Ex Parte Chu et al

Patent Trial and Appeal Board

Oct 25, 2017

13685308 (P.T.A.B. Oct. 25, 2017)

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.
13/685,308 11/26/2012 Liwen Chu 12SCL0574US02/816063.417 5864
30423 7590 10/27/2017
Seed IP Law Group LLP/ST US Originating
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
BEDNASH, JOSEPH A
ART UNIT PAPER NUMBER
2461
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIWEN CHU and GEORGE A. VLANTIS
Appeal 2017-002227
Application 13/685,3081
Technology Center 2400
Before CAROLYN D. THOMAS, JEREMY J. CURCURI, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of
claims 4—11 and 18—25,2 which constitute all of the claims pending and
under consideration on appeal. Appeal Br. 2. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is STMicroelectronics,
Inc.. See Appeal Br. 1.
2 Claims 1—3 and 12—17 are withdrawn. See id. at 2.
Appeal 2017-002227
Application 13/685,308
STATEMENT OF THE CASE
According to Appellants, the application relates to accessing Wireless
Fidelity (“Wi-Fi”) hotspots online by authenticating a device using dual
single Service Set Identification (“SSID”) enhancements. See Spec. 14.3 In
a disclosed embodiment, only the primary SSID is disclosed to the user prior
to authentication. See Spec. 137. The secondary SSID is not disclosed to
the user. Id.
CLAIMED SUBJECT MATTER
Claims 4, 8, 18, and 22 are independent. Claim 4 is illustrative and is
reproduced below with the dispositive disputed limitation (the “disputed
limitation”) italicized:
4. A method comprising:
receiving at a station from an access point both a primary
service set identification for the access point and a secondary
service set identification for the access point, wherein the
primary service set identification and the secondary service set
identification have a one-to-one correspondence, and wherein
the secondary service set identification is different from the
primary service set identification and derived from the primary
service set identification, the secondary service set identification
stored in an information element hidden from a user of the
station;
3 Our Decision refers to: (1) Appellants’ Specification filed November 26,
2012 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed December
16, 2015; (3) the Appeal Brief filed June 20, 2016 (“Appeal Br.”); (4) the
Examiner’s Answer (Ans.”) mailed September 22, 2016; and (5) the Reply
Brief (“Reply Br.”) filed November 22, 2016.
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Application 13/685,308
while displaying only the primary service set identification
to the user of the station, employing the secondary service set
identification for online sign-up of the station for service at the
access point; and
after receiving a certificate generated for the station, using
the primary service set identification to establish access for the
station via the access point.
Appeal Br. 21—22.
REFERENCES AND REJECTIONS
(1) Claims 4—11 and 18—25 stand rejected under 35U.S.C. § 112,
second paragraph as being as being indefinite. Final Act. 2—3.
(2) Claims 4—11 and 18—25 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Patil (US 2012/0072976 Al, published Mar. 22,
2012) and Bryksa (US 2013/0347073 Al, published Dec. 26, 2013). Final
Act. 3—5.
Our review in this appeal is limited only to the above rejections and
issues raised by Appellants. Arguments not made are waived. See 37
C.F.R. § 41.37(c)(l)(iv)(2014).
ISSUES
(1) Whether the Examiner errs in concluding that the disputed
limitation, as recited in claim 4, is indefinite under 35 U.S.C. § 112.
(2) Whether the Examiner errs in concluding that the combination
of Patil and Bryksa teaches or suggests the disputed limitation as recited in
claim 4.
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Appeal 2017-002227
Application 13/685,308
CONTENTIONS AND ANALYSIS
Issue 1—Rejection under § 112
The Examiner determines the disputed limitation is ambiguous
because “it is not clear what portion of the feature is ‘hidden.’” Ans. 2.
Specifically, the Examiner indicates “there is ambiguity with respect to
which feature is hidden by the method (e.g. secondary service set
identification or information element in which it is stored).” Ans. 5
(emphasis added). The Examiner concludes that because the term “hidden”
is not expressly used in Appellants’ Specification, the term can be
interpreted to mean “transmitted at radio frequencies which are not visible to
humans.” Ans. 3. Thus, “it is not clear if this [hiding] feature relates to
merely the inherent nature of radio signals or if this relates to the act of only
displaying the primary service set identification.” Ans. 5; see also Final Act.
2-3.
Appellants argue “the rejection should be overturned because the
claimed feature provides the required reasonable degree of clarity” in view
of Appellants’ Specification. Appeal Br. 12; see also Appeal Br. 13. “The
Examiner does not provide any reason why one of ordinary skill in the art
would interpret that the secondary service set identification stored in an
information element hidden from a user of the station is directed toward
invisible RF frequency signals, and no reason exists.” Appeal Br. 12.
We find Appellants’ argument persuasive. “In the USPTO, an
applicant’s ‘claim is, or is supposed to be, examined, scrutinized, limited,
