Ex Parte Brunolli

Patent Trial and Appeal Board

Aug 31, 2016

12876846 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/876,846 09/07/2010 Michael J. Brunolli
38706 7590 09/02/2016
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
111399-0107 2089
EXAMINER
AJIBADE AKONAI, OLUMIDE
ART UNIT PAPER NUMBER
2641
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. BRUNOLLI
Appeal2014--007547 1
Application 12/876,846
Technology Center 2600
Before CAROLYN D. THOMAS, JAMES R. HUGHES, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
ULLAGADDI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-22 and 24--26. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Claim 1, reproduced below with a key disputed limitation emphasized,
is illustrative of the claimed subject matter:
1. A device comprising:
a device package that is separate and remote from an
associated cellular phone; and
1 Appellant identifies the real party in interest as Prunolo, Inc. App. Br. 2.
2 Claims 23 and 27-32 are cancelled. App. Br. 2.
Appeal2014-007547
Application 12/876,846
a controller provided within the package for interacting
with the associated cellular phone via a phone communication
module to allow a user to manage at least incoming calls to the
cellular phone using one or more user interface components
provided within the package to interact with the user, the user
interface components including one or more of a vibrating
incoming call indicator, a display, a touch screen, and an
accelerometer,
wherein the controller is adapted to notify the user if the
associated cellular phone is nearing a limit of a communication
range between the device package and the cellular phone.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Brown
Komsi et al.
Fujisawa et al.
Adams et al.
Fujimoto et al.
Lund
Sapp
Gadel et al.
Delalat
US 2002/0068556 Al
US 2002/0198010 Al
US 7,016,707 B2
US 7,103,367 B2
US 2007/0218886 Al
US 2007/0293206 Al
US 2008/0233932 Al
US 2010/0223314 Al
US 8,090,364 B2
REJECTIONS
June 6, 2002
Dec. 26, 2002
Mar. 21, 2006
Sept. 5, 2006
Sept. 20; 2007
Dec. 20, 2007
Sept. 25, 2008
Sept. 2, 2010
Jan. 3, 2012
Claims 1--4, 8, 20, 24, and 25 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Fujisawa.
Claims 5, 7, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fujisawa and Sapp.
Claims 6 and 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fujisawa, Brown, and Lund.
2
Appeal2014-007547
Application 12/876,846
Claims 9, 15, 16, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fujisawa and Lund.
Claims 10, 11, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fujisawa, Lund, and Sapp.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fujisawa, Sapp, and Lund.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fujisawa, Lund, and Komsi.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fujisawa and Adams.
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fujisawa and Komsi.
ANALYSIS
The Examiner finds that Fujisawa discloses "a mobile phone 11
receiving an incoming call, and in response to the incoming call, the mobile
phone 11 examines if there is a communication link." Ans. at 2--4; see Final
Act. 2-3. The Examiner further finds Fujisawa describes producing an
"electronic sound or buzzer sound to notify the user of states of the mobile
telephone 11 ... where the states may be, for example, a device state such as
calling state ... [and] call-receiving state" and that these disclosures teach
the disputed "notifying" limitation. Final Act. 3 (citing Fujisawa, 12:47---67)
(emphasis omitted).
First, Appellant argues Fujisawa discloses "a Bluetooth module that
transmits control data that notifies a user of different device states when
there is a communication link." App. Br. 6. Appellant contends that
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Appeal2014-007547
Application 12/876,846
"module 62 will presumably always transmit the 'state' information,
whether or not the telephone 11 and device 12 are within a communication
range" and that "if they are outside of the communication range, a user of
the telephone 11 is not notified of this specific state merely because there are
no 'state' messages." Id. at 7. Second, Appellant argues "[i]t is not enough,
under Section 102, that Fujisawa discloses that a user is 'notified of states'
of either telephone 11 or device 12 when there is a link between them"
because "notifying users of an 'error' state ... does not necessarily imply
that such an error state can include nearing the limit of a communication
range as is specifically set forth in the claims." Id. at 6.
We are persuaded by Appellant's arguments. Fujisawa does not
expressly disclose whether examining if there is a communication link (see
Ans. 2) includes a determination of "nearing a limit of a communication
range between the device package and the cellular phone," as recited in
claim 1. Rather, Fujisawa discloses that, when a communication link exists,
state information is transmitted irrespective of the limit of the
communication range. See App. Br. 7. We are further persuaded that
Fujisawa does not inherently disclose the disputed "notifying" limitation
because Fujisawa does not disclose that one of the error states necessarily
includes a state of "nearing the limit of a communication range." Id. at 6.
For the foregoing reasons, we are persuaded the Examiner erred in
finding Fujisawa discloses the disputed limitation recited in independent
claim 1. Therefore, we do not sustain the 35 U.S.C. § 102 rejection of
independent claim 1 and dependent claims 4, 8, 20, 24, and 25. As the
Examiner has not identified any teachings in Sapp, Brown, Lund, Komsi,
Adams, Delalat, Gadel, and Fujimoto that cure the deficiencies of Fujisawa
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Appeal2014-007547
Application 12/876,846
with respect to claim 1, we do not sustain the 35 U.S.C. § 103 rejections of
claims 2, 3, 5-7, 9-19, 21, 22, and 2 6 for similar reasons.
DECISION
The decision of the Examiner to reject claims 1-22 and 24--26 is
reversed.
REVERSED
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