Ex Parte Palin et al

Patent Trial and Appeal Board

May 31, 2018

13452254 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/452,254 04/20/2012
11764 7590
Ditthavong & Steiner, P.C.
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
06/04/2018
FIRST NAMED INVENTOR
Arto Palin
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P6140USOO 7461
EXAMINER
SOLTANZADEH, MARYAM
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
06/04/2018 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):
docket@dcpatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARTO PALIN, JARI ANTERO NIKARA,
VESA-VEIKKO LUUKKALA, and PETRI LIUHA
Appeal2017-001951
Application 13/452,254 1
Technology Center 2600
Before JASON V. MORGAN, IRVINE. BRANCH, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-20. Claims 21--48 are canceled. App. Br. 22. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE and enter a NEW GROUND OF REJECTION.
1 Appellants identify Nokia Corporation as the real party in interest. App.
Br. 1.
Appeal2017-001951
Application 13/452,254
Invention
Appellants disclose an approach "for configuring one or more mobile
devices to multiple access points and/or services associated with at least one
structure." Abstract.
Exemplary Claim
1. A method comprising facilitating a processing of and/ or processing
(1) data and/or (2) information and/or (3) at least one signal, the (1)
data and/or (2) information and/or (3) at least one signal based, at
least in part, on the following:
at least one determination of status information associated with at
least one structure, wherein the at least one structure is associated with
one or more access points located in one part of the at least one
structure and one or more other access points located in another part
of the at least one structure; and
a processing of the status information to cause, at least in part, an
activation, a deactivation, or a combination thereof of the one or more
access points, one or more services associated with the one or more
access points, the one or more other access points, one or more other
services associated with the one or more other access points, or a
combination thereof,
wherein the one or more services associated with the one or more
access points and the one or more other services associated with the
one or more other access points are associated with controlling the at
least one structure.
Rejection
The Examiner rejects claims 1-20 under 35 U.S.C. § I03(a) as being
unpatentable over Tieman (US 2011/0257817 Al; published Oct. 20, 2011 ),
Tadayon et al. (US 8,315,617 B2; issued Nov. 20, 2012), and Shimizu (US
2013/0059542 Al; published Mar. 7, 2013). Final Act. 2-6.
2
Appeal2017-001951
Application 13/452,254
FINDINGS AND CONTENTIONS
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner relies on
Tieman's control module for determining a vehicle status and controlling a
device within the vehicle, Tadayon's disabling of device features, and
Shimizu's distribution of access points to teach or suggest all of the claimed
features. Final Act. 2--4. In particular, the Examiner finds that "Tadayon
teaches mobile devices that have different functions and features that are
distributed in a vehicular structure and depending on the location of each
device different applications ... may get deactivated based on the
occurrence of events." Ans. 8 ( citing Tadayon col. 2, 11. 53---67). The
Examiner further finds "Shimizu teaches a plurality of access points ...
which are WIFI certified devices ... disposed at different places in the
room" (Ans. 8 (citing Shimizu ,r,r 51-52)) and concludes that an artisan of
ordinary skill would have been "motivated to replace the devices of Tada yon
that are distributed in a vehicle structure with access points" (Ans. 8).
Appellants contend the Examiner erred because, inter alia, "Shimizu
clearly is not related to a vehicle as suggested/disclosed by Tieman and
Tadayon." App. Br. 10. "Shimizu simply relates to movement through
exhibitions by different attendants, and Tieman and Tadayon relate to
controlling mobile device functions within a vehicle and controlling a
vehicle wirelessly." Id. at 10-11. Appellants further argue that an artisan of
ordinary skill would not have modified the combined teachings and
suggestions of Tieman and Tada yon based on Shimizu in the manner
suggested by the Examiner, but for improper reliance on hindsight
reasoning. Reply Br. 6.
3
Appeal2017-001951
Application 13/452,254
ANALYSIS
We agree with Appellants that the Examiner's findings do not show
that the claimed invention would have been rendered obvious by the
combined teachings and suggestions of Tieman, Tada yon, and Shimizu. In
particular, the Examiner has provided insufficient support to show that such
an artisan would have been "motivated to replace the [mobile] devices of
Tadayon that are distributed in a vehicle structure with [Shimizu's] access
points." Ans. 8; see also id. at 11.
Tada yon has access points in the form of transmitters/transceivers
(e.g., 304, 330, 332, 324, and 336) by which mobile devices communicate
with a localized unit that receives vehicle status information. See, e.g.,
Tadayon col. 8, 11. 48-52, 58-57, Figs. 3(a), 7(a}-(b ). Shimizu's access
points 71 to 77, similar to Tadayon's transmitters/transceivers, serve to
communicate wirelessly with one or more game devices 1. See, e.g.,
Shimizu ,r,r 51, 74, Figs. 2-3. That is, there are apparent parallels between
Tadayon's transmitters/transceivers and Shimizu's access points, and
between Tadayon's mobile devices and Shimizu's game devices.
Despite such parallels, the Examiner does not rely on Shimizu's
teachings and suggestions to show, for example, that it would have been
obvious to replace Tadayon's transmitters/receivers with Shimizu's access
points, or to replace Tadayon's mobile devices with Shimizu's game
devices. Instead, the Examiner relies on Shimizu's teachings and
suggestions as rendering obvious modifying, through "simple substitution,"
Tada yon' s mobile devices with Shimizu' s access points. See Ans. 8, 11;
Final Act. 4. The substitution proffered by the Examiner would have
changed the purpose of Tadayon's mobile devices from being devices that
4
Appeal2017-001951
Application 13/452,254
communicate with access points to being access points themselves. This
substitution would also have left Tadayon ( even as combined with Tieman)
without any devices communicating with the access points. Thus, the
