Ex Parte Alshinnawi et al

Patent Trial and Appeal Board

Aug 21, 2018

15145294 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/145,294 05/03/2016 Shareef F. Alshinnawi
127893 7590 08/23/2018
Streets Lawfirm, PC - Lenovo (Singapore) Pte. Ltd.
20319 Corbin Creek Drive
Cypress, TX 77433
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.
XRPS920160008-US-NP 7953
EXAMINER
YUN,EUGENE
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
j streets@streetsiplaw.com
jstreets@patent-law.cc
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAREEF F. ALSHINNA WI, JEFFREYS. HOLLAND,
BEJOY J. KOCHUPARAMBIL, and AP ARNA VALLURY
Appeal2018-002821
Application 15/145 ,294
Technology Center 2600
Before ROBERT E. NAPPI, ERIC S. FRAHM, and JOHN A. EV ANS,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-21. We have jurisdiction under 35 U.S.C.
§ 6(b ). We reverse.
The Examiner rejected claims 1-21 under 35 U.S.C. § 103 as being
unpatentable over Tsubokawa et al. (US 2012/0208602 Al; published Aug.
16, 2012; hereinafter "Tsubokawa") in view of Leung et al. (US
2010/0103116 Al; published April 29, 2010; hereinafter "Leung"). Final
Act. 2-6; Ans. 2---6. We have reviewed Appellants' arguments in the Briefs
1 According to Appellants, Lenovo Enterprise Solutions (Singapore) Pte.
Ltd. is the real party in interest. App. Br. 3.
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Application 15/145,294
(App. Br. 12-27; Reply Br. 4--27), the Examiner's rejection (Final Act. 2---6;
Ans. 2---6), and the Examiner's response (Ans. 7-14) to Appellants'
arguments.
Appellants disclose and claim the use of a first mobile computing
device that automatically and wirelessly transmits a notification to a second
mobile computing device when it detects that it has left the sleep state and is
closed. Spec. ,r,r 4--5, 13, 21, and 29-30, and 38; claims 1, 16, 17, and 21.
Appellants also disclose and claim the use of a second mobile computing
device that provides an alert to a user in response to receiving the wireless
notification from the first mobile computing device. Spec. ,r,r 6, 23, 36, and
39; claims 1, 16, 17, and 21.
Independent claims 1 and 17 are illustrative, and are reproduced
below with emphases added to key portions of the claims:
1. A method of a first mobile computing device,
compnsmg:
storing a wireless communication address of a second
mobile computing device; determining that the first mobile
computing device has left a sleep state and is in a
closed condition; and
automatically wirelessly transmitting a notification to the
second mobile computing device in response to determining
that the first mobile computing device has left the sleep
state and is in a closed condition.
17. A method of a second mobile computing device,
compnsmg:
receiving a wireless notification from a first mobile
computing device indicating that the first mobile computing
device has left a sleep state and is in a closed condition; and
providing an alert to a user of the second mobile
computing device in response to receiving the wireless
notification.
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Application 15/145,294
The Examiner determined that Leung teaches sending a wireless
notification and providing an alert to a user in response to a wireless
notification. Final Act. 2--4; Ans. 2--4. The Examiner relies on paragraph 98
of Leung which recites "pressing button 4902 when laptop computer 4900 is
in the closed-lid sleep mode, can ... sync an iPod or iPhone (not shown)
with laptop computer 4900" for the teaching of both the automatic wireless
notification as recited in claim 1, and similarly recited in independent claims
16 and 21, and providing an alert to a user as recited in independent claim
1 7. Ans. 7-9. However, we find no disclosure in Leung that supports the
Examiner's determination that Leung teaches automatically sending a
wireless notification or providing an alert to a user in response to a wireless
notification, as recited in independent claims 1, 16, 1 7, and 21, and as
similarly recited in remaining dependent claims 2-15 and 18-20.
Leung at paragraph 98 discloses a laptop 4900 having an invisible
button 4902 that, when pressed, can function as a closed-lid mode state
change button for either the laptop or an external component, sync the laptop
with an external device, or install software while the lid of the laptop
remains closed. However, unlike the limitations recited in the claims, Leung
does not automatically perform any actions, but instead requires a user to
press a button to initiate the syncing. In addition, Leung is silent as to an
alert being sent to the user when the devices are synced. We will not resort
to speculation or assumptions to cure the deficiencies in the Examiner's fact
finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Therefore, we concur with the Appellants' arguments (App. Br.
12-27; Reply Br. 4--27) that the Examiner erred in finding that the
combination of Tsubokawa and Leung teaches or suggests automatically
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Application 15/145,294
transmitting a wireless notification as recited in claim 1 and similarly recited
in independent claims 16 and 21, and providing an alert to a user as recited
in independent claim 17. Appellants in their Briefs (App. Br. 20-27; Reply
Br. 12-27) present additional issues for consideration, however, because we
are persuaded of error concerning the automatic wireless notification and the
providing of the alert, we do not reach the additional issues.
Based on the record before us, we find that the Examiner improperly
relied upon Leung to teach or suggest the disputed claim limitations. In
addition, we note that Tsubokawa does not remedy the above-noted
deficiencies in Leung. Therefore, the Examiner has erred in concluding that
the combination of Tsubokawa in view of Leung renders independent claims
1, 16, 17, and 21 unpatentable.
Accordingly, we do not sustain the Examiner's obviousness rejection
of independent claims 1, 16, 17, and 21, as well as claims 2-15 and 18-20
depending respectively therefrom.
CONCLUSION
Appellants have persuaded us of error in the Examiner's decision to
reject claims 1-21.
DECISION
The decision of the Examiner to reject claims 1-21 is reversed.
REVERSED
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