Ex Parte Komaki et al

Patent Trial and Appeal Board

Oct 25, 2012

10308142 (P.T.A.B. Oct. 25, 2012)

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.
10/308,142 12/03/2002 Kaoru Komaki SON-0547US 1906
21254 7590 10/26/2012
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
SRIVASTAVA, VIVEK
ART UNIT PAPER NUMBER
2423
MAIL DATE DELIVERY MODE
10/26/2012 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 KAORU KOMAKI
and SHINICHI TAKAHASHI
____________________

Appeal 2010-003798
Application 10/308,142
Technology Center 2400
____________________

Before DEBRA K. STEPHENS, JUSTIN BUSCH, and HUNG H. BUI,
Administrative Patent Judges.

Per Curiam.

DECISION ON APPEAL
Appeal 2010-003798
Application 10/308,142

2
Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-50. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

Introduction
According to Appellants, the invention relates to a communication
system, “method, action execution apparatus, and program in the action
execution apparatus, which execute user's desired action (a preset action for,
e.g., delivering a message for a contact terminal that can contact the user) for
a user who cannot reply to a message addressed to him/her” (Spec. 1, §Field
of the Invention).

STATEMENT OF THE CASE
Exemplary Claim
Claim 9 is an exemplary claim and is reproduced below:
9. A communication system comprising an action execution
apparatus, said action execution apparatus comprising:
a message export section which exports a message to a
user terminal through a communication network on the basis of
a preset export condition;
a reply confirming section which receives from the user
terminal through the communication network a reply to the
message exported by said message export section, and confirms
the reply; and
an action executing section which executes a preset
action when said reply confirming section confirms no reply,
wherein the user terminal and said action execution
apparatus are connected through the communication network.

Appeal 2010-003798
Application 10/308,142

3
References
Suzuki US 5,978,667 Nov. 2, 1999

Rejections
Claims 1-50 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Suzuki.1

ISSUE
35 U.S.C. § 102(e): claims 1-50
Appellants argue their invention is not anticipated by Suzuki (App.
Br. 11-16). Specifically, Appellants contend Suzuki does not disclose “that
respective cell stations transmit commands and wait for a reply from the
portable station” (App. Br. 12).
Appellants also argue Suzuki does not disclose “message export
section which exports a message to a user terminal through a communication
network on the basis of a preset export condition” (App. Br. 12 and 13).

Issue: Has the Examiner erred in finding Suzuki discloses a message
export section which exports a message to a user terminal through a
communication network on the basis of a preset export condition as recited
in claim 9?

1 Appellants appear to have inadvertently cancelled claims 1-8 and 49-50 in
their Appeal Brief filed July 25, 2007. Based on the Reply Brief filed
August 3, 2009, it appears this was not their intention (Reply Br. 1). Thus,
we consider claims 1-8 and 49-50 in this Appeal.
Appeal 2010-003798
Application 10/308,142

4
ANALYSIS
We agree with Appellants’ argument that the Examiner has not shown
Suzuki discloses exporting a message on the basis of a preset export
condition (App. Br. 12-13 and Reply Br. 2-3). The Examiner has not set
forth with specificity the disclosure in Suzuki that describes a preset export
condition. Although we agree Suzuki discloses exporting a message, the
Examiner has not shown, nor do we readily find, Suzuki describes exporting
the message on the basis of a preset export condition, as recited in claim 9.
As such, we would have to speculate to bridge the gap between the cited
disclosure and the claim limitation. We will not speculate. Therefore, we
find Suzuki does not disclose the invention as recited in independent claim 9
and independent claims 1, 17, 25, 33, and 41 which recite the commensurate
limitation. Dependent claims 2-8, 10-16, 18-24, 26-32, 34-40, and 42-50
stand with their respective independent claims.
Accordingly, the Examiner erred in finding Suzuki discloses the
invention as recited in claims 1-50. Therefore, the Examiner erred in
rejecting claims 1-50 under 35 U.S.C. § 102(e) for anticipation by Suzuki.

DECISION
The Examiner’s rejection of claims 1-50 under 35 U.S.C. § 102(e) as
being anticipated by Suzuki is reversed.

REVERSED

msc