APPLE INC.

Patent Trials and Appeals BoardJun 4, 2021

2020000043 (P.T.A.B. Jun. 4, 2021)

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. 14/915,635 02/29/2016 Jaseem ALIYAR 122202-5041 (P19382US1) 1095 142248 7590 06/04/2021 Morgan, Lewis & Bockius LLP (Apple) 600 Anton Boulevard Suite 1800 Costa Mesa, CA 92626 EXAMINER CHO, HONG SOL ART UNIT PAPER NUMBER 2467 NOTIFICATION DATE DELIVERY MODE 06/04/2021 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): OCIPDocketing@morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JASEEM ALIYAR ____________________ Appeal 2020-000043 Application 14/915,635 Technology Center 2400 ____________________ Before ALLEN R. MacDONALD, JEAN R. HOMERE, and MICHAEL J. ENGLE, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–27, all pending claims. Appeal Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part and enter new grounds of rejection. 1 Appellant identifies “[t]he real party in interest for the above-referenced application is Apple Inc.” Appeal Br. 3. Appeal 2020-000043 Application 14/915,635 2 CLAIMED SUBJECT MATTER Claims 1, 5, 9, and 13 are illustrative (emphasis, formatting, and bracketed material added): 1. A first wireless device comprising: [A.] a first transceiver configured for connecting to and communicating with a wireless access point; [B.] a second transceiver configured for connecting to and communicating with a paired second wireless device; and [C.] a processor capable of: responsive to connecting, via the first transceiver, to the wireless access point, automatically and without user input: [i.] storing information associated with connecting to the wireless access point, [ii.] determining if the first wireless device is connected to the paired second wireless device, and [iii.] transmitting the stored information to the paired second wireless device if it is determined that the first wireless device is connected to the paired second wireless device. 5. A method comprising: [A.] connecting to a wireless access point; and [B.] in response to connecting to the wireless access point, automatically transmitting without user input, to a paired wireless device, information associated with connecting to the wireless access point. 9. A non-transitory computer readable storage medium having stored thereon a set of instructions that when executed by a processor of a first wireless device cause the processor to: [A.] connect to a wireless access point; and [B.] in response to connecting to the wireless access point: [i.] store information associated with connecting to the wireless access point, Appeal 2020-000043 Application 14/915,635 3 [ii.] determine whether the first wireless device is connected to a second wireless device, and [iii.] transmit the stored information to the second wireless device when it is determined that the first wireless device is connected to the second wireless device. 13. A first wireless device comprising: [A.] a first transceiver configured for communicating with a wireless access point; [B.] a second transceiver configured for: [i.] pairing with a second wireless device; [ii.] connecting to the paired second wireless device; and [iii.] communicating with the paired second wireless device when connected; and [C.] a processor capable of: [i.] connecting the first wireless device to the paired second wireless device via the second transceiver; [ii.] receiving a plurality of information from the paired second wireless device via the second transceiver, [a.] the plurality of information associated with a connection of the paired second wireless device to the wireless access point and [b.] the plurality of information being received responsive to the paired second wireless device establishing the connection to the wireless access point; and [E.] connecting, while the paired second wireless device is connected to the wireless access point, with the wireless access point based at least in part on the plurality of information provided by the paired second wireless device. Appeal 2020-000043 Application 14/915,635 4 REFERENCES2 The Examiner relies on the following references: Name Reference Date Brok US 2006/0227972 A1 Oct. 12, 2006 Oba US 2009/0271614 A1 Oct. 29, 2009 Louboutin US 2013/0014232 A1 Jan. 10, 2013 Cho US 2013/0252547 A1 Sept. 26, 2013 REJECTIONS A. Section 112(a) The Examiner rejects claims 5–8, 17–20, and 25–27 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Non-final Act. 3.3 We select claim 5 as the representative claim for this rejection. The contentions discussed herein as to claim 5 are determinative as to this rejection. Therefore, except for our ultimate decision, we do not address the merits of the § 112(a) rejection of claims 6–8, 17–20, and 25–27 further herein. B. Section 102(a)(2) The Examiner rejects claims 9, 13, and 21, under 35 U.S.C. § 102(a)(2) as being anticipated by Cho. Non-final Act. 4–5. 