Ex Parte Elston et al

Patent Trial and Appeal Board

Nov 18, 2014

11929995 (P.T.A.B. Nov. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte WALLACE J. ELSTON III, ANTHONY E.
JENKINS, RICHARD A. MCCOY, and MICHAEL A.
MORRELL
____________________

Appeal 2012-005290
Application 11/929,995
Technology Center 2400
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 6, 16, and 18–22. We have jurisdiction under 35
U.S.C. § 6(b).
We Reverse.
INVENTION
Appellants’ claimed invention relates “to components and accessories
for a communicating appliance.” (Spec. ¶2). Independent claim 22,
reproduced below, is illustrative of the subject matter on appeal:
22. A network binder accessory to bind a first node to at least
one other node in a private network apart from any existing
network to which the first and at least one other nodes may
belong, the network binder accessory comprising:

a processor, memory, and a power source to energize the
processor and the memory;

a wireless transmitter/receiver of limited transmission range in
communication with the processor and memory; and

an actuator to actuate the wireless transmitter/receiver, with the
processor and memory in communication with a node by way
of the wireless transmitter/receiver only when the node is
within the limited transmission range of the actuated wireless
transmitter/receiver;

wherein the network binder accessory is external to the first and
at least one other nodes, and wherein upon actuation of the
actuator when the first node is within the limited transmission
range of the wireless transmitter/receiver, the network binder
accessory recognizes any existing network identifiers associated
with the first node, the processor and memory operate to
establish a new private network identifier, apart from any
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existing network identifiers, and the new private network
identifier is communicated with and assigned to the first node
via the wireless transmitter/receiver, and upon actuation of the
actuator when the at least one other node is later within the
limited transmission range of the wireless transmitter/receiver,
the wireless transmitter/receiver transmits the new private
network identifier to the at least one other node to bind the first
and at least one other nodes to each other using the new private
network identifier, to establish the private network comprising
the first and at least one other nodes apart from any existing
network to which the first and at least one other nodes may
belong.
(contested limitations emphasized).

REJECTIONS
A. Claims 6, 16, and 22 stand rejected under 35 U.S.C. §102(e) as being
anticipated by Funk (US 2005/0143129 A1, pub. Jun. 30, 2005).
B. Claims 18–20 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Funk and Bonasia (US 2006/0009861 A1, pub. Jan.
12, 2006).

ANALYSIS
Appellants note that “Claim 22 requires that the network binder
accessory establishes a new private network identifier, apart from any
existing network identifiers. Funk lacks any disclosure of establishing a new
private network identifier apart from any existing network identifiers.”
(App. Br. 7, emphasis added).
The Examiner disagrees, and finds: “the connection table which is
ultimately transmitted by the configuration device to a node, is a new private
network identifier (See, e.g., Funk [0007].). The establishment of a new
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connection table, or updated connection table, reflects a private network
established by a user of the wand. This network is apart from any existing
network to which the first node may belong.” 1 (Ans. 10).
However, we find the Examiner does not clearly map the contested
“existing network identifiers” to corresponding existing network identifiers
in Funk. In reviewing the record, we agree with Appellants “[t]he unique
identifier of the wireless device is not ‘any existing network identifiers
associated with the first node.’ It does not identify a network; it identifies
the wireless device.” (Reply Br. 3, emphasis added).
The evidence supports Appellants’ contentions. Funk expressly
describes: “The method may further include broadcasting by the wireless
device, in response to the initiation signal, a unique identifier uniquely
identifying the wireless device.” (¶7, emphasis and underline added). Funk
further describes the contents of the connection table, which the Examiner
finds discloses the contested “new private network identifier, apart from any
existing network identifier” (claim 22):
The initiation signal may be sent by the device to the wireless
device to add or delete the wireless device from a network
being configured. The connection table may include
information about each wireless device that has previously
been added to the network.
(Funk, ¶8, emphasis and underline added).

1 “Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” Therasense, Inc. v. Becton, Dickinson &
Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (citing Cont'l Can Co. USA, Inc.
v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)).
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We note the plain language of Appellants’ claim 22 expressly requires
plural network identifiers (and not device identifiers): “a new private
network identifier, apart from any existing network identifiers” (Claim 22,
emphasis added).
However, in closely reviewing the evidence before us (not pointed to
by the Examiner), we find Funk does describe plural network identifiers:
[0027] The connection table may have either a time stamp
or a serial number, which is incremented every time the
connection table is updated.
. . .
[0029] Each serial number or time stamp may have a
network ID of some type to distinguish between multiple
networks.

Thus, older time stamps in Funk’s connection table appear to have
associated “existing” or old network IDs, and the most recent update of the
connection table would contain a new timestamp with an associated new
network ID.
However, the Examiner has not considered these “connection table”
time stamps and associated “network IDs” in support of the anticipation
rejection. “Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
in the claim.” Lindemann Maschinenfabrik GMBH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).
Here, we find the Examiner has not provided a clear mapping
between each contested claim limitation and the corresponding feature
purportedly found in the Funk reference sufficient to support the rigorous
requirements of an anticipation rejection. By not pointing to the network
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IDs described in Funk (¶¶27, 29), we find the Examiner has not fully
developed the record to clearly establish how Appellants’ claimed
arrangement is met by Funk under § 102.
We note that in an ex parte appeal, the Board “is basically a board of
review — we review . . . rejections made by patent examiners.” Ex parte
Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). “The review authorized by
35 U.S.C. Section 134 is not a process whereby the examiner . . . invite[s]
the [B]oard to examine the application and resolve patentability in the first
instance.” Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999).
Because we are a board of review, and not a place of initial
examination, we will not engage in the de novo examination required to
precisely map each feature of Appellants’ claim 22 to the corresponding
features purportedly found in Funk. Because a rejection of independent
claim 22 under §103 is not before us on appeal, we express no opinion as to
whether claim 22 would have been obvious over Funk considered alone, or
in combination with one or more additional references. We leave any such
further consideration to the Examiner. Although the Board is authorized to
reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn
when the Board elects not to do so. See Manual of Patent Examining
Procedure (MPEP) 1213.02.
For essentially the same reasons argued by Appellants in the Briefs,
we reverse the Examiner’s anticipation rejection A of independent claim 22
and associated dependent claims 6 and 16. Regarding rejection B under
§ 103, the Examiner has not shown how the addition of Bonasia overcomes
the aforementioned deficiencies of Funk. Therefore, we reverse the
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anticipation rejection of sole independent claim 22 and the rejections of all
dependent claims on appeal.

CONCLUSION
The Examiner erred in rejecting all claims on appeal.

DECISION
We reverse the Examiner’s decision rejecting claims 6, 16, and 18–22.
REVERSED

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