Yamaha CorporationDownload PDFPatent Trials and Appeals BoardMar 2, 20212019005971 (P.T.A.B. Mar. 2, 2021) 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. 15/154,789 05/13/2016 Akihiko SUYAMA 101749.62203C1 2025 23911 7590 03/02/2021 CROWELL & MORING LLP INTELLECTUAL PROPERTY GROUP P.O. BOX 14300 WASHINGTON, DC 20044-4300 EXAMINER LE, CANH ART UNIT PAPER NUMBER 2439 NOTIFICATION DATE DELIVERY MODE 03/02/2021 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): edocket@crowell.com mloren@crowell.com tche@crowell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte AKIHIKO SUYAMA and TADASHI SUGIYAMA ____________ Appeal 2019-005971 Application 15/154,789 Technology Center 2400 ____________ Before CARL W. WHITEHEAD JR., JAMES B. ARPIN, and MICHAEL J. ENGLE, Administrative Patent Judges. ARPIN, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a), the rejection of claims 1–4, 6, and 7, all of the pending claims. Final Act. 2.2 Claim 5 is cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party-in-interest as Yamaha Corporation. Appeal Br. 1. 2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed April 29, 2019) and Reply Brief (“Reply Br.,” filed August 6, 2019); the Final Office Action (“Final Act.,” mailed January 18, 2019) and the Examiner’s Answer (“Ans.,” mailed June 7, 2019); and the Specification (“Spec.,” filed May 13, 2016). Rather than repeat the Examiner’s findings and Appellant’s contentions in their entirety, we refer to these documents. Appeal 2019-005971 Application 15/154,789 2 STATEMENT OF THE CASE The claimed commanders, audio players, and methods “relate[] to a wireless network system for conducting wireless network communications through an access point, and a wireless communication method performed in the wireless network system.” Spec. ¶ 3. As noted above, claims 1–4, 6, and 7 are pending. Claims 1, 4, 6, and 7 are independent. Appeal Br. 9–11 (Claims App.). Claims 2 and 3 depend directly from claim 1. Id. at 9. Claim 1 recites “[a] commander of a wireless network audio system, the commander configured to wirelessly communicate with an audio player of the wireless network audio system,” and claim 6 recites “[a] method of switching a network mode of a commander of a wireless network audio system configured to wirelessly communicate with an audio player of the wireless network audio system.” Id. at 9, 10 (emphases added). Claim 4 recites “[a]n audio player of a wireless network audio system, the audio player configured to wirelessly communicate with a commander of the wireless network audio system,” and claim 7 recites “[a] method of switching a network mode of an audio player of wireless network audio system configured to wirelessly communicate with a commander of the wireless network audio system.” Id. at 9–10, 10–11 (emphases added). The Examiner relies on the same reference and substantially similar arguments in rejecting claims 1 and 6 and claims 4 and 7 under anticipation (Final Act. 5– 8), respectively, and Appellant does not contest the rejection of claims 2 and 3 separately from independent claim 1 (see Reply Br. 4). Therefore, we focus our analysis on independent claims 1 and 4. Appeal 2019-005971 Application 15/154,789 3 Claims 1 and 4, reproduced below with disputed elements emphasized, are representative. 1. A commander of a wireless network audio system, the commander configured to wirelessly communicate with an audio player of the wireless network audio system, the commander comprising: a hardware processor; a wireless network interface; a storage which stores network information for setting wireless access, a particular network name, and instructions that, when executed by the processor, cause the commander to: monitor, by way of the wireless network interface, wireless access from the audio player in the vicinity of the commander; detect, by way of the wireless network interface, wireless access with a network name from the audio player; in response to determining that the detected network name corresponds to the particular network name stored in the storage, switch a network mode of the commander from an infrastructure mode to an AdHoc mode to access the audio player; connect to the audio player specified by the particular network name; and after switching the network mode, send the network information via the network interface to the audio player. Id. at 9 (emphasis added). 4. An audio player of a wireless network audio system, the audio player configured to wirelessly communicate with a commander of the wireless network audio system, the player comprising: a hardware processor; a wireless network interface; Appeal 2019-005971 Application 15/154,789 4 a storage which stores a particular network name and instructions that, when executed by the processor, cause the audio player to: receive a specific operation by a user on the audio player; based on the received specific operation of the user on the audio player, start a wireless access with the particular network name stored in the storage by an AdHoc mode; establish a wireless connection with the commander by the AdHoc mode; receive network information via the wireless network interface by way of the wireless connection by the AdHoc mode; store the network information to the