2 All citations herein to patent and pre-grant publication references are by reference to the first named inventor only. 3 “Non-final Act.” herein refers to the action dated December 14, 2018. Appeal 2020-000043 Application 14/915,635 5 Appellant separately argues claims 9 and 13. Appeal Br. 13–20. To the extent that Appellant discusses claim 21, Appellant merely repeats (or references) the arguments directed to claim 9. Appeal Br. 20–22. Such a repeated (or referenced) argument is not an argument for “separate patentability.” Thus, Appellant does not present separate arguments for claim 21. Except for our ultimate decision, we do not address the merits of the § 102(a)(2) rejection of claim 21 further herein. C. Section 1034 C.1. The Examiner rejects claims 5, 17, and 25–27 under 35 U.S.C. § 103 as being unpatentable over Cho. Non-final Act. 7–9. Appellant separately argues claim 5. Appeal Br. 22–25. To the extent that Appellant discusses claims 17 and 25–27, Appellant merely repeats arguments directed to claims 5 and 9 (which was rejected under § 102(a)(2), as discussed above). Appeal Br. 25–31. Such a repeated argument is not an argument for “separate patentability.” Thus, the rejection of these claims turns on our decision as to claims 5 and 9. Except for our ultimate decision, we do not address the merits of the § 103 rejections of these claims further herein. 4 We sequence these rejections based on the order they are argued in Appellant’s Appeal Brief. Appeal 2020-000043 Application 14/915,635 6 C.2. The Examiner rejects claims 6–8 and 18–20 under 35 U.S.C. § 103 as being unpatentable over the combination of Cho and Louboutin. Non-final Act. 9–10. Appellant does not argue claims 6–8 and 18–20. Thus, the rejection of these claims turns on our decisions as to the claims from which each claim depends. Except for our ultimate decision, we do not address the merits of the § 103 rejection of claims 6–8 and 18–20 further herein. C.3. The Examiner rejects claims 10–12, 14–16, and 22–24 under 35 U.S.C. § 103 as being unpatentable over the combination of Cho and Louboutin. Non-final Act. 10–11. Appellant separately argues claim 11. Appeal Br. 32–33. Appellant does not argue claims 10, 12, 14–16, and 22–24. Thus, the rejection of claim 24 turns on our decision as to claim 11, and the rejection of claims 10, 12, 14–16, 22, and 23 turns on our decisions as to the claims from which each claim depends. Except for our ultimate decision, we do not address the merits of the § 103 rejection of claims 10, 12, 14–16, and 22–24 further herein. C.4. The Examiner rejects claim 1 under 35 U.S.C. § 103 as being unpatentable over the combination of Cho and Brok. Non-final Act. 5–6. Appellant separately argues claim 1. Appeal Br. 33–35. Appeal 2020-000043 Application 14/915,635 7 C.5. The Examiner rejects claims 2 and 4 under 35 U.S.C. § 103 as being unpatentable over the combination of Cho, Brok, and Louboutin. Non-final Act. 6–7. The Examiner rejects claim 3 under 35 U.S.C. § 103 as being unpatentable over the combination of Cho, Brok, and Oba. Non-final Act. 7. Appellant does not present arguments for claims 2–4. Thus, the rejections of these claims turn on our decision as to claim 1 from which each of these claims depends. Except for our ultimate decision, we do not address the merits of the § 103 rejections of these claims further herein. OPINION We have reviewed the Examiner’s rejections in light of Appellant’s arguments (Appeal Brief and Reply Brief) that the Examiner has erred. A. Section 112(a) A.1. As to claim 5, the Examiner determines: Claim[] 5 . . . recite[s] automatically and without user input, transmitting/receiving the stored/plurality of information to the second wireless device when it is determined that the first wireless device is connected to the second wireless device. However, it is not described in the original specification (paragraphs [0005] and [0019]–[0021], and figure 3). Final Act. 3 (emphasis added). Appeal 2020-000043 Application 14/915,635 8 A.2. Appellant contends that the Examiner erred in rejecting claim 5 under 35 U.S.C. § 112(a) because: [T]his assertion is clearly in error, as these features are clearly expressly supported in the original disclosure by at least, for example, the Abstract which states that a “wireless device can gain access to a wireless router, and then send over the settings (i.e., password, SSID) associated with the WiFi connection to a paired [device] so that the paired device can access the same wireless router automatically without user input or intervention.” Appeal Br. 12 (emphasis added). A.3. We are not persuaded