Ex Parte Naito et al

Patent Trial and Appeal Board

Sep 1, 2017

12907351 (P.T.A.B. Sep. 1, 2017)

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.
12/907,351 10/19/2010 Masahiko Naito 1946-0094 1867
142241 7590 09/01/2017
Paratus Law Group, PLLC
1765 Greensboro Station Place
Suite 320
Tysons Corner, VA 22102
EXAMINER
ESMAEILIAN, MAJID
ART UNIT PAPER NUMBER
2477
MAIL DATE DELIVERY MODE
09/01/2017 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 MASAHIKO NAITO, KATSUTOSHI ITOH,
HIDEYUKI SUZUKI, ERIKA SAITO,
TOMOYA YAMAURA, and NATSUKI ITAYA
____________________

Appeal 2017-005207
Application 12/907,3511
Technology Center 2400
____________________

Before JAMES R. HUGHES, ERIC S. FRAHM, and
MATTHEW J. McNEILL, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–20, which are all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 According to Appellants, the real party in interest is Sony Corporation.
App. Br. 3.
Appeal 2017-005207
Application 12/907,351
2
STATEMENT OF THE CASE
Introduction
Appellants’ application relates to a radio communication system
where radio communication devices autonomously select a connection path
and connection mode depending on a connection state between devices.
Spec. 2:24–28. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A radio communication device comprising:

a determination unit which determines connection
processing, for connecting another radio communication device,
activated in accordance with a first input operation by a user of
the radio communication device;

a reception unit which receives information indicating a
connection state or a communication capability of such other
radio communication device to which the radio communication
device attempts to connect; and

a selection unit which selects, depending on the
information received by the reception unit, which
communication is to be performed from among

first connection mode in which a direct connection
to such other radio communication device is established
and direct communication with such other radio
communication device is performed, without utilizing a
connection to a base station, wherein the determination
unit determines, when such other radio communication
device and the base station are already connected to each
other, whether to perform the first connection mode by
disconnecting the connection between such other radio
communication device and the base station in accordance
with a second input operation by the user of the radio
communication device,

Appeal 2017-005207
Application 12/907,351
3
second connection mode in which a connection to
such other radio communication device via the base
station that relays radio communication is established and
direct communication with such other radio
communication device is performed, and

third connection mode in which a connection to
such other radio communication device via the base
station is established and indirect communication with
such other radio communication device via the base
station is performed.

The Examiner’s Rejections
Claims 1–7, 9, 12, 13, and 18–20 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Montemurro (US 2011/0082939 A1; Apr.
7, 2011) and Chen (US 2009/0181613 A1; Jul. 16, 2009).
Claims 8, 10, 11, and 14–17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Montemurro, Chen, and IEEE Standard for
Information Technology (Mar. 8, 2007).

ANALYSIS
The Examiner finds Chen discloses “wherein the determination unit
determines, when such other radio communication device and the base
station are already connected to each other, whether to perform the first
connection mode by disconnecting the connection between such other radio
communication device and the base station in accordance with a second
input operation by the user of the radio communication device,” as recited in
claim 1. Final Act. 9. Appellants contend:
Chen is merely related to disconnection of communication
between first and second wireless electronic apparatuses . . . .
There is no teaching or suggestion in Chen that would have led
Appeal 2017-005207
Application 12/907,351
4
one of ordinary skill in the art at the time of the invention to
modify Montemurro such that an input operation by a user of a
radio communication device determines whether to disconnect
another radio communication device from a previously
established connection to a base station.

App. Br. 19. We are persuaded by Appellants’ argument.
Chen discloses that a user A of a first wireless electronic apparatus 1
sends a connection ending request to a second wireless electronic apparatus
2, which in turn sends a disconnection signal back to apparatus 1. Chen, ¶
36. The disputed claim 1 limitation, however, requires a user of a radio
communication device to perform an input operation that causes another
radio communication device to disconnect from a base station. In other
words, the claimed disconnection requires three devices, where two devices
disconnect based on an input operation of a third device. Chen only
discloses a disconnection between two devices requested by one of the two
devices. Accordingly, we agree with Appellants that the Examiner has
failed to show Chen discloses “disconnecting the connection between such
other radio communication device and the base station in accordance with a
second input operation by the user of the radio communication device,” as
recited in claim 1.
Therefore, on this record, we do not sustain the Examiner’s rejection
of independent claim 1, independent claims 18–20 which recite
commensurate limitations, and dependent claims 2–17.
DECISION
We reverse the Examiner’s decision rejecting claims 1–20.

REVERSED