Ex Parte 6163816 et alDownload PDFPatent Trial and Appeal BoardAug 24, 201595001420 (P.T.A.B. Aug. 24, 2015) 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. 95/001,420 08/18/2010 6163816 RI1321366-816 7275 93143 7590 08/24/2015 Herskovitz & Associates, PLLC 2845 Duke Street Alexandria, VA 22314 EXAMINER ESCALANTE, OVIDIO ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 08/24/2015 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 ____________ HTC CORPORATION Requester v. FLASHPOINT TECHNOLOGY, INC. Patent Owner ____________ Appeal 2014-004231 Reexamination Control 95/001,420 Patent 6,163,816 Technology Center 3900 ____________ Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and JOSIAH C. COCKS, Administrative Patent Judges. COCKS, Administrative Patent Judge. NEW DECISION 37 C.F.R. § 41.77(f) Appeal 2014-004231 Reexamination Control 95/001,420 Patent 6,163,816 2 I. INTRODUCTION A. Summary In an earlier Decision issued in Appeal 2012-005564 and mailed September 17, 2012 (“’564 Decision”), we reversed the Examiner’s decision not to adopt certain grounds of rejection proposed by Third Party Requester, HTC Corporation (“HTC”), to claims of U.S. Patent 6,163,816 (“the ’816 patent”). In particular, those grounds of rejection were the following: (A) The anticipation of claims 1–17 under 35 U.S.C. § 102(b) by TWAIN; 1 (B) The anticipation of claims 1–3, 5–11, and 13–17 under 35 U.S.C.§ 102(b) by Ueno; 2 (C) The unpatentability of claims 1–17 under 35 U.S.C. § 103(a) over Ueno and Steinberg; 3 (D) The unpatentability of claims 1–3, 5–11, and 13–17 under 35 U.S.C. § 103(a) over Ueno and IEEE 1394 DCS; 4 and (E) The unpatentability of claims 1–3, 5–11, and 13–17 under 35 U.S.C. § 103(a) over Ueno and Thurlo. 5 1 A document providing instruction in connection with a “TWAIN toolkit” and designated as “TWAIN - Release v1.6-February 5, 1996” in footers contained within the document. 2 U.S. Patent 5,479,206, which issued Dec. 26, 1995. 3 U.S. Patent 6,006,039, which issued Dec. 21, 1999. 4 A document from the 1392 Trade Association titled “1394-based Digital Camera Specification,” Version 1.04, August 9, 1996 providing instruction as to use of the “IEEE 1394-1995” camera-to-PC interconnect. 5 U.S. Patent 5,835,772, which issued on Nov. 10, 1998. Appeal 2014-004231 Reexamination Control 95/001,420 Patent 6,163,816 3 See ’564 Decision 15. By operation of 37 C.F.R. § 41.77(b), the reversal of the above-noted rejections constituted the entry of new grounds of rejection applied to the claims. Patent Owner, Flashpoint Technology Inc. (“Flashpoint”), was given the option of either reopening prosecution or requesting rehearing. Id. at 16. Flashpoint elected to reopen prosecution. See “Response Reopening Prosecution Under 37 CFR § 41.77(b)(1) and Proposed Amendment” filed October 17, 2012 (“PO Resp.”). In that Response, Flashpoint sought amendment of claims 1–17, and entry of new claims 18–85. HTC filed responsive comments under 37 C.F.R. § 41.77(c) on November 16, 2012 (“41.77(c) Comments”). As a part of those 41.77(c) Comments, HTC proposed additional prior art grounds of rejection to amended claims 1–17, and also proposed rejections of those claims under 35 U.S.C. § 112, first paragraph and second paragraph. Ultimately, on March 15, 2013, an Administrative Patent Judge issued an “Order Remanding Inter Partes Reexamination Under 37 C.F.R. § 41.77(d) to the Examiner.” In that Order, the Judge authorized the amendment of claims 1–17, but denied entry of new claims 18–85. The Judge also instructed the Examiner to consider the grounds of rejection to claims 1–17 that were proposed by HTC as a part of its 41.77(c) Comments. On May 20, 2013, the Examiner issued an “Examiner’s Determination Under 37 [CFR] 41.77(d)” (“Examiner Determination” or “Ex’r Determ.”) In that Examiner Determination, the Examiner determined that various prior art rejections of claims 1–17 should be maintained, but that the proposed rejections under 35 U.S.C. § 112 should not be maintained. Appeal 2014-004231 Reexamination Control 95/001,420 Patent 6,163,816 4 On June 20, 2013, HTC filed “Comments Under 37 CFR 41.77(E) In Response to Examiner’s Decision Under 37 CFR 41.77(D)” (“41.77(e) Comments”). In those 41.77(e) Comments, HTC requests that the Board adopt the rejections that were proposed under 35 U.S.C. § 112. See 41.77(e) Comments 7. Flashpoint filed no comments under § 41.77(e). Pursuant to 37 C.F.R. § 41.77(f), the proceeding has been returned to the Board so that we may reconsider the matter and issue a new decision. 