Ex Parte Scales et al

Board of Patent Appeals and Interferences

Sep 7, 2010

10103782 (B.P.A.I. Sep. 7, 2010)

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.
10/103,782 03/25/2002 James Scales 059341-0290
(NOKEO/P31787
3812
30542 7590 09/08/2010
FOLEY & LARDNER LLP
P.O. BOX 80278
SAN DIEGO, CA 92138-0278
EXAMINER
PATEL, NIMESH G
ART UNIT PAPER NUMBER
2111
MAIL DATE DELIVERY MODE
09/08/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte JAMES SCALES, VARLEY BULLARD, and PETRI
SYRJALA
________________

Appeal 2009-010867
Application 10/103,782
Technology Center 2100
________________

Before JOHN A. JEFFERY, JAMES D. THOMAS, and CAROLYN D.
THOMAS, Administrative Patent Judges.

J. THOMAS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, 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 2009-010867
Application 10/103,782

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 34-37, 39, 41, 42, 44 and 46-65. Appellants have
canceled claims 1-33, 38, 40, 43, and 45. We have jurisdiction under 35
U.S.C. § 6(b). An Oral Hearing was held on this appeal on September 1,
2010.
We affirm.

Invention
Method of configuring electronic devices
A multifunctional mobile telephone handset is connected to a
PC using a Universal Serial Bus. During bus enumeration, a
device class descriptor is returned by the handset to the PC. The
PC's operating system receives information relating to one of
the functions of the handset and assigns an appropriate device
driver.

(Abstract; Spec. 16; Figs. 2-11).
Representative Claim
34. A method of configuring first and second electronic devices, the first
electronic device being a master and the second electronic device a slave,
said second slave device being able to perform a plurality of selectable
predefined different functions usable by the first electronic master device,
each of the different selectable predefined functions being associated with an
appropriate device driver which relates to a particular device class, the
second device arranged to have a different device descriptor for each
predefined function, the method comprising:
receiving, at the second electronic slave device, preference
information relating to one of the plurality of different selectable predefined
functions of the second electronic slave device to enable selection of one of
the plurality of different predefined functions;
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providing the first electronic master device with the device descriptor
relating to the one selected different predetermined function; and
interfacing the first electronic master device with the one selected
different predefined function so as to allow the first electronic master device
to use the one selected different predefined function, the interfacing
including assigning an appropriate device driver based upon the provided
device descriptor relating to the one selected different predefined function.

Prior Art and Examiner’s Rejection
The Examiner relies on the following references as evidence of
anticipation and obviousness:
Farazmandnia 6,625,472 B1 Sept. 23, 2003
(filed May 13, 1999)

DiSanza 6,857,034 B1 Feb. 15, 2005
(filed Apr. 14, 2000)

Additionally, the Examiner relies upon documentation associated with the
USB standard in the art:
Universal Serial Bus Specification Revision 1.1, Compaq, Intel, Microsoft,
NEC, 23, 29, 180, 215, 216 (1998).

Claims 34-37, 39, 41, 42, 44, 46-48, 50, 51, 54-56, and 58 stand
rejected under 35 U.S.C. § 102(e) as being anticipated by DiSanza.
(Additional evidence of the USB standard in the art, discussed in detail in
DiSanza, is provided by the noted pages of this standard’s documentation.
This additional reliance and evidence is not contested.) The remaining
claims on appeal, 49, 52, 53, 57, and 59-65, stand rejected under 35 U.S.C. §
103(a). As evidence of obviousness, the Examiner relies upon DiSanza in
view of Farazmandnia.

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Claim Groupings
Based upon Appellants’ arguments in the principal brief on appeal,
Appellants only argue all independent claims collectively. We therefore
select independent claim 34 as representative of all claims within the
rejections under 35 U.S.C. § 102. Patentability of those claims within the
rejection under the 35 U.S.C. § 103 relies upon the arguments presented with
respect to representative independent claim 34 on appeal.