and made to conform to what he is entitled to.’” In re Packard, 751 F.3d
1307, 1311 (Fed. Cir. 2014). “The legal standard for definiteness is whether
a claim reasonably apprises those of skill in the art of its scope.” In re
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Application 13/685,308
Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). “[T]he definiteness of the
language employed must be analyzed—not in a vacuum, but always in light
of the teachings of the prior art and of the particular application disclosure as
it would be interpreted by one possessing the ordinary level of skill in the
pertinent art.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971); see also
M.P.E.P. § 2173.02.
After review of the respective positions provided by Appellants and
the Examiner, we agree with Appellants that the Examiner has not
established that the language of the claims is indefinite in this case for the
reasons stated by Appellants in the Appeal Brief and the Reply Brief.
Appeal Br. 11—14; Reply Br. 2—5. Namely, the Examiner fails to establish
that the claim is indefinite because one skilled in the art would have
interpreted the claim term “hidden,” in view of Appellants’ Specification, to
mean “transmitted at radio frequencies which are not visible to humans”
(Ans. 3), as discussed below in more detail when addressing Issue 2. The
Examiner also fails to establish that ambiguity regarding what is hidden
renders the claim indefinite.
Therefore, we reverse the Examiner’s rejection of claim 4 under 35
U.S.C. § 112, second paragraph. We also reverse the rejection of
independent claims 8, 18, and 22, which recite commensurate limitations,
and of dependent claims 5—7, 9-11, 19-21, and 23—25, for similar reasons.
Issue 2—Rejection under § 103(a)
In rejecting claim 4 under 35 U.S.C. § 103(a), the Examiner
determines the claim term “hidden” to mean “transmitted at radio
frequencies which are not visible to humans.” Ans. 3. The Examiner further
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Application 13/685,308
determines the claim term “stored” to encompass transitory signals because
“[i]t is known in the prior art that transitory signals are considered by those
of ordinary skill in the art to be ‘storage devices’” Ans. 3^4 (citing Stillwell,
Jr. et al. (US 2010/0077179 Al, published Mar. 25, 2010)). In view of these
interpretations the Examiner finds Patil teaches “the secondary service set
identification stored in an information element hidden from a user of the
station,” as claimed, because “beacons 2A and 2B containing information
elements related to the SSID X is not visible to the user as it is a radio
frequency signal.” Final Act. 4 (citing Patil, Fig. 2).
Appellants argue “there is no reasonable interpretation that one of
skill in the art would understand a hidden SSID or information element to
mean that a human being’s eyes have a physiological inability to actually see
a radio frequency (RF) signal.” Appeal Br. 14—15. Thus, Appellants argue,
“[tjhere is no teaching identified by the Examiner or found in Patil that
‘suggests’ a hidden secondary SSID.” Reply Br. 7.
We find Appellants’ arguments persuasive. Initially, the Examiner’s
interpretation — that “hidden” as claimed means “transmitted at radio
frequencies which are not visible to humans” (Ans. 3) — is unreasonably
broad. The Specification consistently discloses that “[t]he secondary SSID
and BSSID are never disclosed to the users of HS 2.0 STA. Only the
primary SSID and primary BSSID are disclosed to the user of an HS2.0
STA.” See Spec. 37—39. “The correct inquiry in giving a claim term its
broadest reasonable interpretation in light of the specification ... is not
simply an interpretation that is not inconsistent with the specification. It is
an interpretation that corresponds with what and how the inventor describes
his invention in the specification.” In re Smith International Inc., No 2016-
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Application 13/685,308
2303, 2017 WL 4247407 at *5 (Fed. Cir. 2017) citing In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). Accordingly, the Examiner’s interpretation of
hidden to encompass signals “transmitted at radio frequencies” is not
consistent with the Specification’s description of hiding, i.e., not displaying
the secondary SSID. See Spec. Tflf 37, 40.
We, therefore, agree with Appellants that the Examiner fails to
establish that Patil’s beacons 2A and 2B suggest the disputed limitations
because they are included in an RF signal that is not visible to the user.
Appeal Br. 12.
Accordingly, the Examiner has not demonstrated how Patil, alone or
in combination with Bryksa, teaches or suggests the disputed limitation as
claimed. Because we agree with at least one of the dispositive arguments
advanced by Appellants for claim 4, we need not reach the merits of
Appellants’ other contentions.
We do not sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
claim 4. We also do not sustain the rejection of independent claims 8, 18,
and 22, which recite commensurate limitations, and of dependent claims 5—
7, 9—11, 19-21, and 23—25, for similar reasons.
DECISION
On the record before us, we reverse the rejection of claims 4—11 and
18-25 under 35 U.S.C. § 103(a).
REVERSED
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