Ex Parte Kirke

Board of Patent Appeals and Interferences

Sep 10, 2012

11422645 (B.P.A.I. Sep. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TONY KIRKE
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Appeal 2010-005831
Application 11/422,645
Technology Center 2600
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Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005831
Application 11/422,645

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STATEMENT OF THE CASE 1
Introduction
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b).
Although not identified by Appellant in the Appeal Brief as required
by the Patent Rules, we note that this case is related to co-pending
application 11/422,649 filed on June 7, 2006 that is also currently on appeal
(Appeal No. 2010-005834). The issues presented on appeal in that case are
similar in many respects to the issues presented by Appellant in this case.
Exemplary Claims
Exemplary independent claim 1 under appeal reads as follows
(emphasis added to contested limitation):
1. A method for communicating information within a
network, the method comprising:
accessing by a first wireless handheld communication device
(WHCD), a list of authorized devices maintained at a second
WHCD when said first WHCD is within operating range of
said second WHCD, wherein said first WHCD is not paired
with said second WHCD, and at least one authorized WHCD
specified by said list of authorized devices is outside an
operating range of said first WHCD; and
communicating information between said first WHCD and
said at least one authorized WHCD via said second WHCD.

1 Throughout this Decision, we refer to the Final Office Action (FOA)
mailed May 1, 2009; the Appeal Brief (App. Br.) filed Oct. 5, 2009; the
Examiner’s Answer (Ans.) mailed Dec. 23, 2009; and the Reply Brief filed
Feb. 16, 2010.
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Exemplary dependent claim 2 under appeal reads as follows
(emphasis added to contested limitation):
2. The method according to claim 1, comprising receiving
at said first WHCD, a communication signal from said second
WHCO, the communication signal comprising at least one of:
an identifier (ID) of said second WHCD and an ID of said at
least one authorized WHCD.

Exemplary dependent claim 6 under appeal reads as follows:
6. The method according to claim 1, comprising
establishing a communication link for communicating said
information between said first WHCD and said at least one
authorized WHCD using said second WHCD.

Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Biswas WO 02/078272 A1 Oct. 3, 2002
Mgrdechian US 2005/0174975 A1 Aug. 11, 2005

