Ex Parte Bozzone et al

Board of Patent Appeals and Interferences

Mar 26, 2012

10776658 (B.P.A.I. Mar. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEPHEN O. BOZZONE, BONNIE J. BACHMAN,
and RYAN M. NILSEN
____________________

Appeal 2009-013641
Application 10/776,658
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, ERIC S. FRAHM, and KALYAN K.
DESHPANDE, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Disclosed Invention
Appellants disclose and claim a modular communication system 10
that includes a modular wireless communication module 12 (see also 50 in
Fig. 2), a host 30, and interfaces 24 and 46 to connect the host and the
wireless communication module (Fig. 1; Abs.; claims 1, 7, and 14). The
modular wireless communication module 50 is capable of being connected
to, and for controlling, several different types of host devices (see Figs. 3-13;
Abs.; ¶¶ [0028]-[0031]). Appellants also disclose and claim a detachable
host device for mating with the modular wireless communication module
(30 in Fig. 1; ¶¶ [0028] and [0029]; claim 19), and a method of reusing a
modular wireless communication module among a plurality of different host
devices (Fig. 17; ¶ [0039]; claim 20). Claims 1, 7, 14, 19, and 20 are
independent.
Exemplary Claims
Exemplary independent claims 1 and 7 under appeal read as follows:
1. A modular wireless communication module, comprising:
a transceiver coupled to a processor and memory; and
an interface block coupled to the processor, wherein the
processor is programmed to operate in accordance with an
identifier signal received from at least one among a plurality of
detachable host devices each having different user interfaces,
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and the processor adapts to control a user interface of a
detachable host device based on the identifier signal identifying
the user interface.
7. A modular communication system, comprising:
a modular wireless communication module having a
transceiver coupled to a processor and memory, and a first
interface block coupled to the processor;
a detachable host device having a power source, a user
interface, and a second interface block, wherein the host device
is one among a plurality of host devices having different user
interfaces and the processor identifies a user interface of the
detachable host device and adapts to control the different user
interfaces when the first interface block recognizes the second
interface block of a given host device.
Rejections
(1) The Examiner rejected claims 1, 4-6, 14-17, and 20 as being
unpatentable under 35 U.S.C. § 103(a) over Erkkila (US 6,219,560 B1) and
Sterkel (US 6,907,264 B1). Ans. 3-8.
(2) The Examiner rejected claims 7-12 and 19 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Erkkila, Sterkel, and
Barber (US 6,029,072). Ans. 8-12.
(3) The Examiner rejected claims 2, 3, and 13 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Erkkila, Sterkel, and
further in view of Official Notice as to it being known to attach a plurality of
devices to a wireless transceiver (hereinafter, “Official Notice”). Ans. 12-
14.
(4) The Examiner rejected claim 18 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Erkkila, Sterkel, Barber, and
further in view of Official Notice. Ans. 14-15.
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Appellants’ Contentions
Appellants contend (Br. 6-9) that the Examiner erred in rejecting
claims 1-20 under 35 U.S.C. § 103(a) for numerous reasons including:1
(1) Erkkila’s transceiver is in the host, and not in the wireless
communication module as recited in Appellants’ claims (Br. 7);
(2) Erkkila fails to teach a transceiver that is on an expansion card (Br.
7);