by Appellant’s argument. Although Appellant points to written description support for automatically without user input accessing the wireless router (i.e., the wireless access point), that it not the issue raised by the Examiner. The rejection is based on lack of support for the claimed “automatically transmitting without user input, to a paired wireless device, information associated with connecting to the wireless access point [from a first wireless device].”5 Our review of Appellant’s disclosure does not find written description support for performing the functions of claim 5 “automatically . . . without user input.” Rather, for transmitting and receiving between the first wireless device and second wireless device, Appellant’s Specification provides examples that specify 5 Claim 17 recites the substantially similar limitation of “[the first wireless device] receiving information from the second wireless device . . . automatically, and without user input.” Emphasis added. Appeal 2020-000043 Application 14/915,635 9 some user intervention, but do not specify “automatically without user input.” Once a link has been established between wireless device 102 and paired device 202, thus making the devices paired together, wireless device 102 and paired device 202 can share information with each other that can assist wireless device 102 with connecting to a wireless access point with minimal user intervention. Spec. 18 (emphasis added). If a paired wireless device is detected, the method can move to step 310 wherein the settings stored at step 314 can be transferred to the paired device. In some examples, a user may have to initially enable both the paired device and the wireless device to port their WiFi settings and/or receive WiFi settings from another device. The user enabling can be done by adjusting the settings of the paired device and the wireless device and may only have to be done once. In another example, if the wireless device authenticates itself to the wireless access point via its machine address (MAC address), the wireless device can transmit its MAC address to the paired device at step 310. Spec. 21 (emphasis added). We therefore sustain the Examiner’s rejection under § 112(a). B. Section 102 B.1. Claim 9 As to the § 102 rejection of claim 9, Appellant argues: Although the Examiner has not applied any aspect of Cho to these elements of independent claim 9, taking Cho in its entirety, no aspect of Cho teaches these elements. Appellant in the following points out the deficiencies of Cho without the advantage of the Office’s position. . . . With reference to Fig. 5 of Cho . . . , Cho describes that “the second device . . . connects to an AP at operation S520,” Appeal 2020-000043 Application 14/915,635 10 (Cho, ¶80), and that “AP information regarding the selected AP may be transmitted to the first device 100 at operation S560.” Cho, ¶83. However, Cho does not expressly or inherently describe that the “AP information . . . [is] transmitted to the first device” in response to “the second device . . . connect[ing] to an AP at operation S520.” Instead, Cho unequivocally describes multiple intervening steps between S520 and S560, including a conditional (and volitional) intervening step which may occur an indeterminate amount of time after S520 (or may never occur), i.e., “if the second device 200 . . . moves toward the first device 100 and implements tagging at operation S530.” Cho, ¶80. Thus, operation S560 of Cho cannot be interpreted as occurring responsive to (or initiated by) S520, because S560 is only performed “if the second device 200 . . . moves toward the first device 100 and implements tagging at operation S530.” Cho, ¶80. . . . Accordingly, even assuming arguendo that the other two intervening steps (S540 and S550) can be disregarded in the anticipation rejection (which they clearly cannot in view of the “identical invention” requirement, and the fact that the devices would not be connected if S540 was disregarded), transmitting the AP information at step S560 of Cho could at most be considered responsive to (or initiated by) the volitional act of the second device moving towards the first device and performing the active step of tagging at S530 (which itself is not responsive to S520). Therefore, clearly Cho does not expressly or inherently describe “transmit the stored information to the second wireless device” in response to “connecting to the wireless access point,” as recited in independent claim 9. Appeal Br. 14–15 (emphasis added). We are not persuaded by Appellant’s argument. Essentially, Appellant is arguing claim 9 requires (1) that each of the “store,” “determine,” and “transmit” functions are initiated by (directly responsive to) the “connecting” function, and (2) that intervening steps are precluded. Appeal 2020-000043 Application 14/915,635 11 Appellant’s argued “initiated by” language is not found in claim 5 or the Specification; and Appellant’s claimed “in response to” language is not used in the Specification. Although this does not inherently give rise to written description problems, it does lead to a conclusion that the claim language “in response to” should not be given Appellant’s very restricted interpretation of “in direct response to” or “solely in response to.” Rather, the language should be given its broadest but reasonable interpretation consistent with Appellant’s specification. We determine that the Examiner is correct to view Cho’s step S560 which follows step S520 as being in response to step S520, as this aligns with Appellant’s Figure 3 where step 310 follows step 302 (but step 310 may never occur if the result of step 306 is “No”). Thus, in light of the Specification, “in response to” permits reasonable intervening steps and further conditions, and the Examiner correctly found this disclosed by Cho. We do not find a requirement in claim 9 that such intervening steps or further conditions are precluded. Nor does Appellant’s argument specifically explain why Appellant believes claim 9 so precludes them. For these reasons, we sustain the Examiner’s rejection of claim 9 under 35 U.S.C. § 102 as being anticipated by Cho. B.2. Claim 13 B.2.a. As to the § 102 rejection of claim 13, Appellant argues: Independent claim 13 recites, in part, “a second transceiver configured for:” “pairing with a second wireless device,” and “connecting . . . to the paired second wireless device.” Cho does not expressly or inherently disclose these features of independent claim 13. Appeal 2020-000043 Application 14/915,635 12 The only references in Cho to “pairing” are with respect to “connecting” with another device, e.g. in paragraph [0077] Cho describes “connecting (i.e., pairing) to the first device,” and in paragraph [0091] Cho describes “if pairing/connecting with the second device,” which clearly establishes that the terms “pairing” and “connecting” are used synonymously in Cho to refer to the same operation. . . . There is no mention in Cho that the devices were previously “paired” and then become connected at S540, ostensibly because there is no differentiation between “pairing” and “connecting” in Cho. Appeal Br. 17 (emphasis added). We are not persuaded by Appellant’s argument. Cho states: The communicator 120 may receive AP information from the second device 200, if the second device 200 uses the connecting information and performs a pairing with the first device 100. If AP information is received through the communicator 120, the controller 130 may convert the soft AP mode to station mode, and control the communicator 120 to use the received AP information and to connect to an AP. Cho ¶ 65. FIG. 6 is a flowchart provided to explain a method of providing AP information in the above second device 200. Referring to FIG. 6, the second device 200 may read connecting information from the nearfield wireless communication tag included in the first device 100 at operation S610. After reading the connecting information, the second device 200 may use the read connecting information and implement pairing at operation S620, and transmit AP information to the first device 100 at operation S630. Cho ¶ 86. Essentially, Appellant argues (without particularity) that in claim 13 “pairing” and “connecting” are different functions and in Cho they are not. Appeal 2020-000043 Application 14/915,635 13 We disagree. We determine that “connecting” as claimed would be understood by an artisan as the successful completion of the “pairing” function, i.e., the first and second devices are now connected. Contrary to Appellant’s argument, we determine that a person skilled in the art would understand Cho to perform “pairing” and “connecting” as claimed. B.2.b. Also, as to the § 102 rejection of claim 13, Appellant argues: Independent claim 13 recites, in part, “receiving a plurality of information from the paired second wireless device via the second transceiver, the plurality of information associated with a connection of the paired second wireless device to the wireless access point and the plurality of information being received responsive to the paired second wireless device establishing the connection to the wireless access point.” Cho does not expressly or inherently describe at least these features of independent claim 13. Appeal Br. 18 (emphasis added). We are not persuaded by Appellant’s argument for the reasons already discussed above as to claim 9. B.2.c. Further, as to the § 102 rejection of claim 13, Appellant argues: Cho does not expressly or