storage; and in response to receiving the network information, switch a network mode of the audio player from the AdHoc mode to an infrastructure mode by using the network information. Id. at 9–10 (emphasis added). REFERENCE AND REJECTION The Examiner relies upon the following reference: Name Number Published Filed Yamada US 2007/0086394 A1 Apr. 19, 2007 May 4, 2006 The Examiner rejects claims 1–4, 6, and 7 under 35 U.S.C. § 102(b) as anticipated by Yamada. Final Act. 5–8. Appellant contests the anticipation rejection of claims 1–4, 6, and 7 and relies on alleged deficiencies in the rejection of independent claims 1 and 4 to overcome the rejection of the remaining claims. Appeal Br. 4–8. Because we determine that reversal of the rejection of independent claims 1 and 4 is dispositive, except for our ultimate decision, we do not discuss the Appeal 2019-005971 Application 15/154,789 5 merits of the rejection of claims 2, 3, 6, and 7 further herein. We review the rejection of independent claims 1 and 4 for error based upon the deficiencies identified by Appellant, and in light of the contentions and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). We address the rejection below. ANALYSIS 1. Lack of Anticipation of Claims 1 and 4 by Yamada As noted above, the Examiner rejects claims 1–4, 6, and 7 as anticipated by Yamada. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). Nevertheless, unless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C.§ 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added); accord In re Arkley, 455 F.2d 586 (CCPA 1972). a. Claim 1 The Examiner rejects independent claim 1 as anticipated by Yamada. Final Act. 5–7. In particular, the Examiner finds Yamada discloses, Appeal 2019-005971 Application 15/154,789 6 instructions that, when executed by the processor, cause the commander to: monitor, by way of the wireless network interface, wireless access from the audio player in the vicinity of the commander; detect, by way of the wireless network interface, wireless access with a network name from the audio player; in response to determining that the detected network name corresponds to the particular network name stored in the storage, switch a network mode of the commander from an infrastructure mode to an AdHoc mode to access the audio player; Id. at 6 (citing Yamada ¶¶ 27, 46, 47, Fig. 1); Appeal Br. 9 (Claims App.) (quoting claim 1; emphases added). i. “Monitor” Instruction The Examiner finds Yamada’s PC 10 discloses the recited “commander.” See Final Act. 3 (“Personal computer PC (10) is known as commander”). Further, the Examiner finds Yamada discloses, “monitor[ing], by way of the wireless network interface, wireless access from the audio player in the vicinity of the commander,” because Yamada discloses, “the internet radio receiver 20 receives a streaming distribution of audio contents such as music from a radio station.” Final Act. 3 (citing Yamada ¶¶ 27, 46, Fig. 1). We disagree. Yamada discloses, “The Internet radio receiver 20 connects to the Internet 100 via the wireless LAN access point router 30, and receives a streaming distribution of audio contents such as music from a radio station (not shown) existing on the Internet 100.” Yamada ¶ 27. However, this describes the configuration of Yamada after the mode has switched from the AdHoc mode to the infrastructure mode. See Appeal Br. 6. Appeal 2019-005971 Application 15/154,789 7 Yamada explains: Wireless communications in an infrastructure mode are available only between wireless communication terminals having same [Service Set IDentifier (SSID)]. Thus, in order to carry out wireless communications in the infrastructure mode among the PC 10, the Internet radio receiver 20 and the wireless access point router 30, it is necessary to set the same SSID to the PC 10, the Internet radio receiver 20 and the wireless access point router 30. Besides, the infrastructure mode is a mode in which wireless communication terminals are connected to each other via an access point such as the wireless access point router 30. For reference’s sake, a mode for direct connection between wireless communication terminals not via an access point is called Ad-Hoc mode. In the Ad-Hoc mode, it is necessary to set an SSID that is common only among desired wireless communication terminals. Yamada ¶¶ 33–34 (emphases added); cf. Spec. ¶¶ 7 (“Thus, for the command[er] and the player, it is necessary to set a wireless LAN in an infrastructure mode through a general-purpose access point.”), 12 (discussing how the client and the user device begin communicating in the AdHoc mode and exchange information, so that they can switch to communicate in the infrastructure mode). As Yamada further explains: [T]he CPU 50 of the PC 10 starts the application program AP 1 in a step S1. In a step S3, the SSID and IP address for infrastructure mode (IS mode) currently set in the wireless LAN card 56 of the PC 10 are saved in the RAM 52. Id. ¶ 46. After a user loads a CD-ROM, included with Internet radio receiver 20, onto PC 10, so that PC 10 has an SSID, e.g., “a network name,” for Internet radio receiver 20 in “storage,” the user inputs the SSID into PC 10 on PC display 58, and PC 10 and Internet radio receiver 20 then may Appeal 