Ex Parte Chu et alDownload PDFPatent Trial and Appeal BoardOct 25, 201713685308 (P.T.A.B. Oct. 25, 2017) Copy Citation 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): Patentinfo @ SeedIP.com US PTOe Action @ S eedIP .com 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 See Appeal Br. 1. 2 Claims 1—3 and 12—17 are withdrawn.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. 2 Appeal 2017-002227 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. 3 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 4 Appeal 2017-002227 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 5 Appeal 2017-002227 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- 6 Appeal 2017-002227 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 7 Copy with citationCopy as parenthetical citation