1 Appellants provide specific arguments as to claims 2-4 and 7 (see Br. 6-9),
and present only general arguments in the brief as to various limitations of
the claims on appeal without directing the arguments to any specific claim.
Because (i) Appellants’ arguments (Br. 6-9) are primarily directed to a
modular wireless communication module having a processor programmed
with an identifier signal and plural detachable host devices (all elements
found in claim 1), and (ii) Appellants present no separate arguments as to
claims 1, 5, 6, and 8-20, we select claim 1 as representative of the group of
claims consisting of claims 1, 5, 6, 14-17, and 20 rejected under
35 U.S.C. § 103(a) over Erkkila and Sterkel, pursuant to our authority under
37 C.F.R. § 41.37(c)(1)(vii). See In re McDaniel, 293 F.3d 1379, 1383 (Fed.
Cir. 2002) (“If the brief fails to meet either requirement [of 37 CFR
§ 1.192(c)(7)], the Board is free to select a single claim from each group of
claims subject to a common ground of rejection as representative of all
claims in that group and to decide the appeal of that rejection based solely
on the selected representative claim.”).
We select claim 7 as representative of the group of claims consisting
of claims 7-12 and 19 rejected under 35 U.S.C. § 103(a) over Erkkila,
Sterkel, and Barber, pursuant to our authority under 37 C.F.R.
§ 41.37(c)(1)(vii).
Claim 18 stands separately rejected under 35 U.S.C. § 103(a) over the
combination of Erkkila, Sterkel, Barber, and further in view of Official
Notice. Appellants do not provide any arguments as to this rejection.
Accordingly we decide the appeal of this rejection on the same basis as
claim 14 from which claim 18 depends.
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(3) Erkkila fails to teach or contemplate a module including a
transceiver and a processor to identify a user interface of a detachable host,
and that controls the host device and the associated user interface (Br. 8);
(4) neither Erkkila nor Sterkel teaches (i) a processor to control a user
interface based on an identification signal provided by the detachable host
(Br. 8), or (ii) adapting a control based on identifying a user interface (Br.
9);
(5) in Erkkila, a single processor is not shared amongst plural host
devices (Br. 9);
(6) Erkkila and Sterkel do not teach a wireless communication module
that conforms to user preferences, as recited in claim 2 (Br. 8);
(7) Erkkila teaches a display which is part of the mobile host device,
and not a wireless communication module having a display to present input
from the user interface or a display on a camera expansion card, as recited in
claims 3 and 4 (Br. 8);
(8) it would not have been obvious to put Barber’s power source in
the detachable host device, as recited in claim 7 (Br. 8); and
(9) Erkkila and Sterkel fail to teach a processor that identifies a user
interface of the detachable host device and controls different user interfaces
that have been identified, as recited in claim 7 (Br. 8).
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Issues on Appeal
Based on Appellants’ arguments, the following six issues are
presented for appeal:
Obviousness Rejection of Claims 1, 4-6, 14-17, and 20
(1) Did the Examiner err in rejecting claims 1, 5, 6, 14-17, and 20 as
being obvious because the combination of Erkkila and Sterkel fails to teach
or suggest the processor, identifier signal, and detachable host device
limitations of representative claim 1 at issue?
(2) Did the Examiner err in rejecting claim 4 as being obvious because
the combination of Erkkila and Sterkel fails to teach or suggest the display
limitation at issue?
Obviousness Rejection of Claims 7-12 and 19
(3) Did the Examiner err in rejecting claims 7-12 and 19 as being
obvious because (i) Barber is not properly combinable with Erkkila and
Sterkel, and/or (ii) Erkkila and Sterkel fail to teach or suggest the limitations
of representative claim 7 at issue?
Obviousness Rejection of Claims 2, 3, and 13
(4) Did the Examiner err in rejecting claim 2 as being obvious because
the combination of Erkkila and Sterkel fails to teach or suggest the user
preferences limitation at issue?
(5) Did the Examiner err in rejecting claim 3 as being obvious because
Erkkila and Sterkel fail to teach or suggest the display limitation at issue?
(6) Did the Examiner err in rejecting claim 13 as being obvious
because the combination of Erkkila, Sterkel, and Official Notice fails to
