Ex Parte Poussiere et al

Patent Trial and Appeal Board

Dec 14, 2015

12699531 (P.T.A.B. Dec. 14, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/699,531 02/03/2010
48116 7590 12/14/2015
FAY SHARPE/LUCENT
1228 Euclid Avenue, 5th Floor
The Halle Building
FIRST NAMED INVENTOR
Fabrice Poussiere
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
LUTZ 201109US01 ALU 6072
No. 8
EXAMINER
HUANG, WEN WU
Cleveland, OH 44115-1843 ART UNIT PAPER NUMBER
2648
MAILDATE DELIVERY MODE
12/14/2015 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 F ABRICE POUSSIERE, RONAN DANIELLOU, and
MATHIEU BEAUVAIS
Appeal2014-001949
Application 12/699,531
Technology Center 2600
Before JASON V. MORGAN, BETH Z. SHAW, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-11. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
INVENTION
The invention is for a method for configuring a radio communication
channel. See Abstract.
Appeal2014-001949
Application 12/699,531
Claims 1, 8, and 9 are illustrative and reproduced below:
1. A method for configuring a radio communication channel
between a first device and a second device wherein said first and
second devices each include a physical data port and radio
communication means, said method comprising:
providing a direct physical connection between the physical
data ports of said first and second devices in order to establish
communication between the physical data ports of said first and
second devices;
exchanging configuration data through the physical connection;
and
configuring a radio communication channel between the radio
communication means of the first and second devices in accordance
with the exchanged configuration data.
8. A computer program for configuring a radio
communication channel between first and second devices wherein
said devices each include a physical data port and radio
communication means, said computer program comprising
instructions for implementing the following steps:
- exchanging configuration data through a direct physical
connection formed by the contact of the physical data ports of
said devices;
- configuring a radio communication channel.
9. A radio communication device comprising:
- configuration means for configuring a radio communication
channel and,
- radio communication means for achieving radio
communication,
wherein said configuration means comprise a physical data port
arranged to be directly contacted to a physical data port of another
radio communication device.
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Appeal2014-001949
Application 12/699,531
REJECTION
The Examiner rejected claim 8 under 35 U.S.C. § 101 as directed to
non-statutory subject matter. Final Act. 2.
The Examiner rejected claims 1, 3---6, and 8-11 under 35 U.S.C.
§ 102(e) as being anticipated by Ma (US 7,636,549 B2; Dec. 22, 2009).
Final Act. 2-5.
The Examiner rejected claims 2 and 7 under 35 U.S.C. § 103(a) as
being unpatentable over Ma and Sheynman (US 2009/0111378 Al; Apr. 30,
2009). Final Act. 6-7.
ISSUES
Appellants' arguments present us with the following dispositive
ISsues:
Did the Examiner err in finding Ma discloses "providing a direct
physical connection between physical data ports of first and second devices
in order to establish communication between the physical data ports of said
first and second devices," as recited in claim 1?
Did the Examiner err in finding Ma discloses "a direct physical
connection formed by the contact of the physical data ports of said devices,"
as recited in claim 8?
Did the Examiner err in finding Ma discloses "a physical data port
arranged to be directly contacted to a physical data port of another radio
communication device," as recited in claim 9?
Did the Examiner err in finding claim 8 to be directed to non-statutory
subject matter?
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Appeal2014-001949
Application 12/699,531
ANALYSIS
We have reviewed Appellants' arguments in the Brief, the Examiner's
rejection, and the Examiner's response to Appellants' arguments.
Section 101 Rejection
Appellants argue that claim 8 is not directed to merely a set of
instructions. Br. 8. The Examiner finds that a computer program by itself
without tangible components is non-statutory. Ans. 3. We agree.
Appellants argue the claimed instructions implement "specific steps,
namely, exchanging configuration data through a direct physical connection
formed by the contact of physical data ports of two devices; and configuring
a radio communication channel." Br. 8. However, components such as a
direct physical connection and physical data ports are not themselves part of
the claimed computer program. Rather, the claimed computer program
