Ex Parte Alone et al

Patent Trial and Appeal Board

Dec 13, 2012

10898634 (P.T.A.B. Dec. 13, 2012)

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.
10/898,634 07/23/2004 Vijay B. Alone JP920030172US1 3627
53493 7590 12/14/2012
LENOVO (US) IP Law
1009 Think Place
Building One, 4th Floor 4B6
Morrisville, NC 27560
EXAMINER
LANIER, BENJAMIN E
ART UNIT PAPER NUMBER
2432
MAIL DATE DELIVERY MODE
12/14/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VIJAY B. ALONE, JUNICHI ASOH,
SUDHAM S. RAO, and RATAN RAY
____________

Appeal 2010-007405
Application 10/898,634
Technology Center 2400
____________

Before DAVID M. KOHUT, JASON V. MORGAN, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 and 24. (App. Br. 3).1 Claims 7-23, 27, and 30-35
have been previously canceled. We have jurisdiction under 35 U.S.C. § 6(b).

1 Claims 2-6, 25-26, and 28-29 should be formally cancelled, as Appellants
have demonstrated a clear intent in the Appeal Brief (see App. Br. 3) to only
appeal claims 1 and 24. See Ex Parte Ghuman, 88 USPQ2d 1478 (BPAI
Appeal 2010-007405
Application 10/898,634

2
We affirm.
STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to wireless communications through a
predetermined access point. (see Spec. 6: 8-10).
Claim 24, which is illustrative of the invention, reads as follows:
24. A method comprising:
requesting a profile from an administrator computer via a
wired network connected between said portable computer and
said administrator computer;
storing in a memory within said portable computer said
profile sent by said administrator computer to said portable
computer via said wired network in response to said request;
acquiring a MAC address from a wireless access point;
determining whether or not said acquired MAC address
matches a MAC address stored within said profile; and
in a determination that said acquired MAC address
matches said MAC address stored within said profile,
connecting a user of said portable computer to a wireless local
area network (LAN) associated with said wireless access point
using said profile.

2008) (precedential) (holding that when appellants are silent in the notice of
appeal as to the specific claims being appealed, and then clearly state in the
appeal brief that some of the finally rejected claims are not being pursued in
the appeal, appellants should cancel those claims not pursued).
Appeal 2010-007405
Application 10/898,634

3
The Examiner’s Rejections
The Examiner rejected claims 1 and 24 under 35 U.S.C. § 103(a) as
being unpatentable over Griffith (US 7,316,031 B2, Jan. 1, 2008), in view of
Halasz (US 7,181,530 B1, Feb. 20, 2007). (Ans. 3-4).2

Appellants’ Contentions
With respect to independent claims 1 and 24, Appellants contend that
the Examiner erred in rejecting the claims because Griffith does not teach or
suggest “a wired network connected between said portable computer and
said administrator computer” (App. Br. 4-6; Reply Br. 2-3). Appellants
admit that in Griffith a “centralized security manager 30… is connected to
multiple wireless monitors 32 via wired networks such as a campus
backbone network 24 and a communication network 18,” but assert that the
computers are connected to authorized access points wirelessly. (App. Br.
5-6; Reply Br. 2).
Issue on Appeal
Has the Examiner erred in rejecting the claims as being obvious over
the cited references because the references fail to teach or suggest a “a wired
network connected between said portable computer and said administrator
computer” as recited in independent claims 1 and 24?

2 Throughout this opinion, we refer to the Briefs (Appeal Brief, filed
October 6, 2008, and the Reply Brief, filed April 27, 2010) and the Answer
(mailed March 23, 2010) for the respective positions of Appellants and the
Examiner.
Appeal 2010-007405
Application 10/898,634

4
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
contentions and adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken and (2) the
reasons set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief (see Ans. 6-7). However, as outlined infra, we
highlight and address specific findings and arguments for emphasis.
Appellants did not explicitly define the term “wired network” in the
Specification. Thus, the claims are given their broadest reasonable
construction in light of the disclosure. See In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004).
Griffith explicitly discloses a wired network as follows:
Campus backbone network 24 may include any network
suitable to communicate with authorized access points 22. In
some embodiments, campus backbone network 24 comprises a
wired local area network (LAN) based on any of a variety of
protocols, such as Ethernet, token ring, or fiber distributed data
interface (FDDI) protocols, and including any of a variety of
topologies, such as bus, ring, star, or tree topologies, for
example. As discussed above, campus backbone network 24
may be connected to communications network 18 such that the
particular campus 16 may communicate with the other
campuses 16. Communications network 18 may include one or
more local area networks (LANs), metropolitan area networks
(MANs), wide area networks (WANs), portions of the internet,
or any other appropriate wireline, optical, wireless, or other
links.

Col. 5, ll. 40-54 (emphasis ours).

Appeal 2010-007405
Application 10/898,634

5
Construing the claim terms broadly, the Examiner (Ans. 6) finds (and
we agree) that the campus backbone network 24 that comprises a wired local
area network as described in Griffith encompasses a “wired network.”
Also, Appellants do not point to anything in the claims or
Specification or present persuasive evidence or argument that precludes the
connection between the portable computer and an adminstrator computer
from using wireless access points to the wired network that provides the
connection. (See App. Br. 5-6; Reply Br. 2-3).
We are also not persuaded by Appellants’ assertion that Griffith
relates to monitoring wireless networks (Reply Br. 2-3). Appellants’
assertion is unpersuasive because, as indicated above, the Griffith network
does provide a wired connection between a portable computer and an
administrator computer.

CONCLUSION
The Examiner has not erred in rejecting claims 1 and 24 under 35
U.S.C. § 103(a) as being unpatentable over Griffith in view of Halasz.

DECISION
The decision of the Examiner rejecting claims 1 and 24 is affirmed.
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).

AFFIRMED

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