6 We affirm the Examiner’s determinations set forth in the Examiner’s Determination pertaining to the grounds of rejections proposed for claims 1– 17 of the ’816 patent. B. Illustrative Claim Claim 1 is illustrative of the claimed subject of the ’816 patent, and is reproduced below in its amended form: 1. (Amended) A system for retrieving capability parameters in a hand held electronic device comprising: a series of capability parameter storage locations coupled to said electronic device for containing value sets corresponding to said capability parameters, wherein said one or more of said series of capability parameter storage locations each includes: a minimum value location containing a minimum capability parameter value; 6 37 C.F.R. § 41.77(f) reads: (f) After submission of any comments and any reply pursuant to paragraph (e) of this section, or after time has expired, the proceeding will be returned to the Board which shall reconsider the matter and issue a new decision. The new decision is deemed to incorporate the earlier decision, except for those portions specifically withdrawn. Appeal 2014-004231 Reexamination Control 95/001,420 Patent 6,163,816 5 a maximum value location containing a maximum capability parameter value; a factory defaults location containing a factory default value; and a list-of-integers location containing a capability parameter list; a capability command for retrieving said value sets from said capability parameter storage locations; [and] a parameter manager device coupled to said electronic device for executing said capability command for retrieving said value sets corresponding to said capability parameters wherein the value sets describe the functional capability of the electronic device, and wherein the value sets include a list of integers and a list of corresponding string variables. PO Resp. 18–19. C. The Proposed Rejections Under 35 U.S.C. § 112 HTC contends that the added feature of “wherein the value sets include a list of integers and a list of corresponding string variables” added to each of claims 1, 9, 15, and 16 are not supported by the Specification of the ’861 patent as required by 35 U.S.C. § 112. 41.77(c) Comments 4–5. HTC also contends the following: Moreover, Claim 1 fails to meet the requirements under 35 USC 112, First and/or Second Paragraphs because the claim is an apparatus claim and recites "a capability command for retrieving said value sets from said capability parameter storage locations" as a limitation, which does not particularly point out and distinctly claim the subject matter corresponding to an apparatus. Moreover, Claims 1, 9, 15 and 16 fail to meet the requirements under 35 USC 112, First and/or Second Paragraphs because the claims recite that each parameter storage location includes a minimum value location, a Appeal 2014-004231 Reexamination Control 95/001,420 Patent 6,163,816 6 maximum value location, a factory defaults location, and a list of integers location. 41.77(c) Comments 5. The Examiner determined that “amended claims 1–17 should not be rejected under 35 U.S.C. 112 1 st or 2 nd paragraph as maintained by the Requester.” Ex’r Determ. 7. D. The Proposed Prior Art Rejections As summarized by HTC in its 41.77(e) Comments, the Examiner determined that the following twenty-one prior art rejections under 35 U.S.C should be maintained: 1. Claims 1–17 are rejected under 35 U.S.C. § 102(b) as being anticipated by TWAIN; 2. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over TWAIN; 3. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over TWAIN in view of Kernighan; 7 4. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over TWAIN in view of Howes; 8 5. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over TWAIN in view of Ishida; 9 6. Claims 1–3,5–11 and 13–17 are rejected under 35 U.S.C. § 102(b) as being anticipated by Ueno; 7. Claims 1–17 are rejected under 35 U.S.C. 103(a) as being unpatentable over Ueno and Steinberg; 7 Brian W. Kernighan and Dennis M. Ritchie, The C Programming Language. AT&T Bell Laboratories, Murray Hill, New Jersey (2 nd Ed. 1998). 8 U.S. Patent 4,403,303, which issued Sep. 6, 1983. 9 EP 0 647 900 A1, which published April 12, 1995. Appeal 2014-004231 Reexamination Control 95/001,420 Patent 6,163,816 7 8. Claims 1–3, 5–11 and 13–17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ueno and IEEE 1394 DCS; 9. Claims 1–3, 5–11 and 13–17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ueno and Thurlo; 10. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ueno and Kernighan; 11. Claims 1–17 are rejected under 35 U.S.C. 103(a) as being unpatentable over Ueno, Steinberg, and Kernighan; 12. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ueno, IEEE 1394 DCS and Kernighan; 13. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ueno, Thurlo and Kernighan; 14. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ueno and Howes; 15. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ueno, Steinberg and Howes; 16. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ueno, Steinberg and Howes; 17. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ueno, Thurlo and Howes; and 18. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ueno, Steinberg and Ishida; 19. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ueno, Steinberg and Ishida; 20. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ueno, IEEE 1394 DCS and Ishida; and 21. Claims 1–17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ueno, Thurlo and Ishida. See 41.77(e) Comments 2–3. Appeal 2014-004231 Reexamination Control 95/001,420 Patent 6,163,816 8 II. ANALYSIS A. The Proposed Rejections Under 35 U.S.C. § 112 The Examiner laid out in detail where he believes that the added feature “wherein the value sets include a list of integers and a list of corresponding string variables” finds support in the Specification of the ’816 patent, and satisfies the requirements of 35 U.S.C. § 112. In that respect pointing, in particular, to column 8, lines 1–8, and Figure 8 A. Ex’r Determ. 