Ex Parte AYATSUKA et al

Patent Trial and Appeal Board

Sep 17, 2018

14729168 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/729,168 06/03/2015 YujiAYATSUKA
60803 7590 09/17/2018
Paratus Law Group, PLLC
1765 Greensboro Station Place
Suite 320
Tysons Corner, VA 22102
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.
1946-0275B 7983
EXAMINER
MIRZA, ADNAN M
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
09/17/2018 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 YUJI A YATSUKA and NOBUYUKI MATSUSHITA
Appeal2018-000726 1
Application 14/729,1682
Technology Center 2400
Before ROBERT E. NAPPI, JAMES W. DEJMEK, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-7. Claim 8 was canceled. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
1 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed Mar.
27, 2017), Reply Brief ("Reply Br.," filed Oct. 23, 2017), and Specification
("Spec.," filed June 3, 2015), as well as the Examiner's Answer ("Ans.,"
mailed Aug. 22, 2017), the Advisory Action ("Adv. Act.," mailed Nov. 22,
2016), and the Final Office Action ("Final Act.," mailed Aug. 29, 2016).
2 According to Appellants, the real party in interest is Sony Corporation.
App. Br. 3.
Appeal2018-000726
Application 14/729,168
THE CLAIMED INVENTION
Appellants' claimed invention relates to electronic units,
communication systems, and information processing terminals which allow
easy and quick communications. Spec. 1. Claim 1 is illustrative of the
subject matter of the appeal and is reproduced below.
1. An information processing terminal comprising:
a processing circuitry configured to
detect a first connection with an electronic unit
storing identification information;
read the identification information from the
electronic unit; and
establish a second connection with an information
processing apparatus based on the identification
information,
wherein the second connection is released when the
electronic unit is disconnected, and
wherein, prior to establishment of the first connection
with the electronic unit, the second connection is not
established.
REJECTIONS ON APPEAL
(1) The Examiner rejected claims 1-7 under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Santhoff (US 2004/0002346 Al;
published Jan. 1, 2004) and Parupudi et al. (US 7,213,048 Bl; issued May 1,
2007) (hereinafter "Parupudi").
(2) The Examiner rejected claims 1-7 on the ground of non-
statutory obviousness-type double patenting over claims 1-3 of Ayatsuka et
al. (US 9,066,026 B2; issued June 23, 2015) (hereinafter "Ayatsuka").
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Appeal2018-000726
Application 14/729,168
ISSUES
The dispositive issues for this appeal are whether "wherein the second
connection is released when the electronic unit is disconnected":
( 1) is taught or suggested by Parupudi; and
(2) makes the current claims patentably distinct from claims 1-3 of
Ayatsuka.
ANALYSIS
(1) Parupudi 's Teachings
Appellants argue the Examiner errs in finding Parupudi teaches or
suggests "wherein the second connection is released when the electronic unit
is disconnected," as recited in independent claims 1, 6, and 7. App. Br. 13-
15. More specifically, Appellants argue that the Examiner cited portion of
Parupudi is "silent" as to, and does not support, the Examiner's finding that
Parupudi teaches or suggests the disputed limitation. Id. at 13-14. Rather,
"Parupudi provides only general disclosure of a flexible functionality, such
as an ability to self-monitor and to also have a dynamically extensible
collection of location providers," according to Appellants. Id. at 11 ( citing
Adv. Act. 2). Appellants also argue that "[t]he Examiner is generalizing
about general concepts, without considering the particular implementation as
claimed."
The Examiner finds Parupudi teaches or suggests the disputed
limitation. Final Act. 7-8. More specifically, the Examiner finds that
[P]arupudi disclosed, "A device that can collect context
information ( e.g. location information) from a variety of
different sources, determine the device's current context from
that information and provide the current context at some level
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Appeal2018-000726
Application 14/729,168
to one or more applications that can use the device's context to
render a service or enable the device to participate in its context
environment (col. 5, lines 61-67)". Examiner interpreted the
"apparatus based on the identification information" as device's
context in the above excerpt. Whereas Examiner interpreted,
"an information processing apparatus based on the
identification information. Wherein the second connection is
released when the electronic unit is disconnected" as provide
the current context at some level to one or more applications
that can use the device's context to render a service or enable
the device to participate in its context environment.
Id. The Examiner further finds that Parupudi' s teachings of "several
locations being inactive" corresponds to "disconnected," as claimed. See
Ans. 4 (citing 6:32--47).
Based on the evidence of record, we are constrained to agree with
Appellants that the Examiner errs in finding that Parupudi teaches or
suggests that the second connection is released when the electronic unit is
disconnected. Simply put, the portion of Parupudi the Examiner relies upon
does not support such a finding. See Parupudi 5:61---67. Nor does the
Examiner explain sufficiently how "locations being inactive" maps to the
disputed limitation.
Accordingly, we do not sustain the Examiner's§ 103(a) rejection of
independent claims 1, 6, and 7, as well as claims 2-5, as each of these claims
depend, at least indirectly, from claim 1, and Santhoff's disclosure, as cited
by the Examiner, does not remedy the deficiencies of Parupudi.
(2) Claims 1-3 o(Ayatsuka
The analysis for obviousness-type double patenting "compares claims
in an earlier patent to claims in a later patent or application." Geneva
Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1378 n.1 (Fed. Cir.
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Appeal2018-000726
Application 14/729,168
2003). The purpose of an obviousness-type double patenting rejection is "to
prevent an unjustified extension of the term of the right to exclude granted
by a patent by allowing a second patent claiming an obvious variant of the
same invention to issue to the same owner3 later." In re Berg, 140 F.3d
1428, 1431 (Fed. Cir. 1998).
We agree with Appellants that the Examiner has not provided any
fact-based explanation of claims 1-3 of Ayatsuka to justify a conclusion that
the rejected claims are an obvious variant. For example, the Examiner fails
to account for the current claims' recital of "wherein the second connection
is released when the electronic unit is disconnected" as being obvious over
any of the limitations in claims 1-3 of Ayatsuka. We, therefore, do not
sustain the Examiner's finding of obviousness-type double patenting.
DECISION
We reverse the Examiner's decision rejecting claims 1-7.
REVERSED
3 We note that the real party in interest in the present application is Sony
Corp.~ and the face of Ayatsuka identifies Sony Corp. as the assignee.
5