SHARP KABUSHIKI KAISHA

Patent Trials and Appeals Board

Mar 24, 2022

2021001913 (P.T.A.B. Mar. 24, 2022)

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. 15/128,568 09/23/2016 Yoko KUGE 1152-0442PUS1 9905 2292 7590 03/24/2022 BIRCH STEWART KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 EXAMINER LA, PHONG ART UNIT PAPER NUMBER 2469 NOTIFICATION DATE DELIVERY MODE 03/24/2022 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): mailroom@bskb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte YOKO KUGE, MASAFUMI ARAMOTO, and MASAYUKI ENOMOTO ________________ Appeal 2021-001913 Application 15/128,568 Technology Center 2400 ________________ Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and JASON J. CHUNG, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection of claims 1, 2, 5, and 6.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. INVENTION The invention relates to enhancing security of payment transactions. Spec. 2:11-12. Claim 1 is illustrative of the invention and is reproduced below: 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, Sharp Kabushiki Kaisha is the real party in interest. Appeal Br. 1. 2 Claims 3 and 4 are cancelled. Appeal Br. 2. Appeal 2021-001913 Application 15/128,568 2 1. A ProSe Server, deployed in a Packet Data Network (PDN), having a function of proximity detection of User Equipments (UEs) including at least a first UE, a second UE and a third UE, the ProSe Server comprising: communication circuitry; and a controller, wherein the communication circuitry is configured to receive a first control message transmitted by the first UE communicating with the second UE through a core network, the first control message includes identification information indicating that switching of a communication is required, the controller is configured to: select the third UE having a relay function, based on the identification information; and instruct the first UE to perform direct communication by using LTE with the third UE, by transmitting a second control message to the first UE as a response to the first control message, wherein the second control message includes information of the third UE, and the ProSe Server performs a ProSe function in the PDN. Appeal Br. 1 (Claims Appendix) (emphasis added). REJECTION The Examiner rejects claims 1, 2, 5, and 6 under 35 U.S.C. § 103 as being unpatentable over the combination of Johnsson (WO 2013/112465 A1; published Aug. 1, 2013), Liao (US 2015/0029866 A1; provisional application No. 61/859,305 filed on July 29, 2013; provisional application Appeal 2021-001913 Application 15/128,568 3 No. 61/860,236 filed July 30, 2013), and Yi-Bing (US 2004/0203754 A1; published Oct. 14, 2004). Final Act. 7-11. ANALYSIS The Examiner finds Liao teaches ProSe Server 122 routing IP traffic from a gateway in a packet data network to ProSe associated network entities within a UE, which the Examiner maps to the limitation “[a] ProSe Server, deployed in a Packet Data Network (PDN)” recited in claim 1. Ans. 8-9 (citing Liao ¶ 39, Fig. 1); Final Act. 9 (citing Liao ¶¶ 4, 39, Fig. 1). The Examiner concludes that similar to Appellant’s Specification, the references of Johnsson, Liao, and Yi-Bing pertain to 3G. Ans. 11-13 (citing Spec. ¶¶ 3, 64; Johnsson ¶ 13; Liao ¶¶ 3, 37; Yi-Bing ¶¶ 5, 7). Also, the Examiner concludes that a person having ordinary skill in the art at the time of the invention (hereinafter “PHOSITA”) would have combined Johnsson, Liao, and Yi-Bing to extend a communication range for public safety and to provide real time packet transmission. Ans. 9-13; Final Act. 9-10 (citing Liao ¶ 7; Yi-Bing ¶ 13). Appellant argues Liao merely teaches a ProSe Server that interacts with an external Packet Data Network, but fails to teach the limitation a “ProSe Server, deployed in a Packet Data Network (PDN)” recited in claim 1. Appeal Br. 6-7; Reply Br. 2-4. In addition, Appellant argues Johnsson, Liao, and Yi-Bing are not combinable because Johnsson and Liao pertains to a 4G system whereas Yi-Bing pertains to a 3G system. Appeal Br. 7-9; Reply Br. 4-9. We disagree with Appellant. Liao teaches ProSe Server 122 routing IP traffic from a gateway in a packet data network to ProSe associated network entities within a UE (i.e., the system that includes ProSe Server 122 communicating with UE teaches or suggests “PDN”), which teaches or suggests the limitation “[a] ProSe Appeal 2021-001913 Application 15/128,568 4 Server, deployed in a Packet Data Network (PDN)” recited in claim 1. Ans. 8-9 (citing Liao ¶ 39, Fig. 1); Final Act. 9 (citing Liao ¶¶ 4, 39, Fig. 1). Appellant’s argument that Johnsson, Liao, and Yi-Bing are not combinable because Johnsson and Liao pertains to a 4G system whereas Yi- Bing pertains to a 3G system is unavailing. Appeal Br. 7-9; Reply Br. 4-9. We agree with the Examiner’s conclusion that similar to Appellant’s Specification, the references of Johnsson, Liao, and Yi-Bing pertain to 3G. Ans. 11-13 (citing Spec. ¶¶ 3, 64; Johnsson ¶ 13; Liao ¶¶ 3, 37; Yi-Bing ¶¶ 5, 7). Moreover, we agree with the Examiner’s conclusion that a PHOSITA would have combined Johnsson, Liao, and Yi-Bing to extend a communication range for public safety and to provide real time packet transmission. Ans. 9-13; Final Act. 9-10 (citing Liao ¶ 7; Yi-Bing ¶ 13). We, therefore, determine that the Examiner has set forth sufficient “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Appellant does not argue claims 2, 5, and 6 separately with particularity. Appeal Br. 6-9. Accordingly, we sustain the Examiner’s rejection of: (1) independent claims 1 and 5; and (2) dependent claims 2 and 6 under 35 U.S.C. § 103. We have only considered those arguments that Appellant actually raised in the Briefs. Arguments Appellant could have made, but chose not to make, in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-001913 Application 15/128,568 5 CONCLUSION 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 5, 6 103 Johnsson, Liao, Yi-Bing 1, 2, 5, 6