Ex Parte Martinez et alDownload PDFPatent Trial and Appeal BoardFeb 13, 201511711018 (P.T.A.B. Feb. 13, 2015) 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. 11/711,018 02/27/2007 Jose Martinez Y2108-00251 5496 39290 7590 02/13/2015 DUANE MORRIS LLP - DC 505 9th Street Suite 1000 WASHINGTON, DC 20004-2166 EXAMINER RENNER, BRANDON M ART UNIT PAPER NUMBER 2478 MAIL DATE DELIVERY MODE 02/13/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOSE MARTINEZ and JOHN RILEY ___________ Appeal 2012-009693 Application 11/711,018 Technology Center 2400 ____________ Before CARLA M. KRIVAK, CARL W. WHITEHEAD JR., and JEFFREY S. SMITH, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants are appealing the final rejection of claims 5, 6, 13, and 20– 24 under 35 U.S.C. § 134(a). Appeal Brief 1. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We affirm. Introduction The invention is directed to “a method and apparatus for providing passive status messaging to a remote network communications device attempting to connect to a network . . . .” Appeal Brief 1. Appeal 2012-009693 Application 11/711,018 2 Representative Claim (disputed limitations emphasized) 5. A method for providing passive status messaging to a remote network communications device attempting to connect to a network, comprising: detecting a first connection status condition at the remote network communications device, associating the first connection status condition with a device workflow step and a device workflow criteria; selecting a first message from a plurality of messages stored in the remote network communications device prior to connection to the network, the first message corresponding to the detected connection status condition; and communicating the first message to an end-user; associating the first status condition and the first message storing the associated first status condition and the first message in the remote network communications device; detecting a second status condition at the remote network communications device; selecting a second message from the plurality of messages, the selection of the second message based on to the associated first status condition and the first message stored in the network communication device, and the detected second status condition; communicating the second message to the end-user. Rejections on Appeal Claim 6 stands rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with written description requirement. Answer 4. Claim 5 stands rejected under 35 U.S.C. § 112, second paragraph as being indefinite for failing to point out and distinctly claim the subject matter which Appellants regard as the invention. Answer 5. Claims 5, 6, 13, and 20–24 stand rejected as being unpatentable under 35 U.S.C. § 103(a) over Palenik (US Patent Number 7,257,741 B1; issued August 14, 2007). Answer 6–16. Appeal 2012-009693 Application 11/711,018 3 ANALYSIS Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed December 27, 2011) and the Answer (mailed March 7, 2012) for the respective details. We have considered in this decision only those arguments Appellants actually raised in the Brief. We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief, and concur with the conclusions reached by the Examiner. We highlight the following for emphasis. Claims 5 and 6 stand rejected under 35 U.S.C. § 112, second and first paragraphs respectively. Answer 4–5. Appellants do not present arguments identifying Examiner’s error therefore we sustain the Examiner’s 35 U.S.C. § 112 rejections. Appellants argue the Examiner’s “description of Palenik demonstrates that the Palenik’s selection of the second message is only based upon the first condition and the second condition.” Appeal Brief 5. Appellants further contend “the claim language is implicit that the selection must be based on, among other things, the first message and thus just a relationship fails to meet the claim limitation. Id. at 6. Appeal 2012-009693 Application 11/711,018 4 Palenik’s Figure 4A is reproduced below (with annotations): Palenik’s Figure 4A discloses the operational flow of the troubleshooting application or procedure. Palenik, column 7, lines 34–36. The Examiner finds: The flowchart clearly shows that the second message is based on the first message because the first message must be displayed to the user in order for step 418 to occur (i.e. the second message). If the first message does not occur, that means the connection was detected and the rest of the flowchart of Figure 4A is skipped/ignored. Therefore, one can clearly see that there is an association between the first and second Appeal 2012-009693 Application 11/711,018 5 conditions as well as the first message in order for the second message to be selected/displayed as claimed. Answer 17. We agree with the Examiner’s findings and therefore we sustain the Examiner’s obviousness rejection of independent claim 5. Appellants argue the Examiner failed to show “that the second memory was an essential working part” and “that the second memory which stores different features is then stored in the first is a mere duplication” in regard to independent claim 13. Appeal Brief 8. We do not find Appellants’ arguments to be persuasive because the Examiner finds: Further regarding the second memory, it would have been obvious to one skilled in the art to store information used during a process to have a record of the information for further processing whether statistics, state information, etc. for diagnostic purposes. Palenik supports this at col. 4, lines 52- 56, which states “the information may be stored by the troubleshooting program and/or forwarded over the network to allow the service provider to trend the various troubleshooting issues and further refine the self-installation, self-troubleshooting, and/or self-repair instructions.” Answer 13. We agree with the Examiner findings and sustain the Examiner’s obviousness rejection of claim 13 for the reasons articulated above. Appellants argue the Examiner’s acknowledged missing features from Palenik in regard to claim 6 are not addressed by the Examiner’s conclusory statement that the features are known in the art. Appeal Brief 9. However, the Examiner provided an explanation based upon Palenik’s disclosure (Answer 11) as to why it would have been obvious to one of ordinary skill in Appeal 2012-009693 Application 11/711,018 6 the art to modify Palenik. Therefore we do not find Appellants’ arguments persuasive and we sustain the Examiner’s obviousness rejection of independent claim 6. We also sustain the Examiner’s obviousness rejection of dependent claims 20–24 not separately argued. DECISION The Examiner’s 35 U.S.C. § 112 rejections of claims 5 and 6 are affirmed. The Examiner’s 35 U.S.C. § 103(a) rejection of claims 5, 6, 13, and 20–24 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). See 37 C.F.R. § 41.50(f). AFFIRMED ELD Copy with citationCopy as parenthetical citation