Ex Parte Kim et alDownload PDFPatent Trial and Appeal BoardDec 28, 201613122304 (P.T.A.B. Dec. 28, 2016) Copy Citation 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. 13/122,304 04/01/2011 Si-Baek Kim 0202-0576 7601 12/30/201668103 7590 Jefferson IP Law, LLP 1130 Connecticut Ave., NW, Suite 420 Washington, DC 20036 EXAMINER LAU, HOI CHING ART UNIT PAPER NUMBER 2682 NOTIFICATION DATE DELIVERY MODE 12/30/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): u sdocketing @ j effersonip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SI-BAEK KIM and EUNG-MOON YEOM Appeal 2015-008101 Application 13/122,304 Technology Center 2600 Before BRUCE R. WINSOR, JEREMY J. CURCURI, and KARA L. SZPONDOWSKI, Administrative Patent Judges. SZPONDOWSKI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—20, which constitute all the claims pending this application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2015-008101 Application 13/122,304 STATEMENT OF THE CASE Appellants’ invention is directed to determining the presence state of a counterpart communication device without executing a separate program. Abstract. Claims 1 and 5, reproduced below, are representative of the claimed subject matter: 1. A communication apparatus for outputting state information, the communication apparatus comprising: a state information manager configured to transmit a phone number of a counterpart communication apparatus to a state information server to register the counterpart communication apparatus, to receive user state information of the registered counterpart communication apparatus from the state information server, and to output the received user state information of the registered counterpart communication apparatus, wherein the user state information comprises current communication activity information of the registered counterpart communication apparatus, and wherein the user state information of the counterpart communication apparatus is determined by a user input. 5. A communication apparatus for providing state information, the communication apparatus comprising: a state information manager configured to receive a user input, to determine user state information of the communication apparatus according to the user input, and to transmit the determined user state information to a state information server, wherein the determined user state information is provided to a counterpart communication apparatus by the state information server, and wherein the counterpart communication 2 Appeal 2015-008101 Application 13/122,304 apparatus transmits a phone number of the communication apparatus to the state information server, wherein the determined user state information comprises current communication activity information of the user of the communication apparatus, and wherein the communication apparatus is in an active state. REJECTIONS Claims 5, 7, 12, and 14 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 1—20 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. Claims 5, 6, 7, 12, 13, 14, 16, 17, 19, and 20 stand rejected under 35 U.S.C. § 112, second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. ANALYSIS 35 U.S.C. § 112, f 1, Rejections of Claims 5, 7, 12, and 14 The Examiner finds claim 5 fails to comply with the written description requirement because the limitation “the counterpart communication apparatus transmits a phone number of the communication apparatus to the state information server” is not supported by the Specification. Final Act. 4. Rather, the Examiner finds the Specification describes that the communication apparatus can perform the user registration 3 Appeal 2015-008101 Application 13/122,304 process by receiving a number of a counterpart communication apparatus from a user of the communication apparatus and then transmitting the number to the state information server. Final Act. 3; Ans. 3—7. In other words, the Examiner finds the communication apparatus, not the counterpart communication apparatus, performs the transmitting. Ans. 3—7. For the same reasons, the Examiner finds claims 7, 12, and 14, which recite a similar limitation, do not comply with the written description requirement. Final Act. 5—6. Appellants contend “operation 205 of FIG. 2 states that the communication apparatus #1 (or the counterpart communication apparatus) transmit user information to state information server.” App. Br. 8; see also Reply Br. 3^4. Appellants further contend Figure 5 and paragraphs 51 and 81 describe the recited limitation. App. Br. 8—9; see also Reply Br. 4. Appellants also acknowledge the Specification does not explicitly describe a phone number, but point to paragraph 51, which recites “a number,” and asserts one of ordinary skill in the art would understand this teaches a phone number. Reply Br. 3. Finally, Appellants contend “the term‘counterpart’ simply indicates that communication apparatus #1 is the counterpart of communication apparatus #2 and that communication apparatus #2 is the counterpart of communication apparatus #1.” Reply Br. 3; see also Reply Br. 4. We are persuaded by Appellants’ arguments. The written description requirement is met when the specification “conveys to those skilled in the art that the inventor had possession of [and ‘actually invented’] the claimed subject matter.” AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Although the written description requirement 4 Appeal 2015-008101 Application 13/122,304 can be satisfied by a precise description of what is claimed in the subject matter, an exact depiction of the claimed subject matter is not necessary to satisfy that requirement. See, e.g., Koito Mfg. Co. v. Turn—Key’—Tech., LLC, 381 F.3d 1142, 1154 (Fed. Cir. 2004). Appellants describe a communication apparatus and a counterpart communication apparatus. Spec. H 2, 33. Although we agree with the Examiner that the communication apparatus and the counterpart communication apparatus are separate devices (Ans. 5, 8), both devices are the