2019-005971 Application 15/154,789 8 communicate in the AdHoc mode. Id. ¶ 45. Thus, we are not persuaded that Yamada’s paragraphs 27 and 46 support the Examiner’s finding that Yamada discloses “monitor[ing], by way of the [commander’s] wireless network interface, wireless access from the audio player in the vicinity of the commander.” See Appeal Br. 6; Reply Br. 2. ii. “Detect” Instruction In addition, the Examiner finds, “The SSID and static IP address to be input are the SSID and static IP address set as default in the wireless LAN card of the Internet radio receiver 20.” Final Act. 3 (citing Yamada ¶¶ 46, 47, Fig. 1); see id. at 6. Thus, the Examiner finds that Yamada also discloses “detect[ing] by way of the wireless network interface, wireless access with a network name from the audio player.” Appeal Br. 9 (Claims App.). Again, we disagree. Yamada discloses: The user inputs the SSID and static IP address for Ad-Hoc mode (AH mode) according to a guide in a web page displayed on the display 58 of the PC 10. The SSID and static IP address to be input are the SSID and static IP address set as defaults in the wireless LAN card 76 of the Internet radio receiver 20, and can be known from the instruction manual for the Internet radio receiver 20. Yamada ¶ 47 (emphasis added). The Examiner finds “[t]he claim does not recite[] switch[ing] from Infrastructure mode (IM) to AdHoc mode [is] performed by the commander as an automatic process without any user input” (Ans. 5), although claim 1 recites that the “commander” detects “wireless access with a network name from the audio player.” Appeal Br. 9 (Claims App.) (emphasis added). Thus, the Examiner finds, “disregarding the user enters input/requests, Yamada does disclose the above limitation.” Appeal 2019-005971 Application 15/154,789 9 Ans. 5. Appellant responds: [T]he user is not the PC, and a user action cannot be attributed to the PC. Even so, Yamada does not describe the user controlling the PC to switch the PC to the AdHoc mode “in response to determining that the detected network name [from monitoring the wireless access] corresponds to the particular network name stored in the storage.” At best, the user controls the PC to switch to the Ad-Hoc mode based on the SSID and IP address that the user finds in a user guide. [See Yamada ¶ 47 (“The user inputs the SSID and static IP address for Ad-Hoc mode (AH mode) according to a guide in a web page displayed on the display 58 of the PC 10.”).]3 So, even if a user could theoretically intervene to switch the PC to the Ad-Hoc mode, there is no teaching in Yamada that such intervention would be “in response to determining that the detected network name [from monitoring the wireless access] corresponds to the particular network name stored in the storage.” Reply Br. 3 (emphasis, citation, and footnote added). We agree. Claim 1 recites that the commander switches to an AdHoc mode to communicate with the audio player. Specifically, claim 1 recites, “in response to determining that the detected network name corresponds to the particular network name stored in the storage, switch a network mode of the commander from an infrastructure mode to an AdHoc mode to access the audio player.” Appeal Br. 9 (Claims App.) (emphases added). We are not persuaded the Examiner shows that Yamada’s PC 10, i.e., the “commander,” monitors and detects actions by Internet radio receiver 20, i.e., the “audio player,” in the infrastructure mode, and, therefore, we are not persuaded the Examiner shows Yamada discloses switching from the infrastructure mode 3 See also Yamada ¶ 45 (describing the user’s use of a CD-ROM included with Internet radio receiver 20 to obtain the SSID). Appeal 2019-005971 Application 15/154,789 10 to the AdHoc mode in response to the detected network name. To show anticipation, the Examiner must demonstrate that Yamada discloses each and every element of the claimed commander, as recited in claim 1. The Examiner fails to do so here, and Appellant persuades us that the Examiner errs in rejecting claim 1, as anticipated by Yamada. Consequently, we do not sustain the anticipation rejection of claim 1. b. Claim 4 The Examiner rejects independent claim 4 as anticipated by Yamada. Final Act. 7–8 (citing Yamada ¶¶ 45–47). In particular, the Examiner finds Yamada discloses, instructions that, when executed by the processor, cause the audio player to: receive a specific operation by a user on the audio player; based on the received specific operation of the user on the audio player, start a wireless access with the particular network name stored in the storage by an AdHoc mode. Id. at 8; Appeal Br. 10 (Claims App.) (quoting claim 4; emphases added). We disagree with the Examiner’s findings. i. “Receive” Instruction The Examiner finds Yamada’s Internet radio receiver 20 discloses the recited audio player. Final Act. 3 (“the claimed audio player, namely, the Internet radio receiver 20”). Claim 4 recites that executed instructions cause the audio player to perform the recited “receive” function. Appeal Br. 7. The Examiner finds Yamada discloses this element of claim 4. Final Act. 8 (citing Yamada ¶¶ 45–47). Appeal 2019-005971 Application 15/154,789 11 Yamada discloses, however: Firstly, a user uses a CD-ROM