Ex Parte Kim

Patent Trial and Appeal Board

Sep 16, 2013

11263288 (P.T.A.B. Sep. 16, 2013)

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.
11/263,288 10/31/2005 Sang-Don Kim 678-2049 4191
66547 7590 09/16/2013
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
FLEMING-HALL, ERICA L
ART UNIT PAPER NUMBER
2648
MAIL DATE DELIVERY MODE
09/16/2013 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 SANG-DON KIM
____________________

Appeal 2011-002703
Application 11/263,288
Technology Center 2600
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002703
Application 11/263,288

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STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claims
Exemplary independent claims 1 and 7 under appeal, with emphases
and bracketed lettering added, read as follows:
1. A method for a user equipment having a Bluetooth
function, the method comprising the steps of:
searching by the user equipment for at least one adjacent
Bluetooth device to detect at least one desired Bluetooth device;
[A] determining by the user equipment whether a
company ID of the searched Bluetooth device is identical to a
predetermined company ID; and
[B] displaying information about the searched Bluetooth
device when the company ID is identical to the predetermined
company ID,
wherein the predetermined company ID corresponds to a
manufacturer of the desired Bluetooth device.
7. A method for a user equipment having a Bluetooth
function, the method comprising the steps of:
searching by the user equipment for adjacent Bluetooth
devices to detect at least one desired Bluetooth device;
[A] determining by the user equipment whether a
company ID of each of the searched Bluetooth devices is
identical to a predetermined company ID; and
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[B] displaying information about the searched Bluetooth
devices which company IDs are determined identical to the
predetermined company ID in regular sequence according to
relevant company IDs,
wherein the predetermined company ID corresponds to a
manufacturer of the desired Bluetooth device.
Examiner’s Rejection
The Examiner rejected claims 1-13 as being unpatentable under
35 U.S.C. § 103(a) over Virtanen (US 2003/0124978 A1), Sharma (US
2003/0165129 A1), and Bluetooth SIG (Assigned Numbers – Company
Identifiers, The Bluetooth SIG, Inc. Member Web Site, 3 pages,
http://www.bluetoothsig.org/assigned-numbers/company.htm (last visited
September 03, 2003)). Ans. 3-7.
Issues on Appeal
Based on Appellant’s arguments in the Briefs, the following two
issues are presented on appeal:
(1) Did the Examiner err in rejecting claims 1-6 as being obvious
because the combination of Virtanen, Sharma, and Bluetooth SIG fails to
teach or suggest the method for operating user equipment with a Bluetooth
function including limitations [A] and [B] as set forth in representative claim
1?
(2) Did the Examiner err in rejecting claims 7-13 as being obvious
because the combination of Virtanen, Sharma, and Bluetooth SIG fails to
teach or suggest the method for operating user equipment with a Bluetooth
function including limitations [A] and [B] as set forth in representative claim
7?

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Application 11/263,288

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief (App. Br. 3-16) and Reply Brief (Reply Br.
1-4) that the Examiner has erred.1 We disagree with Appellant’s
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 (Ans. 3-7), as well as
in the Advisory Action mailed March 26, 2010, and (2) the reasons set forth
by the Examiner in the Examiner’s Answer in response to Appellant’s
Appeal Brief (see Ans. 7-9). We concur with the conclusions reached by the
Examiner, and highlight and address specific findings and arguments for
emphasis as follows.
The Examiner relies upon Virtanen for teaching a company (i.e.,
predetermined) ID, Sharma for teaching detecting a Bluetooth device, and
Bluetooth SIG for teaching use of company specific codes (Ans. 3-5).
With regard to claims 1 and 7, Appellant argues (App. Br. 3-16; Reply
Br. 2-3) that the combination of references fails to teach or suggest the

1 Appellant does not present separate patentability arguments for claims 2-6,
and instead only present arguments in the Appeal Brief with regard to
independent claim 1 and rely on the arguments made as to claim 1 for the
patentability of claims 2-6 (App. Br. 9). Similarly, Appellants do not
present separate patentability arguments for claims 8-13, and instead only
present arguments in the Appeal Brief with regard to independent claim 7
and rely on the arguments made as to claim 7 for the patentability of claims
8-13 (App. Br. 16). We select claim 1 as representative of the group of
claims 1-6, and claim 7 as representative of the group of claims 7-13,
pursuant to our authority under 37 C.F.R. § 41.37(c)(1). Accordingly, our
decision will only address the merits of claims 1 and 7.
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“determining . . . ” step and “displaying . . . ” steps (limitations [A] and [B],
respectively) of claims 1 and 7. We agree with the Examiner (Ans. 3-5, 8,
and 9) that Virtanen teaches or suggests these steps, i.e., limitations [A] and
[B] of representative claims 1 and 7.
In view of the foregoing, Appellant’s contentions (App. Br. 3-9;
Reply Br. 2 and 3) that Virtanen, Sharma, and Bluetooth SIG fail to teach or
suggest limitations [A] and [B] as set forth in representative claim 1 are not
persuasive. Accordingly, we sustain the Examiner’s rejection of
independent claim 1, and dependent claims 2-6 depending therefrom and
containing the same subject matter as claim 1. And, for similar reasons as
given above regarding Appellant’s arguments as to representative claim 1,
the invention recited in representative claim 7 has not been shown to be
patentably distinguishable from the combined teachings and suggestions of
Virtanen, Sharma, and Bluetooth SIG. Accordingly, we sustain the
obviousness rejection of claim 7.

CONCLUSIONS
(1) The Examiner did not err in determining that the combination of
Virtanen, Sharma, and Bluetooth SIG teaches or suggests the method for
operating user equipment with a Bluetooth function including limitations [A]
and [B] as set forth in representative claim 1, and as similarly set forth in
claims 2-6 grouped therewith.
(2) The Examiner did not err in determining that the combination of
Virtanen, Sharma, and Bluetooth SIG teaches or suggests the method for
operating user equipment with a Bluetooth function including limitations [A]
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and [B] as set forth in representative claim 7, and as similarly set forth in
claims 8-13 grouped therewith.

DECISION
The Examiner’s rejection of claims 1-13 under 35 U.S.C. § 103(a) is
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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