Ex Parte Stewart et al

Board of Patent Appeals and Interferences

Nov 30, 2010

10997444 - (D) (B.P.A.I. Nov. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DANIEL F. STEWART, JAY R. ALMAULA, PEKIN E. EREN,
STEVEN K. ROSSI, and JOSEPH F. WODKA
____________________

Appeal 2009-007808
Application 10/997,4441
Technology Center 2400
____________________

Before JAY P. LUCAS, DEBRA K. STEPHENS, and JAMES R. HUGHES,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed November 24, 2004. The real party in interest is
Motorola Inc.
2 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 2009-007808
Application 10/997,444

2
STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 4, 6 to 17, 19,
and 20 under authority of 35 U.S.C. § 134(a). The Board of Patent Appeals
and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). Claims 5
and 18 are cancelled.

We reverse.

Appellants’ invention relates to a method of providing a link for
simultaneously viewing two Universal Plug and Play platforms. (See Spec.
¶ [0013].) In the words of Appellants:
When providing a link via [a] Universal
Plug and Play relationship, the process preferably
provides the local network platform with a
Universal Plug and Play view of the second
platform. More particularly … this Universal Plug
and Play view of the second platform causes the
second platform to appear to be a part of the local
network. … [T]his link can also serve to provide
such a second platform with a Universal Plug and
Play view of at least one platform as comprises a
part of the local network, again so that this at least
one platform itself appears to be a part of the local
network that comprises the second platform.
So configured the respective platforms of
these distinct local networks are able to share
digital content with one another via their Universal
Plug and Play capabilities.
(Spec. ¶¶ [0018] and [0019]).

Appeal 2009-007808
Application 10/997,444

3
The following illustrates the claims on appeal:
Claim 1:
1. A method for use in a local network
comprising:

establishing a Universal Plug and Play
relationship with at least one platform that
comprises a part of the local network;

providing a link via that Universal Plug and
Play relationship to a second platform, which
second platform is:

external to the local network; and

Universal Plug and Play compatible;

wherein providing a link further comprises
providing the at least one platform with a
Universal Plug and Play view of the second
platform; and

wherein providing a link further comprises
providing the second platform with a Universal
Plug and Play view of the at least one platform.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kikkawa US 2005/0021786 A1 Jan. 27, 2005
(filed on Aug. 29, 2003)
Lord US 2005/0240758 A1 Oct. 27, 2005
(filed on Mar. 31, 2004)

Appeal 2009-007808
Application 10/997,444

4
REJECTION
The Examiner rejects the claims as follows:

Claims 1 to 4, 6 to 17, 19 and 20 stand rejected under 35
U.S.C. § 103(a) for being obvious over Lord in view of Kikkawa.

ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a). The issue specifically turns
on whether Lord and Kikkawa render obvious Appellants’ method claim 1
wherein, in relevant part, “a link further comprises providing the at least one
platform with a Universal Plug and Play view of the second platform” and “a
link further comprises providing the second platform with a Universal Plug
and Play view of the at least one platform.”

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Disclosure
1. Appellants have invented a method and an apparatus for providing a
first platform with a Universal Plug and Play view of a second platform and
a second platform with a Universal Plug and Play view of a first platform.
(See claim 1.) The first and second platforms are contained in two distinct
networks (¶ [0019]).
Appeal 2009-007808
Application 10/997,444

5
Kikkawa
2. The Kikkawa reference discloses controlling access of devices to a
single Universal Plug and Play network (¶ [0010]). Only one view of a
platform in an individual Universal Plug and Play network is disclosed (id.).

PRINCIPLE OF LAW
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).

ANALYSIS
Arguments with respect to the rejection
of claims 1 to 4, 6 to 17, 19 and 20
under 35 U.S.C. § 103(a)

The Examiner has rejected the noted claims for being obvious over
Lord in view of Kikkawa, pages 4 to 13 of the Examiner’s Answer.
Appellants contend the Examiner has not made a finding for both of
the “wherein” clauses reproduced above in exemplary claim 1 (Brief 7).
The Examiner responds in the Answer that “Although [Kikkawa] does
not explicitly teach simultaneously providing the second platform with a
view of the one platform, this is [an] obvious variation to one of ordinary
skill in the art. If one can provide a view of one platform, one can easily
modify it so that the second platform [has a] view of the first platform.”
(Ans. 5, middle).
We disagree with the Examiner. We find that Appellants have
invented a method and an apparatus for providing a first platform with a
Appeal 2009-007808
Application 10/997,444

6
Universal Plug and Play view of a second platform and a second platform
with a Universal Plug and Play view of a first platform (FF#1). The first and
second platforms are contained in two distinct networks (id.). In contrast,
the Kikkawa reference discloses controlling access of devices to a single
Universal Plug and Play network (FF#2). Only one view of a platform in an
individual Universal Plug and Play network is disclosed (id.).
The Examiner appears to have succumbed to the trap of hindsight bias
in completing the rejection of claim 1. (See KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 421 (2007))(holding that “[a] factfinder should be aware, of
course, of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning.”). Here, the cited prior art (the
Kikkawa reference) at best shows a single view of an individual Universal
Plug and Play network (FF#2).3 However, we cannot say that disclosure of
one such view of a platform in a single Universal Plug and Play network is
the same or similar to “a link further comprises providing the at least one
platform with a Universal Plug and Play view of the second platform” and “a
link further comprises providing the second platform with a Universal Plug
and Play view of the at least one platform,” as claim 1 requires. We find no
teaching in the cited art to support the Examiner’s conclusion that it would
be obvious to provide the two way connection as claimed. It is a leap
unsupported by the cited prior art. Accordingly, we reverse.

3 We note that Kikkawa’s title is illustrative, inasmuch as a “Device
Authentication Apparatus …” offers no suggestion of the interconnectivity
between two distinct localized networks that is the focus of Appellants’
claimed invention and disclosure. (See Spec. ¶¶ [0002] and [0013].)
Appeal 2009-007808
Application 10/997,444

7
CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have shown that the Examiner erred in rejecting claims 1 to 4, 6
to 17, 19, and 20.

DECISION
We reverse the Examiner’s rejection of claims 1 to 4, 6 to 17, 19 and
20.

REVERSED

peb

Motorola Inc.
600 North US Highway 45
W4 – 39Q
Libertyville, IL 60048-5343