Ex Parte Famolari et al

Patent Trial and Appeal Board

Mar 11, 2013

10144717 (P.T.A.B. Mar. 11, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/144,717 05/15/2002 David Famolari 007871.00005 6464
30752 7590 03/11/2013
BANNER & WITCOFF, LTD.
ATTORNEYS FOR CLIENT NO. 000449, 001701
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
BIAGINI, CHRISTOPHER D
ART UNIT PAPER NUMBER
2445
MAIL DATE DELIVERY MODE
03/11/2013 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 DAVID FAMOLARI and NOBUYASU NAKAJIMA
____________

Appeal 2010-012068
Application 10/144,7171
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, CAROLYN D. THOMAS, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Toshiba America Research Incorporated
(TARI) and Telcordia Technologies, Inc.
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1, 3-20, and 22-38, which are all
the claims remaining in the application. Claims 2 and 21are cancelled. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b). An Oral Hearing
was held on March 5, 2013.
We REVERSE.
The present invention relates generally to management of devices
containing a Bluetooth interface through a network storage device. See
Spec., 1: ¶ [1].
Claim 1 is illustrative:
1. A method of managing network communications
between a first network device, a second network device, the second
network device having a first network address and a second network
address, and a network storage entity that stores the first network
address and the second network address of the second network device,
said method comprising:
receiving at the network storage entity, from said first
network device, said first address of said second network device; and
transmitting from said network storage entity at least said
second address of said second network device to the first network
device,
wherein the first network device includes a first
Bluetooth device, the second network device includes a second
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Bluetooth device and the first address includes a Bluetooth Device
Address (BDA) associated with the second network device.

Appellants appeal the following rejections:

R1. Claims 1, 3, 4, 15-20, 22, and 23 are rejected under 35 U.S.C.
§ 102(e) as being anticipated by Lipasti (US Patent Pub. 2002/0039357 A1,
Apr. 4, 2002); and
R2. Claims 5-14 and 24-38 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lipasti and BPAN (Bluetooth: An enabler for
personal area networking, Johansson, P. et al., Network IEEE, Sep/Oct.
2001, vol. 15, issue 5, pp. 28-37).

ANALYSIS
Our representative claim, claim 1, recites, inter alia, “a network
storage entity that stores the first network address and the second network
address.” Independent claims 15 and 20 recite commensurate limitations.
Thus, the scope of each of the independent claims includes a storage device
that stores the identification information.

Issue: Did the Examiner err in finding that Lipasti discloses a
network storage entity and transmitting from said network storage entity at
least said second address of said second network device to the first network
device, as set forth in claim 1?

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Appellants contend “Lipasti fails to disclose features related to
receiving at a network storage entity, from a first network device, a first
address of a second network device as recited in claim 1.” (App. Br. 4.)
Appellants further contend that “Lipasti still fails to disclose the alleged
mapping/translation occurring in the manner recited in claim 1.” (Id.)
Appellants further contend that “Lipasti fails to describe transmitting from
the network storage entity at least a second address of the second network
device to the first network device as recited in claim 1” (Reply Br. 5.)
The Examiner found that “the AP has the address of the devices
connected to the pico networks, and the AP creates a route to devices that
are not directly connected to the AP, by transmitting from pico network to
pico network.” (Ans. 17.)
While the Examiner has stated that in Lipasti “[t]he AP comprises a
gateway function which stores the addresses of the devices” (see Ans. 16),
the Examiner has not identified where precisely Lipasti discloses storing
address at the AP (i.e., access point). Instead, Lipasti discloses:
Mobile nodes MN are wireless Bluetooth devices, and another kind of
Bluetooth device, an access point AP, provides access for Bluetooth
mobile nodes to the local area network LAN and to other networks,
such as the Internet. . . . the AP is not as such a part of the ad hoc
network but may, however, forward packets to and from an ad hoc
network and thus participate in ad hoc network routing.
(Lipasti, ¶ [0023].)
Lipasti further discloses that “the access point AP comprises a
gateway function for performing the required protocol conversion.”
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(Lipasti, ¶ [0025].) In other words, Lipasti’s access point (AP) provides
access to the LAN, the Internet, forwards packets to and from ad hoc
networks, and performs protocol conversion. However, the Examiner has
not specifically shown how Lipasti’s AP stores addresses of the Bluetooth
devices. An access point, which acts as a gateway function, is generally a
link between different computer networks. However, we find that an
“access point” does not necessarily include a storage entity for storing
addressing information, as the broadest reasonable interpretation of a
gateway is merely a link, i.e. passageway, between different networks.
Although not specifically stated by the Examiner, when apparently
relying upon a theory of inherency, the Examiner must provide a basis in
fact and/or technical reasoning to reasonably support the Examiner's
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art. Ex parte Levy, 17 USPQ2d
1461, 1463-64 (BPAI 1990). Here, we find that Lipasti’s AP does not
necessarily have storage entities contained therein. The Examiner appears to
be speculating that such a storage entity could be incorporated at the AP.
The difficulty, however, that we have with the anticipation rejection before
us is that there is no certainty from the Lipasti reference itself as to what
specific processes in the AP, if any, are being used to carry out the
aforementioned transmitting of addresses. Lipasti merely discloses the AP
as a gateway function. While it seems logical that one such AP would
include some type of storage component, simply asserting that “[t]he AP
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comprises a gateway function which stores the addresses of the devices”
(see Ans. 16., emphases added), is unsupported speculation by the Examiner,
which does not amount to a finding supportive of the Examiner’s
anticipation conclusion.
Therefore, we find that the Examiner has not set forth a sufficient
initial showing of anticipation, and we find that Appellants have shown error
in the Examiner’s rejection of claim 1. Therefore, we reverse the rejection
of claim 1.
Appellants’ independent claims 15 and 20 include limitations similar
in scope to the limitations of claim 1 (supra). Accordingly, we also
conclude that Lipasti does not anticipate each recited feature of claims 15
and 20. Claims 3-14 (dependent on claim 1), claims 16-19 (dependent on
claim 15), and claims 22-38 (dependent on claim 20) stand with their
respective independent claims. Thus, based on the record before us, and for
the reasons set forth with respect to claim 1, we find that the Examiner erred
in finding that Lipasti discloses each limitation recited in Appellants’
independent claims 1, 15, and 20. Furthermore, we have reviewed Bluetooth
and find nothing which overcomes the deficiencies of Lipasti. Accordingly,
we reverse the Examiner’s anticipation rejection of claims 1, 3-20, and 22-
38.
Since we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants’ other arguments. It
follows that Appellants have shown that the Examiner erred in finding that
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Lipasti, either alone or in combination with Bluetooth, renders claims 1, 3-
20, and 22-38 unpatentable.

DECISION
We reverse the Examiner’s § 102 and § 103 rejections.

REVERSED
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