Ex Parte Jung et al

Board of Patent Appeals and Interferences

Feb 28, 2012

11000687 (B.P.A.I. Feb. 28, 2012)

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
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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.
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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?

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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.
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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.

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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

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