Ex Parte SAITO et al

Patent Trials and Appeals BoardJun 25, 2019

12915678 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/915,678 10/29/2010 ERIKA SAITO 142241 7590 06/25/2019 Paratus Law Group, PLLC 1765 Greensboro Station Place Suite 320 Tysons Corner, VA 22102 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. 1946-0092 8086 EXAMINER LINDENBAUM, ALAN LOUIS ART UNIT PAPER NUMBER 2466 MAIL DATE DELIVERY MODE 06/25/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIKA SAITO, HIDE YUKI SUZUKI, KA TSUTOSHI ITOH, MASAHIKONAITO, NATSUKIITAYA, and TOMOYA YAMAURA Appeal2018-004724 Application 12/915,678 1 Technology Center 2400 Before ST. JOHN COURTENAY III, BETH Z. SHAW, and SCOTT E. BAIN, Administrative Patent Judges. BAIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1, 3-14, 18-21, 25-30, 34-37, and 41-46, which constitute all claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 Appellants identify Sony Corporation as the real party in interest. App. Br. 3. Appeal2018-004724 Application 12/915,678 BACKGROUND The Claimed Invention Appellants' claimed invention relates to radio communication, and specifically, to a communication device collecting information from another device that "exists within its radio range but belongs to a different communications group." Spec. ,i 7. Claims 1, 9, 10, 11, 13, 20, 27, 28, 29, and 36 are independent. Claim 1 is illustrative of the invention and the subject matter at issue in this case, and reads as follows (with disputed limitations emphasized): 1. A radio communication device comprising: a communication unit that communicates with another radio communication device; and a control unit that, when a prescribed service inquiry packet sent from the another radio communication device is received by the communication unit, controls the communication unit to send a service response packet based on an action frame as specified by IEEE 802 .11 and containing response service information indicating a compatible protocol with which the radio communication device is compatible, wherein the service inquiry packet is based on the action frame as specified by IEEE 802.11 and comprises inquiry service information indicating a compatible protocol with which the another radio communication device is compatible, wherein the action frame comprises a Media Access Control (MAC) Header, Frame Body, and Frame Check Sequence (PCS), and the service response packet is sent in a case that the compatible protocol with which the radio communication device is compatible is different from the compatible protocol with which the another radio communication device is compatible, and wherein the communication unit and the control unit are each implemented via at least one processor. App. Br. 29 (Claims App.). 2 Appeal2018-004724 Application 12/915,678 Prior Art The Examiner relies upon the following prior art: Jeong et al. US 2006/0092888 Al May 4, 2006 McRae et al. US 2006/0221919 Al Oct. 5, 2006 Kuehnel et al. US 2007/0141988 Al Jun. 21, 2007 Karaoguz et al. US 2010/0135200 Al Jun.3,2010 Rangarajan et al. US 8,170,481 B2 May 1, 2012 The Rejections on Appeal Claims 1, 3-11, and 46 stand rejected under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Kuehnel et al. ("Kuehnel"), Rangarajan et al. ("Rangarajan"), and Jeong et al. ("Jeong"). Final Act. 2-16. Claim 12 stands rejected under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Kuehnel, Rangarajan, Jeong, and McRae et al. ("McRae"). Final Act. 22-23. Claims 13, 14, 18-21, 25-30, 34-37, 41, and 42 stand rejected under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Kuehnel, Rangarajan, Jeong, and Applicant's Admitted Prior Art. Final Act. 16-22. Claims 43-45 stand rejected under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Kuehnel, Rangarajan, Jeong, and Karaoguz et al. ("Karaoguz"). Final Act. 23. 3 Appeal2018-004724 Application 12/915,678 DISCUSSION We have reviewed the Examiner's rejections in light of the arguments raised in the Briefs. On the record before us, we cannot sustain the Examiner's rejections. Appellants argue the Examiner erred in finding the prior art teaches or suggests the "service response packet is sent in a case that the compatible protocol with which the radio communication device is compatible is different from the compatible protocol with which the [other] radio communication device is compatible," as recited in claim 1.2 App. Br. 22- 24 (emphasis added). Specifically, Appellants argue that Kuehnel's teaching of "searching for services ... ( active and passive service discovery)" has nothing to do with device protocols being different from one another, as the claim requires. App. Br. 22-23. We are persuaded by Appellants' argument. The Examiner finds Kuehnel teaches or suggests the "different from" limitation in paragraphs 42 and 57. Ans. 4; see also Final Act. 3. These are the only passages cited by the Examiner as teaching this limitation. The Examiner finds paragraph 42 teaches "several different discovery protocols" and paragraph 57 teaches "searching for service and advertisement of services are both enabled." Ans. 4. No further explanation is provided by the Examiner. Kuehnel's paragraph 42 provides, in its entirety: In step S206, the desirability of the advertised service may be determined. As one example, information related to the advertised service may be displayed for a user of wireless- 2 Appellants argue claims 1, 3-11, and 46, which recite limitations commensurate in scope, as a group. App. Br. 19. We choose claim 1 as representative of the group. 37 C.F.R. Â§ 41.37(c)(4). 4 Appeal2018-004724 Application 12/915,678 enabled device 102. The user may decide whether to initiate a connection with the device that provides the advertised service. The desirability of the advertised service may be determined based on whether or not the user chooses to initiate a connection to take advantage of the service or other criteria. We do not discern in the foregoing passage, and the Examiner does not explain, any teaching of "different" compatible protocols, let alone any teaching of the claim's requirement that a service packet is sent based on a difference in compatible protocols between radio communication devices. See also App. Br. 22-23. Rather, the foregoing passage teaches determining the desirability of an advertised service, and whether to initiate a connection with a device that provides it. Id.; Kuehnel ,-J 42. We do not discern how Kuehnel paragraph 5 7 provides any further teaching regarding the disputed limitation. Paragraph 57 states: In one aspect of the invention, if both searching for services and advertisement of services ( active and passive service discovery) are enabled, the advertisement of services messages may include less information about the service than a response message. For example, a truncated IE may be sent by those devices advertising their service(s), which contains less information than a full-sized IE. Advertising services by sending truncated IEs may reduce the overhead associated with repeated transmissions. The Examiner's explanation that this paragraph describes "searching for service and advertisement of services are both enabled" does not demonstrate any teaching of the disputed claim limitation, which requires "different" compatible protocols, and sending a service response packet in response to this difference. App. Br. 29. And on this record, the Examiner has not relied on any other reference or combination for this limitation. 5 Appeal2018-004724 Application 12/915,678 Accordingly, on this record, Appellants' argument has persuaded us of error. We need not reach Appellants' remaining arguments regarding the limitations that a "service inquiry packet" and "service response packet" both are "based on an action frame." App. Br. 20-22. For the foregoing reasons, we do not sustain the Examiner's obviousness rejection of claims 1, 3-11, and 46. The remaining claims all recite limitations commensurate in scope with those discussed above, Appellants make the same arguments, and the Examiner relies on the same findings regarding the disputed limitation discussed above. Accordingly, we are persuaded the Examiner erred in rejecting remaining claims 12-14, 18- 21, 25-30, 34-37, and 41-45, and we do not sustain the obviousness rejections of those claims. DECISION We reverse the Examiner's decision rejecting claims 1, 3-14, 18-21, 25-30, 34-37, and 41-46. REVERSED 6