Ex Parte Hayes et al

Patent Trial and Appeal BoardDec 31, 2012

11750383 (P.T.A.B. Dec. 31, 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. 11/750,383 05/18/2007 Gerard James Hayes 2002-410 / PU06 0553US2 9998 54472 7590 12/31/2012 COATS & BENNETT/SONY ERICSSON 1400 CRESCENT GREEN SUITE 300 CARY, NC 27518 EXAMINER CUTLER, ALBERT H ART UNIT PAPER NUMBER 2661 MAIL DATE DELIVERY MODE 12/31/2012 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GERARD JAMES HAYES, RONALD A. LOUKS, and NADI SAKIR FINDIKLI ____________ Appeal 2011-003671 Application 11/750,3831 Technology Center 2600 ____________ Before THU A. DANG, JAMES R. HUGHES, and GREGORY J. GONSALVES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL 1 Application filed on May 18, 2007. The Real Party in Interest is Sony Ericsson Mobile Communications AB. (App. Br. 1.) Appeal 2011-003671 Application 11/750,383 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-6, 10, 12-15, and 17-22 which are all the claims remaining in the application. Claims 7-9, 11, and 16, were cancelled during prosecution. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Invention Appellants’ invention relates generally to digital cameras and, more particularly, to wireless adapters for digital cameras that enable digital cameras to communicate with remote devices. (Spec. 1, ¶ [0002].)2 Representative Claim Independent claim 1, reproduced below with the key disputed limitations emphasized, further illustrates the invention: 1. A wireless adaptor for a digital camera, said wireless adaptor comprising: a card holder having a slot to receive a wireless card for communicating with remote devices over a wireless network; and an interface circuit configured to electrically connect said wireless card with said digital camera; said wireless card insertable into said slot in said card holder, wherein said wireless card includes a wireless interface for communicating with remote devices over the wireless network; and a file transfer agent associated with said card holder or said wireless card, and configured to receive image data from said digital camera and to transfer said image data to a specified destination 2 We refer to Appellants’ Specification (“Spec.”); Reply Brief (“Reply Br.”) filed Oct. 18, 2010; and Appeal Brief (“Br.”) filed May 24, 2010. We also refer to the Examiner’s Answer (“Ans.”) mailed Aug. 18, 2010. Appeal 2011-003671 Application 11/750,383 3 device via the wireless interface, said file transfer agent configured to emulate a printer. Rejections on Appeal 1. The Examiner rejects claims 1-4, 10, 12, 15, and 17-19 under 35 U.S.C. § 103(a) as being unpatentable over VanWagner (US Pat. App. Pub. No.: 2005/0078195 A1, published Apr. 14, 2005) and Lewis (GB Patent App. No.: GB 2388942 A, published Nov. 26, 2003). 2. The Examiner rejects claims 5, 6, 13, 14, and 20-22 under 35 U.S.C. § 103(a) as being unpatentable over VanWagner, Lewis, and Kiessling (US 2006/0152576 A1, published July 13, 2006). ISSUES Based upon our review of the administrative record, Appellants’ contentions, and the Examiner’s findings and conclusions, we have determined that the following issues are dispositive in this appeal: 1. Under § 103, did the Examiner err in concluding that VanWagner and Lewis collectively teach or would have suggested: a file transfer agent associated with said card holder or said wireless card, and configured to receive image data from said digital camera and to transfer said image data to a specified destination device via the wireless interface, said file transfer agent configured to emulate a printer, (claim 1, emphasis added), within the meaning of independent claims 1, 10, and 15? 2. Under § 103, did the Examiner err in combining VanWagner and Lewis? Appeal 2011-003671 Application 11/750,383 4 3. Under § 103, did the Examiner err in finding that VanWagner, Lewis and Kiessling collectively teach or would have suggested “wherein said first and second interfaces comprise Universal Serial Bus (USB) interfaces, and wherein said interface circuit comprises a USB host controller” (claim 6), within the meaning of dependent claim 6 and commensurate limitations recited in dependent claims 21 and 22? ANALYSIS File transfer agent Appellants contend that the cited combination of references would not have taught or suggested said file transfer agent configured to emulate a printer, as recited in representative claim 1. (App. Br. 7- 9.) It is our view that Appellants have not shown that the Examiner erred in rejecting claim 1 for the reasons that follow. The Examiner concluded that VanWagner taught or suggested the claimed file transfer agent except that the file transfer agent is configured to emulate a printer. (Ans. 3-4.) The Examiner relied on Lewis to show that a device that is configured to emulate a printer was well known in the art at the time of Appellants’ invention. (Ans. 4.) Appellants essentially argue that VanWagner does not teach or suggest the claimed file transfer agent, while admitting that the Examiner relied on Lewis to teach or suggest a