Ex Parte Kirke

Patent Trial and Appeal Board

Nov 29, 2012

11422645 (P.T.A.B. Nov. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TONY KIRKE
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Appeal 2010-005831
Application 11/422,645
Technology Center 2600
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Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-005831
Application 11/422,645

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STATEMENT OF THE CASE
This is a decision on Appellant’s Request for Rehearing of our
Decision on Appeal under 35 U.S.C. § 134(a) of the rejection of claims 1-30.
We reconsider our decision in light of Appellant’s Request for
Rehearing, but decline to change our Decision.
Background
Appellant has filed a paper under 37 CFR § 41.52 requesting that we
reconsider our decision of September 12, 2012 where we affirmed the
rejections of claims 1, 11, and 21 under 35 U.S.C § 102(b) as being
anticipated by Biswas, and affirmed the rejection of claims 2-10, 12-20, and
22-30 under 35 U.S.C § 103(a) as being unpatentable over Biswas in view of
Mgrdechian.
First, Appellant submits that the Board misapprehended Appellant’s
argument regarding the interpretation of the words “known” and
“authorized.” Request for Rehearing p. 3.
In support of this contention, Appellant identifies paragraphs [0048]
and [0053] of the Specification and FIG. 6C as illustrating an embodiment of
the invention in which list 614c includes “known or authorized” devices.
Appellant contends that “[n]owhere in Appellant's specification does the
Appellant define ‘known’ as ‘authorized.’” Id. Appellant further contends
that “the word ‘or’ in this context clearly indicates an alternative between
the two (i.e., the list can include either ‘known’ or ‘authorized’ devices) . . .
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[and that s]uch an interpretation of the word ‘or’ is in accordance with the
definition of the word ‘or’ in the Free Online Dictionary . . . .” Id.
As argued in the Reply Brief, Appellant contends that this
interpretation is also supported in the Specification at paragraph [0053],
which provides another embodiment in which the list includes both “known”
devices (associated with “visible” users) and “authorized” devices
(associated with “permissible” users). Id.
Further in this regard, Appellant contends that “[i]f ‘known’ were
used interchangeably with ‘authorized’ in Appellant’s Specification, as
suggested by the Board, an embodiment [in] which the list included both
‘known’ and ‘authorized’ devices would not need to be listed.” Id.
Issue 2
Appellant contends that their disclosure describes that:
[H]andheld communication device may detect that handheld
communication devices 706, ... , 712 are within its operating
range. Handheld communication devices 706, ... 712 may then
communicate identification information to handheld
communication device 702. The handheld communication
device 702 may then match the received identification
information with identification information of “pre-authorized”
devices stored within the list of authorized devices 704. Since
only handheld communication devices 706, 708, and 712 are
pre-authorized, handheld communication device 702 may
establish a connection with handheld communication devices
706, 708, and 712. The handheld communication device 702
may deny connection with the handheld communication device
710.
Request for Rehearing 4 (citing Spec. at ¶ [0061])(emphasis omitted).
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Further in this regard, Appellant contends that the above-cited
paragraph discloses that:
[T]he list includes only “authorized” devices. Although device
710 is known, this device is not included on the list because
device 710 is not “authorized.” Thus, in the embodiment of
FIG. 7, the list does not include “known” devices that are not
“authorized,” and as such, the term “authorized devices” cannot
be interpreted broadly to include simply “known” devices.
Thus, even if, as the Board suggests, the “authorized” devices
are merely a subset of the “known” devices, the claimed list of
“authorized devices” cannot be said to include all “known”
devices, since “known” but “unauthorized” devices are
specifically excluded from the list in the embodiment of FIG.
7. Moreover, Appellant notes that the list of “authorized”
devices would not necessarily include only “known” devices,
since the matching between the list and the received device
identification occurs after the device is “detected,” as indicated
in paragraph [0061] and other paragraphs in Appellant’s
Specification.
Request for Rehearing 5 (emphasis added).
Finally, Appellant contends that Biswas does not teach or suggest
“accessing by a first wireless handheld communication device (WCHD), a
list of authorized devices maintained at a second WHCD when said first
WHCS is within operating range of said second WHCD, . . . [and]
communicating information between said first WHCD and said least one
authorized WHCD via said second WHCD,” as recited in independent
claims 1, 11 and 21. Request for Rehearing 5.
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RESPONSE TO ARGUMENTS
We reiterate that we have reviewed Appellant’s Specification and
arguments and note that the embodiment of Fig. 7 emphasized by Appellant
above with respect to distinguishing “authorized devices” does not preclude
a claim construction in which the phrase “known or authorized devices” in
connection with the embodiment of Fig. 6C equates “known” devices with
“authorized” devices (Spec. ¶¶ [0050] – [0053]). We further point out that
the Specification only refers to “known or authorized” devices with respect
to the embodiment of Fig. 6C and, in doing so in the manner disclosed,
appears to equate these two words.
In particular, we find Appellant’s contention cited above, i.e., that
“the term ‘authorized devices’ cannot be interpreted broadly to include
simply ‘known’ devices,” to be unpersuasive. We find it particularly
unpersuasive, in light of Appellant’s Specification (Spec. at ¶¶ [0050]-
[0053]) where “known or authorized” devices in list 614C are disclosed, in
which list 614C “may comprise identification information for visible or
detected users.” Spec. at ¶ [0053], emphasis added.
Appellant does not provide any further definition of “known” devices
that would equate or limit known devices with “visible or detected users,”
nor does Appellant provide any alternative definition of “known” devices
that differs from the interpretation of “known” devices as being synonymous
with “authorized” devices.
We point out that Appellant’s argument directed to the specific
embodiment in Fig. 7 does not preclude an interpretation of the recited
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“authorized device” of claim 1 to be analyzed in light of the embodiment of
Fig. 6C and its related disclosure in the Specification as cited above. We
find that such an interpretation complies with the broadest reasonable
interpretation standard applied by the Examiner. During prosecution, “the
PTO applies to the verbiage of the proposed claims the broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant's specification.” In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
CONCLUSIONS
In view of the above, Appellant has not persuasively shown that we
misapprehended their arguments and that our Decision should be reversed.
For the aforementioned reasons, Appellant’s contentions have not persuaded
us of error in our Decision on Appeal of September 12, 2012
DECISION
Accordingly, while we have granted Appellant’s Request for
Rehearing to the extent that we have reconsidered our Decision, that request
is denied with respect to making any changes therein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv).
REQUEST FOR REHEARING DENIED
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