11194984 (B.P.A.I. May. 17, 2012)

Ex Parte Rosenbush

Board of Patent Appeals and InterferencesMay 17, 2012

11194984 (B.P.A.I. May. 17, 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. 11/194,984 08/02/2005 David Rosenbush 67,010-187; H2832-SS 3132 26096 7590 05/18/2012 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 EXAMINER DWIVEDI, MAHESH H ART UNIT PAPER NUMBER 2168 MAIL DATE DELIVERY MODE 05/18/2012 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 DAVID ROSENBUSH ____________ Appeal 2010-000920 Application 11/194,984 Technology Center 2100 ____________ Before MAHSHID D. SAADAT, KALYAN K. DESHPANDE, and JOHNNY A. KUMAR, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000920 Application 11/194,984 2 Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1-28, which are all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Introduction Appellant’s invention relates to an arrangement to control remote devices, such as computers, for reducing the amount of network bandwidth used to remotely control the devices (see Spec. ¶¶ [0001], [0005]). Exemplary independent claim 1 reads as follows: 1. A system for control of remote devices comprising: a first device displaying a first file; a second device in communication with said first device, said second device displaying a second file that is essentially the same as the first file; and said first and second devices each producing an output on said displays of said first and second files in response to a command input into either of said first or second devices. Rejections Claims 1-10, 23, and 24 stand rejected under 35 U.S.C. § 112, second paragraph (Ans. 3). Claims 1-28 stand rejected under 35 U.S.C. § 102(a) as being anticipated by “Nintendo DS Instruction Book,” Mar. 22, 2005 (hereinafter “Nintendo”). Appeal 2010-000920 Application 11/194,984 3 ANALYSIS Rejection under 35 U.S.C. § 112, second paragraph The Examiner finds that the limitation “essentially the same as” recited in claim 1 is indefinite and vague (Ans. 3). The Examiner further asserts that the recited limitation provides “no discernable meaning as to the similarities of the files” because it is not clear whether the first file and the second file are the same or not (Ans. 23). Appellant contends that “essentially the same” has a discernable meaning because the term is described in paragraphs 13 and 17 of the Specification as commands entered into and displayed on either one of the computers or as files containing the same graphic or document (App. Br. 3- 4). We agree with Appellant’s reasoning and rebuttal that the term “essentially the same” is evident from reading Appellant’s disclosure to refer to the same type of application module or to files containing the same graphic or document (see Spec. ¶¶ [0013] and [0017] – [0019]). As such, one of ordinary skill in the art could reasonably ascertain the scope of the claim. Therefore, we do not sustain the rejection of claims 1-10, 23, and 24 under the second paragraph of 35 U.S.C. § 112. Rejection under 35 U.S.C. § 102(a) The Examiner relies on pages 14 and 16 of Nintendo as describing wirelessly communicating or playing games with other people for disclosing all the elements of the claimed system and method (Ans. 3-22). In response to Appellant’s argument (App. Br. 4-8) that Nintendo does not teach the claimed features recited in claims 1, 10, 11, 14, 15, 19, 24-28, the Examiner Appeal 2010-000920 Application 11/194,984 4 provides a detailed response and discussion of how Nintendo’s disclosure meets the claimed features (Ans. 23-31).1 We have reviewed the Examiner’s rejections in light of Appellant’s contentions that the Examiner has erred. We disagree with Appellant’s conclusions. We agree with and 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 Answer in response to Appellant’s Appeal Brief. In view of the Examiner’s findings and conclusion, we find that the teachings of Nintendo, when considered as a whole, support the Examiner’s anticipation rejection. Therefore, we sustain the rejection of claims 1, 10, 11, 14, 15, 19, 24-28, and of the remaining claims not argued separately, under 35 U.S.C. § 102(a). DECISION The Examiner’s decision rejecting claims 1-28 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). AFFIRMED ke 1 We observe that Appellant’s declaration filed pursuant to 37 C.F.R. § 1.131, on June 17, 2008, has been considered by the Examiner and found to be insufficient to overcome the applied prior art, as explained in pages 2-3 of the Final Rejection, mailed September 3, 2008.