11090379 (B.P.A.I. Feb. 29, 2012)

Ex Parte Seretti et al

Board of Patent Appeals and InterferencesFeb 29, 2012

11090379 (B.P.A.I. Feb. 29, 2012)

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. 11/090,379 03/25/2005 Harry Seretti 17013-4003 4115 91477 7590 03/01/2012 Dickstein Shapiro LLP 2049 Century Park East Suite 700 Los Angeles, CA 90067 EXAMINER RETTA, YEHDEGA ART UNIT PAPER NUMBER 3622 MAIL DATE DELIVERY MODE 03/01/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte HARRY SERETTI and CARL SCHAUKOWITCH ____________ Appeal 2010-011383 Application 11/090,379 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOSEPH A. FISCHETTI, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011383 Application 11/090,379 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 21 to 25, 30, 32 to 34, and 38 to 56. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). The Appellants appeared for oral hearing on February 22, 2012. We REVERSE. Claim 21 is illustrative: 21. A vehicular data exchange system adapted for use to exchange vehicular data relating to a vehicle, comprising: a processor in communication with a plurality of computer terminals for controlling the vehicular data, wherein each of said plurality of computer terminals includes an input device for inputting the vehicular data that includes vehicular characteristics data units and vehicular financial data units and a display device for visually displaying the vehicular data inputted into said plurality of computer terminals, each of said computer terminals operative to transmit to each other and receive from one another both the vehicular characteristics data units and the vehicular financial data units for display on respective display devices, wherein the vehicular characteristics data units are inputted at any time into any selected one of said computer terminals and are transmitted by the processor immediately thereafter to remaining ones of said computer terminals for display on respective ones of said display devices associated with said remaining ones of said computer terminals, and wherein the vehicular financial data units are inputted into at least a responding one of said remaining ones of said computer terminals in response to the vehicular characteristics data units displayed on said display device of said at least responding one of said remaining ones of said computer terminals and are transmitted by the processor to said selected one of said computer terminals for display on said display device associated with said selected one of the computer terminals. Appeal 2010-011383 Application 11/090,379 3 Appellants appeal the following rejections: 1. Claims 21 to 25, 30, and 38 to 40 under 35 U.S.C. § 101 as claiming the same invention as that of claims 1 to 7 of US Patent 6,920,433 B1 (issued to Seretti on Jul. 19, 2005) (hereinafter “‘433 patent”) . 2. Claims 21, 32 to 34, and 41 to 45 under 35 U.S.C. § 101 as claiming the same invention as that of claims 16 to 19 of the ‘433 patent. 3. Claim 46 under 35 U.S.C. § 101 as claiming the same invention as that of claim 17 of the ‘433 patent. 4. Claims 47 to 54 under 35 U.S.C. § 101 as claiming the same invention as that of claims 1 to 6 of US Patent 5,978,776 (issued to Seretti on Nov. 2, 1999) (hereinafter “‘776 patent”). 5. Claims 55 to 56 under 35 U.S.C. § 101 as claiming the same invention as that of claims 14 to 15 of the ‘776 patent. ANALYSIS We will not sustain the rejections of the Examiner. In a statutory double patenting rejection under 35 U.S.C. § 101, the issue is whether the same invention is being claimed twice. Same invention means identical subject matter. As expressed by the court in In re Vogel, 422 F.2d 438, 441 (CCPA 1970), a good test, and probably the only objective test, for “same invention,” is whether one of the claims could be literally infringed without literally infringing the other. We agree with Appellants that the claims of the instant application would be infringed by a party having a processor that was in communication with a plurality of computer terminal whereas the claims of the ‘433 patent Appeal 2010-011383 Application 11/090,379 4 and the ‘776 patent would only be infringed by party having both a processor and a plurality of computer terminals. As such, the claims of the instant application and the claims of the ‘433 and ‘776 patents do not claim the same invention. DECISION We reverse the Examiner’s § 101 rejections. REVERSED hh