Ex Parte Orhomuru

Patent Trial and Appeal Board

Dec 21, 2018

09862789 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
09/862,789 09/21/2001
65591 7590 12/26/2018
MICHAEL J. BOOTCHECK, LLC
P.O. BOX 3505
MCDONOUGH, GA 30253
FIRST NAMED INVENTOR
Sunday Orhomuru
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.
3049.00lUSUl 8994
EXAMINER
DALENCOURT, YVES
ART UNIT PAPER NUMBER
2457
NOTIFICATION DATE DELIVERY MODE
12/26/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
MICHAELBOOTCHECK@BOOTCHECKLA W.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUNDAY ORHOMURU
Appeal2018-005871
Application 09/862, 789
Technology Center 2400
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2018-005 871
Application 09/862, 789
STATEMENT OF THE CASE
Appellant 1 appeals under 35 U.S.C. § I34(a) from a rejection of
claims 5, 6, and 12-26. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a data transfer or transfer of data using
wireless mobile phone and any other wireless mobile devices. Claim 5,
reproduced below, is representative of the claimed subject matter:
5. A system for transferring data, said system comprising the
steps of:
obtaining a wireless mobile device, said wireless mobile
device having a software package including a wireless mobile
device browser;
utilizing said software package of said wireless mobile
device to access, post, update, manage and delete data online;
utilizing said wireless mobile device to wirelessly access an
online computer on a very secure environment with data integrity.
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Desai et al. US 2005/0192008 Al (Desai) Sept. 1, 2005
REJECTION
The Examiner made the following rejection:
1 Appellant indicates that the real party in interest is the inventor and
Appellant, Sunday Orhomuru.
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Claims 5, 6, and 12-26 stand rejected under pre-AIA 35 U.S.C.
§ 102( e) as being anticipated by Desai.
ANALYSIS
With respect to independent claims 5, 6, and 23, Appellant relies upon
the arguments set forth with respect to independent claim 5. (App. Br. 14,
27, and 32). Therefore, we select independent claim 5 as the representative
claim and will address Appellant's arguments thereto. See 37 C.F.R.
§ 4I.37(c)(l)(iv). We do not consider arguments that Appellant could have
made but chose not to make in the Brief so we deem any such arguments as
waived. 37 C.F.R. § 41.37(c)(l)(iv). We further note that Appellant did not
file a Reply Brief to respond to the Examiner's clarifications in the
Examiner's Answer.
With respect to representative independent claim 5, Appellant argues
that in the pending application the Examiner has applied an improper
interpretation to the pending claims as compared to the Desai reference.
(App. Br. 13). Appellant contends:
[The] Examiner's construction is unreasonably broad. The
broadest-construction rubric coupled with the term "any device
that is adapted to communicate with the information exchange
system through the network, such as a personal computer running
a standard Internet web browser application, a personal digital
assistant ("PDA"), a wireless application protocol telephone
("WAP phone"), a pager or a network appliance," does not give
Examiner unfettered license to interpret claims to embrace
anything remotely related to the claimed invention.
(App. Br. 14). Appellant contends that the claimed invention is directed to
"a system for wireless data transfer ... ," but the claim limitations are not
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reproduced as expressly set forth in the language of claim 5, and Appellant
includes the additional word "wirelessly" in the step B. 2
Appellant provides a discussion of the state of the art at the
time of the invention, and maintains that users had to carry plural
wireless mobile devices at the same time for daily communication.
(App. Br. 15-17). Appellant contends that the Examiner's finding of
a wireless mobile device with a software package ignores the plain
language of claim 5 and the entirety of the context of the
Specification, and therefore the Examiner's interpretation is
unreasonable. (App. Br. 17). Although Appellant repeatedly states
that the Examiner's interpretation is unreasonable, Appellant has not
explained why the Examiner's interpretation is unreasonable.
Moreover, Appellant has not identified any express portion of the
Specification to support Appellant's contention that the Examiner's
context does not comport with Appellant's Specification. (See App.
Br. 17 - 18).
Furthermore, Appellant disagrees with the Examiner's finding of
anticipation based upon the Desai reference because "Applicant's claims
explicitly state the requirement of a 'Wireless data transfer mobile device,'
and this claim element is not shown in the Desai reference, thereby negating
'anticipation."' (App. Br. 20). We note that nowhere does the term
"wireless data transfer mobile device" appear anywhere in any of the claims
on appeal.
2 The argued claim language "utilizing said wireless mobile device to
wirelessly access, post, update, manage and delete data online" does not
correspond to the actual claim language. (Emphasis added).
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Appellant further contends that :
Wireless data transfer mobile devices are different from W AP
