Ex Parte Cook et al

Patent Trial and Appeal Board

Nov 29, 2016

13351585 (P.T.A.B. Nov. 29, 2016)

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.
13/351,585 01/17/2012 MICHAEL J COOK 007412.01562 7098
71867 7590 12/01/2016
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
SHEN, QUN
ART UNIT PAPER NUMBER
2643
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
PTO-71867 @bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. COOK and IVAN ONG
Appeal 2016-001971
Application 13/351,585
Technology Center 2600
Before JAMES R. HUGHES, LINZY T. McCARTNEY, and
JOHN D. HAMANN, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—4, 6, and 8—17. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2016-001971
Application 13/351,585
STATEMENT OF THE CASE
The present patent application concerns “providing a WiFi network
and managing the same.” Spec. 11. Claim 1 illustrates the claimed subject
matter:
1. A method, comprising:
receiving location information of a first transceiver from
the first transceiver;
in response to a determination that a first coverage area of
the first transceiver overlaps with a second coverage area of a
second transceiver, determining whether the first transceiver is
available to move based at least on whether the first transceiver
is providing service to any device.
REJECTIONS
Claim 8 stands rejected under 35 U.S.C. § 112(a) as failing to comply
with the written description requirement.
Claims 1 and 8—17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kalhan (US 2010/0216461 Al; Aug. 26, 2010) and Kong
(US 2011/0009098 Al; Jan. 13, 2011).
Claims 2, 3, and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kalhan, Kong, and Tang (US 2005/0076137 Al; Apr. 7,
2005).
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Kalhan, Kong, Tang, and Wu et al. (US 2013/0064089 Al; Mar. 14, 2013).
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Application 13/351,585
ANALYSIS
§ 112 Rejection
The Examiner found Appellants’ written description does not provide
adequate support for the following limitation recited in claim 8:
wherein the determining whether the first transceiver is available
to move based on at least whether the first transceiver is
providing service to any device comprises determining whether
the first transceiver is available to move based on at least whether
the first transceiver is providing network access to any device.
See Final Act. 4; Ans. 5. In particular, the Examiner found the written
description does not describe “determining whether the first transceiver is
available to move based on at least whether the first transceiver is providing
network access to any device.” Ans. 5
Appellants argue at least paragraphs 2, 22, 28, and 67 of the written
description provide adequate support for the disputed limitation. See App.
Br. 3^4; Reply Br. 2—9. According to Appellants, paragraph 67 teaches
determining whether to move a transceiver based on whether the transceiver
is providing a service, and the remaining paragraphs make clear that
“providing a service” includes “providing network access.” See App. Br. 3—
4.
We find Appellants’ arguments persuasive. To satisfy the written
description requirement, “the disclosure of the application relied upon
[must] reasonably convey[] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
Appellants’ written description meets this standard with respect to the
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Application 13/351,585
limitation at issue. For example, paragraph 67 of the written description
discloses that
[i]n step 603, it is determined whether the transmitting
transceiver 207 is available to move. When a transceiver 207 is
not providing service to any user or client devices 208, it may be
desirable to move the transmitting transceiver 207 to another area
where it may provide service to client devices 208.
Spec. 1 67. We agree with Appellants that this disclosure teaches
considering whether a transceiver is “providing a service” when determining
whether the transceiver is free to move. See App. Br. 3^4. And as argued
by Appellants, paragraphs 2, 22, and 28 of the written description teach that
a transceiver “providing a service” in this context includes the transceiver
providing network access. Paragraph 2 indicates that Appellants’ invention
satisfies “a need for providing network access so that electronic devices . . .
can be fully appreciated.” Spec. 12. And paragraphs 22 and 28 teach that
Appellants’ invention satisfies this need in part by employing transceivers,
where “[e]ach of the transceivers may serve as a wireless access point, and
therefore, may provide a coverage area.” Id. 122; see also id. 128 (“The
transceivers 207 may also contain wireless circuitry, and therefore, may
serve as wireless access points.”). These disclosures are in keeping with the
stated purpose of the invention, namely “providing a Wifi network and
managing the same.” Id.^l. Accordingly, Appellants’ written description
would have conveyed to one of ordinary skill in the art at the time the
application was filed that Appellants had possession of the claimed subject
matter.
For the above reasons, we agree with Appellants that the written
