Ex Parte Fu et al

Patent Trial and Appeal BoardJun 24, 2014

10884937 (P.T.A.B. Jun. 24, 2014)

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. 10/884,937 10/27/2004 Runbo Fu 05200204-152US 7906 20988 7590 06/24/2014 NORTON ROSE FULBRIGHT CANADA LLP 1, Place Ville Marie SUITE 2500 MONTREAL, QC H3B 1R1 CANADA EXAMINER WENDELL, ANDREW ART UNIT PAPER NUMBER 2647 MAIL DATE DELIVERY MODE 06/24/2014 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 RUNBO FU, WEN ZHAO, and XIN JIN ____________________ Appeal 2011-013234 Application 10/884,9371 Technology Center 2600 ____________________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellants, the real party in interest is Research In Motion Limited. (Br. 3). Appeal 2011-013234 Application 10/884,937 2 STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 4-23, 25, 26, 28-36, and 38. Claims 2, 3, 24, 27, and 37 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The Examiner’s Rejections (1) The Examiner rejected claims 1, 4-6, 11-21, 23, 25, 26, and 28-32 under 35 U.S.C. § 102(e) as anticipated by May (US 2004/0121791 A1; June 24, 2004). Ans. 4-12. (2) The Examiner rejected claims 7, 8, 22, 33, 34, and 38 under 35 U.S.C. § 103(a) as unpatentable over May and Drozt (US 2004/0185890 A1; Sept. 23, 2004). Ans. 12-14. (3) The Examiner rejected claims 9, 10, 35, and 36 under 35 U.S.C. § 103(a) as unpatentable over May, Drozt, and Chen (US 2003/0211859 A1; Nov. 13, 2003). Ans. 14-15. Principal Issue on Appeal Did the Examiner err in rejecting (1) claims 1, 4-6, 11-21, 23, 25, 26, and 28-32 under 35 U.S.C. § 102(e) as anticipated by May; (2) claims 7, 8, 22, 33, 34, and 38 under 35 U.S.C. § 103(a) as unpatentable over May and Drozt; and (3) claims 9, 10, 35, and 36 under 35 U.S.C. § 103(a) as unpatentable over May, Drozt, and Chen, because May fails to disclose, teach, or suggest “a single logical expression” as recited in independent claims 1, 23, 26, and 30? Appeal 2011-013234 Application 10/884,937 3 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions in the Appeal Brief (Br. 12-21) that the Examiner has erred, and the Examiner’s response to Appellants’ arguments (Ans. 15-17). We concur with Appellants’ (Br. 12-15 and 17-21) that the Examiner erred in finding that May teaches or suggests “a single logical expression” as required by independent claims 1, 23, 26, and 30. The Examiner asserts that May inherently requires a single logical operator. Under the doctrine of inherency, if a claimed element is not expressly disclosed in a prior art reference, the reference nevertheless anticipates the claim if the missing element is necessarily present in the reference, and that it would be so recognized by skilled artisans. Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1380 (Fed. Cir. 2002) (citations and internal quotation marks omitted). We note that “[i]n relying upon the theory of inherency, the [E]xaminer must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990)(emphasis in original). “[A]fter the PTO establishes a prima facie case of anticipation based on inherency, the burden shifts to [A]ppellant to ‘prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.”’ In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986) (emphasis added) (quoting In re Swinehart, 439 F.2d 210, 212-13 (CCPA 1971)). See also MPEP §§ 2112 (IV-V). A mere assertion by the Examiner that May discloses a single logical expression is not sufficient to establish a prima facie case of anticipation. By selecting members one-at-a-time, a Appeal 2011-013234 Application 10/884,937 4 single logical expression would not inherently be necessary. Accordingly, on the record before us, we cannot sustain the Examiner’s (i) anticipation rejection of claims 1, 4-6, 11-21, 23, 25, 26, and 28-32, or (ii) obviousness rejections of claims 7-10, 22, 33-36, and 38. CONCLUSIONS Appellants have established that the Examiner erred in rejecting claims 1, 4-6, 11-21, 23, 25, 26, and 28-32 under 35 U.S.C. § 102(e) by May because May does not disclose a single logical expression, as recited in independent claims 1, 23, 26, and 30. Because dependent claims 7-10, 22, 33-36, and 38 contain the same limitations as claims 1 and 30 from which they depend, we find that the Examiner erred in the rejection of claims 7-10, 22, 33-36, and 38 for the same reasons set forth above in our analysis of claims 1, 4-6, 11-21, 23, 25, 26, and 28-32. DECISION The Examiner’s rejections of claims 1, 4-23, 25, 26, 28-36, and 38 are reversed. REVERSED kme