Ex Parte Stroughter et al

Patent Trial and Appeal Board

May 31, 2016

11502337 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111502,337 08/10/2006
67418 7590
La Tretha Stroughter
1043 Muir Creek Drive
Pittsburg, CA 94565
06/01/2016
FIRST NAMED INVENTOR
La Tretha Straughter
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.
7464
EXAMINER
FINDLEY, CHRISTOPHER G
ART UNIT PAPER NUMBER
2482
MAILDATE DELIVERY MODE
06/01/2016 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 LA TRETHA ELLONISE STROUGHTER
Appeal2014-001015
Application 11/502,337
Technology Center 2400
Before MICHAEL J. STRAUSS, HUNG H. BUI, and
IRVINE. BRANCH, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
38-72, all pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Application 11/502,337
CLAIMED SUBJECT MATTER
According to Appellant's amended "field of the invention"
(Amendment filed February 3, 2012), "[t]he present invention is a multi-
tasking computer that incorporates all technological functional devices into
one system with several connecting high-tech apparatuses."
Claim 38 is reproduced below and is illustrative of the issues on
appeal:
38: A machine implemented method of processing
technological built in and detachable mobile apparatuses.
Comprises: 1 in 5 Sun-shaped Mobiletainment Television
Activity Monitor with TV Tabby Ticker Bar, Digital Display
Activated Dynomouse, DDR (Digital Display Remote), Swivel
Stand, Freshpuricon Speakers, One Touch Performance Keys,
Multi-Usage Card Reader, Virtual Vintage Machine reader, Main
Control Station, Skywatcher System, In Air Writing Stylus Pen,
Ultimate Digital Sensor, Finger Clip Scanner, D.A.C.E.S. (DNA
Activated Computer Explosive SwitchJ3 Second Self Destruct
Switch), Multi- Stack Converter drives, Internal Warning system,
Intelligent Phone System, iviobile Ports, iviobiletainment Plug in
System, Terminal Conversion Receiver, Virtual Marine Display,
LH. T.M. (In Home Teller Machine), Built in Tuner Card,
Snoozer Alarm, InternallExternal Microphone, Battery Back-
up/Solar Pack Built in Generator, Built in Surveillance Home
Security System, Internal Device & Item Finding System, Global
Zoom System, Portable Connecting Tera Drives, Internal
Communication System, Detachable Digital Easy Reader,
Portable File Cabinets and Rear Connection Center.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Watkins
Monroe
Moritz
US 6,357,726 Bl
US 6,970,183 Bl
US 7,263,190 Bl
2
Mar. 19, 2002
Nov. 29, 2005
Aug.28,2007
Appeal2014-001015
Application 11/502,337
Rainisto
Goldman
Wilson
Reckamp
Neider
US 7 ,932,895 B2
US 2003/0066876 Al
US 200710192486 A 1
US 2007 /0256085 Al
US 2007 /0257920 Al
REJECTIONS
Apr. 26, 2011
Apr. 10, 2003
Aug. 16, 2007
Nov. 1, 2007
Nov. 8, 2007
Claims 38-72 stand rejected as unpatentable under 35 U.S.C. § 103(a)
over one or more of the above references. Ans. 12-23.
Claims 38-72 stand rejected under 35 U.S.C. § l 12(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement. Ans. 5.
Claims 38-72 stand rejected as failing to define the invention in the
manner required by 35 U.S.C. § l 12(b) or 35 U.S.C. § 112 (pre-AIA),
second paragraph. Ans. 6-8.
Claims 38-72 stand rejected under 35 U.S.C. § l 12(b) or 35 U.S.C.
§ 112 (pre-AIA), second paragraph, as being indefinite for failing to point
out what is included or excluded by the claim language. Ans. 8.
Other rejections under 35 U.S.C. § 112 are pending. See Ans. 3-11.
OPINION
We have reviewed the Examiner's grounds of rejection (Ans. 12-23),
the Examiner's grounds of rejections designated as "new grounds" (id. 4--
11 ), Appellant's arguments (App. Br. 19--43), the Examiner's response to
Appellant's arguments (Ans. 23-30), and Appellant's reply (Reply Br. 3-7).
We begin by reviewing the Examiner's rejections of claims 38-72
under 35 U.S.C. § 112 (pre-AIA), second paragraph, based on
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Application 11/502,337
indefiniteness. Ans. 6-8. We specifically note the following from the
Examiner's rejection:
The claims are narrative in form and replete with indefinite
language. The structure which goes to make up the device must
be clearly and positively specified. The structure must be
organized and correlated in such a manner as to present a
complete operative device. The claim( s) must be in one sentence
form only.
Id. 6. The Examiner then proceeds to point out specific examples of
indefinite language throughout the claims. Id. 6-8.
Although the foregoing appears in a new ground of rejection (id.),
Appellant acknowledged and responded to the rejection. Reply Br. 3, 5---6.
Hence, rather than having exercised the option to reopen prosecution (3 7
C.F.R. § 41.39(b)(l)), Appellant elected to maintain the appeal by filing a
reply brief (37 C.F.R. § 41.39(b )(2)). Appellant's appeal of the Examiner's
new ground of rejection of claims 38-72 under 35 U.S.C. § 112 (pre-AIA),
second paragraph, as being indefinite is, therefore, properly before us.
We have reviewed the substance of Appellant's response to this
rejection. Reply Br. 5---6. We note specifically Appellant's arguments as
follows:
In the present case, the Examiner's Answer has not
asserted, let alone established, why the claimed features are
believed to be indefinite from the perspective of one of ordinary
skill in the art. As such, the Examiner's Answer failed to make a
prima facie rejection of the claims under the second paragraph
of 35 U.S.C. § 112. Further, Applicants respectfully submit that
the claims are indeed definite at least as while application
11/502,337 was sitting in the files inside the United States Patent
and Trademark office from 2005 until 2011 waiting for a First
Office Action, Worldwide Manufacturers and the United States
Federal Government has continually produce the subject matter
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Appeal2014-001015
Application 11/502,337
from this application on a daily basis. All Claims 38-72
specifically states a connection by way of application 11/502,337
Page 20, lines 4 and 5 of the application dates 02/03/2012.
Reply Br. 6.
Appellant's arguments do not persuade us of error in the Examiner's
rejection. In particular, Appellant does not persuasively rebut the Examiner's
specific findings as to indefiniteness. See, e.g., Ans. 6 ("Claim 38 recites a
listing of elements, but fails to describe how the elements listed are attached
to or interact with each other to form any essential connection between
elements."). Appellant's argument that, during the application's pendency,
"Worldwide Manufacturers and the United States Federal Government has
continually produce the subject matter from this application on a daily
basis," does not amount to an argument against the Examiner's rejection,
without regard to whether the assertion is true. We are persuaded that
claims 38-72 are indefinite under 35 U.S.C. § 112 (pre-AIA), second
paragraph. We affirm the Examiner's rejections accordingly.
Because the claims are so indefinite that "assumptions as to the scope
of such claims" is needed, we do not address the merits of the Examiner's
remaining rejections. See In re Steele, 305 F.2d 859, 862, (CCPA 1962)
(holding that the Examiner and the Board were wrong in relying on what, at
best, were speculative assumptions as to the meaning of the claims).
DECISION
The Examiner's rejection of claims 38-72 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
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Appeal2014-001015
Application 11/502,337
AFFIRMED
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