described communication apparatus and are merely counterparts to each other, no different than if they had been described as a first communication apparatus and a second communication apparatus. Although Figure 2 describes operation from the perspective of a communication apparatus to register counterpart users whose current states are to be detected (a counterpart communication apparatus) (Spec. 1 51), we find such disclosure reasonably conveys possession of the reverse scenario, where the counterpart communication apparatus registers the communication apparatus as its counterpart user whose current state is to be detected. We also agree Appellants’ description of a “number” reasonably conveys possession of a phone number. See Spec. 133 (describing communication apparatus as including a cellular phone); Fig. 6. Accordingly, we do not sustain the 35 U.S.C. § 112, first paragraph, rejections of claims 5,1, 12, and 14. 5 Appeal 2015-008101 Application 13/122,304 35 U.S.C. § 112, If 2 Rejections of Claims 1—4, 8—11, 15, and 18 Claims 1—4 and 15, Indefiniteness The Examiner concludes the claim limitation “the user state information of the counterpart communication apparatus is determined by a user input,” as recited in independent claim 1, is indefinite because: a) it is not clear which component (the state information server or the communication apparatus, or even the counterpart communication apparatus) performs such determination of the user state information since the claim has recited 1) the state information of the communication apparatus receive and output the user state information, 2) the state information server is configured to transmit the user state information of the counterpart communication apparatus, 3) the counterpart communication apparatus is associated with user state information. b) it is not clear the specific location (at the state information server or the communication apparatus, or even the counterpart communication apparatus) of the user input in order to perform the determination function for the user state information; is the user input is generated locally or remotely? Final Act. 6—7; see also Ans. 12—19. Appellants contend “[a] user is present at the communication apparatus and another user is present at the counterpart communication apparatus.” App. Br. 11. According to Appellants, “through an input unit. . . at the counterpart communication apparatus, the user makes a user input upon which the user state information of the registered counterpart communication apparatus is determined by the registered counterpart communication apparatus.” Id., citing Spec. 144 and Fig. 1, element 120. Appellants further contend “the specific location of the user input is at the counterpart communication apparatus[.]” App. Br. 11. 6 Appeal 2015-008101 Application 13/122,304 The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). In determining whether a claim is indefinite, the claim’s language must be analyzed, not in a vacuum, but in light of the content of the particular application disclosure, the teachings of prior art, and the claim interpretation that would be given by one possessing the ordinary level of skill in the pertinent art at the time the invention was made. In re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009) (citing MPEP § 2173.02). Moreover, “the context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms.” Phillips v. AWHCorp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (enbanc) (citing ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003). Appellants’ claim 1 describes “[a] communication apparatus ... the communication apparatus comprising . . .a state information manager . . . wherein the user state information of the counterpart communication apparatus is determined by a user input.” Claims App’x. Although Appellants contend the user makes a user input at the counterpart communication apparatus, and the counterpart communication apparatus determines the user state information based upon such input, such argument is not commensurate with the scope of the claim language or the content of Appellants’ Specification. For example, paragraph 44 of Appellants’ Specification describes using information input via the input unit to detect user information to be registered, not to determine user state information. We agree with the Examiner that detecting user information to be registered 7 Appeal 2015-008101 Application 13/122,304 is not the same as determining user state information by a user input. See Ans. 14. Moreover, Appellants’ Specification distinguishes between user information used for the registration process and user state information. E.g., Spec. 45, 51—53. Paragraph 43 of Appellants’ Specification describes that “state information manager 110 allows the state information detector 114 to determine the state of a user.” However, per the language in claim 1, the state information manager is part of the claimed communication apparatus, not the counterpart communication apparatus, which Appellants’ argue is making such a determination. Even assuming a second state information manager in the counterpart communication apparatus, Appellants’ Specification simply states “[t]he counterpart communication apparatus determines (524) a state of a user by periodically monitoring (522) the user state in order to perform the process for providing the state information.” Spec. 179. In determining whether a claim is indefinite, “we employ a lower threshold of ambiguity when reviewing a pending claim for indefiniteness than those used by post-issuance reviewing courts.” Ex parte Kenichi Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). Our precedential Miyazaki decision “hold[s] that if a claim is amenable to two or more plausible claim constructions, the USPTO is _ in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35U.S.C. § 112, second paragraph, as indefinite.” Id. Here, we agree with the Examiner that one of ordinary skill in the art would be unable to determine the metes and bounds of the claim, as it is currently drafted. 