[ wireless application protocol] phones and this difference is
readily understood by a person of ordinary skill in the field of
wireless mobile devices.
WAP content is primarily text-based, WAP device
displays are smaller and are not touch-sensitive. They're
designed for placing phone calls, sending and receiving short text
messages. On the other hand, online connectivity is a pivotal
aspect of the wireless data transfer mobile devices and with large
screens, high processing power and software compatibility,
wireless data transfer mobile devices can be used to perform
almost all of the same internet activities as a computer.
Wireless data transfer web sites are written in HTML
language while W AP sites are written in Wireless Markup
Language (WML ). The basic unit of navigation in HTML is the
web page, while that in WML is call card. The structure of
Wireless Markup Language (WML) that W AP uses is based on
deck/card metaphor. A WAP application may consist of one or
several WML decks. A WML deck is divided into cards. A deck
is sent from the server in one transaction but the browser usually
shows only one card at a time. Typically all the contents of a
card do not fit on the screen of W AP browsers devices so the user
has to scroll the screen to see the card in full.
(App. Br. 20-21)(emphasis added). We find Appellant's arguments are
general arguments for patentability that are not based upon the factual
content and disclosure within the Desai reference. Appellant proffers that
there are many differences in the content of W AP and online connectivity,
but Appellant's arguments are not commensurate in scope with the language
of independent claim 5. Thus, Appellant's argument fails because it is not
commensurate with the scope of the claim. See In re Self, 671 F.2d 1344,
1348 (CCPA 1982) ("[A]ppellant's arguments fail from the outset because
... they are not based on limitations appearing in the claims."). See In re
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Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) ("[The] proffered facts
. . . are not commensurate with the claim scope and are therefore
unpersuasive.").
In the Examiner's Answer, the Examiner further details the
corresponding portions of the Desai reference, which disclose the claimed
invention and disclose a W AP phone, software, and information exchange.
(Ans. 2-7).
Appellant did not file a Reply Brief to respond to the Examiner's
further clarifications in the rejection of independent claim 5. We find
Appellant has not provided a specific argument for patentability which
clearly identifies an error in the Examiner's factual findings, or claim
interpretation supported by context in the Specification, as originally filed.
As a result, we find Appellant has not shown error in the Examiner's finding
of anticipation of dependent claim 21.
With respect to independent claims 6 and 23, Appellant relies upon
the arguments set forth respect to representative independent claim 5. (App.
Br. 27 and 32). Appellant sets forth similar arguments advanced with
respect to independent claim 5 and that the Examiner's construction is
unreasonable.
The Examiner further clarifies the rejection and responds to
Appellant's arguments with additional citations to the Desai reference.
(Ans. 7-9).
Appellant did not file a Reply Brief to respond to the Examiner's
further clarifications. Because we found no error in the Examiner's claim
construction or the application of the Desai reference in the finding of
anticipation of claim 5, we similarly find no error in the Examiner's finding
of anticipation for independent claims 6 and 23.
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With respect to dependent claim 21, Appellant repeats the language of
the claim and relies upon the arguments advanced with respect to
independent claim 6. (App. Br. 30). Appellant again contends that the
Examiner's claim construction "ignores the plain language of the claim and
the entirety of the context of the specification and is therefore not
reasonable." (App. Br. 30). But, Appellant does not identify any
corresponding portion of the Specification which provides limiting context
to evidence that the Examiner has improperly interpreted the claim
language. 3
The Examiner further details that the Desai reference discloses fields
may be marked as private and may only be accessed from inside the affiliate
systems intranet or other local network. (Ans. 7-8).
We find Appellant has not provided a specific argument for
patentability which clearly identifies an error in the Examiner's factual
finding or claim interpretation supported by context in the Specification, as
originally filed. As a result, we find Appellant has not shown error in the
Examiner's finding of anticipation of dependent claim 21.
CONCLUSION
The Examiner did not err in rejecting claims 5, 6, and 12-26 based
upon anticipation under 35 U.S.C. § 102.
3 We give the contested claim limitations the broadest reasonable
interpretation ("BRI") consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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DECISION
For the above reasons, we sustain the Examiner's anticipation
rejection of claims 5, 6, and 12-26 under 35 U.S.C. § 102.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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