teach or suggest the detachable host device limitations at issue?
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (Br. 6-10) that the Examiner has erred.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken, and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief (see Ans. 3-
19). We concur with the conclusions reached by the Examiner.
Specifically, we agree with the Examiner (Ans. 15-19) that the
difference between the terminology used in Appellants’ claims (a modular
wireless communication module with a processor, and one or more
detachable host devices), as compared to the terminology used in Erkkila (a
host or mobile communication device with a processor, and one or more
expansion cards), carries little weight in view of the elements having
equivalent functionality. In this light, Appellants’ contentions (1), (2), and
(5) supra are not persuasive. Erkkila’s expansion cards are equivalent to the
recited detachable host devices (see claims 1, 7, and 19), and Erkkila’s
modular system and host device are equivalent to the recited modular
communication system and modular wireless communication module (see
claims 1 and 7). We now turn to the six issues raised by Appellants’
arguments.
Obviousness Rejection of Claims 1, 4-6, 14-17, and 20
First Issue: Claims 1, 5, 6, 14-17, and 20
Erkkila discloses a host device which acts as a module (e.g., Fig. 5)
having a transceiver 59 and a processor 51 to identify and control an
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interface 54 and expansion card (i.e., detachable host device). Erkkila also
discloses control software and identification information which acts as an
identifier signal to allow interchangeability of different expansion cards with
the host device by identifying to the host which type of expansion card is
attached (col. 3, ll. 45-48; col. 6, ll. 3-7). We agree with the Examiner (Ans.
3-4) that the combination of Erkkila and Sterkel teaches or suggests the
processor, identifier signal, and detachable host device limitations of
representative claim 1 at issue. In view of (i) the Examiner’s findings with
regard to Sterkel, and (ii) Erkkila’s disclosure of a module having a
processor and identification information to identify which of several
different detachable devices are connection to the module, Appellants’
contentions (3), (4), and (5) supra are not persuasive.
In view of the foregoing, Appellants have not sufficiently shown that
the Examiner erred in rejecting representative claim 1 under
35 U.S.C. § 103(a) over Erkkila and Sterkel. Accordingly, we will sustain
the obviousness rejection of claim 1, as well as claims 5, 6, 14-17, and 20,
based upon the combined teachings and suggestions of Erkkila and Sterkel.
Second Issue: Claim 4
We disagree with Appellants’ contention (Br. 8) that the Examiner
erred in rejecting claim 4 under 35 U.S.C. § 103(a) over Erkkila and Sterkel
based on Erkkila only teaching a display as being part of the mobile host
device. Because claim 4 recites that the display is part of the modular
wireless communication module, and not the detachable host device,
Appellants’ argument is not commensurate in scope with the language of the
claim. We agree with the Examiner (Ans. 13) that Erkkila teaches a display
55 (Fig. 5), and that the display presents content associated with one of the
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expansion cards (Ans. 4). Accordingly, we cannot agree with Appellants’
argument (Br. 8) that Erkkila fails to teach or suggest the display limitation
recited in claim 4.
In view of the foregoing, and based on the reasons discussed supra
with respect to claim 1, Appellants have not sufficiently shown that the
Examiner erred in rejecting claim 4. Accordingly, we will also sustain the
obviousness rejection of claim 4.
Obviousness Rejection of Claims 7-12 and 19
Third Issue: Claims 7-12 and 19
With regard to claims 7-12 and 19, the Examiner has provided a
factual basis and articulated reasoning with a rational underpinning to
support the conclusion of obviousness (see Ans. 8-12). Barber teaches a
detachable host device 300 (Figs. 2 and 3) having its own power source (Fig.
3), and host 300 provides power to portable 200 (i.e., wireless
communication module). Column 4, lines 20-50 (especially lines 21-24).
We agree with the Examiner that the combination of Erkkila, Sterkel, and
Barber meets all of the limitations set forth in representative claim 7, and
that it would have been obvious to modify Erkkila and Sterkel with Barber
