Ex Parte Jung et alDownload PDFBoard of Patent Appeals and InterferencesFeb 28, 201211000687 (B.P.A.I. Feb. 28, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte EDWARD K.Y. JUNG, ROYCE A. LEVIEN, MARK A. MALAMUD, and JOHN D. RINALDO JR. ____________ Appeal 2010-001592 Application 11/000,687 Technology Center 2100 ____________ Before SCOTT R. BOALICK, JOHN A. JEFFERY, and ELENI MANTIS MERCADER, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-92. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE In Appellants’ invention, an electronic device (e.g., a computing device) provides user assistance for a physically-distinct “item” (e.g., vehicle, appliance, etc.). The assistance can be provided via queries Appeal 2010-001592 Application 11/000,687 2 received via a user interface. See generally Spec. 3-6, 20, 46-47; Fig. 15. Claim 1 is illustrative with key disputed limitations emphasized: 1. An apparatus, the apparatus comprising: b) an electronic device distinct from an item, the electronic device including a first user interface associatable with the item and a second user interface; and c) instructions that when implemented in the electronic device cause the electronic device to: (iv) receive a query related to the item through the first user interface; and (v) provide an assistance correlating to the query through the second user interface. The Examiner relies on the following as evidence of unpatentability: Palmer US 5,825,355 Oct. 20, 1998 Makinen US 6,920,612 B1 July 19, 2005 (filed Nov. 29, 2001) THE REJECTIONS1 1. The Examiner rejected claims 1-11, 13-21, 23-41, 44-51, 55-57, 59-88, 90, and 92 under 35 U.S.C. § 102(b) as anticipated by Palmer. Ans. 3-12.2 2. The Examiner rejected claims 12, 22, 52-54, 89, and 91 under 35 U.S.C. § 103(a) as unpatentable over Palmer. Ans. 12-13. 1 Although Appellants indicate that “the claims rejected under § 112, second paragraph, are not indefinite” (App. Br. 50) (upper case omitted), there is no such rejection before us. Accord App. Br. 5 (indicating that the rejections under §§ 102 and 103 are appealed in the Brief’s “Status of Claims” section); Ans. 2 (confirming this status as correct). 2 Throughout this opinion, we refer to (1) the Appeal Brief filed March 13, 2009; (2) the Examiner’s Answer mailed June 23, 2009; and (3) the Reply Brief filed August 24, 2009. Appeal 2010-001592 Application 11/000,687 3 3. The Examiner rejected claims 42, 43, 52-54, and 58 under 35 U.S.C. § 103(a) as unpatentable over Palmer and Makinen. Ans. 13-14. THE ANTICIPATION REJECTION The Examiner finds that Palmer discloses every recited feature of representative claim 1 including an electronic device (i.e., computer system 48) distinct from an “item” (i.e., help software 130), the electronic device including a “first user interface” (i.e., a keyboard or mouse) associatable with the item and a “second user interface” (i.e., a physical display). Ans. 3, 14-16. Appellants argue that Palmer does not disclose an electronic device distinct from an item, the electronic device including a first user interface associatable with the item and a second user interface as claimed. App. Br. 28-31. According to Appellants, the Examiner failed to provide evidence or a reason why the cited passages from Palmer teach the disputed limitations. Id. The issue before us, then, is as follows: ISSUE Under § 102, has the Examiner erred in rejecting claim 1 by finding that Palmer discloses an electronic device distinct from an item, the electronic device including a first user interface associatable with the item and a second user interface? Appeal 2010-001592 Application 11/000,687 4 ANALYSIS Claims 1-11, 13-21, and 23-33 We sustain the Examiner’s rejection of representative claim 1 for the reasons indicated by the Examiner. Ans. 3, 14-16. As noted above, the Examiner’s position is based on mapping the disputed limitations of claim 1 to corresponding features in Palmer—a position that has not been shown to be erroneous on this record. Since the Examiner’s position is reasonably supported by Palmer’s cited disclosure, we find that, despite Appellants’ contentions to the contrary (Reply Br. 3-7), the Examiner established a prima facie case of anticipation setting forth (1) the rejection’s statutory basis, and (2) the relied-upon reference in a sufficiently articulate and informative manner to meet the notice requirement under 35 U.S.C. § 132. See In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). We therefore decline Appellants’ invitation (Reply Br. 6-7) to remand the case to the Examiner with instructions on how to make a prima facie case. Nor are we persuaded that the Examiner erred in rejecting claims 2-11, 13-21, and 23-33 not separately argued with particularity. Claims 34-41, 44-51, 55-57, 59-88, 90, and 92 We also sustain the Examiner’s anticipation rejection of independent claims 34, 70, 74, 76, 86, and 87 for the reasons indicated by the Examiner. Ans. 6, 9-12, 16-18. Despite nominally arguing these claims separately, Appellants reiterate similar arguments made in connection with claim 1. See App. Br. 31-40, 45-50. We are not persuaded by these arguments, however, for the reasons previously discussed. Appeal 2010-001592 Application 11/000,687 5 Moreover, regarding claim 74, Appellants do not persuasively show error in the Examiner’s position (Ans. 10, 17) based on mapping Palmer’s (1) keyboard and mouse, and (2) physical display to the recited first and second means, respectively, and their recited functions. See App. Br. 37. Appellants also do not persuasively show error in the Examiner’s position (Ans. 10, 17) based on mapping Palmer’s computer system to the recited query module in claim 76. See App. Br. 38-40. Nor do Appellants show error in the Examiner’s position (Ans. 10-11, 17) regarding claims 77 and 85 based on mapping Palmer’s (1) hardware inputs to the recited “receiver”; (2) physical display to the recited “indicator”; and (3) query assistance output to the recited “tutorials.” See App. Br. 40-45. And apart from merely summarily asserting that Palmer does not disclose the removable association limitation in claim 86, Appellants do not persuasively show error in the Examiner’s position in this regard (Ans. 11, 17-18). See App. Br. 45-47; see also 37 C.F.R. § 41.37(c)(1)(vii)(noting that an argument that merely points out what a claim recites is unpersuasive). Accord In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). We are therefore not persuaded that the Examiner erred in rejecting independent claims 34, 70, 74, 76, 77, and 85-87, and claims 35-41, 44-51, 55-57, 59-69, 71-73, 75, 78-84, and 88-92 not separately argued with particularity. Appeal 2010-001592 Application 11/000,687 6 THE OBVIOUSNESS REJECTIONS We also sustain the Examiner’s obviousness rejections of claims 12, 22, 42, 43, 52-54, 58, 89, and 91. Ans. 12-14. Appellants do not particularly identify errors in the Examiner’s reasoning to overcome the Examiner’s obviousness conclusion for these claims, but rather reiterate similar arguments made previously. See App. Br. 31, 34, 50. We are not persuaded by these arguments, however, for the reasons previously discussed. CONCLUSION The Examiner did not err in rejecting (1) claims 1-11, 13-21, 23-41, 44-51, 55-57, 59-88, 90, and 92 under § 102, and (2) claims 12, 22, 42, 43, 52-54, 58, 89, and 91 under § 103. ORDER The Examiner’s decision rejecting claims 1-92 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED rwk Copy with citationCopy as parenthetical citation