Ex Parte Costa

Patent Trial and Appeal BoardOct 31, 2016

12533050 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/533,050 07/31/2009 Mario Costa 42624 7590 10/31/2016 DAVIDSON BERQUIST JACKSON & GOWDEY LLP 8300 Greensboro Dr, Suite 500 McLean, VA 22102 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. 2540-1175 6846 EXAMINER VAZQUEZ COLON, MARIA E ART UNIT PAPER NUMBER 2482 MAILDATE DELIVERY MODE 10/31/2016 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 MARIO COST A Appeal2014-008427 Application 12/533,050 Technology Center 2400 Before ALLEN R. MacDONALD, DANIEL N. FISHMAN, and MICHAEL M. BARRY, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests rehearing under 37 C.F.R. Â§ 41.52 of the Decision mailed June 28, 2016 ("Decision"), in which we affirmed the Examiner's decision rejecting all pending claims (1-20). Appellant timely filed the Request for Rehearing ("Reh'g Req.") on August 28, 2016. We grant-in-part Appellant's request and modify the Decision as set forth below. ANALYSIS Anticipation The Request argues the Decision misapplies the law of anticipation (Reh' g Req. 6-12) and specifically "the Decision ... appears to fill in the admittedly missing limitation with an improper application of Kennametal v. Appeal2014-008427 Application 12/533,050 Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015)" (Reh'g Req. 8). The Request contends the Decision errs in finding the Covington reference anticipates claim 1 because: (Id.) It is simply not written anywhere in the cited Covington et al. that there is a mobile computing device, as required by the claims. Thus, there is no express or explicit disclosure of a "mobile computing device," as required. The disclosure of the mobile computing device must be express. It must be explicit. However, in Covington et al., it is non-existent. We disagree. Anticipation "is not an 'ipsissimis verbis' test." In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990); see also Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991) (a reference "need not duplicate word for word what is in the claims"); In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (the reference need not satisfy an ipsissimis verbis test). Moreover, "in considering the disclosure of a reference; it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826 (CCPA 1968) (affirming an anticipation rejection). As the Federal Circuit clarified in Gleave: As long as the reference discloses all of the claim limitations and enables the "subject matter that falls within the scope of the claims at issue," the reference anticipates . . . . Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1380-81 (Fed. Cir. 2003); see In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985). This is so despite the fact that the description provided in the anticipating reference might not otherwise entitle its author to a patent. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562 (Fed. Cir. 1991) (discussing the "distinction between a written description adequate to support a claim under Â§ 112 and a 2 Appeal2014-008427 Application 12/533,050 written description sufficient to anticipate its subject matter under Â§ 102(b ). "). 560 F.3d at 1334. The Decision adopted the Examiner's finding that Covington's express preference for using the IEEE 802.1 la wireless network protocol discloses a wireless network that mobile devices pervasively use. (See Decision 6 (citing Covington i-f 14 ). ) The Request counters that: Applicants' representatives have access to the engineers familiar with the underlying system of Covington et al., who have confirmed that Covington et al.' s system was not mobile devices [sic]. The engineers also pointed to the short range bi- directional RF link in Covington et al. as one way a technical person would know that it is a stationary computer. (Reh'g Req. 18.) This is unpersuasive and specifically inconsistent with the examples in Covington of computers in a vehicle and an elevator (i.e., that are mobile) and that communicate over the wireless link (see i-f 12). We also find unpersuasive the Request's argument that because stationary computers can use 802.1 la, Covington therefore does not disclose mobile devices. (Reh'g Req. 19.) To the contrary, one of ordinary skill would immediately understand Covington's disclosure of device-to-device communication using a wireless network protocol well known to be in pervasive used by mobile devices as teaching use of mobile devices. (See, e.g.~ Kennametal, 780 F.3d at 1381.) Accordingly, we grant Appellant's Request to the extent we have reconsidered our Decision on the rejection of claim 1 under 35 U.S.C. Â§ 102, but we deny the request to modify our Decision on this issue. Our decision is final for purposes of judicial review. See 37 C.F.R. Â§ 41.52(a)(l). 3 Appeal2014-008427 Application 12/533,050 Double Patenting The Request argues the Decision errs affirming in the statutory double patenting rejection by relying on the standard from In re Robeson, 331 F.2d 610, 614 (CCPA 1964). (Reh'g Req. 13-17.) We have reconsidered this issue and agree. Accordingly, we grant Appellant's Request on this issue and vacate our affirmance of the Examiner's rejection of claims 1-20 for statutory double-patenting under 35 U.S.C. Â§ 101. DECISION We maintain the portion of our Decision that affirms the rejection of claims 1-20 under 35 U.S.C. Â§Â§ 102 and 103. We vacate the portion of our Decision that affirms the rejection of claims 1-20 as invalid for double patenting under 35 U.S.C. Â§ 101, and we reverse that rejection. 1 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). REHEARING GRANTED-Il~-PART 1 As the Examiner has shown that all the claims are unpatentable, we do not further reject the claims. However, in the event of further prosecution of claims 1-20 at issue in this Decision, the Examiner should consider a provisional rejection for nonstatutory obviousness-type double patenting over claims 1-20 of co-pending US Application Serial No. 13/080,863 (the "'863 application") (the only differences between claims 1-20 at issue in this Decision and claims 1-20 of the '863 application are: (a) the pending claims at issue in this Decision recite a "mobile computing device" whereas the corresponding pending claims of the '863 application recite a "tablet computing device" and (b) pending claims 1 and 13 in this Decision recite "a keyboard" and "a mouse" whereas pending claims 1 and 13 of the' 863 patent do not). 4