proffered substitution cannot properly be characterized as "simple."
Without additional fact-finding or explanation, we are unable to agree with
the Examiner's conclusion that this substitution would have obtained
"predictable results." Ans. 11. Therefore, we agree with Appellants that the
Examiner's findings do not show that the combination of Tieman, Tadayon,
and Shimizu renders obvious the disputed recitations of claim 1.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 103(a)
rejection of claim 1, and claims 2-20, which contain similar recitations and
are similarly rejected.
NEW GROUND OF REJECTION
The Examiner's limited reliance on Tadayon teachings and
suggestions overlooks a number of parallels with the claimed invention that,
properly relied on, show independent claims 1 and 11 would have been
obvious to an artisan of ordinary skill. Specifically, Tadayon alone teaches
or suggests a "method comprising facilitating a processing of and/ or
processing (1) data and/or (2) information and/or (3) at least one signal, the
(1) data and/or (2) information and/or (3) at least one signal based, at least in
part, on the following":
'" Reci ta ti on"""""""""""""""""""""'. '"Prior, Art, Te ac bing _and, S ugges ti on s """"""""""""'. ,
• at least one determination • Tada yon teaches or suggests the use of "any ·
• of status information • kind of condition ... can be applied in the
• associated with at least • logic of the operation, as long as there is a
• one structure, • sensor or device to detect that condition" ( col.
• • 25, 11. 6-8). Examples of conditions provided
•.................................................................................•.. include. whether the. ignition is on or a key is
5
Appeal2017-001951
Application 13/452,254
one structure is
associated with one or
more access points
located in one part of
the at least one
structure and one or
more other access
points located in
another part of the at
least one structure;
and
a processing of the status
information to cause, at
least in part, an
activation, a deactivation,
or a combination thereof
of the one or more access
points, one or more
services associated with
the one or more access
points, the one or more
other access points, one
or more other services
associated with the one or
in the ignition slot, the mode of the car ( e.g.,
Drive, Reverse, or Park), whether the car is
moving, speeding up, or slowing down,
whether the hand-brake is applied. See
Tadayon col. 24, 11. 19--43. Use of these
conditions requires determining status
information associated with a car (i.e., a
structure). Tadayon illustrates one example in
which a negated PARK signal is logically
ANDed with an IGNITION signal, enabling
feature activation or deactivation based on the
car status information represented by these
signals. See id. Fig. 8, col. 18, 1. 64---col. 19, 1.
34
Tadayon teaches or suggests a car (i.e., the
structure) that has (i.e., is associated with)
multiple localized transmitters/transceivers
placed, for example, in the front of the vehicle
( one part of the structure) and in the rear of the
vehicle ( another part of the structure). See,
e.g., Tadayon Fig. 3(a).
Tadyon teaches or suggests processing car
status information ( e.g., using rule-based
conditions) to, for example, tum off or disable
a radio, DVD player, or TV in the car and to
tum on car headlights automatically. See
Tadayon col. 24, 1. 43---col. 25, 1. 5. Tadayon
further teaches or suggests the use of car status
information ( e.g., by turning on the vehicle
and taking it out of park) to activate (i.e.,
enable) a localized transmitter/transceiver (i.e.,
an access point). See id. at col. 4, 11. 19-21.
Because the results of the claimed processing
are listed as the recitation
6
Appeal2017-001951
Application 13/452,254
• more other access points,
• or a combination thereof,
• wherein the one or more
• services associated with
• requires activation or deactivation of the one
• or more access points.
• The previous recitation only requires
• activation or deactivation of the one or more
• the one or more access • access points (i.e., the activation or
• points and the one or • deactivation of services alone or in
• more other services • combination with activation or deactivation of
• associated with the one or • access points). Thus, this wherein clause
• more other access points • merely modifies an optional feature of the
• are associated with • claimed invention. Because the underlying
• controlling the at least • feature (i.e., activation or deactivation or
• one structure. • services) is optional, this wherein clause is
• • also optional. Furthermore, because the cited
• • portions of Tadyon teach or suggest an
• • alternative (i.e., activation of access points) to
• • the underlying optional feature, it is
• • unnecessary to show that Tadyon teaches or
j sllggt!st tllis \\Tllert!i11 ~lclllS~:
Based on the above mapping between the recitations of claim 1 and
Tadyon's teachings and suggestions, we conclude that Tadyon renders
obvious the disputed recitations of claim 1, along with the similar recitations
of claim 11. Accordingly, we newly reject claims 1 and 11 under 35 U.S.C.
§ 103(a) as being unpatentable over Tadayon.
In newly rejecting claims 1 and 11 based on Tadyon alone, we have
significantly deviated from the Examiner's original rejection of these claims
based on the combined teachings and suggestions of Tieman, Tadayon, and
Shimizu. Compare the above findings and conclusions with Final Act. 2--4.
Thus, we cannot adopt and incorporate by reference the Examiner's findings
with respect to the remaining claims (2-10 and 12-20) for purposes of
newly rejecting these claims. Therefore, in the event Appellants elect to
reopen prosecution, it is incumbent on the Examiner to ascertain, in light of
7
Appeal2017-001951
Application 13/452,254
this new rejection of claims 1 and 11, whether the prior art teaches or
suggests the recitations of claims 2-10 and 12-20.
DECISION
We reverse the Examiner's decision rejecting claims 1-20.
We newly rejected claims 1 and 11 under 35 U.S.C. § 103(a).
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the prosecution will be
remanded to the examiner. The new ground of
rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under §41.52 by the Board
8
Appeal2017-001951
Application 13/452,254
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01 (9th Ed.,
Rev. 08.2015, Jan. 2018).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
REVERSED
37 C.F.R. § 4I.50(b)
9