Rejections on Appeal
A. The Examiner rejected claims 1, 11, and 21 under 35 U.S.C
§ 102(b) as being anticipated by Biswas. (FOA 4; Ans. 3).
B. The Examiner rejected claims 2-10, 12-20, and 22-30 under 35
U.S.C § 103(a) as being unpatentable over Biswas in view of Mgrdechian.
(FOA 5; Ans. 4).
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Appellant’s Contentions
Claims 1, 11, and 21
In the Appeal Brief, Appellant contends that the Examiner erred in
rejecting claim 1 because Biswas does not disclose all the limitations of
claim 1. Specifically, Appellant contends that “Biswas does not disclose or
suggest at least the limitation of ‘accessing by a first wireless handheld
communication device (WHCD), a list of authorized devices maintained at
a second WHCD when said first WHCD is within operating range of said
second WHCD, . . . communicating information between said first WHCD
and said at least one authorized WHCD via said second WHCD,’” as
recited in independent claim 1. App. Br. 8-9.
Appellant further contends that “Biswas discloses that the table or
listing (i.e., the alleged list of ‘authorized devices’) includes all the terminals
Bs in the entire MANET (the alleged ‘network’). Biswas clearly discloses
that each of the terminals B broadcasts its control information within the
MANET (the alleged ‘network’), and that the broadcasted control
information is fully distributed to the rest of the terminals (rest of the Bs)
within MANET (the alleged ‘network’).” App. Br. 9-10.
Appellant goes on to contend that “Biswas does not disclose or
suggest that any or all of these broadcasted control information from the
terminals Bs, has anything to do with getting ‘authorized’ in order to be
listed on the table or listing (the alleged ‘list of authorized devices’). . . .
[A]ny terminal that broadcasts its control information within MANET . . .
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would automatically (and indiscriminately) be added to the table or list.”
App. Br. 10.
Appellant also contends that
The Examiner alleged that Appellant’s “authorized devices” is
broadly claimed, and then tried to limit Appellant’s claim by
introducing a new limitation, which is not recited in
Appellant’s claim 1. For example, the Examiner argued that
“a list of authorized devices or a list of known devices, or a
list of visible users” is fairly characterized as a table listing
known (available) terminals in a network.
The Examiner’s above argument is moot, because in
effect, the Examiner has rewritten Appellant’s claim 1 to
include limitations or features, which are not recited in
Appellant’s claim language. . . .
Since the Examiner’s alleged elements (i.e., list of
known devices or a list of visible users”) are not found in
Appellant’s claim 1, the Appellant maintains that Biswas does
not anticipate Appellant’s claim 1.
App. Br. 11.
Appellant contends that “[m]ore specifically, Biswas does not disclose
that the table or the listing maintained by each of the terminals in the
network is disclosed as ‘authorized terminals’. . . . [T]he Examiner has not
provided support that Biswas discloses ‘authorized terminals’ in the tables or
listings.” App. Br. 12.
In the Reply Brief, Appellant contends
The Examiner made a new argument and relies for
support on Appellant’s Fig. 6C, which discloses a List of
Known/Authorized Devices as list 614c within HCD 602c's
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(“second WHCD”) operating range. More specifically, the
Examiner seems to allege, for a first time, that Appellant’s Fig.
6C discloses that devices HCD 604c, HCD 606c and HCD 608c
are the only devices known within the operating range of HCD
602c, and all of devices HCD 604c, HCD 606c and HCD 608c
(“known device”) are on the List of Known/Authorized Devices
as list 614c. The Appellant points out that Appellant’s Fig. 6C
simply illustrates that all devices within the operating range can
in fact also be authorized devices and thus be on the list, and in
any event is simply an exemplary embodiment of the invention
and should not be construed in a limiting manner (see
specification at ¶0053).
Reply 4.
Finally, Appellant contends
Appellant’s Fig. 7 and ¶0061 further support Appellant’s
argument that Appellant's “list (i.e., list 704) of known or
authorized devices (KAD list) (i.e., HCD2, HCD3 and
HCD5)” are not merely just known devices, but are authorized
devices which are differentiable from the unauthorized devices
(i.e., HCD4 and ... HCDX). Biswas does not disclose the
alleged list of authorized devices. Accordingly, the
Examiner's . . . arguments . . . are moot.
Reply 5.
Appellant contends that similar arguments pertain to independent
claims 11 and 21. (App. Br. 12).
Claims 2, 12, and 22
Appellant contends that the Examiner erred in rejecting claims 2-10,
12-20, and 22-30 because
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Mgrdechian, in general, discloses an initiating wireless
device (the alleged “first WHCO”) accessing information (e.g.,
wireless device ID and user profile information) associated with
another wireless device via an Internet network with a
remote computer system 360 (see Mgrdechian’s abstract).
Mgrdechian’s remote computer system 360, therefore, is not a
WHCD. Consequently, Mgrdechian’s remote computer system
is also outside the operating range of the initiating wireless
device (the alleged “first WHCD”). Mgrdechian, therefore,