8 Appeal 2015-008101 Application 13/122,304 Accordingly, we sustain the Examiner’s 35 U.S.C. § 112,1i 2, rejection of claims 1—4 and 15. Claims 8—11, 18, Indefiniteness The Examiner concludes the claim limitations “the user state information of the counterpart communication apparatus is determined by a user input” and “receiving user state information of the registered counterpart communication apparatus” are indefinite for similar reasons as with respect to claim 1. Final Act. 11—12. In addition, the Examiner concludes: c) is the claimed determination of “user state information” in response to method of 1) the receiving method at the communication apparatus or 2) the outputting method at the communication apparatus after receiving method or 3) the inherently transmitting method from the state information server or the counterpart communication apparatus? d) it is not clearly if the received user state information of the register counterpart communication apparatus is generated by the register counterpart communication or from the state information server? Final Act. 11—12. Appellants present the same arguments as with respect to claims 1—4 and 15, discussed above. App. Br. 13.1 Accordingly, for the same reasons as set forth above, we sustain the Examiner’s 35 U.S.C. § 112, 12 rejection of claims 8—11 and 18. 1 Appellants incorrectly assert the disputed limitation is “the counterpart communication apparatus transmits a phone number of the communication apparatus to the state information server.” (Compare App. Br. 13 with Final Act. 11-12.) 9 Appeal 2015-008101 Application 13/122,304 35 U.S.C. § 112, f 2 Rejection of Claims 5, 6, 7, 12, 13, 14, 16, 17, 19, and 20, Unclaimed Essential Matter and Indefiniteness With regard to the limitation “the counterpart communication apparatus transmits a phone number of the communication apparatus to the state information server,” as recited in claim 5, the Examiner concludes the specific operational relationship and structural association for the limitation is not clear, and thus the claim omits essential structural cooperative relationships of element. Final Act. 7, citing MPEP § 2172.01. The Examiner concludes: It merely discloses the counterpart communication apparatus is associated with a phone number of the communication apparatus, but fails to disclose: 1) how can the counterpart communication apparatus obtain[] such phone number of the communication apparatus, for example, is the phone number [] prestored at the counterpart communication apparatus or received from a remote device or input locally at the counterpart communication apparatus (the Specification fail[s] to explicitly disclose the counterpart communication apparatus transmits a phone number of the communication apparatus to the state information server or any storage of the phone number of the communication apparatus at the counterpart communication apparatus)? 2) the operational relationship or the intended function to transmit the phone number of the communication apparatus to the state information server, for example, a) to register the communication apparatus at the state information server, b) what is triggering the counterpart communication apparatus in order to transmit such phone number of the communication apparatus to the state information server, for example, based on the received determined use state information provided by the state server? 10 Appeal 2015-008101 Application 13/122,304 Final Act. 7—8. The Examiner also finds the same limitation is indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. Final Act. 8. Appellants respond by referring to Appellants’ arguments with respect to the written description objection (as described supra), which consisted of citations to Appellants’ Specification and drawings. App. Br. 12. Although Appellants’ arguments provide written description support for the contested limitation (see discussion supra), we note the rejection is for indefmiteness (including unclaimed essential matter) under 35 U.S.C. §112, second paragraph. Based on the record before us, weighing Appellants’ arguments against the Examiner’s reasons, we concur with the Examiner’s conclusion that claim 5 is indefinite. In reaching our conclusion, we emphasize that the disputed limitation is not clearly connected with the rest of the claim because the disputed limitation relates to the “counterpart communication apparatus” which is not positively recited in the claim to “a communication apparatus.” Accordingly, we are constrained to sustain the Examiner’s 35 U.S.C. § 112,12 rejection of claim 5. The Examiner has made similar rejections with respect to claims 6, 7, 12—13, 14, 16, 17, 19, and 20. Final Act. 8—10, 12—15. Appellants present the same arguments as with respect to claim 5, discussed supra. App. Br. 12—14. Accordingly, we likewise are constrained to sustain the Examiner’s 35 U.S.C. § 112,12 rejection of claims 6, 7, 12—13, 14, 16, 17, 19, and 20. 11 Appeal 2015-008101 Application 13/122,304 35 U.S.C. § 112, If 2 Rejections of Claims 15—20 The Examiner concludes there is insufficient antecedent basis for the limitation “the registered” in claims 15—20. Final Act. 15. We note the Claims Appendix submitted by Appellants (App. Br. 20-21) appears to include amended claims 15—20, which no longer recite the “the registered” limitation, even though the Examiner did not enter the Amendments filed by Appellants on October 14, 2014. (See Advisory Action, November 3, 2014). Accordingly, as the Amendments have not been entered and the rejection has not been withdrawn, on this record, we sustain the Examiner’s 35 U.S.C. § 112,12 rejection of claims 15—20. DECISION The Examiner’s 35 U.S.C. § 112,11 rejections of claims 5, 7, 12, and 14 are reversed. The Examiner’s 35 U.S.C. § 112,12 rejections of claims 1—20 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation