Ex Parte Liscano et al

Board of Patent Appeals and Interferences

Jun 5, 2009

10287850 (B.P.A.I. Jun. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAMIRO LISCANO, VICTOR AZONDEKON,
and MICHEL BARBEAU
____________

Appeal 2008-002721
Application 10/287,8501
Technology Center 2400
____________

Decided: 2 June 8, 2009
____________

Before LANCE LEONARD BARRY, JAY P. LUCAS, and
CAROLYN D. THOMAS, Administrative Patent Judges.

C. THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed November 5, 2002. The real party in interest is Mitel
Networks Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 22-45 mailed December 14, 2006, which are all the claims
remaining in the application, as claims 1-21 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellants invented a system and method for communicating resource
properties for facilitating the selection of electronic services using infrared
and network address identification. (Spec. 15, Abstract.)

B. ILLUSTRATIVE CLAIMS
The appeal contains claims 22-45. Claims 22 and 38 are independent
claims. Claims 22 and 38 are illustrative:
22. A method of communicating properties of a resource
located on a network, the resource having a separate IR
communications capability, the method being for facilitating the
selection of electronic services available at said resource, the method
comprising the steps of:
directing a mobile device, said mobile device being
connected to the network, or an association device with the mobile
device for point to point IR communication with the resource;
receiving at the resource an ID advertising message from
the mobile device or the association device through an infrared
communication port of said resource using an infrared communication
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channel, the ID advertising message containing a network address for
the mobile device; and
sending a service agent advertising message to the
network address of the mobile device via the network, the service
agent advertising message including the network address for the
network and the properties of the resource.

38. A system for communicating resource properties for
facilitating the selection of electronic services, the system comprising:
a resource having an infrared point to point
communication port and a network port, the resource being operable
to receive data from a mobile device connected to the network or an
association device associated with the mobile device through the
infrared communication port using an infrared communication
channel, said data comprising an ID advertising message including the
network of the mobile device;
the resource being connected to a network at the network
port and being further operable to send a service advertising message
to a network address of the mobile device via the network, the service
agent advertising message including a network address and properties
of the resource;
said properties including electronic services provided by
the resource.

C. REFERENCES
The references relied upon by the Examiner as evidence in rejecting
the claims on appeal are as follows:
Lamming US 6,922,725 B2 Jul. 26, 2005
(Filed Sep. 7, 2001)

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Forslow US 6,954,790 B2 Oct. 11, 2005
(Filed Dec. 5, 2000)
Beadle US 7,039,709 B1 May 2, 2006
(Filed May 31, 2000)

D. REJECTIONS
The Examiner entered the following four (4) rejections which are
before us for review:
(1) Claims 38 and 39 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Lamming;
(2) Claims 40-45 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lamming in view of Forslow;
(3) Claims 22, 23, 30, and 31 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lamming in view of Beadle; and
(4) Claims 24-29 and 32-37 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lamming in view of Forslow and further in view of
Beadle.

II. PROSECUTION HISTORY
Appellants appealed from the Final Rejection and filed an Appeal
Brief (App. Br.) on August 13, 2007. The Examiner mailed an Examiner’s
Answer (Ans.) on October 19, 2007. Appellants filed a Reply Brief (Reply
Br.) on November 21, 2007.

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III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Lamming
1. Lamming discloses “a method and apparatus for processing a
document service request originating from a mobile computing device that
bridges communications between a document server and an output device
that operate on separate networks with no adequate preexisting
connectivity.” (Col. 1, ll. 18-23.)
2. Lamming discloses:
A document service request is processed that originates from a
mobile computing device and that is directed at an output
device in communication with the mobile computing device
over a first communications channel of the mobile computing
device. A document server communicates with a transceiver to
receive over a second communications channel a document
service request originating from the mobile computing device.
. . . The document server transmits to the output device, via the
second communications channel established by the mobile
computing device . . .

(Abstract.)
3. Lamming discloses that “[i]n FIG. 1, the networks 102 and 104 are
adapted to be interconnected using transceivers 103 and 105, respectively.
The transceivers 103 and 105 may, for example, be IR (InfraRed) or RF
(Radio Frequency) transceivers or any other wireless mechanism.” (Col. 6,
ll. 3-7.)
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4. Lamming discloses that “[a] network is defined herein as a
collection of one or more computational devices that is adapted to
communicate with each other. The network may be wired or wireless, wide
(WAN) or local (LAN).” (Col. 5, ll. 45-48.)
5. In Lamming, “in FIG. 2, the mobile computing device 110
communicates using an LCC transceiver 212 (e.g., an IR transceiver) over
the first communications channel 120 with the output devices 106. . . . In
addition, the mobile computing device 110 communicates using UCC
transceiver 214 (e.g., an RF transceiver) over the second wireless
communications channel 122 . . . with the document server 108.” (Col. 7, ll.
56-67.)
6. Lamming discloses that “the LCC gateway context insertion sliver
1215 authenticates the request using the certificate server 1240 and appends
location context information to the request. The location context
information allows the token-enabled server 1244 to determine which
gateway forwarded a particular request document service request.” (Col. 17,
ll. 40-45.)

