Ex Parte Costa

Patent Trial and Appeal Board

Jun 28, 2016

12533050 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/533,050 07/31/2009 Mario Costa
42624 7590 06/28/2016
DAVIDSON BERQUIST JACKSON & GOWDEY LLP
8300 Greensboro Dr, Suite 500
McLean, VA 22102
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.
2540-1175 6846
EXAMINER
VAZQUEZ COLON, MARIA E
ART UNIT PAPER NUMBER
2482
MAILDATE DELIVERY MODE
06/28/2016 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 MARIO COSTA1
Appeal2014-008427
Application 12/533,050
Technology Center 2400
Before ALLEN R. MacDONALD, DANIEL N. FISHMAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals 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).
We AFFIRM.
1 Appellant identifies Avocent Corporation as the real party in interest. App.
Br. 1.
Appeal2014-008427
Application 12/533,050
Introduction
Appellant describes the invention as relating "to light-weight mobile
computing devices wirelessly connected to desktop computers." Spec. i-f 1.
Claim 1 is exemplary:
1. A data processing system having a target computer and a
mobile computing device wirelessly connected to the target
computer, comprising:
the target computer comprising:
a processor configured to connect the target computer
with the mobile computing device over a wireless
network;
a video compression component configured to receive
and compress video data;
a network interface configured to send the compressed
video data to the mobile computing device over the
wireless network;
a persistent storage configured to store data; and
the mobile computing device comprising:
a processor configured to:
wirelessly connect with the target computer;
access the data stored in the persistent storage on the
target computer; and
display the video data received from the target
computer;
a wireless network interface configured to receive the
compressed video data from the target computer over the
wireless network;
a video decompression component configured to receive
and decompress the compressed video data received from the
target computer;
a keyboard;
a mouse; and
a display configured to display the video data
decompressed by the video decompression component.
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Appeal2014-008427
Application 12/533,050
Rejections
Claims 1-20 stand provisionally rejected under 35 U.S.C. § 101 for
double patenting based on claims 1-20 of co-pending patent application
13/080,863 (the "'863 Application"). Final Act. 3---6.
Claims 1, 5, 6, 10, 12, 13, 17, and 19 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Covington (US 2005/0108451 Al; publ. May 19,
2005). Final Act. 7-10.
Claims 2--4 stand rejected under 35 U.S.C. § 103(a) as obvious over
Covington and Steinke (US 2009/0231485 Al; publ. Sept. 17, 2009). Final
Act. 10-12.
Claims 9 and 16 stand rejected under 35 U.S.C. § 103(a) as obvious
over Covington and Dambrackas (US 2006/0126718 Al; publ. June 15,
2006). Final Act. 12-13.
Claims 11 and 18 stand rejected under 35 U.S.C. § 103(a) as obvious
over Covington and Birger (US 2009/0265488 Al; publ. Oct. 22, 2009).
Final Act. 13.
Claims 7, 8, 14, and 20 stand rejected under 35 U.S.C. § 103(a) as
obvious over Covington and Kirshenbaum (US 7,490,197 B2; iss. Feb. 10,
2009). Final Act. 14-15.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as obvious over
Covington and Elliott (US 2009/0037526 Al; publ. Feb. 5, 2009) Final Act.
15-16.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
Appeal and Reply Briefs. We disagree with Appellant's conclusions. We
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Appeal2014-008427
Application 12/533,050
adopt the findings and reasons set forth in the Final Rejection and the
Examiner's Answer. We highlight the following for emphasis.
Anticipation
Appellant argues the Examiner errs in finding Covington discloses the
"mobile computing device" of claim 1. App. Br. 7. We disagree.
Appellant's Figure 1, which Appellant describes as "consistent with
the present invention" (Spec. i-fi-1 9, 18), illustrates "Client Stations" that
correspond to the claimed mobile computing device:
_1:~--~ -~-- - .. ----- .... ·- -- ...... -- -- -- - Figure 1 : Client Station
•
• •
•
Appellant's "Figure 1 illustrates depicts [sic] an
exemplary KVM [keyboard-video-mouse] computer system in
accordance [sic-with] methods and systems consistent with
the present invention." (Spec. 9.)
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Appeal2014-008427
Application 12/533,050
The Examiner finds Covington's "Remote Station," which Covington
illustrates in its Figure 1 (a), discloses the claimed "mobile computing
device" (Final Act. 7):
1~1~~J_ ----------- - --------------------1 Remote Station
Target System l
I Target Computer !
i I ~,r~~- = '" •• ,, .•• 1 ~ ~i~f 1"M ~~~
I - 118•1 Local Unit r.:----~...,.......---;;r ~ ~
I 116-1 "' .,,,
109·1
RG6 Audio I r;;u~""''l..
:~. Remote Unit I
I 120-1 Local Monitor l I
~---~~~----------!
I
126-1 1DB·1 I
114-2
114-J(
L - - - - - - - - - c- -------_,
124·1
124-2 •
• •
• •
Fig. 1 (a)
Covington's Figure l(a) is a schematic showing "exemplary
