Ex Parte Hutchison

Patent Trial and Appeal Board

Jul 31, 2017

12772855 (P.T.A.B. Jul. 31, 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.
12/772,855 05/03/2010 James A. Hutchison IV 091945 4748
23696 7590 08/02/2017
OTTAT mMM TNmRPORATFD
EXAMINER
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
SHEDRICK, CHARLES TERRELL
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
08/02/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES A. HUTCHISON IV
Appeal 2017-005000
Application 12/772,8551
Technology Center 2600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’
Final Rejection of claims 1—5, 7—30, 32—38, 40-49, and 51—57, which
constitute all of the claims pending in this application.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is QUALCOMM
Incorporated. App. Br. 1.
2 Claims 6, 31, 39, and 50 have been canceled. App. Br. 3.
Appeal 2017-005000
Application 12/772,855
INVENTION
Appellant’s application relates to collecting information about
activation of components, modules, and/or elements of a wireless device,
separate from wireless device activation data collection by the service
provider. Spec. 12.
Claim 1 is illustrative of the appealed subject matter and reads as
follows with the disputed limitation shown in italics:
1. A method operational on a wireless device for capturing
activation of one or more wireless device components of the
wireless device, comprising:
detecting activation of the wireless device with a service
provider and transmitting wireless device activation data to the
service provider;
detecting a subsequent activation or first use by the
wireless device of one or more components of the wireless device
that are equipped for activation or use by the wireless device
without external initialization or external authorization,
collecting activation data for the one or more components of the
wireless device activated or first used subsequent to the
activation of the wireless device, separate from wireless device
activation data collection by the service provider, wherein the
activation data identifies the one or more components of the
wireless device that the wireless device has activated or first used
subsequent to the activation of the wireless device; and
transmitting the activation data for the one or more
components to a remote activation server to notify the remote
activation server,
wherein the remote activation server is independent of the
service provider.
REFERENCES AND REJECTION
Claims 1—5, 7—30, 32—38, 40-49, and 51—57 stand rejected under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Ans. 2.
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Claims 1, 4, 5, 7, 8, 10-14, 17-23, 25-27, 29, 30, 32-38, 4(M6, 48,
49 and 51—57 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of White et al. (US 2006/0035631 Al; published Feb. 16,
2006) (“White”), Tischer et al. (U.S. 2006/0111079 Al; published May 25,
2006) (“Tischer”), Dusse (US 2002/0068554 Al; published June 6, 2002),
Gailloux et al. (US 7,496,349 Bl; issued Feb. 24, 2009) and Schultz (US
2005/0039061 Al; published Feb. 17, 2005). Id.
Claims 2, 3, 15, 24, 28, 47, 53 ad 55 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of White, Tischer, Dusse,
Gailloux, Schultz and Date et al. (US 2004/0214560 Al; published Oct. 28,
2004) (“Date”). Id.
Claims 9 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over White, Tischer, Dusse, Gailloux, and Schultz. Id.
ANALYSIS
Rejection of Claims Based on 35 U.S.C. § 112, first paragraph
In rejecting claim 1 for lack of written description, the Examiner
found that the negative limitation of claim 1, i.e.,
detecting a subsequent activation or first use by the wireless
device of one or more components of the wireless device that are
equipped for activation or use by the wireless device without
external initialization or external authorization,
is not described in the Specification in such a way as to reasonably convey
to one skilled in the relevant art that the inventor(s), at the time the
application was filed, had possession of the claimed invention. Final Act. 7.
Appellants contends the Examiner erred because the claimed features
are at least implicitly set forth in the Specification. Appellants argue an
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Application 12/772,855
artisan of ordinary skill would have recognized “that at least some of the
components described in the application are equipped for activation or use
by the wireless device without external initialization or external
authorization.” App. Br. 14—15 (citing Spec. Figs. 3, 5, 7—9, 9, 11, 24,
36,37,38, 50, 51).3
Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation. Santarus,
Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012); see also
MPEP § 2173.05(i) (“Any negative limitation or exclusionary proviso must
have basis in the original disclosure .... The mere absence of a positive
recitation is not basis for an exclusion.”). Although Appellant provides
citations to a string of entire paragraphs in the Specification, Appellant does
not identify any specific written description support for the disputed
negative limitation “detecting a subsequent activation . . . without external
initialization or external authorization,” a limitation added during
prosecution, and does not identify a description of a reason to exclude the
limitation. Appellant has not guided us to specific actual or inherent support
in the portions of the Specification that is sufficient to demonstrate
possession of the claimed invention under section 112, first paragraph.
For these reasons, we are not persuaded the Examiner erred in
rejecting claim 1 for lack of written description. Accordingly, we sustain the
Examiner’s 35 U.S.C. § 112 rejection of representative claim 1. We also
sustain the Examiner’s 35 U.S.C. § 112 rejection of claims 2—5, 7—30, 32—
3 We note the Summary of Claimed Subject Matter section of Appellant’s
Brief does not map the disputed negative limitation of claim 1 to a particular
section of the Specification. App. Br. 2—3.
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38, 40-49, and 51—57, not separately argued. Arguments not made are
waived. 37 C.F.R. § 41.37(c)(l)(iv).
Rejection of Representative Independent Claim 1 under 35 U.S.C. § 103(a)
Regarding the Examiner’s obviousness rejection of claims 1, 4, 5, 7,
8, 10-14, 17-23, 25-27, 29, 30, 32-38, 40-46, 48, 49, and 51-57, we have
considered all of Appellant’s arguments and any evidence presented. We
are not persuaded by Appellant’s arguments and adopt as our own: (1) the
findings and legal conclusions set forth by the Examiner in the action from
which this appeal is taken (Final Act. 9-17), and (2) the findings, legal
conclusions, and explanations set forth in the Answer in response to
Appellant’s arguments. (Ans. 7—15). We highlight and address specific
