Ex Parte HILT

Patent Trial and Appeal Board

Dec 5, 2012

12965121 (P.T.A.B. Dec. 5, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/965,121 12/10/2010 Patrick HILT 45011703442.3.US 6145
20999 7590 12/06/2012
FROMMER LAWRENCE & HAUG
745 FIFTH AVENUE- 10TH FL.
NEW YORK, NY 10151
EXAMINER
LUU, LE HIEN
ART UNIT PAPER NUMBER
2448
MAIL DATE DELIVERY MODE
12/06/2012 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 PATRICK HILT
____________________

Appeal 2013-000946
Application 12/965,1211
Patent 6,738,820
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, KRISTEN L. DROESCH, and
JUSTIN BUSCH, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL2

1 Filed December 10, 2010, as a continuation of 11/437,008, now Reissue
Patent RE 42,104, filed May 18, 2006, seeking to reissue U.S. Patent
6,738,820 issued May 18, 2004, based on application 09/934,213, filed
August 21, 2001.
2 The real party in interest is Sony Deutschland GmbH (App. Br. 2).
Appeal 2013-000946
Application 12/965,121
Patent 6,738,820

2
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 20-22. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 20 under appeal reads as follows:
20. A method for remotely controlling a device connectable to a
communication network, comprising the steps of:
checking whether new e-mail containing a predetermined signal
is stored at a provider by establishing a connection to the provider,
said predetermined signal being interpreted to carry out a
predetermined procedure to control said device;
receiving from said provider an e-mail containing said
predetermined signal;
extracting said predetermined signal from said received e-mail;
and
controlling said device on the basis of said extracted
predetermined signal.

Rejections
The Examiner rejected claims 20-22 under 35 U.S.C. § 251 as being
an improper recapture of broadened claimed subject matter surrendered in
the application for the patent upon which the present reissue is based.
The Examiner rejected claims 20-22 under 35 U.S.C. § 102(e) as
being anticipated by Treyz (US 6,678,215 B1). 3

3 Separate patentability is not argued for claim 22.
Appeal 2013-000946
Application 12/965,121
Patent 6,738,820

3
Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claims
20-22 under § 251 because:
[T]he arguments presented by appellant in the paper filed
August 24, 2003 repeat all of the limitations of application
claim 1 and argue that Rakib does not disclose or suggest all
of these limitations. Such arguments do not create all of the
claimed limitations as surrender generating limitations. Nor
is it proper for the Examiner to pick and choose among all of
the claim limitations argued by appellant only those which
the Examiner wishes to characterize as a surrender
generating limitation.
(App. Br. 11).
2. Appellant contends that the Examiner erred in rejecting claim 20
under § 102(e) because “[n]owhere does the e-mail described by
Treyz contain a predetermined signal for controlling his alarm
clock radio.” (App. Br. 13).
3. Appellant also contends that the Examiner erred in rejecting
claim 20 under § 102(e) because “[n]or does Treyz extract that
predetermined signal from the received e-mail for ‘controlling said
device on the basis of said extracted predetermined signal.’” (App.
Br. 13).
4. Appellant contends that the Examiner erred in rejecting claim 21
under § 102(e) because “Treyz does not establish a connection
with an e-mail buffer, as recited by dependent claim 21.” (App.
Br. 15).

Appeal 2013-000946
Application 12/965,121
Patent 6,738,820

4
ANALYSIS
We have reviewed the Examiner’s above rejection in light of
Appellant’s arguments that the Examiner has erred.
As to above contention 1, we agree with Appellant’s conclusion. The
recapture rule prevents a patentee from regaining through reissue the subject
matter that he surrendered in an effort to obtain allowance of the original
claims. See Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 995 (Fed. Cir.
1993). The essence of the Applicant’s arguments during the original
prosecution was that the Rabik reference lacked any relevance to any aspect
of the original claim. We agree. We see no basis in equity to hold that there
was surrender where, as here, an objective observer would recognize that the
rejection of the original claim was defective on its face.
As to above contentions 2 and 3, we disagree with Appellant’s
conclusions. We agree with the Examiner’s analysis of “audio attachments”
spanning pages 7-8 of the Answer. Appellant asserts that “[t]he simple
playback of a radio program or an e-mail is not ‘controlling’ the clock radio
on the basis of the audio e-mail message.” (App. Br. 15). We do not see that
Appellant sets forth a basis for this assertion. Our review of Appellant’s
Specification finds no definition of “control” that would preclude a simple
control function such as the playback of an e-mail’s audio attachment.
As to above contention 4, we disagree with Appellant’s conclusion.
We agree with the Examiner’s analysis at page 8 of the Answer.
Appeal 2013-000946
Application 12/965,121
Patent 6,738,820

5

CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 20-22 under § 251.
(2) The Examiner has not erred in rejecting claims 20-22 under
§ 102(e).
(3) Claims 20-22 are not patentable.

DECISION
The Examiner’s rejection of claims 20-22 under 35 U.S.C. § 251 is
reversed.
The Examiner’s rejection of claims 20-22 under 35 U.S.C. § 102 is
affirmed.

AFFIRMED

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