Ex Parte Riordan et al

Patent Trial and Appeal Board

Sep 19, 2012

10000551 (P.T.A.B. Sep. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KENNETH B. RIORDAN and STEVE R. BUNCH
____________________

Appeal 2011-005803
Application 10/000,551
Technology Center 2600
____________________

Before JOSEPH L. DIXON, THU A. DANG,
and JAMES R. HUGHES, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-6 and 10-21 (App. Br. 2). Claims 7-9 have been canceled (App. Br.
22). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellants’ invention is directed to a radio device and method for
providing regulatory information which eliminates the need for a physical
regulatory label on the device; wherein, a user interface is enabled to display
the regulatory information which is stored in a file in memory on the radio
device along with a server address having a Universal Resource Locator
(URL) that points to additional regulatory information (Abstract; Spec.
¶¶ [0007]-[0010]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A software defined radio device, comprising:

a processor;

memory coupled to the processor;

a user interface coupled to the processor;

a software programmable portion coupled to the
processor, the software programmable portion having a first
radio device configuration and a second radio device
configuration,
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first radio device configuration regulatory information
stored in the memory when the radio device is in the first radio
device configuration,

second radio device configuration regulatory information
stored in memory when the radio device is in the second radio
device configuration,

the processor configured to present the first radio device
configuration regulatory information on the user interface when
the radio device is in the first radio device configuration and to
present the second radio device configuration regulatory
information on the user interface when the radio device is in the
second radio device configuration.

C. REJECTIONS1
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fette US 6,052,600 Apr. 18, 2000
Bolas US 6,389,463 B2 May 14, 2002
(filed Jun. 16, 1999)
Boys US 6,993,004 B2 Jan. 31, 2006
(filed Jul. 16, 2001)

Claims 1 and 19-21 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Fette.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bolas.
Claims 2-4, 10-13, and 15-18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Fette in view of Boys.

1 The Examiner has withdrawn the rejection of claim 5 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the enablement requirement.
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Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fette in view of Bolas.

II. ISSUE
The dispositive issue before us is whether the Examiner has erred in
finding that Fette “the processor configured to present the first radio device
configuration regulatory information on the user interface when the radio
device is in the first radio device configuration and to present the second
radio device configuration regulatory information on the user interface
when the radio device is in the second radio device configuration” (claim 1,
emphasis added).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Fette
1. Fette discloses a system and method including a software
programmable wireless communication apparatus (radio) that is operable in
a home location as well as when the radio moves to a remote location;
wherein, the radio’s operability is verifiable for compliance with
predetermined specifications, such as those of the Federal Communication
Commission (FCC) (Abstract, Fig. 1; col.1, ll. 48-55, col. 6, ll. 42-45, and
col. 7, ll. 5-12). In particular, when the FCC needs to validate that a radio
meets a predetermined specification (e.g., noninterference, splatter, noise,
out-of-band noise), the system verifies whether the radio is in compliance
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with the specification to ensure that the radio operates according to the
regulatory restriction (id.).
2. There are several types of information that are sent to the radio
device 200 to be stored in memory 206 and processed by controller 204,
including software, configuration files (data) and information representing
the grant of rights for use of a software defined waveform in accordance
with a software license (Fig. 2; col. 5, ll. 30-60; col. 6, l. 63-col. 7, l. 4).
3. The radio receives the information from a server and a
controller configures the radio to perform the operation based information
(col. 2, ll. 43-45). In particular, the radio 200 may be configured by
accessing the server 110 through a base station 106 to receive the
configuration information, such as the configuration file for FCC
communication specifications (e.g., noninterference, splatter, noise, out-of-
band noise) associated with a software defined waveform (col. 3, ll. 31-41).
4. A reconfigurable resource 208 (having a processor 210 and
memory 212) located within the radio device 100 is able to receive and
process information from the configuration file having radio parameter
information in compliance with the FCC’s predetermined specification for
communication (Fig. 2; col. 1, ll. 48-55 and col. 6, ll. 37-45).
5. The controller generates outputs including status, errors,
software program icons, and records information to be displayed on the
display 214 for the user to approve (col. 9, ll. 38-65 and col. 5, ll. 20-23).
Bolas
6. Bolas discloses a device and method for receiving AM and FM
radio broadcasts along with radio broadcasts over the internet; wherein, the
device includes a memory 22 for storing information, such as user presets, a
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database of website addresses, software, and local digital sound recordings
(Fig. 1; Abstract; col. 2, ll. 36-51 and col. 3, ll. 58-62). The internet radio
must connect to the internet through a host, such as internet service provider
(ISP) 26, to retrieve audio content from web sites and streaming audio
sources; wherein, the radio includes a computer processor processes the
received data to send to a display (col. 3, ll. 51-58 and col. 4, ll. 28-33).
Boys
7. Boys discloses an innovative function of audio browser that
accesses a hyper-link, activating it with one initiation action provided by a
user; wherein, each hyper-link (radio station) has a URL or a server address
(col. 12, ll. 23-28).