also does not disclose or suggest “said first WHCD is within
operating range of said second WHCD . . . communicating
information between said first WHCD and said at least one
authorized WHCD via said second WHCD,” as recited by the
Appellant in independent claim 1. Therefore, Mgrdechian does
not overcome the deficiencies of Biswas in independent claims
1, 11 and 20, respectively.
. . . [C]laims 2-10, 12-20 and 22-30, which depend from
independent claims 1, 11, and 21, respectively, are
consequently also respectfully submitted to be allowable at
least for the reasons stated above with regard to allowability of
claim 1.
App. Br. 14.
Appellant goes on to contend that “Mgrdechian’s remote computer
system 360 is not a WHCD” and “does not disclose or suggest ‘receiving at
said first WHCO, a communication signal from said second WHCD, the
communication signal comprising at least one of: an identifier (ID) of
said second WHCD and an ID of said at least one authorized WHCD,’
as recited in Appellant’s claim 2.” App. Br. 15.
Finally, in the Reply Brief, Appellant contends that
Appellant points out that Mgrdechian (pg. 11, pp0104, lines 15-
27) discloses that the target device (the alleged “second
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WHCD”) sends back to the initiating device (the alleged “first
WHCD”) a communication signal, including its own device
identifier (ID) and the device ID of all the wireless devices
within the range. Since Mgrdechian does not disclose or
suggest “a list of authorized devices”, in this regard,
Mgrdechian’s “all the wireless devices within the range” are not
the alleged “at least one (authorized) WHCD”. Therefore, the
Examiner's . . . arguments are still moot. Dependent claims 2-
10, 12-20 and 22-30 are submitted to be allowable.
Reply 7.
Claims 6-10, 16-20, and 26-30
Appellant contends that the Examiner erred in rejecting claims 6-10,
16-20, and 26-30 because
Mgrdechian’s remote computer system is also outside the
operating range of the initiating wireless device (the alleged
“first WHCD”). Mgrdechian therefore also does not disclose or
suggest “said first WHCD is within operating range of said
second WHCD . . . communicating information between said
first WHCD and said at least one authorized WHCD via said
second WHCD,” as recited by the Appellant in independent
claim 1 . . . [and c]laims 6-10, 16-20 and 26-30 depend directly
or indirectly from claims 1, 11 and 21, respectively, are also
submitted to be allowable.
App. Br. 16.
Issues on Appeal
Issue 1
Did the Examiner err in rejecting claims 1, 11, and 21 as being
anticipated because Biswas does not disclose the limitations “accessing by a
first wireless handheld communication device (WHCD), a list of authorized
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devices maintained at a second WHCD when said first WHCD is within
operating range of said second WHCD,” and “communicating information
between said first WHCD and said at least one authorized WHCD via said
second WHCD,” as recited by claim 1?
Issue 2
With respect to the unpatentability rejection of dependent claims 2,
12, and 22, did the Examiner err in finding that the combination of Biswas
with Mgrdechian teaches or suggests “receiving at said first WHCD, a
communication signal from said second WHCD, the communication signal
comprising at least one of: an identifier (ID) of said second WHCD and an
ID of said at least one authorized WHCD,” as recited in dependent claim 2?
Issue 3
With respect to the rejection of dependent claims 6-10, 16-20, and 26-
30, and similar to Issue 1, supra, did the Examiner err in finding that the
combination of Biswas with Mgrdechian teaches or suggests that “said first
WHCD is within operating range of said second WHCD . . . [and]
communicating information between said first WHCD and said at least one
authorized WHCD via said second WHCD,” as recited in independent claim
1, and as similarly recited in independent claims 11 and 21, from which
claims 6-10, 16-20, and 26-30 variously and ultimately depend?
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ANALYSIS
Issue 1
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions with respect to claim 1, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
the Examiner’s Answer (Ans. 3-4 and 8-9) in response to Appellant’s
Arguments (App. Br. 8-12; Reply 3-6).
In particular, we concur with the Examiner’s finding that Biswas
discloses “accessing by a first wireless handheld communication device
(WHCD), a list of authorized devices maintained at a second WHCD when
said first WHCD is within operating range of said second WHCD.” (Ans. 3-
4 and 8-9). Further in this regard, Appellant’s arguments that Biswas’ list of
“known devices” does not disclose Appellant’s claimed “list of authorized
devices” are unpersuasive. These arguments are particularly unpersuasive
because, as pointed out by the Examiner, Appellant’s Specification uses the
terms “known” and “authorized” interchangeably (see Spec. at ¶¶ [0050] –
[0053] (“list of known or authorized devices”)).
In addition, we find that Biswas’ list of “known” devices may be
construed to include “authorized” devices, as Appellant has not restricted the
claimed “list of authorized devices maintained at a second WHCD” to only
include authorized devices and exclude known but unauthorized devices.
That is, given the broadest reasonable interpretation of the claim language,
