Ex Parte Itoh

Patent Trial and Appeal Board

Mar 25, 2016

12525214 (P.T.A.B. Mar. 25, 2016)

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
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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
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