inherently describe that “nearfield wireless communication” and “Wi-Fi direct” are performed by the same transceiver, i.e., “a second transceiver configured for:” “pairing with a second wireless device,” and “connecting . . . to the paired second wireless device,” as recited in independent claim 13. Accordingly, this assertion is expressly in error and is expressly contradictory to the teaching of Cho. Appeal Br. 18 (emphasis added). Appeal 2020-000043 Application 14/915,635 14 Claim 13 requires a first wireless device comprising: (1) “a first transceiver . . . for communicating with a wireless access point” and (2) “a second transceiver configured for . . . communicating with [a] paired second wireless device.” Essentially, Appellant argues Cho fails to describe the required “second transceiver.” We disagree. Cho discloses a “communicator” 120 (or 220) which performs two- way communication and would have been understood to be the first transceiver for communicating between the first wireless device and an access point. Cho ¶ 65. Also, Cho uses a tag 110 and reader 210 to perform an initial one-way communication between the first wireless device and the second wireless device. Id. Then Cho switches off communication between the first wireless device and the access point, and uses the communicator 120 to perform pairing and two-way communication between the first wireless device and the second wireless device. Id. Further, Cho indicates that the first wireless and second wireless devices “may perform communication according to various methods such as Wi-Fi, Bluetooth, or ZigBee.” Cho ¶ 85. Therefore, we determine that Cho discloses using a different communication method between the first wireless and second wireless devices (e.g., Bluetooth) than used between the first wireless device and an access point (e.g., Wi-Fi). Further, we determine an artisan would have understood that selecting such a different communication method necessitates Cho’s communicator have a second transceiver for communicating between the first wireless device and the second wireless device. Appeal 2020-000043 Application 14/915,635 15 B.2.d. For the above reasons, we agree with the Examiner that claim 13 is anticipated by Cho. C. Section 103 C.1. Claim 5 Appellant raises the following argument in contending that the Examiner erred in rejecting claim 5 under 35 U.S.C. § 103. Cho does not disclose or suggest that the “AP information . . . [is] transmitted to the first device,” (Cho, ¶83), in response to “the second device . . . connect[ing] to an AP at operation S520.” Cho, ¶80. Appeal Br. 23 (emphasis added). Cho expressly teaches that “connecting (i.e., pairing)” only occurs after/if the tagging is performed at S530, i.e., “after tagging completes.” Cho, ¶76. Thus, Cho’s disclosure of “automatically transmit AP information” when “connecting . . . to the first device,” (Cho, ¶ 77), does not disclose or suggest “automatically transmitting without user input, to a paired wireless device, information associated with connecting to the wireless access point,” “in response to connecting to the wireless access point,” as recited in independent claim 5, as the connecting in Cho does not occur until after the aforementioned conditional step of “tagging” [S530], which is itself not responsive to connecting to the AP. Furthermore, Cho expressly teaches that the AP information of the previous AP is automatically transmitted “when . . . pairing,” which does not disclose or suggest transmitting AP information “to a [previously] paired wireless device,” as recited in independent claim 5. Appeal Br. 24 (emphasis added). Appeal 2020-000043 Application 14/915,635 16 First, we are not persuaded by Appellant’s “in response to” argument for the reasons already discussed above as to claim 9. Second, we are not persuaded by Appellant’s “without user input” argument. We determine that Cho discloses both (1) transmitting AP information based upon user input (paragraphs 75–76), and alternatively (2) transmitting AP information automatically without user input (paragraphs 77 and 85). Third, we are not persuaded by Appellant’s “previously” argument. Claim 5 does not recite the argued “previously” term and does not require that any pairing occur prior to the “connecting to a wireless access point.” To the extent that claim 5 requires a prior pairing it is only prior to the “automatically transmitting . . . information associated with connecting to the wireless access point.” Cho similarly shows a pairing occurring before transmitting information associated with connecting to the wireless access point. Cho ¶ 65. C.2. Claim 11 Appellant raises the following argument in contending that the Examiner erred in rejecting claim 11 under 35 U.S.C. § 