Beadle
7. Beadle discloses in Fig. 11, “a mobile client browser 1101, such as
a browser on a laptop, hand-held personal computer or mobile telephone,
which is connected to the network via a wireless connection.” (Col. 11, ll.
33-48.)
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8. Beadle discloses that “a single client browser is permitted to
simultaneously access the Internet via more than one network connection
routes during a single network session.” (Col. 9, ll. 54-57.)

IV. PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005), citing Minn.
Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d
1559, 1565 (Fed. Cir. 1992). “Anticipation of a patent claim requires a
finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder
Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if
granting patent protection on the disputed claim would allow the patentee to
exclude the public from practicing the prior art, then that claim is
anticipated, regardless of whether it also covers subject matter not in the
prior art.”) (internal citations omitted).
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
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Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)). Therefore, we look to Appellants’ Brief to show error in
the proffered prima facie case. Only those arguments actually made by
Appellants have been considered in this decision. Arguments which
Appellants could have made but chose not to make in the Brief has not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

V. ANALYSIS
Grouping of Claims
In the Brief:
Although there are three (3) separate § 103(a) rejections, Appellants
argue claims 22-37 as a group (App. Br. 5-7). For claims 23-37, Appellants
merely repeat the same argument made for claim 22. We will, therefore,
treat claims 23-37 as standing or falling with claim 22.
Although claims 38-45 include both § 102(e) and § 103(a) rejections,
Appellants argue claims 38-45 as a group (App. Br. 7-8). For claims 39-45,
Appellants merely repeat the same argument made for claim 38. We will,
therefore, treat claims 39-45 as standing or falling with claim 38.
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See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588,
590 (Fed. Cir. 1991).

The Obviousness Rejection
We first consider the Examiner’s rejection of the claims under
35 U.S.C. § 103(a).

Claims 22-37
Appellants contend that “[n]owhere in Lamming does the mobile
device ever send its network address to the resource (‘output device’).”
(App. Br. 6.) Appellants further contend that “[n]owhere in Beadle,
including the Examiner’s cited passages (above), does a mobile device ever
send its network address to a resource as claimed, much less via an IR
communication channel as claimed.” (Id.)
Appellants also contend:
Nowhere in either reference does a resource (e.g., printer)
respond to the mobile device through a different
communication channel than that of the message it is
responding to. In fact, Lamming teaches away from this
limitation by disclosing that a correspondence initiated through
an IR channel is continued through the same IR channel. Even
Beadle teaches away from this limitation by teaching that all
communications are conducted through the same network –
specifically the Internet, in contrast to the claimed non-network
IR channel – . . .
(App. Br. 7.)
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The Examiner found that Lamming discloses:
A printer is able to communicate with a mobile device over a
limited communications channel (LCC), e.g., point to point IR.
The printer may also be connected to a network; figures 11-12,
col. 6 lines 56-59; The document server also has IR
communication capabilities and may be additionally connected
to a network; see col. 7 lines 36-40; Each of the wireless
connections may be partially used to complete a
communication link between the mobile device, the output
device, and the document server[].
(Ans. 7).

Issue: Have Appellants shown that the Examiner erred in finding that
Lamming discloses “receiving at the resource . . . the ID advertising
message containing a network address for the mobile device” and “sending
a service agent advertising message to the network address of the mobile
device via the network,” as set forth in claim 22?

