Yamaha Corporation

Patent Trials and Appeals Board

Mar 2, 2021

2019005971 (P.T.A.B. Mar. 2, 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.
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.
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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.
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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;
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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
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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,
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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.
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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
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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.”
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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).
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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).
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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
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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,”
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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.
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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