Ex Parte Ojala et al

Patent Trial and Appeal Board

Apr 26, 2017

14524826 (P.T.A.B. Apr. 26, 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.
14/524,826 10/27/2014 Juho OJALA 65093-US-CON 6254
100809 7590 04/28/2017
Core Wireless Licensing Ltd
5601 Granite Parkway
Suite 1300
Plano, TX 75024
EXAMINER
TAYLOR, JOSHUA D
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
04/28/2017 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):
ipadmin-core@core-wireless.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUHO OJALA, JOHAN WIKMAN, JUKKA K. NURMINEN, and
ATTE LAHTIRANTA
Appeal 2016-006712
Application 14/524,826
Technology Center 2400
Before JEAN R. HOMERE, MICHAEL M. BARRY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—30. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Core Wireless Licensing
S.a.r.l. App. Br. 3.
Appeal 2016-006712
Application 14/524,826
Introduction
Appellants state that “embodiments of the present invention relate to
providing access to data over a network, and more specifically to providing
access to media files through an entity (e.g., a server).” Spec. 12 (Technical
Field). Claim 1 is representative:2
1. A method comprising:
receiving, via short-range communication, at an
apparatus, identification information from a wireless device
within short-range communication with the apparatus;
sending, via one or more processors of the apparatus, at
least a portion of the received identification information to a
second apparatus; and
receiving, from the second apparatus and in response to
sending the at least portion of the received identification
information, one or more media files at the apparatus, wherein
the one or more media files are associated with the wireless
device.
App. Br. 11 (Claims App’x).
Rejections
Claims 1,5, 7—12, 16—21, 25, and 27—30 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Tischer (US 2005/0188399 Al; Aug.
25, 2005) and Woodworth et al. (US 2008/0062246 Al; Mar. 13, 2008).
Final Act. 2—10.
Claims 2—4, 13—15, and 22—24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Tischer, Woodworth, and Massimi (US
2009/0217324 Al; Aug. 27, 2009). Final Act. 10-14.
2 Appellants argue the patentability of claims 2—30 solely on the basis of the
arguments presented for claim 1. See App. Br. 5—9.
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Appeal 2016-006712
Application 14/524,826
Claims 6 and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tischer, Woodworth, and Myllyla et al. (US
2008/0275960 Al; Nov. 6, 2008). Final Act. 14-15.
ANALYSIS
In arguing the Examiner errs in the rejection of claim 1, Appellants
contend the combination of Tischer and Woodworth does not teach the
recited limitations of the first receiving step and the sending step. See App.
Br. 5—6. After summarizing the Examiner’s rejection of claim 1, Appellants
specifically contend:
According to the Final Office Action’s proposed mapping
therefore, performing Claim 1 would entail receiving, via short-
range communication, at an apparatus (device 116A),
identification information from a wireless device (device
116B/C) within short-range communication with the apparatus
(device 116B [sic] [recte 116A]) and sending, via one or more
processors of the apparatus (device 116A), at least a portion of
the received identification information (received from device
116B) to a second apparatus (multi-network relay 104).
However, the Final Office Action’s proposed
modification of Tischer in view of Wood (i.e., identification
information of device 116B/C is routed through the multi­
network relay 104 before being delivered to device 116A) is
entirely different than Appellant’[s] Claim 1.
App. Br. 6.
In other words, Appellants simply conclude claim 1 “is entirely
different” than the described mapping of the Examiner’s combination of the
teachings of Tischer and Woodworth, without explaining how or why this is
the case. The Examiner answers that
Appellant has misconstrued Examiner’s interpretation of the
prior art of record as well as how the teachings of the secondary
reference would modify the primary reference. Appellant is
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Appeal 2016-006712
Application 14/524,826
still referencing the interpretation of the components in the
Tischer reference alone. Once modified by Woodworth, the
correlation between the components of Tischer and Appellant’s
claimed invention are as such: Appellant’s apparatus is
Tischer’s element 104; Appellant’s wireless device is Tischer’s
116A; and Appellant’s second apparatus is Tischer’s 116B.
Ans. 6. Appellants provide no rebuttal to the Examiner’s findings as
explicated in the Answer, which we find to be reasonable. In view of the
foregoing, we find Appellants’ arguments unpersuasive.
Appellants further argue the Examiner errs because modifying
Tischer, “which calls for peer-to-peer video feed exchange for proximally
located devices at an event,” to include the “uploading, storing, and retrieval
of video messages” of Woodworth “would change the principle of operation
of Tischer, and is thus improper.” App. Br. 7. “Storing a video message for
later retrieval and playback runs counter to the purpose and teachings of
Tischer, which calls for peer-to-peer video feed exchange for proximally
located devices at an event.” Id. (citing Tischer 115).
We find this argument unpersuasive also. We remind Appellants the
argument that a proposed combination of references would render one of the
references unsuitable for its intended purpose or would change its principle
of operation is a teaching away argument. In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984) (The court concluded that in effect, “French teaches away
from the board's proposed modification” because “if the French apparatus
were turned upside down, it would be rendered inoperable for its intended
purpose”). The Federal Circuit has held “[a] reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
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Application 14/524,826
Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 553 (Fed.Cir.1994)).3 In this case, Woodworth’s technique of
uploading, storing, and retrieving video messages would further complement
Tisher’s peer-to-peer video feed. Appellants have not proffered any portion
of Woodworth that discourages, criticizes or otherwise discredits
alternatively peer-to-peer video feed of Tischer, as proposed by the
Examiner. For at least the aforementioned reasons, we are not persuaded or
error in the Examiner’s rejection of claim 1. As the Examiner answers, and
we agree,
it is not the concept of storing content for later transmission for
which Woodworth is being used, but rather the concept that,
once ready for transmission, such a transmission may be
performed over a direct link (as is disclosed in Tischer) or
alternatively routed through a server (as is not disclosed in
Tischer).
Ans. 8 (citing Woodworth 148) (further noting that Woodworth 149 teaches
“the video message may be transmitted and presented in ‘real-time’”); see
also id. at 9 (explaining how the “modification of Tischer using the
teachings of Woodworth would have produced predictable and desirable
results”).
3 “If references taken in combination would produce a ‘seemingly
inoperative device,’ . . . such references teach away from the combination
and thus cannot serve as predicates for a prima facie case of obviousness.”
McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001)
(citation omitted); see also In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1382 (Fed. Cir. 2007) (“a reference teaches away from a combination
when using it in that combination would produce an inoperative result,” but
the obviousness analysis must account for “modifications that one skilled in
the art would make to a device borrowed from the prior art”).
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Application 14/524,826
We note Appellants provide no rebuttal to the Examiner’s additional
findings in the Answer regarding the combination of Tischer’s and
Woodward’s teachings. We find the Examiner has articulated sufficient
“reasoning with some rational underpinning to support the legal conclusion
of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006).
Accordingly, we sustain the rejection of claim 1. In doing so, we
adopt the findings and reasons of the Examiner as explained in the Answer.
See Ans. 2—9.
DECISION
For the above reasons, we affirm the rejection of claims 1—30. No
time period for taking any subsequent action in connection with this appeal
maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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