103. Dependent claim 11 recites, in part, “pair with the second wireless device prior to connecting to the wireless access point, wherein the stored information is transmitted to the paired second wireless device when it is determined that the first wireless device is connected to the paired second wireless device.” The Office Action completely fails to address these features of dependent claim 11. In particular, the Office Action’s rejection of dependent claim 11 does not make any mention of any “pair[ing] with the second wireless device prior to connecting to the wireless access point” or being “connected to the paired . . . wireless device,” as recited in dependent claim 11. Appeal 2020-000043 Application 14/915,635 17 Appeal Br. 32 (emphasis added). We agree with Appellant’s argument. Our review of the appealed rejection determines that the Examiner’s rejection of claim 11 is directed to a version of claim 11 as it stood on December 5, 2017, rather than the version of claim 11 as it was amended on February 20, 2018 to add the subject matter now argued on appeal. In response, the Examiner corrects the rejection oversight and determines: The appellant argues that Cho or Louboutin does not describe pairing with the second wireless device prior to connecting to the wireless access point or being connected to the paired . . . wireless device. The examiner respectfully disagrees. Cho discloses first step of pairing with a second wireless device (figure 5, step 530), second step of connecting a first wireless device to the paired second wireless device (figure 5, step 540) and then third step of connecting to a wireless access point (figure 5, step 570). Ans. 6. In reply, Appellant further argues: [T]he rejection of dependent claim 11 (and corresponding independent claim 9), interpret the claimed “first wireless device” as being analogous to the second device 200 of Cho. For example, with respect to the rejection of corresponding independent claim 9, the Examiner’s Answer relies on “step 550” and “step 560” of Cho (both performed by the second device 200 per Fig. 5 of Cho). Examiner’s Answer, p. 4. Thus, the Examiner’s Answer improperly conflates the separate operations of the first device 100 and the second device 200 of Cho in rejecting the features of dependent claim 11 that are performed by “the processor of the first wireless device.” Reply Br. 5 (emphasis added). Appeal 2020-000043 Application 14/915,635 18 Again we agree with Appellant’s argument. However, the Examiner and Appellant focus on paragraphs 80–83 of Cho and overlook that paragraph 84 discloses that after the pairing, “the second device 200 may disconnect from the first device 100 and connect to the previous [access point] AP again.” Claim 11 does not preclude (nor does claim 9) the “connecting to the wireless access point” being a second occurrence of connecting, as in Cho at paragraph 84. Based on Appellant’s arguments, we reverse the Examiner’s rejection of claims 11 and 24. However, we designate our above analysis (in combination with the Office’s analysis for the rejection of claim 9) as a new ground of rejection of claims 11 and 24. C.3. Claim 1 C.3.a. Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. Cho does not disclose or suggest “automatically and without user input . . . transmitting the stored information” responsive to “connecting, via the first transceiver, to the wireless access point[.]” Appeal Br. 34 (emphasis omitted). We are not persuaded by Appellant’s argument for the reasons already discussed above as to claims 5 and 9. Appeal 2020-000043 Application 14/915,635 19 C.3.b. Appellant raises the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103. The Office Action asserts that Brok’s disclosure of “the Wi-Fi client S/F 120 may automatically select the Wi-Fi network 135 to connect the authorized user to the wireless LAN 105,” (Brok, ¶ 47), discloses or suggests these features of independent claim 1. Office Action, pp. 5-6. However, “automatically select[ing] the Wi-Fi network” does not disclose or suggest “responsive to connecting, via the first transceiver, to the wireless access point, automatically and without user input . . . transmitting the stored information to the paired second wireless device,” as recited in independent claim 1. Accordingly, this assertion of the Office Action is clearly and unequivocally in error. Appeal Br. 34 (emphasis added). We are not persuaded by Appellant’s argument. The argument is not commensurate with the scope of the claim language of claim 1. [C.] a processor capable of: responsive to connecting, via the first transceiver, to the wireless access point, automatically and without user input: [i.] storing information associated with connecting to the wireless access