Ex Parte Ohlenbusch et al

Patent Trial and Appeal Board

Aug 8, 2017

14062242 (P.T.A.B. Aug. 8, 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.
14/062,242 10/24/2013 Norbert Ohlenbusch LUM-108US06 1050
35859 7590 08/10/2017
Pierre AtwnnH T T P
EXAMINER
100 Summer Street GESESSE, TILAHUN
Suite 2250
Boston, MA 02110 ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
08/10/2017 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):
Patent @pierceatwood. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORBERT OHLENBUSCH, JOSEPH WRONSKI,
PAUL J. GAUDET, THOMAS P. BLACKADAR,
and STEVEN R. OLIVER
Appeal 2017-004752
Application 14/062,242
Technology Center 2600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-004752
Application 14/062,242
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—11, 13—16, and 18. Claims 12 and 17 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Exemplary Claims
Exemplary claims 1 and 11 under appeal read as follows:
1. A method for using a first device to communicate
with a second device over a wireless network,
comprising:
asynchronously with network communications of
the second device, powering up a transmitter of the first
device at a first time and using the transmitter of the first
device to wirelessly communicate a first message to the
second device;
at a second time, following the first time, powering
down the transmitter of the first device;
in response to powering down the transmitter of
the first device and at a beginning of an identified time
interval, powering up a receiver of the first device and
using the receiver of the first device to listen for a second
message transmitted by the second device; and
at an end of the identified time interval, powering
down the receiver of the first device.
11. A method for using a second device to
communicate with a first device over a wireless network,
comprising:
asynchronously with network communications of
the first device, using a receiver of the second device to
wirelessly receive a first message from the first device;
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Application 14/062,242
powering down the receiver of the second device
after the receiver of the second device receives the first
message from the first device;
at a beginning of an identified time interval
following receipt of the first message, if the second
device needs to communicate with the first device,
powering up a transmitter of the second device and using
the transmitter of the second device to wirelessly
communicate a second message to the first device, the
second message including information identifying a time
period during which the second device expects to receive
another first message from the first device;
powering up the receiver of the second device and
using the receiver of the second device to receive another
first message from the first device during the identified
time period; and
refraining from using the transmitter of the second
device to wirelessly communicate another second
message to the first device until a time after another first
message is received from the first device.
Rejection on Appeal
The Examiner rejected claims 1—11, 13—16, and 18 under
35 U.S.C. § 102(e) as being anticipated by Morelli (US 6,236,674 Bl; issued
May 22, 2001).
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Application 14/062,242
Appellants ’ Contentions1
1. Appellants contend that the Examiner erred in rejecting claims 1
and 7 under 35 U.S.C. § 102(e) because:
Morelli does not disclose a transmitter of a first device being
powered up asynchronously with network communications of a
second device, as claim 1 recites. In fact, as noted in the overview
of Morelli provided above, the device disclosed by Morelli
performs a procedure which involves powering up its transmitter
after determining that a packet received from another device
contains certain data. Not only is this procedure responsive to
network communications of another device (as it is predicated
on the content of a packet received from the other device), but in
fact Morelli explicitly discloses that the transmitter is powered
up immediately following network communications with
another device.
Morelli simply says nothing about the receiver being powered up
in response to the transmitter being powered down, as claim 1
recites. Rather, Morelli exclusively discloses that any powering
up of the receiver is performed in response to an incoming data
packet having a minimum threshold RSSI. Morelli simply says
nothing whatsoever about the receiver being powered up as a
consequence of (i.e., in response to) the transmitter being
powered down, as claim 1 recites.
It should be appreciated from the discussion above regarding
claim 1 that Morelli does not disclose or suggest (1) a first
device comprising a transmitter and at least one controller
configured to power up the transmitter at a first time
asynchronously with network communications of a second
device, as claim 7 recites, or (2) a first device comprising a
1 These contentions are determinative as to our decision on the appeal from
the rejections before this panel. Therefore, we do not discuss Appellants’
other contentions herein.
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Application 14/062,242
receiver, a transmitter, and at least one controller configured
to power up the receiver in response to powering down the
transmitter, as claim 7 recites.
App. Br. 11, 13, 18 (emphasis added and citations omitted); see also Reply
Br. 2-9.
2. Appellants also contend that the Examiner erred in rejecting claims
11 and 16 under 35 U.S.C. § 102(e) because:
Morelli does not disclose or suggest a second device powering
up a transmitter and using the transmitter to wirelessly