description provides adequate support for the limitation at issue. Therefore,
we do not sustain the Examiner’s rejection of claim 8 under 35 U.S.C.
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Appeal 2016-001971
Application 13/351,585
§112.
§ 103 Rejections
Claim 1 recites in relevant part “in response to a determination that a
first coverage area of the first transceiver overlaps with a second coverage
area of a second transceiver, determining whether the first transceiver is
available to move based at least on whether the first transceiver is providing
service to any device.” App. Br. 10. The Examiner found Kalhan’s method
of handing mobile devices from one mobile transceiver (i.e., a base station
or an access point) to another teaches determining whether transceiver
coverage areas overlap. See Final Act. 5—6; Ans. 6—7. However, the
Examiner found Kalhan’s method does not teach “in response to [a]
transceiver coverage area overlapping, determining whether the first
transceiver is available to move based at least on whether the first
transceiver is providing service to any device.” Final Act. 5—6. The
Examiner found Kong’s method of using a mobile terminal (e.g., a mobile
phone) to hail an available vehicle (e.g., a taxi) remedies this deficiency and
concluded a combination of Kalhan’s and Kong’s teachings rendered claim
1 obvious. See Final Act. 5—6; Ans. 6—7.
Appellants contend one of ordinary skill in the art would not have
combined Kalhan’s handover method with Kalhan’s taxi-hailing method
because Kalhan’s transceivers are immobile and “Kalhan’s transceivers are
nothing like a taxi.” App. Br. 4 (reference numbers omitted). Appellants
also argue “[tjhere is no rational underpinning to support combining the
systems of Kalhan and Kong ... to arrive at the claimed combination of
features.” Id. at 5 (emphasis omitted).
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We agree with Appellants. First, a reference “qualifies] as prior art
for an obviousness determination only when analogous to the claimed
invention.” See In reBigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Fora
reference to be analogous to a claimed invention, the reference must either
be “from the same field of endeavor, regardless of the problem addressed” or
“reasonably pertinent to the particular problem with which the inventor is
involved.” Id. Kong does not satisfy either of these tests. Kong’s invention
“relates to a method for allowing a user of a mobile terminal to call for a
vacant or empty vehicle (e.g., a taxi).” Kong 13. By contrast, Appellants’
field of endeavor and the particular problem faced by Appellants concern
“providing a WiFi network and managing the same.” Spec. 1 1. Kong’s
taxi-hailing method is unrelated to this endeavor and particular problem.
Accordingly, Kong does not qualify as prior art for purposes of the
obviousness analysis.
Second, the Examiner’s rejection rests in part on the Examiner’s
finding that Kalhan’s transceivers are mobile. For example, in the Final
Rejection, the Examiner found Kalhan teaches or suggests part of the
disputed limitation because Kalhan’s “transceiver is in motion (i.e. available
to move).” Final Act. 5. The Examiner bolstered this finding in the Answer,
stating “[o]ne of ordinary skill in the art would appreciate and understand
that a wireless access point or a transceiver in a mesh communication system
if often portable.” Ans. 6—7. But the Examiner has not provided adequate
evidence or reasoning to support these findings. The cited portions of
Kalhan disclose that a wireless communication device (e.g., a cell phone) is
in motion, not that Kalhan’s transceivers are mobile. See, e.g., Kalhan 115;
Final Act. 5 (citing Kalhan 115). And the Examiner has provided no
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support for the assertion that one of ordinary skill in the art would
understand that transceivers are mobile. See Ans. 6—7.
Third, the Examiner has not provided sufficient rational for combining
Kalhan’s and Kong’s teachings in the claimed manner. The Examiner found
one of ordinary skill in the art would have been motivated “to incorporate
Kong’s teachings [i.e., taxi hailing] . . . [into] Kalhan’s method to provide
services to the mobile terminal by identifying [a] vehicle terminal available
to travel or move from one location to another within a predetermined
distance (i.e. coverage range).” Final Act. 6 (citing Kong || 14—15). But as
argued by Appellants, it makes little sense to incorporate taxi-hailing
services into a handover method for wireless devices. See App. Br. 5; Reply
Br. 4. Accordingly, this rationale is insufficient to support the Examiner’s
combination of the cited art.
For the above reasons, we do not sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103. Because claims 2-4, 6, and 8—17 depend
from claim 1, we also do not sustain the Examiner’s rejections of these
claims under 35 U.S.C. § 103.
DECISION
We reverse the Examiner’s rejections of claim 8 under 35 U.S.C.
§112 and claims 1—4, 6, and 8—17 under 35 U.S.C. § 103.
REVERSED
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