Ex Parte Celi et alDownload PDFPatent Trial and Appeal BoardJul 29, 201310999413 (P.T.A.B. Jul. 29, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/999,413 11/30/2004 Joseph Celi BOC920040053US1 (041) 4193 46322 7590 10/30/2013 CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, FL 33487 EXAMINER SURVILLO, OLEG ART UNIT PAPER NUMBER 2442 MAIL DATE DELIVERY MODE 10/30/2013 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 JOSEPH CELI, CHARLES W. CROSS, BRETT J. GAVAGNI, PETER J. GUASTI, and PEEYUSH JAISWAL ____________ Appeal 2012-009363 Application 10/999,413 Technology Center 2400 ____________ Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and THU A. DANG, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2012-009363 Application 10/999,413 2 Appellants filed a Request for Rehearing ("Request") under 37 C.F.R. § 41.52(a)(1) for reconsideration of our Decision on Appeal mailed July 30, 2013. ("Decision") The Decision affirmed the Examiner's Rejections R1 to R4. (Decision 9). We have reconsidered our Decision, in light of Appellants’ arguments in the Request, and we are not persuaded that we misapprehended or overlooked any points in rendering our Decision. We decline to change our prior Decision for the reasons discussed infra. We address Appellants’ contentions regarding rejection R2 below. R2. REJECTION UNDER 35 U.S.C. § 102(B) AS BEING ANTICIPATED BY AHUJA. A. Regarding the claim 1 limitation "resuming said real time data exchange over the single connection in the computer communications network . . . ," Appellants contend "there is no evidence in the record that a person of skill in the art would consider a dialed telephone number to be a set up parameter as set forth in paragraph [0022]." (Request 3). Appellants' contentions are not commensurate with the broader scope of the claim. Specifically, claim 1 does not recite "a set up parameter." For this reason, we are not persuaded that we misapprehended or overlooked any points in affirming the Examiner's rejection. B. Appellants further contend: The Board additionally asserts at footnote 3 of page 8 of the Decision that the exchange of set up parameters is equivalent to the dialing of a phone number. Appellants believe that such a comparison is unsupported by substantial evidence and inhibits Appeal 2012-009363 Application 10/999,413 3 an amendment to claim 1 consistent with the teachings of paragraph [0022] of the specification. In this regard, dialing a phone number is widely understood to be the process of an individual keying numbers resulting in tones recognizable by a telephonic switch in order to establish a new telephonic connection. In contrast, paragraph [0022] of the specification refers to the exchange of "set up parameters" in the course of restoring a communicative link. (Request 2-3). Appellants' contentions are not persuasive. First, one skilled in the art would understand that the Specification's "set up parameters" (for restoring the communicative linkage to a device) can include the identity of the device (indicated by the phone number) to which the linkage is being restored to.1 (Spec. ¶[0022]). Appellants' Specification fails to more narrowly define "set up parameters."2 Second, "dialing a phone number" broadly but reasonably includes transmitting a phone number, which does not require establishing a new "connection," particularly where a suspended single connection is being 1 "[A]nalysis need not seek out precise teachings directed to the specific matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). 2 Any special meaning assigned to a term "must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention." Multiform Desiccants Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (citation omitted) ("A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description."). Appeal 2012-009363 Application 10/999,413 4 resumed. For example, the phone number could be dialed by a device to resume a communicative linkage. Moreover, Appellants' claim 1 and Specification fail to define "connection" and "a single connection." Claim 1 only requires that "real time data exchange" is "over the single connection." Claim 1 also does not define the temporal limitation "suspending but not terminating said real time data exchange over the single connection." (Emphasis added). As such, any reasonable "resuming [of] said real time data exchange" is "over the single connection," not a new connection. For these reasons, we are not persuaded that we misapprehended or overlooked any points in rendering our Decision. CONCLUSION We have considered the arguments raised by Appellants in the Request for Rehearing, but Appellants have not persuaded us that we misapprehended or overlooked any points in rendering our Decision. DECISION We have granted Appellants’ request to the extent that we have reconsidered our Decision, but we deny the request with respect to making any changes therein. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See also 37 C.F.R. § 41.52(b). DENIED llw Copy with citationCopy as parenthetical citation