11470060 (B.P.A.I. Nov. 12, 2010)

Ex Parte Woods et al

Board of Patent Appeals and InterferencesNov 12, 2010

11470060 (B.P.A.I. Nov. 12, 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. 11/470,060 09/05/2006 Richard Woods SchwartzCell 7468 2655 7590 11/12/2010 DAVID PRESSMAN, ESQ. 1070 GREEN STREET # 1402 SAN FRANCISCO, CA 941335418 EXAMINER PATEL, MUNJALKUMAR C ART UNIT PAPER NUMBER 2617 MAIL DATE DELIVERY MODE 11/12/2010 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 RICHARD WOODS, NEHEMIA SCHWARTZ, and NIRA SCHWARTZ _____________ Appeal 2010-005456 Application 11/470,060 Technology Center 2600 ______________ Before, ROBERT E. NAPPI, KENNETH W. HAIRSTON, and JOHN C. MARTIN, Administrative Patent Judges. NAPPI, Administrative Patent Judge. ON REQUEST FOR REHEARING Appeal 2010-005456 Application 11/470,060 Appellants have filed a paper under 37 C.F.R. § 41.52 requesting that we reconsider our decision of September 15, 2010 wherein we affirmed the Examiner’s rejection of claims 44-53 under 35 U.S.C. § 103(a). Appellants contend that: i) the Board’s decision erred in determining that Irani’s phone communicates with base station even though the user cannot make calls. Request for Rehearing 3. ii) the Board’s decision erred in determining that the combination of Sheha with Irani was obvious. Request for Rehearing 8. iii) the Board’s decision erred in determining that the combination of Sheha with Irani yields predictable results. Request for Rehearing 9. iv) the Board’s decision erred in stating that Appellants’ Reply Brief contained two communication bands. Request for Rehearing 9. We address the Appellants’ contention below. Appellants’ contention i): Appellants have not persuaded us that we erred in determining that Irani’s phone communicates with base stations even though the user cannot 2 Appeal 2010-005456 Application 11/470,060 make calls. Appellants’ arguments on pages 3-7 of the Request for Rehearing address each of the four states of Irani’s phone operations when the phone is in motion. Appellants argue that none of these states allows the phone to become operative after it slows down since the speed of the phone is not monitored. Request for Rehearing 4. Additionally, Appellants argue that the only way for the phone to become operative is to enter a PIN or restart the system. Request for Rehearing 4. We do not find either of these arguments to be persuasive since Irani discloses in the Abstract that the phone is completely shutdown until motion stops. Appellants also acknowledge that one of Irani’s states is “complete shutdown until motion stops.” Request for Rehearing 3. Therefore, the Examiner’s finding that this means that the phone is still communicating with base stations even though the user cannot make calls (Ans. 25) is reasonable. Accordingly, Appellants’ statements have not persuaded us that we erred in our September 15, 2010, decision that Irani’s phone communicates with base stations even though the user cannot make calls. Appellants’ contention ii): Appellants’ arguments on pages 7-9 of the Request for Rehearing have not persuaded us that we erred in determining that the combination of Sheha with Irani was obvious. Appellants argue that combining Sheha with Irani is not obvious because Sheha is not relevant or is merely cumulative to Irani. Request for Rehearing 8. We are not persuaded by Appellants’ argument since we fail to see how a cumulative reference would destroy the combination. As such, defining the information loaded as “contexts” will not define Appellants’ claimed invention over prior art which loads 3 Appeal 2010-005456 Application 11/470,060 information in a similar way. Accordingly, Appellants’ statements have not persuaded us that we erred in our September 15, 2010, decision by determining that the combination of Sheha with Irani was obvious. Appellants’ contention iii): Appellants’ arguments on page 9 of the Request for Rehearing have not persuaded us that we erred in determining that the combination of Sheha with Irani yields predictable results. Appellants merely argue that the combination does not yield predictable results for the reasons stated in Appellants’ contention i. App. Br. 9. Since we fail to find Appellants’ contention i persuasive, we also fail to find Appellants’ contention iii to be persuasive for the same reasons. Accordingly, we are not persuaded that we erred in our September 15, 2010, decision by determining that the combination of Sheha with Irani yields predictable results. Appellants’ contention iv): Appellants’ arguments on page 9 of the Request for Rehearing have not persuaded us that we erred in stating that Appellants’ Reply Brief contained two communication bands. Appellants argue that the claims never recited that there were two bands. Request for Rehearing 9. However, this argument fails to persuade us how we erred in affirming the Examiner’s rejection. Accordingly, we are not persuaded that we erred in our September 15, 2010, decision by stating that Appellants’ Reply Brief contained two communication bands. 4 Appeal 2010-005456 Application 11/470,060 CONCLUSION Appellants’ request for rehearing is granted to the extent that we have reconsidered our prior decision in light of Appellants’ arguments. We are not persuaded of any errors in our prior decision and maintain the rejection of claims 44-53. Thus, the request for rehearing is DENIED. 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)(v). 5 Appeal 2010-005456 Application 11/470,060 REHEARING DENIED ELD DAVID PRESSMAN, ESQ. 1070 GREEN STREET #1402 SAN FRANCISCO, CA 94133-5418 6