merely comprises instrttctions that can be executed to interact \~1ith such
components. However, software instructions by themselves are just data,
and "[ d]ata in its ethereal, non-physical form is simply information that does
not fall under any of the categories of eligible subject matter under section
101." Digitech Image Techs., 758 F.3d 1344, 1350 (Fed. Circ. 2015). Thus,
the claimed computer program, being mere software instructions, is directed
to non-statutory subject matter. Therefore, we sustain the rejection of claim
8 as directed to non-statutory subject matter under 35 U.S.C. § 101.
Claim 1
With respect to claim 1, Appellants argue the term "physical
connection" is defined in the Specification as "the close proximity or contact
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Appeal2014-001949
Application 12/699,531
of two physical ports." Br. 5 (citing Spec. 4:22-23). Appellants argue Ma
does not disclose the direct physical connection between the physical data
ports of two devices. Id.
The Examiner finds that the Specification also discloses using a plug
as the physical connection. Ans. 2 (citing Spec., claim 11, 5:25). We agree
with the Examiner. We also agree with the Examiner's finding that Ma
discloses the disputed limitations of claim 1. See Ans. 2-3 (citing Ma, Fig.
3). In particular, we find that Appellants provide insufficient evidence
showing that the Specification or claims limit "direct physical connection"
in a way that, under a broad but reasonable interpretation, is not
encompassed by Ma's teachings of plugging cable 140 into the devices to
connect the devices. See Spec. 5:25-26 ("In another embodiment, said
physical port can be a plug and the connection is achieved by plugging the
devices together."). Accordingly, absent persuasive rebuttal, we sustain the
Examiner's rejection of claim 1. For the same reasons stated above for
claim 1, we sustain the rejection of the pending claims 2-7, which were not
argued separately with particularity. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
Claim 8
Appellants argue that claim 8 recites the direct physical connection is
formed by contact of the ports, which requires the two ports touching one
another. Br. 6. We agree with Appellants that "contact of the physical data
ports of said devices," as recited in claim 8 and in the broadest reasonable
interpretation in light of the Specification, requires the two ports to touch
one another. The Examiner does not address the different scope of claim 8
directly in the Answer.
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Appeal2014-001949
Application 12/699,531
We are persuaded by Appellants' argument that the Examiner has not
shown how Ma discloses two ports touching one another, i.e., "the direct
physical connection is formed by contact of the ports," as required by claim
8. Rather, the Examiner has only shown that Ma's cable 140 connects
controller 110 to the wireless device 111. See Ans. 5 (citing Ma, Figs. 2 and
4A). Accordingly, we do not sustain the Examiner's rejection of claim 8
under 35 U.S.C. § 102(e) as being anticipated by Ma.
Claim 9
Appellants argue that Ma fails to disclose "a physical data port
arranged to be directly contacted to a physical data port of another radio
communication device," as recited in claim 9. Br. 7. Appellants argue that
"contact" means that the contacting items physically touch one another and
that "directly" means immediately or without intervening space. Id.
\Ve agree \vi th i\ .. ppellants that, in light of the Specification, the
language "directly contacted to a physical data port of another radio
communication device" requires that the items physically touch one another.
The Examiner does not address the different scope of claim 9 directly in the
Answer. We agree that the Examiner has not shown how this disputed
limitation of claim 9 is disclosed by Ma's disclosure of cable 140 connecting
devices 111 and 110.
Accordingly, we do not sustain the Examiner's rejection of claim 9
under 35 U.S.C. § 102(e) as being anticipated by Ma. Because we reverse
the Examiner's anticipation rejection of independent claim 9, upon which
the Examiner relies for the rejection of dependent claims 10 and 11, we also
reverse the rejection of associated dependents claim 10 and 11.
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Appeal2014-001949
Application 12/699,531
DECISION
We affirm the rejection of claims 1-7.
We affirm the rejection of claim 8 under 35 U.S.C. § 101.
We reverse the rejection of claims 8-11under35 U.S.C. § 102(e).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l)(iv)(2012).
AFFIRMED-IN-PART
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