Ex Parte Narusawa

Board of Patent Appeals and Interferences

Sep 27, 2010

11019631 (B.P.A.I. Sep. 27, 2010)

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.
11/019,631 12/23/2004 Hideki Narusawa A247-A 2438
21254 7590 09/28/2010
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
NGUYEN, TU X
ART UNIT PAPER NUMBER
2618
MAIL DATE DELIVERY MODE
09/28/2010 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 HIDEKI NARUSAWA
_____________

Appeal 2009-012634
Application 11/019,631
Technology Center 2600
____________

Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD, JR.,
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-012634
Application 11/019,631

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-5, 7-9, 11-15, 17-19, 21, and 22. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

INVENTION
Appellant’s claimed invention is directed to a mobile telephone
annunciating to a user that he/she is located out of a service area for a
predetermined period of time, by making sounds and/or vibration. See Spec.
6:9-18.
Claim 1, reproduced below, is representative of the subject matter on
appeal:
Claim 1. A method of operating a mobile telephone,
comprising:
annunciating through at least one of sounds and vibration
when said mobile telephone has been out of a service area for a
predetermined first period of time and is in a stand-by mode;
setting said predetermined first period of time while said
telephone is operating;
interrupting a supply of power to the mobile telephone at
a time that the annunciating has finished; and
setting a second period of time regarding a duration of
said annunciating.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Appeal 2009-012634
Application 11/019,631

3
Besharat US 6,219,540 B1 Apr. 17, 2001
The following rejection is before us for review:
The Examiner rejected claims 1-5, 7-9, 11-15, 17, 19, 21, and 22
under 35 U.S.C. § 102(e) as being anticipated by Besharat.

ISSUE
The pivotal issue is whether Besharat teaches the limitation of “setting
a second period of time regarding a duration of said annunciating” as recited
in claim 1.

ANALYSIS
Appellant argues, inter alia, that Besharat does not teach setting a
second period of time regarding a duration of the annunciating (App. Br. 7).
We are persuaded by Appellant’s argument.
The Examiner (Ans. 8) relies upon Besharat for the teaching of a
plurality of timers setting a second predetermined period of time regarding
the duration of the annunciating by the host CPU software or by a user (col.
5, ll. 60-61; Fig. 1, elements 136, 134). However, even if we were to agree
with Examiner that Besharat teaches a second predetermined period of time,
this time period has nothing to do with the “duration” of the annunciating of
the first predetermined period of time. Rather, it is just a distinct and
separate annunciation for a second predetermined period of time after the
first predetermined period of time has ended (see Besharat, col. 5, ll. 53-63).
Appeal 2009-012634
Application 11/019,631

4
Furthermore, the Examiner’s citation (col. 5, ll. 60-61; Fig. 1,
elements 136, 134), generally pointing to a plurality of timers, fails to teach
or suggest “setting” the second predetermined period of time by the host
CPU software or by a user.
For the reasons articulated supra, we will reverse the Examiner’s
rejection of claim 1 and for similar reasons the rejections of claims 2-5, 7-9,
11-15, 17-19, 21, and 22.

CONCLUSION
Besharat does not teach the limitation of “setting a second period of
time regarding a duration of said annunciating.”

ORDER
The decision of the Examiner to reject claims 1-5, 7-9, 11-15, 17-19,
21, and 22 is reversed.

REVERSED

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MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817