Ex Parte Komaki et alDownload PDFPatent Trial and Appeal BoardOct 25, 201210308142 (P.T.A.B. Oct. 25, 2012) 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. 10/308,142 12/03/2002 Kaoru Komaki SON-0547US 1906 21254 7590 10/26/2012 MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC 8321 OLD COURTHOUSE ROAD SUITE 200 VIENNA, VA 22182-3817 EXAMINER SRIVASTAVA, VIVEK ART UNIT PAPER NUMBER 2423 MAIL DATE DELIVERY MODE 10/26/2012 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 KAORU KOMAKI and SHINICHI TAKAHASHI ____________________ Appeal 2010-003798 Application 10/308,142 Technology Center 2400 ____________________ Before DEBRA K. STEPHENS, JUSTIN BUSCH, and HUNG H. BUI, Administrative Patent Judges. Per Curiam. DECISION ON APPEAL Appeal 2010-003798 Application 10/308,142 2 Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final rejection of claims 1-50. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Introduction According to Appellants, the invention relates to a communication system, “method, action execution apparatus, and program in the action execution apparatus, which execute user's desired action (a preset action for, e.g., delivering a message for a contact terminal that can contact the user) for a user who cannot reply to a message addressed to him/her” (Spec. 1, §Field of the Invention). STATEMENT OF THE CASE Exemplary Claim Claim 9 is an exemplary claim and is reproduced below: 9. A communication system comprising an action execution apparatus, said action execution apparatus comprising: a message export section which exports a message to a user terminal through a communication network on the basis of a preset export condition; a reply confirming section which receives from the user terminal through the communication network a reply to the message exported by said message export section, and confirms the reply; and an action executing section which executes a preset action when said reply confirming section confirms no reply, wherein the user terminal and said action execution apparatus are connected through the communication network. Appeal 2010-003798 Application 10/308,142 3 References Suzuki US 5,978,667 Nov. 2, 1999 Rejections Claims 1-50 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Suzuki.1 ISSUE 35 U.S.C. § 102(e): claims 1-50 Appellants argue their invention is not anticipated by Suzuki (App. Br. 11-16). Specifically, Appellants contend Suzuki does not disclose “that respective cell stations transmit commands and wait for a reply from the portable station” (App. Br. 12). Appellants also argue Suzuki does not disclose “message export section which exports a message to a user terminal through a communication network on the basis of a preset export condition” (App. Br. 12 and 13). Issue: Has the Examiner erred in finding Suzuki discloses a message export section which exports a message to a user terminal through a communication network on the basis of a preset export condition as recited in claim 9? 1 Appellants appear to have inadvertently cancelled claims 1-8 and 49-50 in their Appeal Brief filed July 25, 2007. Based on the Reply Brief filed August 3, 2009, it appears this was not their intention (Reply Br. 1). Thus, we consider claims 1-8 and 49-50 in this Appeal. Appeal 2010-003798 Application 10/308,142 4 ANALYSIS We agree with Appellants’ argument that the Examiner has not shown Suzuki discloses exporting a message on the basis of a preset export condition (App. Br. 12-13 and Reply Br. 2-3). The Examiner has not set forth with specificity the disclosure in Suzuki that describes a preset export condition. Although we agree Suzuki discloses exporting a message, the Examiner has not shown, nor do we readily find, Suzuki describes exporting the message on the basis of a preset export condition, as recited in claim 9. As such, we would have to speculate to bridge the gap between the cited disclosure and the claim limitation. We will not speculate. Therefore, we find Suzuki does not disclose the invention as recited in independent claim 9 and independent claims 1, 17, 25, 33, and 41 which recite the commensurate limitation. Dependent claims 2-8, 10-16, 18-24, 26-32, 34-40, and 42-50 stand with their respective independent claims. Accordingly, the Examiner erred in finding Suzuki discloses the invention as recited in claims 1-50. Therefore, the Examiner erred in rejecting claims 1-50 under 35 U.S.C. § 102(e) for anticipation by Suzuki. DECISION The Examiner’s rejection of claims 1-50 under 35 U.S.C. § 102(e) as being anticipated by Suzuki is reversed. REVERSED msc Copy with citationCopy as parenthetical citation