In essence, Appellants contend that a response to the mobile device
must be sent through a different communication channel than that of the
message sent by the mobile device (App. Br. 7). We disagree.
Claim 22 merely recites a resource and a mobile device located on or
connected to “a network,” respectively. However, no specific definition is
attached to the term “network” in claim 22. “Without evidence in the patent
specification of an express intent to impart a novel meaning to a claim term,
the term takes on its ordinary meaning.” Optical Disc Corp. v. Del Mar
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Avionics, 208 F.3d 1324, 1334 (Fed. Cir. 2000). The ordinary meaning of
“network” is a set of computers (e.g., computing devices) connected
together. Merriam-Webster’s Collegiate Dictionary, p. 780 (10th Edition
1997). Thus, we find that the claimed “network” includes any
connection/communication between computing units. Thus, Lamming’s
infrared communication channel constitutes a network.
As for Appellants’ contention that a different communication channel
is being used from the resource to the mobile device, then from the mobile
device to the resource, we find that the Appellants have not illustrated this
feature in the claimed invention and have instead chosen to draft the claims,
claim 22 in particular, far more broadly. During patent prosecution, claims
are construed as broadly as is reasonable. Hence, the claimed “sending a
service agent advertising message to the network address of the mobile
device via the network” reads on any communication link, i.e., network,
including an InfraRed (IR) link. The claimed “network” is not limited to a
different network, particularly not a different IP network.
Lamming discloses a mobile computing device that bridges
communications between a document server and an output device (FF 1-2).
Lamming uses IR and/or RF transceivers to interconnect networks or
collections of devices adapted to communicate with each other (FF 3-5).
Thus, the claimed “directing a mobile device, said mobile device being
connected to the network, . . . for point to point IR communication with the
resource” reads on Lamming’s above-noted features.
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Similarly, Beadle discloses a mobile client connected to a network via
wireless connection (FF 7) and that a single mobile client can access the
Internet via more than one network connection (FF 8). Thus, even if claim
22 could be interpreted to require two different networks, which we find it
does not, Beadle discloses a single mobile device connected to the network
through more than one network channels/connections.
As for the claimed “message containing a network address for the
mobile device,” Appellants contend that Lamming’s mobile device does not
send its network address to the resource (App. Br. 6). Here, Appellants have
not provided any specific definition for the term “network address” in the
claims or limited the term “network address” to any specific type in the
specification. A network address can include various forms, i.e., a base
address, an IP address, a logical address, etc. Here, we find that the claimed
“network address” reads on any location/ID designation.
With that in mind, we find that Lamming discloses several
embodiments that suggest sending address information from a mobile device
to a resource. For example, we find that Lamming discloses appending
location information to the request to allow the server to determine which
gateway forwarded the request (FF 6). Further, Lamming discloses sending
out “discovery requests” from a Bluetooth™ enabled mobile computing
device to a Bluetooth™ enable printer (Lamming, col. 9, ll. 27-29).
Bluetooth™ protocol requires using a Universally Unique Identifier (UUID),
meaning that every device has a unique address. It is known in the art that
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Bluetooth devices use a Bluetooth address to identify other Bluetooth
devices. See http://www.mobileinfo.com/Bluetooth/FAQ.htm.
Furthermore, Lamming discloses a request that originates from a mobile
computing device and this is directed at a specific output device in
communication with the mobile computing device over a first
communication channel (Abstract). We find that such an embodiment
discloses a point to point communication that requires transmitting address
information, as opposed to a general broadcast situation.
The Examiner also found that “Lamming’s mobile device sends a
service discovery request (see fig. 3 #306). This request includes the
network address of the mobile device because otherwise, the mobile device
would not be able to receive the service advertising message being sent by
the printer in the next step #308.” (Ans. 11.) We agree.
We find that one skilled in the art would recognize that a request for
service/information must reasonably include identification information of
the requestor so as to receive a reply. For example, Lamming sends an IR
request to the server using a transceiver and receives a document from the
document server (FF 5). Thus, with all of the above-noted embodiments of
Lamming considered, Lamming reasonably discloses a message from the
mobile device containing a network address for that mobile device.
As for the Forslow reference, Appellants fail to provide any
arguments to dispute the findings found therein by the Examiner. We note
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that arguments which Appellants could have made but chose not to make in
the Briefs have not been considered and are deemed to be waived.
Thus, Appellants have not persuaded us of error in the Examiner’s
conclusion of obviousness for representative claim 22. Therefore, we affirm
the Examiner’s § 103 rejection of independent claim 22 and of claims 23-37,
which fall therewith.

The Anticipation Rejection
We now consider the Examiner’s rejection of claims 38 and 39 under
35 U.S.C. § 102(e) as being anticipated by Lamming (Appellants also group
the § 103 rejection of claims 40-45 with this argument).
In essence, Appellants rely on the same arguments presented supra
regarding claim 22 for disputing the Examiner’s findings for claim 38 (App.
Br. 7-8). Given that we have already found those arguments unpersuasive,
we affirm the § 102 rejection of claim 38.
Thus, Appellants have not persuaded us of error in the Examiner’s
conclusion of anticipation for representative claim 38. Therefore, we affirm
the Examiner’s § 102 rejection of independent claim 38 and of claims 39-45,
which fall therewith.

VI. CONCLUSIONS
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 22-45.
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Thus, claims 22-45 are not patentable.

VII. DECISION
In view of the foregoing discussion, we affirm the Examiner’s
rejection of claims 22-45.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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F. Drexel Feeling, Esq.
JONES, DAY, REAVIS & POGUE
North Point
901 Lakeside Avenue
Cleveland OH 44114