transfer agent that emulates a printer. (App. Br. 7.) Appellants then essentially argue that Lewis fails to teach or suggest the claimed filed transfer agent. (App. Br. 8-9.) Appellants then conclude that “[n]either VanWagner nor Lewis alone teaches or suggests the claimed file transfer agent. And, since both references alone fail to teach or suggest this Appeal 2011-003671 Application 11/750,383 5 limitation, their combination necessarily fails to teach or suggest this limitation.” (App. Br. 9.) We agree with the Examiner that Appellants’ singular attacks of the cited references are unavailing. (Ans. 17-19.) One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). This reasoning is applicable in the present case. We agree with the Examiner that Appellants’ arguments consist of singular attacks of VanWagner and Lewis respectively as well as a conclusion that since the references, individually, do not teach or suggest the limitation at issue, then the combination necessarily fails to teach or suggest the limitation. However, it is our view that Appellants’ arguments fail to appreciate the collective teachings of the cited references and therefore are unpersuasive. Combinability Appellants contend that there is no reason for one skilled in the art to modify VanWagner as claimed because VanWagner already has the ability to transfer files over the network. (App. Br. 9-10.) Appellants further contend that one skilled in the art would not have a reason to provide the digital device of VanWagner with radio interface capabilities when it already has those capabilities. (App. Br. 10.) After considering the evidence before us, we conclude that Appellants’ argument does not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and is therefore ineffective to rebut the Examiner’s prima facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“The test Appeal 2011-003671 Application 11/750,383 6 for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”) (citations omitted, emphasis added). This reasoning is applicable in the present case. Appellants further contend that the Examiner’s motivation to combine the references is conclusory. (App. Br. 11.) However, Appellants’ argument merely discusses VanWagner and does not address why VanWagner is not combinable with Lewis under § 103 – i.e., the combination produces unpredictable results, etc. Based on the above, we conclude that the Examiner did not err in combining VanWagner and Lewis. Based on this record, we conclude that Appellants have not shown the Examiner erred in finding that the cited combination of references would have taught or suggested the claimed file transfer agent. Accordingly, we affirm the Examiner’s rejection of representative claim 1 and claims 2-4, 10, 12, 15, and 17-19, not separately argued with particularity, which stand therewith. Claims 5, 13, 14, and 20 As noted above, claims 5, 13, 14, and 20 stand rejected as unpatentable over VanWagner, Lewis and Kiessling. We observe that Appellants did not argue for the patentability of the aforementioned claims with particularity. (App. Br. 13-14.) Accordingly, we affirm the Examiner’s rejection of claims 5, 13, 14, and 20 for the same reasons discussed supra regarding independent claims 1, 10, and 15. Appeal 2011-003671 Application 11/750,383 7 Universal Serial Bus (USB) Interfaces and USB Host Controller - Claims 6, 21, and 22 Appellants contend that Kiessling does not disclose an interface that connects the main unit to either the camera module or wireless card, or a USB controller interconnecting a camera with a wireless card. (App. Br. 13- 14.) Similar to the above discussion, we find Appellants’ singular attack of Kiessling to be unavailing. We observe that the Examiner relied on Kiessling to teach or suggest a USB interface and that the combination of references would have taught or suggested a USB host controller as claimed. (Ans. 12, 26.) Based on this record, we conclude that the Examiner did not err in rejecting representative claim 6. Accordingly, we affirm the Examiner’s rejection of claims 6, 21, and 22. REPLY BRIEF While we have fully considered Appellants’ responses in the Reply Brief, we decline to address any new arguments not originally presented in the principal Brief and we deem these newly presented arguments to be waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (“informative”) (absent a showing of good cause, the Board is not required to address arguments in the Reply Brief that could have been presented in the principal Brief). With respect to all claims before us on appeal, arguments which Appellants could have made but chose not to make have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). See also In re Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004). Appeal 2011-003671 Application 11/750,383 8 CONCLUSION OF LAW Appellants have not shown that the Examiner erred in rejecting claims 1-6, 10, 12-15, and 17-22 under 35 U.S.C. § 103. DECISION We affirm the Examiner’s rejections of claim 1-6, 10, 12-15, and 17-22 under 35 U.S.C. § 103(a). AFFIRMED Vsh