11077006 (P.T.A.B. Jan. 8, 2013)

Ex Parte Burns et al

Patent Trial and Appeal BoardJan 8, 2013

11077006 (P.T.A.B. Jan. 8, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte ROLAND JOHN BURNS and JOHAN JEANSSON _____________ Appeal 2010-006795 Application 11/077,006 Technology Center 2400 ______________ Before ROBERT E. NAPPI, JUSTIN BUSCH, and LYNNE E. PETTIGREW, Administrative Patent Judges. Per Curiam DECISION ON APPEAL Appeal 2010-006795 Application 11/077,006 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 1 through 5, 7 through 23, and 30. We reverse. INVENTION The invention is directed to a system for wirelessly sharing notes created by users of digital pens. See pages 3 and 4 of Appellants’ Specification. Claim 1 is representative of the invention and reproduced below: 1. A system for sharing notes, said system comprising: a first pen capturing and transmitting information representative of a mark made by the first pen; and a second pen receiving the information representative of the mark made by the first pen, wherein the first and second pens are members of a share group pursuant to which marks made by pens in the share group automatically are transmitted to other pens in the share group. REFERENCES Bramlett US 6,422,775 B1 Jul. 23, 2002 Sakai US 2003/0207244 A1 Nov. 6, 2003 Fruchter US 2005/0281437 A1 Dec. 22, 2005 Clary US 2006/0159345 A1 Jul. 20, 2006 Appeal 2010-006795 Application 11/077,006 3 REJECTIONS AT ISSUE The Examiner has rejected claims 1 through 5, 7, 8, 10, 12 through 14, 18 through 22,and 30 under 35 U.S.C. § 103(a) as obvious over Bramlett and Fruchter. Answer 3-11. 1 The Examiner has rejected claims 11 and 15 through 17, under 35 U.S.C. § 103(a) as obvious over Bramlett, Fruchter, and Sakai. Answer 11- 14. The Examiner has rejected claims 9 and 23 under 35 U.S.C. § 103(a) as obvious over Bramlett, Fruchter, and Clary. Answer 14-15. ISSUE Appellants argue on pages 10 through 12 of the Appeal Brief and pages 1 and 2 of the Reply Brief that the Examiner’s rejection of independent claim 1 is in error. 2 These arguments present us with the issue: did the Examiner err in finding the combination of Bramlett and Fruchter teaches marks made by one pen are automatically transmitted to other pens in the share group? 3 Appellants’ arguments directed to independent claims 14 and 30 present us with the same issue. 1 Throughout this opinion we refer to the Examiner’s Answer mailed on February 5, 2010. 2 Throughout this opinion we refer to Appellants’ Appeal Brief dated December 22, 2009 and Reply Brief dated April 5, 2010. 3 We note Appellants’ arguments present additional issues which we do not reach as this issue is dispositive. Appeal 2010-006795 Application 11/077,006 4 ANALYSIS We have reviewed Appellants’ arguments in the Briefs, the Examiner’s rejection and the Examiner’s response to the Appellants’ arguments. We concur with Appellants’ conclusion that the Examiner erred in finding the combination of Bramlett and Fruchter teaches marks made by one pen are automatically transmitted to other pens in the share group. The Examiner finds that Bramlett teaches pens that communicate with each other. Answer 15. Further, the Examiner finds that Fruchter teaches pens automatically transmit and “subsequently sharing or streaming that data.” Id. Based upon these findings, the Examiner finds that the claims are obvious. While we agree with the Examiner’s findings regarding Bramlett, we disagree with the Examiner’s findings regarding Fruchter. Fruchter teaches that pens automatically provide data to the Application Service Handler (ASH) server; Fruchter does not teach that transmission is to other pens in a share group or that the ASH shares the data with the other pens. Accordingly, the Examiner has not shown the combined teachings make obvious the limitations directed to marks made by one pen being automatically transmitted to other pens in the share group. Thus, we will not sustain the Examiner’s rejection, under 35 U.S.C. § 103(a), of independent claims 1, 14, and 30 or dependent claims 2 through 5, 7, 8, 10, 12, 13, and 18 through 22 under 35 U.S.C. § 103(a) as obvious over Bramlett and Fruchter. The Examiner’s rejections of claims 9, 11, 15 through 17, and 23 rely upon the same findings regarding Bramlett and Fruchter. The Examiner has not shown that the additional teachings of either Sakai or Clary remedy the deficiencies noted in the rejection of the independent claims. Accordingly, Appeal 2010-006795 Application 11/077,006 5 we will not sustain the Examiner’s rejection of claims 9, 11, 15 through 17, and 23 for the same reasons discussed above with respect to the independent claims. ORDER The decision of the Examiner to reject claims 1 through 5, 7 through 23, and 30 is reversed. REVERSED ELD