Ex Parte Wurster et alDownload PDFPatent Trial and Appeal BoardAug 4, 201714284317 (P.T.A.B. Aug. 4, 2017) Copy Citation 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. 14/284,317 05/21/2014 Charles Stewart Wurster 134134/ 1376-1298 1076 111523 7590 08/08/2017 The Marbury Law Group/Qualcomm 11800 Sunrise Valley Drive, 15th Floor Reston, VA 20191 EXAMINER MEJIA, FELICIANO S ART UNIT PAPER NUMBER 2492 NOTIFICATION DATE DELIVERY MODE 08/08/2017 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): ptonoticesqc @marburylaw.com ocpat_uspto@qualcomm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHARLES STEWART WURSTER, KEVIN EDWARD HUNTER, JEFFREY VACCARO, and VICENTE MENDEZ Appeal 2017-005017 Application 14/284,3171 Technology Center 2400 Before ST. JOHN COURTENAY III, LARRY J. HUME, and JOYCE CRAIG, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 1—30. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is QUALCOMM. App. Br. 3. Appeal 2017-005017 Application 14/284,317 STATEMENT OF THE CASE2 The Invention Appellants' claimed invention relates to "interleaving advertising packets for improved detectability and security." Title. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphasis added to contested limitation): 1. A method for processing beacon messages transmitted in an interleaving fashion using a first packet format and a second packet format, the method comprising: receiving, by a receiver, a first message of the first packet format transmitted by a first beacon device; detecting, by the receiver, information in the first message indicating a presence of one or more messages of the second packet format that can be received by the receiver from a second beacon device; adjusting the receiver to process the one or more messages of the second packet format based on the detected information; receiving, by the receiver in response to adjusting the receiver, a second message of the second packet format transmitted by the second beacon device; and performing, by the receiver, an action based on the received second message. 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed July 14, 2016); Reply Brief ("Reply Br.," filed Jan. 30, 2017); Examiner's Answer ("Ans.," mailed Nov. 30, 2016); Final Office Action ("Final Act.," mailed Feb. 3, 2016); and the original Specification ("Spec.," filed May 21, 2014). 2 Appeal 2017-005017 Application 14/284,317 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Espelien Karl et al. ("Karl") Kanagala et al. ("Kanagala") Segev et al. ("Segev") US 2009/0052380 US 7,616,942 B2 US 7,880,616 B2 US 2014/0146727 Al Feb. 26,2009 Nov. 10, 2009 Feb. 1,2011 Al May 29, 2014 Rejections on Appeal Rl. Claims 1—5, 13—19 and 27—293 stand rejected under pre-AIA 35 U.S.C. § 102(e) as anticipated by Segev. Final Act. 3. R2. Claims 6, 8, 9, 10, 20 and 22—24 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the combination of Segev and Kanagala. Final Act. 7. R3. Claims 7, 11, 12, 21, 25, and 26 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the combination of Segev and Espelien. Final Act. 12. R4. Claim 30 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the combination of Segev and Karl. Final Act. 14. ISSUES AND ANAFYSIS We agree with particular arguments advanced by Appellants with respect to claim 1 for the specific reasons discussed below. We highlight and address specific findings and arguments for emphasis as follows. 3 Although the Examiner omits claim 29 from the explicit statement of the rejection (Final Act. 3) it is included in the detailed rejection. 3 Appeal 2017-005017 Application 14/284,317 1. $ 102 Rejection R1 of Claims 1—5, 13, 14, 15—19 and 27—28 Issue 1 Appellants argue (App. Br. 6—12; Reply Br. 2—6) the Examiner's rejection of claim 1 under 35 U.S.C. § 102(e) as being anticipated by Segev is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art discloses a method that includes, inter alia, the limitations of: detecting, by the receiver, information in the first message indicating a presence of one or more messages of the second packet format that can be received by the receiver from a second beacon device; adjusting the receiver to process the one or more messages of the second packet format based on the detected information; receiving, by the receiver in response to adjusting the receiver, a second message of the second packet format transmitted by the second beacon device, as recited in claim 1? Analysis "Detecting " Limitation Appellants first argue, "the Examiner has committed clear error in maintaining that Segev teaches or suggest the element of 'detecting, by the receiver, information in the first message indicating a presence of one or more messages of the second packet format that can be received by the receiver from a second beacon device' as recited in the independent claims." App. Br. 11. In particular, Appellants contend "Segev asserts that the presence of 'messages of the second packet format that can be received by 4 Appeal 2017-005017 Application 14/284,317 the receiver' as recited in the claims are determined 'based at least in part on receiving the out-of-band signal', not based on information contained within the message of the first packet format." Id. A claim is anticipated, and therefore unpatentable under 35 U.S.C. § 102, if all of its limitations are disclosed either explicitly or inherently in a single prior art reference. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We are persuaded the Examiner erred in finding Segev discloses this contested limitation because, on this record, and upon our reading of the cited section of the prior art, Segev does not disclose "detecting, by the receiver, information in the first message indicating a presence of one or more messages of the second packet format that can be received by the receiver from a second beacon device," as recited in claim 1. (Emphasis added). Our reviewing court guides: “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.” Net Money IN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (internal citation and internal quotation marks omitted). In the Final Action and Answer, we find the Examiner did not adequately explain the mapping of the contested claim limitation to the corresponding feature found in the prior art in a manner sufficient to satisfy the rigorous express or inherent description requirement of an anticipation rejection . Final Act. 3—4, 5 Appeal 2017-005017 Application 14/284,317 Ans. 3. Thus, we agree with Appellants' argument that Segev does not disclose the recited "detecting" limitation. Accordingly, based upon the findings above, on this record, we are persuaded of error in the Examiner's reliance on the disclosure of the cited prior art to disclose the disputed limitation of claim 1, such that we do not sustain the Examiner's finding of anticipation of independent claim 1. We also cannot sustain § 102 Rejection R1 of independent claims 15 and 29, which recite the contested limitation in commensurate form, and dependent claims 2—5, 13, 14, 16—19, which variously depend therefrom and stand therewith. In light of our reversal of the rejections of independent claims 1,15, and 29, supra, we also reverse § 103 obviousness Rejections R2 of claims 6, 8—10, 20, and 22—24, and R3 of claims 7, 11, 12, 21, and 25, which variously and ultimately depend therefrom. On this record, the Examiner has not shown how the additionally cited secondary references Kangala and Espelien overcome the aforementioned deficiencies of Segev, as discussed above regarding claim 1. For reasons similar to our reversal of the anticipation Rejection R1 of claim 1, we also reverse Rejection R4 of claim 30 under 35 U.S.C. § 103. CONCLUSIONS (1) The Examiner erred with respect to anticipation Rejection R1 of claims 1—5, 13—19, and 27—29 under 35 U.S.C. § 102(e) over the cited prior art of record, and we do not sustain the rejection. 6 Appeal 2017-005017 Application 14/284,317 (2) The Examiner erred with respect to obviousness Rejections R2 through R4 of claims 6—12, 20-26, and 30 under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and we do not sustain the rejections. DECISION We reverse the Examiner's decision rejecting claims 1—30. REVERSED 7 Copy with citationCopy as parenthetical citation