Ex Parte Otaka et al

Patent Trial and Appeal BoardMar 1, 2016

13535051 (P.T.A.B. Mar. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/535,051 22913 7590 Workman Nydegger 60 East South Temple Suite 1000 06/27/2012 03/03/2016 Salt Lake City, UT 84111 FIRST NAMED INVENTOR OsamuOTAKA 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 050547A 1019 EXAMINER HONG, DUNG ART UNIT PAPER NUMBER 2643 NOTIFICATION DATE DELIVERY MODE 03/03/2016 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): Docketing@wnlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OSAMU OT AKA, MINEKO MOROTO, NORIOKI WATANABE, TOSHIHIKO MURAKAMI, SATOSHI OGAWA, and NAOMI NISHIKATA Appeal2014-003461 Application 13/535,051 Technology Center 2600 Before KRISTEN L. DROESCH, TERRENCE W. McMILLIN, and MELISSA A. RAAP ALA, Administrative Patent Judges. RAAP ALA, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 32 and 33. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. Appeal2014-003461 Application 13/535,051 REPRESENTATIVE CLAIM Claim 32 is representative of the subject matter on appeal: 32. A method for downloading an application to a mobile communications terminal, the terminal comprising Email confidential information having access protection, the method compnsmg: instructing the download of the application at the mobile communications terminal; retrieving information representing whether the application is expected to access the Email confidential information having access protection, prior to downloading the application; determining, in the mobile communications terminal, whether download of the application is permitted based on which of said Email confidential information the application is expected to access; and downloading the application to the mobile communications terminal, if download of the application is permitted. REJECTIONS ON APPEAL Claims 32 and 33 stand rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of Otaka (US 8,406,734 B2; issued Mar. 26, 2013). 1 Claims 32 and 33 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination ofBeresin (US 2004/0158829 Al; published 1 The Examiner withdrew the provisional obviousness type double patenting rejection and entered a non-provisional double patenting rejection because of the issuance of the cited patent. Ans. 3-5. 2 Appeal2014-003461 Application 13/535,051 Aug. 12, 2004) and Kashito (US 2002/0116401 Al; published Aug. 22, 2002). ISSUES Appellants' contentions present us with the following issues: A) Did the Examiner err in rejecting claims 32 and 33 on the grounds of nonstatutory obviousness-type double patenting? B) Did the Examiner err in finding the combined teachings of Beresin and Kashito teach or suggest "Email confidential information having access protection," as recited in claim 32? ANALYSIS We have reviewed the Examiner's rejections in consideration of Appellants' contentions. We disagree with Appellants' conclusions that the Examiner's rejections of the claims are in error. Issue A: Double Patenting Rejection Appellants contend the obviousness-type double patenting rejection is in error. In particular, Appellants argue that the PTO is estopped because the Examiner required election in the parent application, the claims did not materially change, and, thus, the rejection is contrary to 35 U.S.C. Â§ 121. App. Br. 10-11; Reply Br. 1. Appellants further "question whether a method claim can comprise double patenting of an apparatus claim." App. Br. 10. We are not persuaded by Appellants' arguments. A later claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. Eli Lilly & Co. v. Barr Labs., Inc., 251F.3d955, 968 (Fed. Cir. 2001). We disagree with Appellants' conclusory statement that a method claim cannot obviate the apparatus 3 Appeal2014-003461 Application 13/535,051 claims of the present application. The Examiner has set forth sufficient findings to establish the rejected claims are obvious over Otaka (Ans. 3-5). Furthermore, 35 U.S.C. Â§ 121 does not apply to remove a patent as a reference when the principle of consonance is violated. Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1579 (Fed. Cir. 1991); see also Manual of Patent Examining Procedure (MPEP) Â§ 804.01 (9th Ed., Mar. 2014). Consonance requires the line of demarcation that prompted the restriction requirement to be maintained. Gerber Garment Tech., Inc. v. Lectra Sys., Inc., 916 F.2d 683, 688 (Fed. Cir. 1990). In the Office Action of the parent Application 10/556,528 in which Examiner made the restriction requirement (mailed Mar. 5, 2010) ("Rest. Act."), the Examiner grouped the claims into "method and apparatus for determining whether an application is to access a predetermined resources ... "(Group I) and "method and apparatus for determining whether a mail application can access the mailing resource such as transmitting and receiving'' (Group II). Rest. Act. 2. We agree with the Examiner (Ans. 8) that the scope and content of claims 32 and 33 has changed in material respects compared to the original restricted claims 28- 29 (Group II) of the parent Application that led to the filing of this divisional application. Claim 28 was directed to a mailer application program, in contrast to claim 32 which is directed to a method for downloading an application and recites "retrieving information representing whether the application is expected to access the Email confidential information" (emphasis added). Compare claim 32 (App. Br. 16) with claim 28 (Spec. 69). Claim 32 and its dependent claim 33 have crossed the line of demarcation and are no longer consonant with the restriction requirement. 4 Appeal2014-003461 Application 13/535,051 Therefore, we are not persuaded by Appellant's arguments that the prohibition in Section 121 should apply to pending claims 32 and 33. For the reasons stated above, Appellants fail to persuade us of error in the double-patenting rejection. Accordingly, we sustain the nonstatutory obviousness-type double patenting rejection of claims 32 and 33. Issue B: Obviousness Rejection Appellants contend the combination of Beresin and Kashito, and in particular Kashito, does not teach the claimed "access protection" recited in claim 32. App. Br. 12-13; Reply Br. 2-3. Appellants argue the Examiner's interpretation of "access protection" is "far broader than anything suggested by the claim language, the Appellants' disclosure, or the prior art." Reply Br. 3--4. Appellants further argue the combination is improper because "the references teach oppositely and would not have been combined by the person of ordinary skill," and the rationale to support obviousness is not mentioned or applied. App. Br. 12-14. During prosecution, claims are given their broadest reasonable interpretation consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Examiner finds, and we agree, Kashito teaches prior to deleting an email (email confidential information), a user confirms deletion of data (access protection). Final Act. 7 (citing Kashito i-fi-f 111, 114). We agree with the Examiner that "access protection" can broadly, yet reasonably, encompass preventing deletion (not permitting delete access to the email). Thus, Appellants fail to persuade us that Kashito does not teach or suggest "Email confidential information with access protection." 5 Appeal2014-003461 Application 13/535,051 Appellants also fail to persuade us that the combination is improper. The Examiner finds modifying Beresin with Kashito is a simple substitution of one known element for another to obtain predictable results. Ans. 10-11. This is sufficient articulated reasoning to support the combination. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Furthermore, to teach away, a reference must "criticize, discredit, or otherwise discourage" investigation into the claimed solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellants do not provide sufficient argument or evidence to show that either reference teaches away from the combination. For the reasons stated above, Appellants fail to show reversible error. It is not our function to examine the claims in greater detail than argued, looking for patentable distinctions over the prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991). Accordingly, we sustain the 35 U.S.C. Â§ 103(a) rejection of claim 32 and its dependent claim 33, which is not separately argued. DECISION We affirm the Examiner's decision to reject claims 32 and 33. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 6