Ex Parte Ishidoshiro

Board of Patent Appeals and Interferences

Oct 29, 2009

10270231 (B.P.A.I. Oct. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAKASHI ISHIDOSHIRO
____________

Appeal 2009-004131
Application 10/270,231
Technology Center 2400
____________

Before JOHN C. MARTIN, KARL D. EASTHOM, and
THOMAS S. HAHN, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 begins to run from the “MAIL
DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic
delivery mode) shown on the PTOL-90A cover letter attached to this
decision.
Appeal 2009-004131
Application 10/270,231

2

STATEMENT OF THE CASE
Appellant requests a rehearing pursuant to 37 C.F.R. § 41.52 of our
Decision on Appeal (electronically delivered November 2, 2009) in which
we entered a new ground of rejection of claims 1, 2, and 4-7 under 35 U.S.C.
§ 112, second paragraph, based on indefiniteness. Appellant requests
reconsideration and modification of our prior Decision only with respect to
independent claim 1 and claims 2, 4, and 5 dependent therefrom. We grant
the request to reconsider, but we deny the request to modify our Decision for
the reasons that follow.
ANALYSIS
Appellant’s arguments focus on claim 1. (Reh’g Req. 1-4).2
Claim 1 follows in a highlighted format to emphasize the phrases in
contention:
Claim 1: A wireless LAN access point to provide network services
through wireless signals, to establish access-limited areas and access-
unlimited areas, and limit access by judging if there is appropriate
encryption, said wireless LAN access point comprising:
an encryption judging means to judge whether or not there is said
encryption in an access demand; and
an access object limiting means to allow access to access-limited areas
and access-unlimited areas;

2 Reference is to Appellant’s Request for Rehearing Under 37 C.F.R. §41.52
Before the Board of Patent Appeals and Interferences (filed Jan. 4, 2010).
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wherein when said encryption judging means judges that there is said
appropriate encryption in said access demand, said access object limiting
means allows access to said access-limited areas and said access-unlimited
areas, and when said encryption judging means judges that there is not said
appropriate encryption in said access demand, said access-object limiting
means allows access only to said access-unlimited areas;
wherein said appropriate encryption is WEP.
In our prior Decision, we held that
it is not clear whether or not the phrase in claims 1 and 6,
“judge whether or not there is said encryption” requires a
determination of an effective encryption or the mere existence
of encryption, since “said encryption” refers back to
“appropriate encryption” and the Specification ambiguously
supports either interpretation.
(Dec’n 7.)
We also reasoned, in part, that “Appellant’s argument that
‘appropriate encryption’ embraces only the existence of such encryption
eviscerates the normal meaning of the [first] ‘wherein’ clause quoted supra
from claim 1.” (Id. at 8.) In other words, underlying our previous holding is
the rationale that the term “appropriate encryption” is not clear, as discussed
further below.
Appellant argues here that claim 1 is clear because “it is clear that the
encryption judging means judges whether or not there is WEP encryption, as
recited in the last line of claim 1.” (Reh’g Req. 3 (emphasis supplied).)
This argument is similar to the arguments presented in the original appeal in
that it argues that claim 1 is clear because it calls for judging the mere
existence of an encryption. Appellant bases the argument on the final clause
of claim 1 which recites “wherein said appropriate encryption is WEP.”
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This argument is not persuasive. This final “wherein” clause merely
limits the “appropriate encryption” (to a WEP type), but it does not define
“appropriate encryption,” whatever that term means. Accordingly, as
“appropriate encryption” is not clear, it follows that to “judge whether or not
there is said [appropriate] encryption” also is not clear.
That is, the phrase can either mean that the judging means judges
whether or not there is WEP encryption as Appellant argues, or it can mean
that it judges whether or not there is appropriate WEP encryption. Claims
that are amenable to two or more plausible conflicting claim constructions
are indefinite where “neither the Specification, nor the claims, nor the
ordinary meanings of the words provides any guidance as to what Appellant
intends to cover with this claim language.” Ex parte Miyazaki, 89 USPQ2d
1207, 1215 (precedential) (BPAI 2008). As such, Appellant’s argument that
“the claims themselves are in fact definite and that the BPAI unnecessarily
confused the issue of definiteness by referring back to the specification”
(Reh’g Req. 3 (citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
(en banc)) is of no avail because claim 1, by itself, is not definite. In any
event, contrary to Appellant’s argument (Reh’g Req. 3), regardless of
whether a claim appears clear or not, “claims ‘must be read in view of the
specification, of which they are a part.’” See Phillips, 415 F.3d at 1315 (not
addressing clarity specifically, but not limiting resort to the specification
under the circumstances proposed by Appellant) (quoting Markman V.
Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)
aff’d, 517 U.S. 370 (1996)).
Still further, Appellant’s request also does not address our related but
separate rationale directed to the first “wherein” clause in claim 1 and in
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which we reasoned that Appellant’s arguments indicate that “appropriate
encryption” takes on different meanings depending on which portion of the
claim is being interpreted. Our prior reasoning follows:
This [first] “wherein” clause further indicates, contrary to
Appellant’s arguments, that “appropriate encryption” here does
not merely refer to judging whether or not encryption merely
exists, because access to access-limited areas is based on “when
said encryption judging means judges that there is said
appropriate encryption in said access demand.” As noted
supra, Appellant’s disclosure indicates that allowing such
access to an access-limited area occurs only when the
encryption is “effective” . . . and a WEP “key” or
“encipherment” is employed: “This WEP sets up the ‘key’ at
the access point and tells it only to those who are allowed to
connect to the in-house LAN (access-limited area), so that only
the terminal which has set up the ‘key’ can access the access-
limited area” . . . . Such an “effective” WEP key indicates a
determination of validity of the encryption, as opposed to a
determination of its mere existence.
As such, Appellant’s argument that “appropriate
encryption” embraces only the existence of such encryption
eviscerates the normal meaning of the “wherein” clause quoted
supra from claim 1 . . . . In other words, Appellant’s
arguments, if adopted, would mean that the independent claims
do not preclude any WAN (internet) surfer having any WEP key
to obtain access to a secure LAN (in-house) computer . . . .
Moreover, the term “appropriate encryption” may or may
not mean one thing in the earlier judging means clause (i.e.,
“whether or not there is said appropriate encryption in an access
demand”), and another in the second judging means clause (i.e.,
the “wherein clause” of claim 1 quoted supra). As such, skilled
artisans would not have understood the meaning and scope of
the claim.
(Id. at 7-8 (emphasis added).)
Based on the foregoing discussion, claim 1, and claims 2, 4, and 5
dependent therefrom, are unpatentable under 35 U.S.C. § 112, second
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paragraph, as being indefinite. Interpreting these claims (and claims 6 and
7) requires considerable speculation as to meaning of the terms employed
and assumptions as to the scope of the claims.
DECISION
The Request for Rehearing to the extent it seeks a modification of our
prior Decision is denied.
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)(v).
DENIED

KMF

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