included with the Internet radio receiver 20 to install on the PC 10 the application program API for setting an SSID and a [wired equivalent key (WEP)] key to the Internet radio receiver 20. Then, the user uses the mouse 62 to double-click on an icon for starting the application program API that is displayed on the display 58. Yamada ¶ 45 (emphasis added). Appellant contends Yamada’s paragraphs 45–47 describe, the insertion of a CD-ROM into the PC 10, the starting of the application program from the CD-ROM by the PC 10, and the user inputting the SSID and IP address into the PC from a guide. The Internet radio receiver is not described in those paragraphs as “receiv[ing] a specific operation by a user on the audio player.” Appeal Br. 7 (emphases added); see Reply Br. 3 (“But, as explained in the Appeal Brief, that ‘input’ of Yamada refers to the SSID and static IP address of the audio player being input into the PC – not input to the audio player, as required by the claim.”). The Examiner finds: Yamada discloses receiv[ing] a specific operation by a user on the audio player (Yamada: pars. 0045-0047, The SSID and static IP address to be input are the SSID and static IP address set as defaults in the wireless LAN card 76 of the Internet radio receiver 20. A specific operation could be input are the SSID and static IP address set as defaults in the wireless LAN card 76 of the Internet radio receiver 20 (i.e. Player)). Ans. 6 (underlining added). We are not persuaded that the Examiner shows the storage of default information in LAN card 76 discloses receiving “a specific operation by a user” on the audio player, such that based on that “specific operation of the user,” the audio player starts “a wireless access Appeal 2019-005971 Application 15/154,789 12 with the particular network name stored in the storage by an AdHoc mode.” Appeal Br. 10 (Claims App.) (emphases added). The Specification discloses, “If the user starts the player 1 by specific operation (for example, turning on power while pressing a mute button), a setting mode is entered and the player 1 is started in the wireless network mode of the AdHoc mode.” Spec. ¶ 31 (emphasis added); see id. ¶¶ 34 (“In FIG. 3A, when the user turns on the power by specific operation (S20), the player 1 starts in the wireless network mode of the AdHoc mode (S21).”); 37 (“For example, a dedicated button for changing to the setting mode may be provided in the player 1.”). Given our understanding of a user’s “specific operation” from the Specification’s disclosure, the Examiner presents insufficient evidence supporting a finding that previously storing a default SSID discloses a user’s “specific operation.” See Final Act. 4, 8; see also In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (“[T]he PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.”). Anticipation may not be shown by what a reference “could” disclose. See Ans. 6; but see Verdegaal Bros., 814 F.2d at 631 (quoted above). The Examiner’s findings are inconsistent with Yamada’s disclosure and are insufficient to support a finding of anticipation. We agree with Appellant that the Examiner errs. ii. “Start” Instruction Moreover, because claim 4 recites that the “start” instruction is “based on the received specific operation of the user on the audio player,” Appeal 2019-005971 Application 15/154,789 13 Appellant contends that the Examiner fails to show that Yamada discloses that Internet radio receiver 20, i.e., the audio player, performs this function. Appeal Br. 7. The Examiner relies on unpersuasive findings regarding the “receive” instruction to support reading the recited “start” instruction on Yamada’s disclosure. Ans. 7. Again, we agree with Appellant. To show anticipation, the Examiner must demonstrate that Yamada discloses each and every element of the claimed audio player, as recited in claim 4. The Examiner fails to do so here, and Appellant persuades us that the Examiner errs in rejecting claim 4, as anticipated by Yamada. Consequently, we do not sustain the anticipation rejection of claim 4. 2. The Remaining Claims Each of claims 6 and 7 includes substantially similar elements to the relevant elements of claims 1 and 4, respectively, discussed above. Appeal Br. 10–11 (Claims App.). As noted above, Appellant challenges the rejection of independent claims 6 and 7 for the same reasons as independent claims 1 and 4, respectively. See id. at 4–8. Because we are persuaded the Examiner errs in the anticipation rejection of independent claims 1 and 4, we also are persuaded the Examiner errs in the anticipation rejection of independent claims 6 and 7, commensurate in scope. Each of claims 2 and 3 depends directly from independent claim 1, and, thus, we reverse the Examiner’s anticipation rejection of claims 2 and 3. Id. at 9. DECISION 1. The Examiner errs in rejecting claims 1–4, 6, and 7 as anticipated by Yamada. Appeal 2019-005971 Application 15/154,789 14 2. Thus, on this record, claims 1–4, 6, and 7 are not shown to be unpatentable. CONCLUSION For the above reasons, we reverse the Examiner’s decision rejecting claims 1–4, 6, and 7. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6, 7 102(a)(1) Yamada 1–4, 6, 7 REVERSED Copy with citationCopy as parenthetical citation