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and as disclosed by Biswas, we find that “authorized devices” could be
construed as merely being a subset of “known devices.”
As a result, we disagree with Appellant that “the Examiner has
rewritten Appellant’s claim 1 to include limitations or features, which are
not recited in Appellant’s claim language.” (See App. Br. 11 (emphasis
omitted)). To the extent that the Examiner may or may not have set forth a
“new argument” in the Answer, we also disagree with Appellant that the
Examiner has read limitations from the embodiment in Appellant’s Fig. 6C
into the claims. (See Reply 4).
Further, we find Appellant’s arguments regarding Appellant’s FIG. 7
and ¶ [0061] of the Specification (see Reply 5) to be unpersuasive, as
Appellant’s arguments are not commensurate with the scope of the
independent claims. Contrary to Appellant’s arguments, the limitations of
claim 1, for example, do not differentiate known devices from unauthorized
devices.
We also agree with the Examiner’s finding that Biswas discloses
“communicating information between said first WHCD and said at least one
authorized WHCD via said second WHCD,” as recited by claim 1 (Ans. 3-4
and 8-9).
Accordingly, Appellant has not convinced us of any error in the
Examiner’s characterization of the cited art and related claim construction.
Therefore, we sustain the Examiner’s anticipation rejection of claims 1, 11,
and 21.
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Issue 2
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions with respect to claim 2, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
the Examiner’s Answer (Ans. 4-5 and 10-11) in response to Appellant’s
Arguments (App. Br. 14-15; Reply 6-7).
In particular, we concur with the Examiner’s finding that Mgrdechian
teaches or suggests “a communication signal from said second WHCD, the
communication signal comprising at least one of: an identifier (ID) of said
second WHCD and an ID of said at least one authorized WHCD,” as recited
in dependent claim 2. (Ans. 4-5, 10-11).
Further in this regard, Appellant’s arguments are particularly
unpersuasive because, as pointed out by the Examiner, Mgrdechian’s FIGS.
8 and 9 and related disclosure teach the example of wireless connectivity
(e.g., via Bluetooth) between two cellphones (“A” and “B” in FIG.8) cited
by the Examiner (see Ans. 11) in which “at least one of . . . an identifier
(ID) of the second WHCD,” or “an ID of said at least one authorized
WHCD” is provided in the communication signal between Mgrdechian’s
wireless devices A and B. (See Ans. 11).
Although we find that Mgrdechian also meets the further limitations
argued by Appellant with respect to teaching a WHCD, as well as the
WHCD being outside the operating range of the initiating wireless device,
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we need not come to any conclusions with regard to these issues in reaching
our decision. Appellant’s arguments are misplaced, as the Examiner merely
relies upon Mgrdechian as teaching at least an identifier of the second
WHCD being in the communication signal between wireless devices.
Accordingly, Appellant has not convinced us of any error in the
Examiner’s characterization of the cited art and related claim construction.
Therefore, we sustain the Examiner’s unpatentability rejection of claims 2-
10, 12-20, and 22-30.
Issue 3
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions with respect to claim 6, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
the Examiner’s Answer (Ans. 6 and 10-11) in response to Appellant’s
arguments (App. Br. 16; Reply 8).
In particular, we point out that Appellant’s arguments with respect to
claims 6-10, 16-20, and 26-30 are misplaced, in that Mgrdechian is not
relied upon for the limitation cited by Appellant, i.e., “said first WHCD is
within operating range of said second WHCD . . . communicating
information between said first WHCD and said at least one authorized
WHCD via said second WHCD,” as recited by the Appellant in independent
claim 1. (See App. Br. 16).
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We note that Appellant has not argued the limitation present in claim
6, but instead argues that Mgrdechian does not make up for the alleged
deficiencies of Biswas with respect to independent claim 1. Thus,
Appellant’s arguments for dependent claims 6-10, 16-20, and 26-30 are
substantially the same as for Issue 1, supra.
Accordingly, Appellant has not convinced us of any error in the
Examiner’s characterization of the cited art and related claim construction.
Therefore, we sustain the Examiner’s unpatentability rejection of claims 6-
10, 16-20, and 26-30.
CONCLUSIONS
(1) Appellants have not established that the Examiner erred with
respect to the anticipation rejection of claims 1, 11, and 21 under 35 U.S.C.
§ 102(b), such that the rejection of these claims is sustained.
(2) Appellants have not established that the Examiner erred with
respect to the unpatentability rejection of claims 2-10, 12-20, and 22-30
under 35 U.S.C. § 103(a), such that the rejection of these claims is sustained.
(3) On this record, claims 1-30 have not been shown to be
patentable.
DECISION
The Examiner’s rejection of claims 1-30 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).
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AFFIRMED

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