ANALYSIS
We refer to, rely on, and adopt the Examiner’s findings and
conclusions set forth in the Answer. Our discussions will be limited to the
following points of emphasis.
From our perspective, the Examiner correctly isolates the issue and
substance of the Appellants’ basic argument presented beginning at page 8
of the principal brief on appeal as reflected in the paragraph bridging pages
10 and 11 of the Answer. The focus of the common arguments of all claims
within the rejection under 35 U.S.C. § 102 rejection is the feature of the
slave device being able to perform a plurality of selectable predefined
different functions, where this slave/second device is “arranged to have a
different device descriptor for each predefined function.”
In response to Appellants’ arguments in the principal Brief, the
Examiner refines his analysis beginning at page 11 of the Answer by
correspondingly quoting more sections of the USB standard document.
Perhaps unique to this standard is the characterization of a function as a
“USB device” which may be typically implemented as a separate peripheral
device. A physical package may implement multiple functions using an
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embedded hub with a single USB cable. This approach is labeled a
“compound device” or a “compound USB device.” It is further stated each
function contains configuration information which must be configured in
communication with the host or master device.
This unique characterization from the USB specification is further
characterized by the Examiner by reliance upon a different portion of it at
the bottom of the page 11 of the Answer where this depicted “compound
device” or “compound USB device” includes within it the noted USB hub
along with a plurality of “USB devices.” The description associated with
this figure indicates that a so-called “USB device” may provide additional
functionality to the host known as functions. As expressed at the top of page
12 of the Answer, this standard goes on to indicate that multiple functions
may be packaged together in what appears to be a single physical device.
The Examiner’s closing remarks at page 12 are persuasive. We agree
with the Examiner’s conclusion that has been initially expressed at page 3 of
the Answer that “it is inherent in USB for the USB device to provide a
device descriptor relating to the function of the peripheral to the master for
configuration.” The material reproduced by the Examiner at pages 10-12 of
the Answer is consistent with Appellants’ reliance upon an additional
portion of the USB documentation at the top of page 10 of the principal
Brief that further characterizes as something known in the art, a “USB
device” has only one device descriptor. Because the Examiner has clearly
shown to us that the art within USB distinguishes a “USB device”
differently from a “compound USB device” or an additional characterization
of a separate peripheral device, there appears to be no inconsistency with the
Examiner’s views as to what DiSanza would have indicated was well known
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in the art to a person of ordinary skill in the art. Thus, to an artisan, each of
plural “USB devices” or functions within a “compound USB device” has its
own device descriptor.
The Examiner’s closing remarks at page 12 of the Answer further
make reference to DiSanza’s Figure 3 which is a separate embodiment that
characterizes a variation from the initial embodiment depicted in DiSanza’s
Figure 1. With respect to the showing in Figure 2 initially relied upon by the
Examiner, the discussion at column 2, lines 46 through 51, indicates that a
peripheral device may include a switch 42 that is permitted to select either of
two different types of devices within the peripheral device 12. On the other
hand, the brief description of Figure 3 at column 2, lines 61-64, teaches that
within a peripheral device 12 illustrated there: “[t]he USB hub 46 allows
either the USB/IR module 34, the peripheral device circuitry 32, and/or the
USB port 48 to be coupled to the USB connector 30.” Therefore, based
upon this latter description, a person of ordinary skill in the art would clearly
understand that this showing in the Figure 3 embodiment of peripheral
device 12 noted by the Examiner at page 12 of the Answer is consistent with
what the discussion within the USB standard itself has been shown by the
Examiner to be characterized as a “compound USB device.”
Based upon this understanding, we are strongly persuaded by the
Examiner’s correct analysis that DiSanza would necessarily indicate to a
person of ordinary skill in the art that at least with respect to the Figure 3
embodiment of this reference, the peripheral device 12 shown there
implicitly/inherently may be characterized as having different device
descriptors associated with each predefined function (illustrated “USB
device”) to the extent argued otherwise at page 9 in the principal brief.
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Correspondingly, Appellants’ Reply Brief makes no distinction in the
arguments there regarding a device and a “USB device” upon which the
Examiner’s position has been predicated. Instead, Appellants appear to
argue the disclosed invention allegedly distinguishes the teachings identified
in the latter pages of the Answer we have reproduced earlier. For example,
the presently claimed invention in representative independent claim 34 on
appeal does not exclude an embedded hub to the extent that the Examiner
relies upon the Figure 3 embodiment of DiSanza and the corresponding USB
standard teachings would so indicate to one of ordinary skill in the art.

CONCLUSION and DECISION
Appellants have not shown that the Examiner erred in finding that
DiSanza anticipates within 35 U.S.C. § 102 the subject matter of
representative independent claim 34 on appeal and, correspondingly, that the
separately identified claims rejected within 35 U.S.C. § 103 would have
been obvious.
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).

AFFIRMED

Erc

FOLEY & LARDNER LLP
P.O. BOX 80278
SAN DIEGO, CA 92138-0278