Ex Parte ItohDownload PDFPatent Trial and Appeal BoardMar 25, 201612525214 (P.T.A.B. Mar. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/525,214 0713012009 127226 7590 03/29/2016 Birch, Stewart, Kolasch & Birch, LLP P.O. Box 747 Falls Church, VA 22040-0747 FIRST NAMED INVENTOR Motohiro Itoh 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. l 609-0625PUS 1 5951 EXAMINER AL HASHEM!, SANA A ART UNIT PAPER NUMBER 2156 NOTIFICATION DATE DELIVERY MODE 03/29/2016 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): mailroom@bskb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MOTOHIRO ITOH Appeal2014-005790 Application 12/525,214 Technology Center 2100 Before JOHN P. PINKERTON, NATHAN A. ENGELS, and NORMAN H. BEAMER, Administrative Patent Judges. ENGELS, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 7-12. Claims 1---6 are canceled. No other claims are pending. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. Appeal2014-005790 Application 12/525,214 STATEMENT OF THE CASE Claim 7, reproduced below, is illustrative of the claimed subject matter: 7. An electronic apparatus, comprising: a communication unit; a file acquisition unit, which acquires a file in cases where the communication unit has received the file; an acquisition unit for file attribute information, which acquires file attribute information from the file acquired by the file acquisition unit; an acquisition unit for identification information of processing being executed, which acquires identification information of a processing currently being executed; and a determination unit, which determines a processing to be executed by a program executing the processing identified by the identification information of processing being executed based on the identification information of processing being executed and on the acquired file attribute information in order to execute said received file. ANALYSIS Appellant contends the Examiner erred in rejecting claims 7-12 under 35 U.S.C. § 102(a) as being anticipated by Wenocur et al. (US 2002/0165912 Al; Nov. 7, 2002). Specifically, Appellant argues Wenocur does not teach determining "a processing to be executed by a program executing the processing ... based on the identification information of processing being executed and on the acquired file attribute information in order to execute said received file," as recited in independent claims 7 and 11 (App. Br. 4--5), because the "processing described by [Wenocur] is determined based only on the received file attributes" (Reply Br. 3). Citing paragraph 128 of Wenocur, the Examiner states that "the procedure or the streaming corresponds to the process currently being 2 Appeal2014-005790 Application 12/525,214 executed" (Ans. 2), and, citing paragraph 137, the Examiner cites Wenocur's disclosures of "tags to identify specific information to be executed and wherein the picture element corresponds to the file attribute" (Ans. 4). The Examiner additionally describes paragraph 144 of W enocur as describing a receipt of an audio file in one language and providing a textual description or summary of the audio file. Ans. 4. In an anticipation rejection, "it is not enough that the prior art reference ... includes multiple, distinct teachings that [a skilled] artisan might somehow combine to achieve the claimed invention." Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Here, it is unclear from the record before us how the disclosures of W enocur are being applied by the Examiner. Accordingly, on this record, we do not sustain the Examiner's anticipation rejection of claims 7-12. DECISION For the above reasons, the Examiner's rejection of claims 7-12 is reversed. REVERSED 3 Copy with citationCopy as parenthetical citation