IV. ANALYSIS
Claims 1 and 19-21
Appellants contend that “[i]t is unclear from the passages of Fette
cited by [the] Examiner[] what elements of Fette … correspond to the ‘radio
device configuration regulatory information stored in memory’” (App. Br.
8). Appellants argue that, although “Fette discloses that the configuration
file is stored in memory,” “there is no indication that the reconfiguration file
of Fette is presented on a user interface of the radio device” (App. Br. 9).
However, the Examiner finds that “Fette discloses using a display to
present at least part of the configuration regulatory information to the user,
because the user has to approve or acknowledge the new configuration”
(Ans.10).
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We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
Representative claim 1 does not place any limitation on what “radio
device configuration regulatory information” means, includes, or represents
other than the first and second radio device configuration regulatory
information are “stored in memory.” Further, the modifier “radio device
configuration regulatory” does not change the functionality of or provide
any additional function to the claimed “memory” of claim 1 in which the
information is stored and does not limit how the respective the information
is stored. Rather, these terms are merely labels describing the
information/data stored without being functionally related to the claimed
memory storing the information.
When descriptive material is not functionally related to the claimed
medium, the descriptive material will not distinguish the invention from the
prior art in terms of patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed.
Cir. 2004) and In re Gulack, 703 F.2d 1381, 1385 (Fed. Circ. 1983). That is,
the descriptive material will not be given patentable weight absent a new and
unobvious functional relationship between the descriptive material and the
medium. See In re Lowry, 32 F.3d 1579, 1582-1583 (Fed. Cir. 1994); Ngai,
367 F.3d at 1339 (nonfunctional descriptive material cannot render
nonobvious an invention that would have otherwise been obvious). See also
Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (nonprecedential), aff'd,
191 Fed.Appx. 959 (Fed. Cir. 2006). Thus, we give “first radio device
configuration regulatory information” and “second radio device
configuration regulatory information” its broadest reasonable interpretation
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as first and second information stored within the memory which is related to
a configuration regulation, as consistent with the Specification and as
specifically defined in claim 1.
Further, claim 1 merely requires that the processor is “configured to”
present the first and second radio device configuration information when the
radio device is in the first and second radio device configurations
respectively, rather than positively reciting a step of presenting the
information by the processor. We find such “configured to” language to
merely represent a statement of intended use of the processor which does not
limit the claim. Such intended use of “configured to present” will not limit
the scope of the claim because it merely defines a context in which the
invention operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Thus, we give “the
processor configured to present the first [and second] radio device
configuration regulatory information on the user interface” its broadest
reasonable interpretation as a processor capable of presenting the
information on the interface, as consistent with the Specification and claim
1.
Fette is directed to a communication system including a radio that is
operable in a home location and in remote locations, and whose operability
is verifiable by the system (FF 1). The server sends to the radio several
different types of information, including configuration files (FF 2). In
particular, the configuration file (having radio parameter information in
compliance with the FCC’s predetermined specifications for
communication) is stored in memory and is used by the reconfigurable
resource within the radio for communication processing (FF 3 and 4). The
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controller configures the radio according to the configuration file and
generates outputs to be displayed on a display screen (user interface),
including status, errors, icons, and records information for user approval (FF
3). We find that the home location comprises a first configuration including
configuration regulatory information and the remote location comprises a
second configuration including configuration regulatory information. We
find further that the controller comprises a processor that presents
information on the display. That is, we find that Fette’s controller comprises
“a processor” that is capable of “present[ing] the first radio device
configuration regulatory information on the user interface” (claim 1).
Thus, in view of our claim construction above, we find that Fette
discloses “the processor configured to present the first radio device
configuration regulatory information on the user interface when the radio
device is in the first radio device configuration and to present the second
radio device configuration regulatory information on the user interface when
the radio device is in the second radio device configuration,” as required by
claim 1.
Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting representative claim 1 under 35 U.S.C. § 102(b)
over Fette. Further, independent claims 19 and 21 having similar claim
limitations and claim 20 (depending from claim 19), which Appellants
defend with similar arguments (App. Br. 9-12), fall with claim 1.
Claims 5 and 6
As to claim 5, Appellants contend that the “radio station website
addresses stored in the radio box of Bolas are not ‘[]regulatory information
specific to the radio device’” (App. Br. 13).
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However, the Examiner finds that Bolas discloses “radio device
government regulatory information” because “the frequency for FM stations
or the amplitude for AM stations is government regulatory information, and
the display of preset station … [disclose] the limitations set by the claim”
(Ans. 13). The Examiner notes that “Bolas discloses that the website
address[es] stored [are] also used for configuration and updates of the
device, which provides information about the radio device” (id.).
Claim 13 does not define “radio device government regulatory
information” other than the radio device government regulatory information
is stored on the radio device and then retrieved. We also find “radio device
government regulatory” to be a description of the information stored on the
radio device that does not change the functionality of or provide any
additional function to the claimed “radio device” of claim 13 in which the