point, [ii.] determining if the first wireless device is connected to the paired second wireless device, and [iii.] transmitting the stored information to the paired second wireless device if it is determined that the first wireless device is connected to the paired second wireless device. Essentially, Appellant argues that in claim 1, the “automatically and without user input” limitation modifies the subsequent “transmitting” operation. We disagree. We determine that, in claim 1 as written, the “automatically and Appeal 2020-000043 Application 14/915,635 20 without user input” limitation modifies the preceding “connecting” operation. We do not find a requirement in claim 1 that the “transmitting” operation is “automatically and without user input.” Claim 1 is not explicitly so limited, nor does Appellant explain how claim 1 would be inherently so limited, nor do we find alternative language that would similarly mandate the argued limitation. Further, were we to construe claim 1 as so limited, then claim 1 would fail to comply with the written description requirement for the reasons already discussed above as to claim 5. Also note that to the extent we become convinced there is ambiguity about what “automatically and without user input” modifies, that will give rise to a question of definiteness. C.3.c. For the above reasons, we agree with the Examiner that claim 1 is unpatentable over the combination of Cho and Brok. D. Pursuant to our authority under 37 C.F.R. § 41.50(b), we alternatively reject claims 11 and 24 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Above, we reject claims 11 and 24 under 35 U.S.C. § 103 as being unpatentable over the combination of Cho and Louboutin (based on construing claim 11’s “connecting to the wireless access point” as not precluding a second occurrence of “connecting” which is subsequent to the pairing). As an alternative, we construe claim 11’s “connecting to the Appeal 2020-000043 Application 14/915,635 21 wireless access point” as being claim 9’s “connect to a wireless access point.” This would preclude Cho’s second occurrence of “connecting.” However, we do not find a written description for this interpretation of claim 11’s “[(a)] pair with the second wireless device prior to [(b)] connecting to the wireless access point.” Rather, we only find disclosure of step (b), i.e., connecting to the wireless access point, occurring prior to step (a), i.e., pairing with the second wireless device. While swapping the order of the pairing and connecting operations may be obvious in view of the written description, “a description that merely renders the invention obvious does not satisfy the [written description] requirement.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (“[A] description that merely renders the invention obvious does not satisfy the [written description] requirement.”). CONCLUSION The Examiner does not err in rejecting claims 5–8, 17–20, and 25–27 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. We affirm the Examiner’s rejection of claims 5–8, 17–20, and 25–27 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. The Examiner does not err in rejecting claims 9, 13, and 21 as being anticipated under 35 U.S.C. § 102(a)(2). We affirm the Examiner’s rejections of claims 9, 13, and 21 as being anticipated under 35 U.S.C. § 102(a)(2). Appeal 2020-000043 Application 14/915,635 22 The Examiner does not err in rejecting claims 1–8, 10, 12, 14–20, 22, 23, and 25–27 as being unpatentable under 35 U.S.C. § 103. We affirm the Examiner’s rejection of claims 1–8, 10, 12, 14–20, 22, 23, and 25–27 as being unpatentable under 35 U.S.C. § 103. Appellant does establish that the Examiner erred in rejecting claims 11 and 24 as being unpatentable under 35 U.S.C. § 103. We reverse the Examiner’s rejection of claims 11 and 24 as being unpatentable under 35 U.S.C. § 103. We newly reject claims 11 and 24 under 35 U.S.C. § 103 as being unpatentable over the combination of Cho and Louboutin. We newly reject claims 11 and 24 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 5–8, 17– 20, 25– 27 112(a) Written Description 5–8, 17– 20, 25– 27 9, 13, 21 102 Cho 9, 13, 21 1 103 Cho, Brok 1 2, 4 103 Cho, Brok, Louboutin 2, 4 3 103 Cho, Brok, Oba 3 5, 17, 25–27 103 Cho 5, 17, 25–27 6–8, 18– 20 103 Cho, Louboutin 6–8, 18– 20 Appeal 2020-000043 Application 14/915,635 23 10–12, 14–16, 22–24 103 Cho, Louboutin 10, 12, 14–16, 22, 23 11, 24 11, 24 11, 24 112(a) Written Description 11, 24 Overall Outcome 1–10, 12–23, 25–27 11, 24 11, 24 TIME PERIOD FOR RESPONSE 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). This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. Appeal 2020-000043 Application 14/915,635 24 AFFIRMED IN PART; 37 C.F.R. § 41.50(b)