communicate a message to a first device which includes
information identifying a time period during which the second
device expects to receive another message from the first device,
as claim 11 recites. In fact, Morelli explicitly teaches that the
purpose of the functionality which enables the disclosed device
to power up and down its receiver is to allow the device to receive
messages at any time, rather than only at identified times .
Thus, there would be no need in Morelli's system for any
message which includes information identifying a time period
during which the device expects to receive another message
from another device, as claim 11 recites, let alone for the device
to power up its receiver and use the receiver to receive another
message from the other device during the identified time period,
as claim 11 recites.
It should be appreciated from the discussion above with
reference to claim 11 that Morelli does not disclose or suggest a
second device comprising at least one controller configured to
power up a transmitter and use the transmitter to wirelessly
communicate a second message to a first device which includes
information identifying a time period during which the second
device expects to receive another first message from the first
device, as claim 16 recites.
App. Br. 21, 24 (emphasis added and citations omitted); see also Reply
Br. 9-10.
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Application 14/062,242
Issue on Appeal
Did the Examiner err in rejecting claims 1,7, 11, and 16 as being
anticipated?
PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Under 35 U.S.C. § 102, the prior art reference
“must not only disclose all elements . . . within the four comers of the
document, but must also disclose those elements arranged as in the
claim.” NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
2008) (citation and internal quotation marks omitted). “Thus, it is not
enough that the prior art reference discloses part of the claimed invention,
which an ordinary artisan might supplement to make the whole, or that it
includes multiple, distinct teachings that the artisan might somehow
combine to achieve the claimed invention.” Id. at 1371.
ANALYSIS
As to Appellants’ above contention 1 regarding claims 1 and 7, we are
persuaded the Examiner erred. We agree with Appellants that Morelli
discloses a device that powers up a transmitter in response to a network
communication from another device (i.e., in response to a determination that
a packet received from another device requires a response). See
Morelli 7:67—8:15. As the powering up of the transmitter is directly
responsive to the network communication from another device, the powering
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Application 14/062,242
up of the transmitter is not asynchronous with the network communication.
Further, while we agree with the Examiner that Morelli additionally
discloses that a mobile terminal and a base station are configured in a
master-slave relationship, where the mobile terminal only powers up its
receiver during times when the mobile terminal desires to receive
information (see Ans. 12 (citing Morelli 3:5—14)), the Examiner has not
shown how this disclosure teaches powering up a transmitter asynchronously
with network communications of another device. Thus, the Examiner has
not shown that Morelli teaches “asynchronously with network
communications of the second device, powering up a transmitter of the first
device,” as recited in claim 1 (emphasis added), and similarly recited in
claim 7.
We also agree with Appellants that Morelli discloses that the device
powers up its receiver in response to a determination that a strength of a
received signal is greater than a threshold (see Morelli 7:33—39), and fails to
explicitly or inherently disclose that the powering up of the receiver is in
response to a powering down of the transmitter. Thus, the Examiner has
also not shown that Morelli teaches “in response to powering down the
transmitter of the first device and at a beginning of an identified time
interval, powering up a receiver of the first device,” as recited in claim 1
(emphasis added), and similarly recited in claim 7.
Thus, we agree with Appellants that the Examiner has not shown that
Morelli teaches all the elements of claims 1 and 7. Therefore, we do not
sustain the rejections of claims 1 and 7.
As to Appellants’ above contention 2 regarding claims 11 and 16, we
are also persuaded the Examiner erred. The Examiner has not shown where
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Morelli explicitly or inherently discloses a message that includes
information identifying a time period during which another device expects to
receive another message from the device. Thus, the Examiner has also not
shown that Morelli teaches
powering up a transmitter of the second device and using the
transmitter of the second device to wirelessly communicate a
second message to the first device, the second message including
information identifying a time period during which the second
device expects to receive another first message from the first
device,
as recited in claim 11 (emphasis added), and similarly recited in claim 16.
Thus, we also agree with Appellants that the Examiner has not shown
Morelli teaches all the elements of claims 11 and 16. Therefore, we also do
not sustain the rejection of claims 11 and 16.
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1—11, 13—16, and 18 as being anticipated under 35 U.S.C. § 102(e).
(2) On this record, claims 1—11, 13—16, and 18 have not been shown
to be anticipated.
DECISION
We reverse the Examiner’s rejections of claims 1—11, 13—16, and 18
as being anticipated under 35 U.S.C. § 102(e).
REVERSED
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