Samsung Electronics Co., Ltd.

Patent Trials and Appeals BoardApr 30, 2021

2021000054 (P.T.A.B. Apr. 30, 2021)

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. 16/368,031 03/28/2019 Dae-Dong KIM 0201-1179-1 9676 68103 7590 04/30/2021 Jefferson IP Law, LLP 1130 Connecticut Ave., NW, Suite 420 Washington, DC 20036 EXAMINER KRUEGER, KENT K ART UNIT PAPER NUMBER 2474 NOTIFICATION DATE DELIVERY MODE 04/30/2021 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): usdocketing@jeffersonip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAE-DONG KIM, HEE-DONG KIM, YUN-HO PARK, KWAN- WOO SONG, CHUNG-YONG EOM, DONG-IK LEE, JA-LICK CHUN, and DONG-YUN HAWNG ____________ Appeal 2021-000054 Application 16/368,031 Technology Center 2400 ____________ Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and PHILLIP A. BENNETT, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4, 6–13, 18, 19, and 21–26. Claims 15–17 and 20 are canceled. Claims 5 and 14 are indicated as being allowable. See Final Act. 19; Ans. 3. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). A telephonic Oral Hearing was held on April 14, 2021. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Samsung Electronics Co., Ltd. Appeal Br. 2. Appeal 2021-000054 Application 16/368,031 2 We REVERSE and enter a new ground of rejection of claims 1–4, 6– 13, 18, 19, and 21–26 under 35 U.S.C. § 112, second paragraph as permitted by 37 C.F.R. § 41.50(b). The present invention relates generally to obtaining connection information for a wireless device by scanning a recognition code of the wireless device. See Spec., Abstract. Claim 1 is illustrative: 1. A method by a first electronic device for facilitating a connection of a second electronic device to an access point, the method comprising: obtaining a quick response (QR) code on the second electronic device, the QR code being obtained by using a camera of the first electronic device, wherein the QR code is obtained before establishing a connection with the second electronic device; based on the obtained QR code, identifying connection information for establishing a connection with the second electronic device, the connection information including identification information of the second electronic device; establishing the connection with the second electronic device based on the identified connection information, wherein the second electronic device is not connected with the first electronic device before establishing the connection; and transmitting access information of the access point to the second electronic device over the established connection with the second electronic device, wherein the access information of the access point is used for the second electronic device to connect to the access point. Appellant appeals the following rejection2: Claims 1–4, 6–13, 18, 19, and 21–26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tinnakornsrisuphap (US 2013/0223279 2 The Examiner withdrew the Double Patenting rejection due to the Terminal Disclaimer being properly filed. See Ans. 3; see also Final Act. 2–5. Appeal 2021-000054 Application 16/368,031 3 A1; pub. Aug. 29, 2013) and Anttila (US 2005/0139680 A1; pub. June 30, 2005). Final Act. 6–18. We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). ANALYSIS Rejection under 35 U.S.C. § 103 We reverse the outstanding rejection of claims 1–4, 6–13, 18, 19, and 21–26 under 35 U.S.C. § 103(a), pro forma, because we conclude that at least independent claims 1 and 11 are indefinite under 35 U.S.C. § 112, second paragraph, as detailed under new grounds of rejection, infra. That is, claims 1–4, 6–13, 18, 19, and 21–26 on appeal are not reasonably understood without resorting to speculation, thereby the rejection of the claims over prior art are based on speculation and assumptions as to the scope of the claims. See In re Steele, 305 F.2d 859, 862 (CCPA 1962). Presently, the claims on appeal do not adequately reflect what the disclosed invention is. We are therefore declining to utilize speculation and conjecture in an attempt to ascertain the scope of the claims. Our decision regarding this 103 rejection is based solely on the indefiniteness of the claims. We emphasize that our decision does not mean the claims are patentable. Rather, we leave the patentability determination of these claims to the Examiner. See MPEP § 1213.02. Appeal 2021-000054 Application 16/368,031 4 35 U.S.C. § 112, Second Paragraph New Ground of Rejection Regarding independent claims 1 and 11, we cannot determine the metes and bounds of the claims as required to ascertain the scope of the respective claim. In particular, we are unclear as to what the multiple phrases “a connection with the second electronic device” are to include, mean, or represent. For example, the preamble of claim 1 recites “a connection of a second electronic device to an access point”; the first paragraph of claim 1 recites “a connection with the second electronic device”; and the second paragraph of claim 1 recites “a connection with the second electronic device.” All of these recitations appear to indicate a different connection to the second electronic device. Thereafter, in the third paragraph of claim 1, claim 1 recites “establishing the connection with the second electronic device.’ See claim 1. Claim 11 similarly recites “a connection with the second electronic device” twice in the body of the claim before reciting “the connection with the second electronic device.” See claim 11. As a result, we find it unclear as to what the language of claims 1 and 11 is directed. Specifically, it is unclear as to what is meant by the recited “a connection with the second electronic device,” i.e., whether it is referring to the first electronic device being connected to the second electronic device or to the access point being connected to the second electronic device. When the claims become so ambiguous that one of ordinary skill in the art cannot determine their scope absent speculation, such claims are invalid for indefiniteness. S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1372 (Fed. Cir. 2001) (citing In re Steele, 305 F.2d at 862–63. Here, we conclude Appeal 2021-000054 Application 16/368,031 5 that each of independent claims 1 and 11 do not reasonably apprise those skilled in the art of its scope. Because we conclude that there are significant ambiguities with respect to the independent claims and thus to each of the claims depending therefrom, we enter a new ground of rejection under 35 U.S.C. § 112, second paragraph, against claims 1–4, 6–13, 18, 19, and 21–26 on appeal, pursuant to our authority under 37 C.F.R. § 41.50(b). CONCLUSION We REVERSE pro forma the Examiner’s obviousness rejection of claims 1–4, 6–13, 18, 19, and 21–26. We enter a NEW GROUND OF REJECTION for claims 1–4, 6–13, 18, 19, and 21–26 as being indefinite. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1–4, 6–13, 18, 19, 21–26 103 Tinnakornsrisuphap, Anttila 1–4, 6–13, 18, 19, 21–26 1–4, 6–13, 18, 19, 21–26 112(b) Indefiniteness 1–4, 6– 13, 18, 19, 21– 26 Overall Outcome 1–4, 6–13, 18, 19, 21–26 1–4, 6– 13, 18, 19, 21– 26 As set forth above, this Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (2008), which provides that “[a] new Appeal 2021-000054 Application 16/368,031 6 ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that 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 [e]vidence 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 [E]xaminer. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . REVERSED; NEW GROUND 37 C.F.R. § 41.50(b)