4–7. In particular, the Examiner explains the following: As set forth in the '816 patent, col. 8, lines 1–8: In the specific case of a capability parameter in "list of values" format, the value set for the capability parameter contains a variable (of type unsigned integer) called count 810 and a value list 812 which includes a list of integers and corresponding string variables. In the FIG. 8A example, "0" is associated with "Off", "1" is associated with "Auto", "2 is associated with "Fill", "3" is associated with "Slave", and "4" is associated with "Sync". As described in the patent specification a "value set" includes a variable called a count and a value list which includes a list of integers and corresponding string variables. The specification states e.g., that "1" is associated with "Auto" and "2" is associated with "Fill". Thus, the examiner considers that the newly added limitation associates a list of integers with corresponding string variables. Id. at 4. Thus, the Examiner concludes that the disclosure in the ’816 patent of “a list of integers and corresponding string variables,” i.e., 0–4 and the Appeal 2014-004231 Reexamination Control 95/001,420 Patent 6,163,816 9 listing of associated variables: “Off,” “Auto,” “Fill,” “Slave,” and “Sync,” provide adequate support for the above-noted feature added to the claims. We agree. Although HTC generally discounts the content of the Specification, including that reproduced above, as accounting for “‘a list of integers and a list of corresponding string variables’” (41.77(e) Comments 4–6), HTC does not explain adequately the basis of its position. In that regard, we have considered HTC’s arguments, but are not persuaded that “claims 1–17 should be rejected for failing to meet the requirements under 35 U.S.C. § 112, First and/or Second Paragraphs.” Id. at 6. Accordingly, we affirm the Examiner’s decision not to reject claims 1–17 under 35 U.S.C. § 112. B. The Proposed Prior Art Rejections As noted above, HTC proposed twenty-one grounds of rejection to amended claims 1–17, including five based primarily on TWAIN, and sixteen based primarily on Ueno. The Examiner recommends that those grounds be maintained. Ex’r Determ. 7–32. In making that recommendation, the Examiner explains in detail where all the features of claims 1–17 are found in the prior art and, for those grounds premised on obviousness, why a person of ordinary skill in the art would have had reason to combine the teachings of the prior art. In reviewing the Examiner’s Determination, and the underlying prior art on which it relies, we do not discern error on the part of the Examiner. Flashpoint also did not file any comments pursuant to 37 C.F.R. § 41.77(e), although it could have. In that regard, Flashpoint did not avail Appeal 2014-004231 Reexamination Control 95/001,420 Patent 6,163,816 10 itself of its opportunity to explain to the panel why or how there is error in the Examiner’s Determination. 10 On the record before us, we are not persuaded that there is reason to disrupt the Examiner’s recommendations to maintain the twenty-one rejections based on the prior art. Accordingly, we affirm the Examiner’s determination that the prior art grounds should be maintained. III. CONCLUSION For the foregoing reasons, we conclude the following: The Examiner’s determination that amended claims 1–17 should not be rejected under 35 U.S.C. § 112 is affirmed; and The Examiner’s determination that the twenty-one prior art rejections noted in this Decision should be maintained is affirmed. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this Decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must 10 We are cognizant of the paper filed on May 11, 2015 titled “Patent Owner’s Request for Reversal of Examiner’s Rejections” (“Request”). That paper was not filed within the time period for response or comments provided for by 37 C.F.R. 41.77, and is not properly before the panel in resolving this appeal. In any event, the Request simply sets forth that Flashpoint and HTC have entered into a “Settlement Agreement,” and that HTC will no longer participate in the appeal. Request 1–2. Flashpoint requests, on that basis alone, the “reversal of the Examiner’s rejections.” Id. The Board, however, is not bound by any settlement agreement between the parties. The Appeal is ready for a new decision by the Board pursuant to 37 C.F.R. § 41.77(f). To the extent that the Request is a paper directed to the Board in some other capacity requesting relief, the Request is denied. Appeal 2014-004231 Reexamination Control 95/001,420 Patent 6,163,816 11 timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. Appeal 2014-004231 Reexamination Control 95/001,420 Patent 6,163,816 12 ack PATENT OWNER: HERSKOVITZ & ASSOCIATES, LLC 2845 DUKE STREET ALEXANDRIA, VA 22314 THIRD-PARTY REQUESTER: PEKINS COIE LLP P.O. BOX 1247 SEATTLE, WA 98111-1247 Copy with citationCopy as parenthetical citation