findings and arguments for emphasis in our analysis below.
In rejecting claim 1, the Examiner found the combination of White,
Tischer, Dusse, Gailloux, and Shultz teaches or suggests the limitations of
claim 1. Final Act. 9—13.
Appellant contends the Examiner erred because Schultz does not
teach or suggest a system that detects “a subsequent activation or first use by
the wireless device of one or more components of the wireless device that
are equipped for activation or use by the wireless device without external
initialization or external authorization,” as claim 1 requires. App. Br. 18.
Appellant further contends Schultz teaches away from the disputed
limitation in claim 1. Id. at 19.
Appellant’s arguments are not persuasive. We agree with the
Examiner’s finding that Schultz teaches the disputed limitation because
Shultz’s automatic selection of a component by detection module 224, which
is internal to the computing device 120 (see Fig. 2), teaches or at least
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suggests the disputed limitation “one or more components of the wireless
device that are equipped for activation or use by the wireless device without
external initialization or external authorization,” recited in claim 1. Schultz
194.
Appellant’s “teaching away” argument is not persuasive because
Appellant has not identified where Schultz actually criticizes, discredits, or
otherwise discourages a wireless device “detecting a subsequent activation
or first use by the wireless device of one or more components of the wireless
device that are equipped for activation or use by the wireless device without
external initialization or external authorization,” as claim 1 requires. See In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Appellant also argues the Examiner erred by seeking to establish
obviousness of the independent claims by combining “five disparate
references,” where “each reference is directed to different goals and is
directed to solving different problems.” App. Br. 25. Appellant further
argues the Examiner used Appellant’s Specification “as a blueprint in
combining specific components from the five references to arrive at the
claimed subject matter.” Id.
Appellant’s arguments are not persuasive. “A reference is reasonably
pertinent if, even though it may be in a different field from that of the
inventor’s endeavor, it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor’s attention in
considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Moreover, the number of references applied in an obviousness rejection is
not dispositive as to whether a claimed invention is nonobvious or not;
“[t]he criterion. . . is not the number of references, but what they would have
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meant to a person of ordinary skill in the field of the invention.” In re
Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991).
We are not persuaded the Examiner’s proposed combination is the
result of improper hindsight because the Examiner set forth articulated
reasoning with rational underpinnings for the combination. See Final
Act. 13. Appellant has not identified any knowledge relied upon by the
Examiner that was gleaned only from Appellant’s disclosure and that was
not otherwise within the level of ordinary skill in the art at the time of
invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Nor
has Appellant provided objective evidence of secondary considerations,
which “operates as a beneficial check on hindsight.” Cheese Sys., Inc. v.
Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed.
Cir. 2013).
For these reasons, we are not persuaded the Examiner erred in finding
the combination of White, Tischer, Dusse, Gailloux, and Shultz teaches or
suggests the disputed limitations of claim 1.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of representative independent claim 1. We also sustain the 35 U.S.C.
§ 103(a) rejections of independent claims 14, 23, 27, 30, 38, 44-46, 56,
and 57, which Appellant argues are patentable for similar reasons. App.
Br. 26—28. We also sustain the 35 U.S.C. § 103(a) rejections of dependent
claims 2-5, 7, 8, 10, 11, 13, 15, 17-20, 22-26, 28, 29, 32-37, 40-43, 47^19,
and 51—55, for which Appellant has not presented separate, substantive
arguments. Id. at 24, 29.
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Regarding dependent claims 9 and 16, Appellant argues the Examiner
erred in taking “official notice” of “fairly esoteric aspects of wireless
communication systems.” App. Br. 29—30 (citing Final Act. 17).
We find Appellant has not adequately traversed the taking of official
notice by specifically identifying the supposed error in the Examiner's
action, which would include stating in the record why the noticed fact is not
considered to be common knowledge or well-known in the art. See MPEP
§ 2144.03. Therefore, Appellant has not persuaded us the Examiner erred
regarding the 35 U.S.C. § 103(a) rejection of claims 9 and 16, and we
sustain that rejection.
With regard to dependent claims 12 and 21, Appellant argues that
White, Tischer, Dusse, Gailloux, and Schultz do not teach or suggest the
limitation “wherein at least one of the one or more components identified by
the activation data includes at least one of: a modem, a transmitter, a
receiver, or a radio transceiver,” as recited in claims 12 and 21. App. Br. 28.
Although Appellants acknowledge White teaches a modem, transmitter,
receiver, or radio transceiver, Appellants argue White does not teach the
“activation data” identifying any of those components. Id. Appellant further
argues the destination entity in White could identify the wireless device
making a request without data specifically identifying the component of the
wireless device, which claims 12 and 21 require. Id.
We are not persuaded by Appellants’ arguments. The Examiner
found White’s mobile device 102 (Fig. 1) uses components identified by
activation data to associate its network modem with a network, such as a
GSM modem with a GSM network. See Final Act. 14; see also White
Figs. 5—7,H27, 34, 43—47. Appellants have not persuasively rebutted the
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Examiner’s findings as to what the teachings of White would have suggested
to an artisan of ordinary skill. “[T]he question under 35 U.S.C. § 103 is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.” Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F. 2d 804, 807—08
(Fed. Cir. 1989).
Therefore, Appellant has not persuaded us the Examiner erred
regarding the 35 U.S.C. § 103(a) rejection of claims 12 and 21, and we
sustain that rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1—5, 7—30, 32—38,
40-49, and 51—57.
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)(iv). See C.F.R.
§ 41.50(f).
AFFIRMED
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