examiner that an ordinarily skilled artisan would have recognized and appreciated the obviousness of applying to the transceiver of Crisler, McAlinden’s teaching of simultaneously using multiple transceivers to facilitate scanning for another access point while one of the transceivers is receiving a data communication from a first access point, and thereby improve the efficiency of the wireless system. Lastly, with respect to Appellants’ contention (Reply Br. 1) that the prior art solutions may increase data transmission speeds rather than solve Appeal 2010-008951 Application 11/345,889 8 the interrupt problem, we observe that such secondary results are not recited in the claims. That is, the claims include no recitation related to whether interrupt is allowed or no increase in the speed of data transmission speed is desired. New Grounds of Rejection -- 37 C.F.R. § 41.50(b) I. We reject claims 20-23 under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 20 and 21 recite the indefinite term “common network” and depend from claim 1 which was indicated as being indefinite. Independent claims 22 and 23 also recite the indefinite term “same network.” As such, we conclude that the ordinary artisan would not be reasonably apprised as to the scope of claims 20-23, and reject these claims under § 112, second paragraph. II. We reject claims 1-6, 9-13, and 16-23 under 35 U.S.C. § 112, first paragraph, as the present disclosure fails to provide adequate written description support for the recitations related to “common network” and “same network.” To comply with the “written description” requirement of 35 U.S.C. § 112, first paragraph, an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. In other words, the function of the written description requirement of the first paragraph of 35 U.S.C. § 112 is to ensure that the inventor has possession, as of the filing date of the application relied on, of the specific subject matter later claimed by him. In re Wertheim, 541 Appeal 2010-008951 Application 11/345,889 9 F.2d 257, 262 (CCPA 1976), Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). In all cases, the purpose ‘of the description requirement is to ensure that the inventor had possession, as of the filing date of the application relied on, of the specific subject matter later claimed by him.’”) (Quoting In re Edwards, 568 F.2d 1349, 1351-52 (CCPA 1978)). One shows “possession” by descriptive means such as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. . Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). It is not sufficient for purposes of the written description requirement that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose. Id. Independent claims 1, 9, 16, 22, and 23 recite that the first access point and another access point are “part of a common network” or “on the same network.” However, the written description (and the drawings) does not indicate what is encompassed by a common or the same network or how the access points are affected by such limitation. DECISION The rejection of claims 1-6, 9-13, and 16-19 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Crisler, McAlinden, and Grilli with one of Smith or Giannetti or Rune is affirmed. The rejection of claims 1, 9, and 16 under 35 U.S.C. § 112, second paragraph as being indefinite is affirmed. Appeal 2010-008951 Application 11/345,889 10 In new grounds of rejection, we have rejected claims 20-23 under 35 U.S.C. § 112, second paragraph, and claims 1-6, 9-13, and 16-23 under 35 U.S.C. § 112, first paragraph. With respect to the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides that “Appellant may file a single request for rehearing within two months from the date of the original decision of the Board.” In addition to affirming the Examiner’s rejection(s) of one or more claims, this decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . Should Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the Appeal 2010-008951 Application 11/345,889 11 prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellants elect prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Board of Patent Appeals and Interferences for final action on the affirmed rejection, including any timely request for rehearing thereof. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED -- 37 C.F.R. § 41.50(b) ke Copy with citationCopy as parenthetical citation