Ex Parte Hamilton et al

Patent Trial and Appeal Board

Aug 29, 2018

14751815 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/751,815 06/26/2015
149118 7590
Colby Nipper / Google
291 East Shore Drive
Suite 200
Eagle, ID 83616
08/31/2018
FIRST NAMED INVENTOR
Jeffrey W. Hamilton
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.
1083500USCON 5965
EXAMINER
NGUYEN, SIMON
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
08/31/2018 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):
docket@colbynipper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY W. HAMILTON, NICHOLAS J. PELL Y,
and BENJAMIN J. DODSON 1
Appeal 2018-003189
Application 14/751,815
Technology Center 2600
Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-5, 7-15, and 17-22, which are all the pending claims. App. Br. 3.
We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 The Applicant, Google Inc., is identified as the real party in interest. App.
Br. 3.
Appeal 2018-003189
Application 14/751,815
Introduction
Appellants' disclosure relates "to techniques for automatically
establishing a long-lasting connection across computing devices configured
for short-range wireless communication." Spec. ,r 2.
Independent claim 1 is representative of the claims on appeal:
1. A computer-implemented method, comprising:
initiating, between first and second computing devices
each having one or more processors, communication via a first
wireless communication protocol, the first wireless
communication protocol being a short-range wireless
communication protocol;
receiving, at the first computing device from the second
computing device via the first wireless communication
protocol, a set of information for configuring communication
via a different, second wireless communication protocol
between same-type first and second applications executable by
the first and second computing devices, respectively, the set of
information indicating that the second application is currently
executing in a foreground at the second computing device such
that a user interface of the second application is displayed in a
top layer of a display of the second computing device; and
in response to receiving the set of information,
configuring, by the first computing device, communication via
the second wireless communication protocol between the first
and second applications, wherein the configuring is performed
without exiting the first and second applications.
App. Br. 18 (Claims App'x).
Re} ections & References
Claims 1--4, 7-14, and 17-22 stand rejected under 35 U.S.C. § 102 as
anticipated by Kiveisha (US 2014/0087654 Al; Mar. 27, 2014). Final Act.
5-8.
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Application 14/751,815
Claims 5 and 15 stand rejected under 35 U.S.C. § 103 as unpatentable
over Kiveisha. Final Act. 8.
Claims 1, 11, and 21 stand rejected under § 103 as unpatentable over
Virani (US 2013/0325949 Al; Dec. 5, 2013). Final Act. 8-9.
Claims 1, 11, and 21 stand rejected under § 103 as unpatentable over
Eriksson (US 2013/0219303 Al; Aug. 22, 2013). Final Act. 9-10.
ANALYSIS
Kiveisha
Appellants contend the Examiner errs in the § 102 anticipation
rejection of claim 1 because Kiveisha does not disclose:
receiving, at [a] first computing device from [a] second
computing device via [a] first wireless communication protocol,
a set of information ... indicating that the second application is
currently executing in a foreground at the second computing
device such that a user interface of the second application is
displayed in a top layer of a display of the second computing
device,
as recited. App. Br. 10-11 (emphasis omitted); see also id. at 12-14 and
Reply Br. 2-5. Appellants' argument is persuasive.
The receiving step requires a device to receive "a set of information
for configuring communication via a different, second wireless
communication protocol," and that the set of information indicates that a
"second application" on a second device "is currently executing in a
foreground." The Examiner finds Kiveisha discloses a device that
establishes an initial NFC communication link for data sharing between two
devices and that "the exchange of data/information may be applied to any
suitable wireless connection (protocol) on [a] different second wireless
communication such as Bluetooth, WIFI, 3G, [or] 4G." Ans. 4 (citing
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Appeal 2018-003189
Application 14/751,815
Kiveisha Abstract, Fig. 1, ,r,r 26, 32, 47, 48). The Examiner further finds
Kiveisha discloses "first and second computing devices having same-type
first and second file sharing applications" for photo sharing that, when
sharing information, determine whether to use the NFC communication link
or the second, non-NFC communication link. See Ans. 4--5 (citing Kiveisha
Figs. 2, 4, ,r,r 21, 30, 32-33, 40, 47--48, 52-53, 58, 66); see also Final Act.
5-6. While we agree with these findings, they are insufficient to support an
anticipation rejection.
In an anticipation rejection, "it is not enough that the prior art
reference ... includes multiple, distinct teachings that [an ordinarily skilled]
artisan might somehow combine to achieve the claimed invention." Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
Rather, the reference must "clearly and unequivocally disclose the claimed
[invention J or direct those skiUed in the art to the [invention] without any
need for picking, choosing, and combining various disclosures not directly
related to each other by the teachings of the cited reference." id. (quoting
In re Arkley, 455 F.2d 586, 587 (CCPA 1972)).
We agree with Appellants' argument that Kiveisha's disclosure "of
utilizing NFC 'to exchange device addresses ( e.g., the MAC address, device
name, and other pairing information"' (App. Br. 11; Reply Br. 2 (both
quoting Kiveisha ,r 48)) is a configuration step for setting up the second
communication link that is independent from any disclosure of transmitting
information that indicates whether a same-type application information is
currently executing in foreground. Thus, regardless that Kiveisha discloses
sending to a first device over a first communication link (i.e., via NFC) the
information for configuring a second communication link (e.g., Wi-Fi) with
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Appeal 2018-003189
Application 14/751,815
a second device, Kiveisha does not disclose doing this in conjunction with
sending information that indicates the second device is currently executing
an application in foreground, as recited. In other words, in the vernacular of
claim 1, Kiveisha discloses the "information for configuring communication
via a different, second wireless protocol," without disclosing transmitting or
receiving this information as part of a "set of information indicating that the
second application is currently executing in a foreground," as required.
Accordingly, we do not sustain the anticipation rejection of claim 1.
For the same reason we do not sustain the anticipation rejection of claims 11
and 21, which recite similar limitations and stand similarly rejected. We
also, therefore, do not sustain the rejections of dependent claims 2-10, 12-
20, and 22, for which the Examiner makes no finding to cure the deficiency
of the anticipation rejection of the independent claims.
Virani and Eriksson
In rejecting the independent claims 1, 11, and 21 as obvious over
either Virani or Eriksson, the Examiner finds that neither reference
"specifically discloses a second communication protocol for sharing the
applications. It should be noted that using a second wireless communication
for sharing the same application between first and second devices is known
to those skilled in the art." Final Act. 9-10. Appellants argue that, in view
of the complete lack of disclosure in Virani and Eriksson regarding use of
two communication protocols, the Examiner errs in concluding either Virani
or Eriksson renders the independent claims obvious. See App. Br. 14--16.
"[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
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Appeal 2018-003189
Application 14/751,815
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (quoting Kahn). It is
insufficient to say it "would 'have been obvious to one of ordinary skill.'
Such circular reasoning is not sufficient-more is needed to sustain an
obviousness rejection." In re Chaganti, 554 F. App'x 917, 922 (Fed. Cir.
2014).
We agree with Appellants that the Examiner errs. The Examiner
provides no sufficient basis to explain how, in view of their silence with
respect to using two communication protocols, either Virani or Eriksson
teaches or suggests the requirements related first and second communication
protocols, as recited in claims 1, 11, and 21. Accordingly, we do not sustain
the obviousness rejections of claims 1, 11, and 21.
DECISION
For the above reasons, we reverse the Examiner's 35 U.S.C. §§ 102
and 103 rejections of claims 1-22.
REVERSED
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