(see Ans. 8-9).
In view of the foregoing, Appellant has not sufficiently shown that the
Examiner erred in finding that it would have been obvious to modify Erkkila
and Sterkel with the power source teachings of Barber. Accordingly, we
will sustain the obviousness rejection of claims 7-12 and 19 based upon the
combined teachings and suggestions of Erkkila, Sterkel, and Barber.
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Obviousness Rejection of Claims 2, 3, and 13
Fourth Issue: Claim 2
We disagree with Appellants’ contention (Br. 8) that the Examiner
erred in rejecting claim 2 because Erkkila and Sterkel do not teach a wireless
communication module that conforms to user preferences. Erkkila teaches a
modular system and mobile communication device with “the necessary
control software” (col. 3, l. 46) that allows (i) a user to “add new functions”
(col. 3, ll. 50), and (ii) manufacturers of the device to “offer to the users the
possibility of using new additional functions in the mobile communication
devices” (col. 3, ll. 52-53), “thereby enabling very versatile expansion of
host device functions” (col. 3, ll. 58-59). Therefore, we agree with the
Examiner (Ans. 13) that it is notoriously well known in the art for control
software to include user preferences, Erkkila (col. 3, ll. 42-62; Fig. 5)
teaches a processor 51 and digital signal processor 52 having software for
controlling various user interfaces, and that it would have been obvious to
modify Erkkila to store user preferences with the control software in order to
eliminate the need for a user to reset preferences every time the user desires
to use the interface.
Fifth Issue: Claim 3
With regard to claim 3, we agree with the Examiner (Ans. 13) that
Erkkila teaches a display 55 (Fig. 5), and that it would be obvious that the
display could present input from a user interface in accordance with user
preferences. Accordingly, we cannot agree with Appellants (Br. 8) that
Erkkila fails to teach or suggest the display limitation recited in claim 3.
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Sixth Issue: Claim 13
Appellants have not presented any separate arguments with respect to
the rejection of claim 13 as being obvious under 35 U.S.C. § 103(a) over
Erkkila, Sterkel, and Official Notice. We agree with the Examiner (Ans. 12-
13) that Erkkila’s disclosure of using a variety of expansion devices with the
wireless module (col. 2, ll. 33-40; col. 3, ll. 5-20; col. 4, ll. 39-61; col. 9, ll.
22-55), along with wireless capabilities and transceivers being well known
(Ans. 13), teaches or suggests the limitation recited in claim 13. The
recitation in claim 13 of detachable host devices being phones or an MP3
player is encompassed by Erkkila’s disclosure that the expansion cards (i.e.,
detachable host devices) can include “various small portable devices, such as
portable sound reproduction equipment, digital cameras, mobile
communication devices and portable computers” (col. 5, ll. 63-65).
In summary, as to the fourth, fifth, and sixth issues, Appellants have
not sufficiently shown that the Examiner erred in rejecting claims 2, 3, and
13 under 35 U.S.C. § 103(a) over Erkkila, Sterkel, and Official Notice.
Accordingly, we will sustain the obviousness rejection of claims 2, 3, and 13
based upon the combined teachings and suggestions of Erkkila, Sterkel, and
Official Notice.
Obviousness Rejection of Claim 18
Appellants have not presented any separate arguments with respect to
the rejection of claim 18 as being obvious under 35 U.S.C. § 103(a) over
Erkkila, Sterkel, Barber, and Official Notice. As such, Appellants have not
argued that the Examiner erred in rejecting claim 18, or otherwise shown the
obviousness rejection to be in error. See 37 C.F.R. § 41.37(c)(1)(vii).
Accordingly, we will sustain the Examiner’s rejection of claim 18 on the
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same basis we sustained the rejection of as claim 14 from which claim 18
depends.

CONCLUSIONS
(1) The various combinations of Erkkila, Sterkel, Barber, and Official
Notice teach or suggest the argued limitations of claims 1-20 on appeal.
(2) The Examiner has not erred in rejecting claims 1-20 as being
unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1-20 are not patentable.

DECISION
The Examiner’s rejections of claims 1-20 are affirmed.
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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