Ex Parte Baudino et al

Board of Patent Appeals and Interferences

Jun 13, 2011

11003825 (B.P.A.I. Jun. 13, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DANIEL A. BAUDINO and DEEPAK P. AHYA
____________________

Appeal 2009-011111
Application 11/003,825
Technology Center 2400
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Before ALLEN R. MACDONALD, CARLA M. KRIVAK and THOMAS S.
HAHN, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-011111
Application 11/003,825

2
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim(s)
Exemplary independent claim 1 under appeal reads as follows:
1. A method of using a mobile device as an information
relay among multiple user environments, comprising the steps of:
learning a user interaction with an application of a first
electronic device in a first user environment to produce a learned user
interaction;
capturing a set of application settings and data associated with
the learned user interaction during an active session of the application
in the first user environment using the mobile device; and
transferring the set of application settings and data from the
mobile device to a second electronic device for continuity of the
active session in a second user environment to convey the learned user
interaction from the first electronic device to the second electronic
device in a second user environment.
Appellants’ Contentions
Appellants contend that the Examiner erred in rejecting claims 1-20
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Borgstahl (US 5,909,183) and Dureau (US 2004/0073915 A1) because:
[Borgstahl] fails to teach, suggest, mention or contemplate the
transferring of the set of application settings and data from the
mobile device to a second electronic device for continuity of the
active session from the first user environment in a second user
environment to convey the learned user interaction from the
first electronic device to the second electronic device. There is
no continuity of the active session from the first user
environment in a second user environment.
(App. Br. 5).
Appeal 2009-011111
Application 11/003,825

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Likewise, Dureau fails to suggest, mention or contemplate
transferring the set of application settings and data from the
mobile device to a second electronic device for continuity of the
active session from the first user environment in a second user
environment to convey the learned user interaction from the
first electronic device to the second electronic device. In
Dureau, there is clearly no continuity of the active session from
the first environment to the second user environment and
second device.
(App. Br. 5).

Issues on Appeal
Did the Examiner err in rejecting claims 1-20 as being unpatentable
because Borgstahl and Dureau both fail to teach “continuity of the active
session” as claimed?
ANALYSIS
We agree with Appellants’ contention above. The Examiner has erred
in finding that Borgstahl and Dureau disclose “continuity of the active
session” as required by the claims.
At page 12 of the Answer, the Examiner states:
In the absence of an explicit definition of "continuity of active
session" and "user environment", a broad but reasonable
interpretation of the term "continuity of active session" is
adopted to include seamless transition of interaction and
control, and the term "user environment" is adopted to include a
boundary of a device. Borgstahl clearly teaches seamless
transition (relay) of interaction and control (personalized data)
from the boundary of the first device to the boundary of the
second device, as discussed just above. Therefore, Borgstahl
teaches "continuity of active session from the first user
environment in a second user environment".
Appeal 2009-011111
Application 11/003,825

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Although the Examiner proposes this “seamless transition of interaction and
control” definition of “continuity of active session,” the Examiner does not
point to evidence showing that this proposed definition is recognized in the
art.
Because the meaning of a claim term as understood by persons
of skill in the art is often not immediately apparent, and because
patentees frequently use terms idiosyncratically, the court looks
to “those sources available to the public that show what a
person of skill in the art would have understood disputed claim
language to mean.” Those sources include “the words of the
claims themselves, the remainder of the specification, the
prosecution history, and extrinsic evidence concerning relevant
scientific principles, the meaning of technical terms, and the
state of the art.”
Philips v. AWH, Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2006). (Citations
omitted). The Examiner is not free to act as the lexicographer where the
applicant does not choose to do so. The Examiner must rely on evidence.
For example, a “session” is defined as “a period of time devoted to a specific
activity”. (Webster’s II New Riverside University Dictionary; p. 1067;
1988).
Further, the Examiner does not point to specific language in the
references to support the proposed seamless transition of interaction and
control.

CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1-20 as being unpatentable under 35 U.S.C. § 103(a).
(2) On this record, claims 1-20 have not been shown to be
unpatentable.
Appeal 2009-011111
Application 11/003,825

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DECISION
The Examiner’s rejection of claims 1-20 is reversed.

REVERSED

ELD