Ex Parte Antos

Patent Trial and Appeal Board

Feb 29, 2016

12187484 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/187,484 08/07/2008
7590 03/01/2016
Richard L. Sampson
SAMPSON & AS SOCIA TES, P.C.
50 Congress Street
Boston, MA 02109
FIRST NAMED INVENTOR
Jeffrey D. Antos
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.
1088.010 3120
EXAMINER
ABDIN, SHAHEDA A
ART UNIT PAPER NUMBER
2692
MAILDATE DELIVERY MODE
03/01/2016 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 JEFFREY D. ANTOS
Appeal2014-002638
Application 12/187,484
Technology Center 2600
Before MICHAEL J. STRAUSS, NABEEL U. KHAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 2-17. Claim 1 is canceled. We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b ).
We affirm-in-part.
THE INVENTION
The claims are directed to a self-contained, pocket-sized presentation
apparatus. Spec., Title. Claim 2, reproduced below, is representative of the
claimed subject matter:
Appeal2014-002638
Application 12/187,484
2. A self-contained, pocket-sized presentation apparatus
compnsmg:
a USB drive having a housing, a memory, a processor, a
USB plug configured for receipt within a USB receptacle of a
computer, and a protective cover configured for removable
engagement with the USB plug;
at least one user input device, a wireless transmitter, and a
power source, integrally disposed within the cover, the
transmitter being operatively engaged with the input device and
configured to selectively transmit a plurality of wireless signals
in response to selective user actuation of the input device;
a wireless receiver disposed within the housing and
operatively engaged with the USB drive;
the wireless receiver configured to receive and couple
wireless signals from the transmitter to the USB drive;
the USB drive configured to receive the wireless signals
from the wireless receiver, to selectively generate Page Up and
Page Down instructions responsive thereto, and to send the Page
Up and Page Down instructions via the USB plug;
the memory containing computer readable program code
therein, in the form of a presentation, and in the form of a
portable presentation application; and
wherein the apparatus has a pocket-sized form factor.
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Im US 2003/0090472 Al May 15, 2003
REJECTION
The Examiner rejected claims 2-17 under 35 U.S.C. § 102(b) as being
anticipated by Im. Final Act. 2-9.
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Application 12/187,484
APPELLANT'S CONTENTIONS
1. Im's set-up files stored within memory 130 are not considered to be an
application file nor do they constitute a presentation application as
required by claim 2. App. Br. 5-7.
2. Im's plug and play interface and wireless receiver 100 is not a virtual
USB plug comprising a wireless connector as required by claims 9
and 17. App. Br. 7-9.
ISSUES ON APPEAL
Based on Appellant's arguments in the Appeal Brief (App. Br. 6-9)
and Reply Brief (Reply Br. 3-9), the issues presented on appeal are whether
the Examiner erred in finding the prior art discloses the disputed limitations.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred. We agree with Appellant's
conclusions as to this rejection of claims 9 and 17. However, we disagree
with Appellant's conclusions in connection with claims 2-8 and 10-16 and,
in connection therewith, adopt as our own ( 1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken (Final
Act. 2-7) and (2) the reasons set forth by the Examiner in the Examiner's
Answer in response to Appellant's Appeal Brief (Ans. 3--4) and concur with
the conclusions reached by the Examiner. We highlight the following for
emphasis.
In connection with contention 1, Appellant argues Im's set-up files,
although stored in the USB memory, "are neither application files, nor do
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Application 12/187,484
they constitute a presentation application as claimed." App. Br. 7. Instead,
according to Appellant, "Im's presentation application is clearly loaded onto
the memory (drive module 400) ofim's computer, not onto the memory 130
of Im's USB receiver 100." Reply Br. 6. The Examiner responds by finding
the set-up files are equivalent to and disclose the disputed presentation
application because it activates functionality including MS PowerPoint.
Ans. 3.
Appellant's argument is unpersuasive because it amounts to little more
than a naked assertion that the disputed claim element is not found in the
prior art. See 37 C.F.R. § 41.37(c)(l)(iv) ("A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim."); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art"). In particular, Appellant fails to provide
sufficient evidence or a persuasive line of reasoning rebutting the
Examiner's finding that Im's set-up files disclose the disputed computer
readable codes in the form of a presentation and portable presentation
application. That is, Appellant does not explain why the claimed
presentation application is not equivalent to and disclosed by the set-up files
as depicted by Im and described at paragraph 29. Appellant's further
argument that Im's presentation application is loaded onto the memory
(drive module 400) and cannot be reloaded from the computer to the USB
device (Reply Br. 6) is presented for the first time in the Reply Brief and is
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therefore untimely and waived. 1 Furthermore, even if timely presented, such
argument is not persuasive of error because claim 2 neither excludes the
presentation application from also being resident on the computer nor does it
require it be reloaded from the computer to the USB device.
For the reasons supra, we sustain the rejection of independent claim 2
and, for the same reasons, the rejection of independent claim 10 under 3 5
U.S.C. § 102(b) together with the rejection of dependent claims 2-7 and 11-
15, which are not separately argued.
In connection with contention 2, Appellant argues Im does not
disclose a virtual USB plug which comprises a wireless connector. App. Br.
8-9. The Examiner responds by finding Im teaches a plug and play interface
(Im i-f 20) as equivalent to the virtual USB plug and a drive module as
equivalent to the wireless connector. Ans. 4--5. The Examiner also refers to
antenna (111 ), RF receiving circuit (112), and decoding circuit (113) and
reception control (101) for disclosing the wireless connector. Im i1i127, 19,
35, and 30; Ans. 4--5.
We agree with Appellant. The Examiner's interpretation of the
disputed virtual USB plug comprising a wireless connector as equivalent to
and disclosed by Im's plug and play interface is not supported by the
evidence of record. That is, the Examiner provides insufficient evidence or
reasoning explaining why plug and play invokes a virtual wireless
1 Absent sufficient cause, issues first raised in a Reply Brief are
untimely. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (Informative) ("[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner's rejections, but were not."). Therefore, the basis for
asserting error is waived. See 37 C.F.R. §§ 41.37(c)(l)(iv), 41.41(b)(2).
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Application 12/187,484
connection. Instead, we understand plug and play to mean the ability of a
computer system to automatically configure a device added to it.2
Therefore, for the reasons discussed supra, we do not sustain the rejection of
dependent claims 9 and 17 under 35 U.S.C. § 102(b). Furthermore, because
we agree with Appellant's argument presented in connection with claims 9
and 17 that the Im reference does not disclose the disputed "virtual USB
plug" of their respective immediate parent claims, we also do not sustain the
rejection of claims 8 and 16 under 35 U.S.C. § 102(b).
DECISION
The Examiner's decision to reject claims 2-7 and 10-15 is affirmed.
The Examiner's decision to reject claims 8, 9, 16, and 17 is reversed.
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-IN-PART
2 The Microsoft Press Computer Dictionary, 409 (5th Ed. 2002).
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