embodiments of the present invention." (Covington i-f 7.)
Appellant argues:
The remote station 124 cited in Covington et al. is not intended
to be a "mobile computing device" as recited, for example, in
claim 1. This is evidenced at least by that a direct point-to-
point connection (wireless connection or link 134) connects two
units directly to each other, as opposed to over a network, and
Covington et al. at paragraph 10 does not disclose the use of
over a network (e.g., 3G, 4G, WAN, LAN, etc.).
App. Br. 7.
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Appeal2014-008427
Application 12/533,050
We find Appellant's argument meritless given Covington specifically
states its "wireless connection or link 134 preferably follows the IEEE
802.1 la standard protocol, although one skilled in the art will realize that
other protocols and methods of wireless communication are within the scope
of the invention." Covington i-f 14. As the Examiner points out, 802.1 la is a
standard wireless network protocol, pervasively used by mobile devices.
See Ans. 3-5. It stretches credulity to argue Covington does not disclose
connection over a wireless network when Covington specifically states a
preference for using wireless network protocols for such connections.
Appellant also argues the anticipation rejection is erroneous because
"[f]urthermore, there is no disclosure in Covington et al. of remote station
124 being mobile or a mobile computing device." App. Br. 7. We disagree.
See, e.g., Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376,
1381 (Fed. Cir. 2015) ("a reference can anticipate a claim even if it 'd[oes]
not expressly spell out' all the limitations arranged or combined as in the
claim, if a person of skill in the art, reading the reference, would 'at once
envisage' the claimed arrangement or combination") (quoting In re Petering,
301F.2d676, 681(CCPA1962)).
We accordingly sustain the Examiner's rejection of claim 1. We also
accordingly sustain the rejections of claims 2---6, 9-13, and 15-19, for which
Appellant offers no substantive argument separate from claim 1. See App.
Br. 6-12; see also 37 C.F.R. § 41.37(c)(i)(iv).
Obviousness
Appellant argues the Examiner errs in combining Covington and
Kirshenbaum to reject claims 7, 8, 14, and 20 because the Examiner "does
not state how the cited portion of Kirshenbaum et al. would improve on the
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Application 12/533,050
specific system disclosed in Covington et al." App. Br. 11. We disagree. A
reason to combine teachings from the prior art "may be found in explicit or
implicit teachings within the references themselves, from the ordinary
knowledge of those skilled in the art, or from the nature of the problem to be
solved." WMS Gaming, Inc. v. Int'! Game Tech., 184 F.3d 1339, 1355 (Fed.
Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998)).
"[A Jn analysis of obviousness ... may include recourse to logic, judgment,
and common sense available to the person of ordinary skill in the art that do
not necessarily require explication in any reference or expert opinion."
Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed.
Cir. 2009). Appellant fails to persuasively rebut the motivation to combine
Covington and Kirshenbaum set forth by the Examiner. See Final Act. 15;
Ans. 7-8.
Appellant also argues the Examiner errs because Kirshenbaum,
although it discloses portable devices without hard drives, "does not state the
device has no persistent writable storage." App. Br. 11. We find this
unpersuasive. As the Examiner points out, Appellant's disclosure of
embodiments with "no persistent writable storage" states they "for example"
do not have a hard drive, which mirrors the disclosure of Kirshenbaum. See
Ans.2
We accordingly sustain the rejection of claims 7, 8, 14, and 20.
2 Regarding similarity of disclosure between Appellant's Specification and
the cited art, we also note several relevant paragraphs of the Specification
are entirely or mostly verbatim identical to paragraphs in Covington (e.g.,
compare Spec. i-fi-12, 18, 20-25 with Covington i-fi-13, 10, 12-17).
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Appeal2014-008427
Application 12/533,050
Double Patenting
Appellant argues the Examiner errs in the double patenting rejection
because 35 U.S.C. § 101 requires the claims cover identical subject matter,
and claim 1 explicitly recites a keyboard and a mouse, whereas the
corresponding claim 1 of the '863 Application does not. App. Br. 10-11.
We disagree. The difference between the claims, as understood by one of
ordinary skill, is insubstantial. "Where the claims of a second application
are substantially the same as those of the first patent, they are barred under
35 U.S.C. § 101." In re Robeson, 331F.2d610, 614 (CCPA 1964) (citing
In re Ockert, 245 F.2d 467 (CCPA 1957); Miller v. Eagle Mfg. Co., 151 U.S.
186 (S.Ct. 1894)). We accordingly sustain the double patenting rejection of
claims 1-2 0.
DECISION
For the reasons above, we affirm Examiner's rejection of claims 1-20.
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
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