information is stored and that does not limit how the respective the
information is stored. Thus, we give “radio device government regulatory
information” its broadest reasonable interpretation as information stored
within the radio device related to government regulation of the radio device,
as consistent with the Specification and as specifically recited in claim 1.
Bolas is directed to a device and method for receiving AM and FM
radio broadcasts along with radio broadcasts over the internet; wherein, the
device includes a memory that stores data, such as user presets, a database of
web site addresses, software, and local digital sound recordings (FF 6). We
find the data stored in memory relating to the user presets for the AM and
FM radio stations include information that is related to government
regulation and, thus, comprises “radio device government regulatory
information” (claim 5). That is, we find that Bolas’ radio device includes
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“radio device government regulatory information specific to the radio device
stored in the memory of the radio device” (claim 5).
Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting claim 5 under 35 U.S.C. § 103(a) over Bolas.
As to claim 6, Appellants contend that “[t]he Examiner’s assertion
that it would have been obvious to store an FCC identification number on
the radio box of Bolas has no support in the prior art” (App. Br. 14).
After reviewing the record on appeal, we find no error with the
Examiner’s finding that 47 CFR § 2.926(d)-(e) provides support for
inclusion of the FCC identification number on the radio box of Bolas (Ans.
6).
Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting claim 6 under 35 U.S.C. § 103(a) over Bolas.
Claims 2-4, 10-13, and 15-18
As to claim 2, Appellants contend that “[t]he disclosure of a URL in
Boys does not remedy the deficiencies of Fette” (App. Br. 15). Appellants
argue that “in the network architecture of Fette, there is no direct
communication between the mobile radio and the server and thus no reason
to store an address for the server on the mobile radio” (id.). However, the
Examiner finds that Appellants present “no evidence from the reference is
shown to support this position” (Ans. 14).
As noted supra, we find Fette discloses a radio device that accesses a
server for configuration files; wherein, the files are stored in memory on the
radio device (FF 1-3).
In addition, Boys discloses an audio browser that accesses a
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hyper-link having a server address (FF 7). We find that Boys’ server
address accessed by the audio browser represents the “a … server address
stored in the memory” (claim 2).
In view of our claim construction above, we find that the combination
of Fette and Boys at least suggests providing “a radio device configuration
information server address stored in memory,” as specifically required by
claim 2.
Although Appellants argue that “[t]here is no reason to combine the
teaching of Boys with that of Fette and moreover such a combination is
likely inoperable” (App. Br. 15), we agree with the Examiner’s conclusion
and Appellants have not shown error in the Examiner's conclusion that “it
would have been obvious to one of the ordinary skill in the art at the time of
the invention to combine these teachings for the simple purpose of
permitting the radio to easily find the server” (Ans. 7).
Since Fette discloses that the radio device receives the information
from a server, we conclude that the combination of one known element
(Fette’s radio and server) with another (Boys’ audio browser that accesses a
hyper-link having a server address) would have yielded predictable results to
one of ordinary skill in the art at the time of the invention. That is, we find
that radio device as taught by Fette in addition to Boys’ server address stored
in memory is no more than a simple arrangement of old elements, with each
performing the same function it had been known to perform, yielding no
more than one would expect from such an arrangement. See KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
The skilled artisan would “be able to fit the teachings of multiple
patents together like pieces of a puzzle” since the skilled artisan is “a person
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of ordinary creativity, not an automaton.” Id. at 420-21. Appellants have
presented no evidence that combining Fete’s teaching of a system having a
radio device with an audio browser that stores the server addresses of Boys
was “uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Leapfrog Enterprises,
Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR,
550 U.S. at 418-19).
Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting representative claim 2 under 35 U.S.C. § 103(a)
over Fette in view of Boys. Further, independent claims 10 and 16 having
similar claim limitations and claims 3, 11-13, 17, and 18 (depending from
claims 2, 10, and 16), which have not been argued separately, fall with claim
2.
As to claim 4, Appellants contend that Fette does not teach “the ‘first
and second radio device government regulatory information’” and “[n]either
the grant of user rights nor the radio parameters of Fette correspond to the
‘FCC identification numbers’” (App. Br. 16).
However, the Examiner finds that “Fette describes the device
changing from CDMA to GSM … operating according to the FCC
specification which is government regulatory information” (Ans. 14-15).
The Examiner notes that, as “described in the admitted prior art[,] it is
required by the FCC that [the] device must have the FCC ID
attached/stored/printed into the device” (Ans. 15).
As noted supra, we find that Fette discloses the first and second
device configuration regulatory information (FF 1-4).
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In addition, as noted supra, we agree with the Examiner’s finding that
47 CFR§ 2.926(d)-(e) provides support for inclusion of the FCC
identification number (Ans. 6).
Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting representative claim 4 under 35 U.S.C. § 103(a)
over Fette in view of Boys. Further, claim 15, having similar claim
limitations and which has not been argued separately, falls with claim 4.
Claim 14
We note that Appellants did not present an argument directed to the
Examiner’s rejection of claim 14 under 35 U.S.C. § 103 over Fette in view
of Bolas. Accordingly, since separate arguments for patentability have not
been submitted, we will sustain this rejection as falling with its respective
parent claim.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1 and 19-21 under 35 U.S.C.
§ 102(b) and claims 2-6, 10-13, and 14-18 under 35 U.S.C. § 103(a) is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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