Ex Parte Li et al

Patent Trial and Appeal Board

Sep 21, 2016

13223313 (P.T.A.B. Sep. 21, 2016)

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.
13/223,313 09/01/2011 Adam H. Li 7114-95711-US 7127
37123 7590 09/21/2016
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
KARIM, ZIAUL
ART UNIT PAPER NUMBER
2127
MAIL DATE DELIVERY MODE
09/21/2016 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 ADAM H. LI, AIXIN LIU, and DJUNG NGUYEN
____________

Appeal 2015-003342
Application 13/223,313
Technology Center 2100
____________

Before CARLA M. KRIVAK, BETH Z. SHAW, and
NABEEL U. KHAN, Administrative Patent Judges.

SHAW, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–13, which are the only claims currently pending
in this application. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

INVENTION
The invention is for automation of residential appliances. Spec. ¶ 3.
Appeal 2015-003342
Application 13/223,313

2
Claim 1, which is illustrative, reads as follows:
1. An apparatus comprising:
home-automation edge-component interfaces;
a control circuit operably coupled to the home-automation edge-
component interfaces, wherein the control circuit is configured
to interact with home-automation edge components using a
common application programming interface.

REJECTIONS AT ISSUE
The Examiner rejected claims 1–13 under 35 U.S.C. § 102(b) as being
anticipated by Clayton (US 2008/0183316 A1; July 31, 2008). Ans. 2–8.

ISSUES
Appellants argue that the Examiner’s rejections are in error. App. Br.
7–17; Reply Br. 1–5. The dispositive issue presented by these arguments
are:
Did the Examiner err in finding the Clayton discloses “wherein the
control circuit is configured to interact with home-automation edge
components using a common application programming interface,” as recited
in claim 1?

ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellants’
arguments. We adopt as our own the findings and reasons set forth in the
rejection from which this appeal is taken and in the Examiner’s Answer in
response to Appellant’s Appeal Brief. See Ans. 2–9. We highlight and
address specific arguments and findings for emphasis as follows.
Appeal 2015-003342
Application 13/223,313

3
Appellants argue that Clayton fails to disclose “wherein the control
circuit is configured to interact with home-automation edge components
using a common application programming interface,” as recited in claim 1.
App. Br. 7–17. Appellants refer to the Specification, which defines an
application programming interface as “a particular set of rules and
specifications that software programs can follow to compatibly and
successfully communicate with one [sic] other.” Spec. ¶ 49.
As Appellants point out, Clayton does not use the words “API” or
“application programming interface.” App. Br. 8. However, anticipation “is
not an ‘ipsissimis verbis’ test.” In re Bond, 910 F.2d 831, 832-33, 15
USPQ2d 1566, 1567 (Fed. Cir. 1990) (citing Akzo N.V. v. United States Int'l
Trade Comm'n, 808 F.2d 1471, 1479 & n.11, 1 USPQ2d 1241, 1245 & n.11
(Fed. Cir. 1986)). “An anticipatory reference . . . need not duplicate word
for word what is in the claims.” Standard Havens Prods. v. Gencor Indus.,
953 F.2d 1360, 1369 (Fed. Cir. 1991).
Here, the Examiner maps the recited application programming
interface to the “common communication interface” of Clayton. See Ans. 3
(citing Clayton ¶ 90). The Examiner also cites to Clayton’s disclosure of
“communications between the automation controller 12 and the peripheral
devices 16.” Ans. 8 (citing Clayton ¶ 50). We agree with the Examiner’s
findings, and are therefore not persuaded by Appellants’ arguments (see
Reply Br. 2–5) that Clayton’s disclosure is too general to be the application
programming interface recited in claim 1. Indeed, we agree that Clayton’s
communication interface includes “a particular set of rules and specifications
that software programs can follow to compatibly and successfully
communicate with one another,” which is the definition of an API in
Appeal 2015-003342
Application 13/223,313

4
Appellants’ Specification. In the absence of sufficient evidence or line of
technical reasoning to the contrary, the Examiner’s findings are reasonable
and we find no reversible error.
Because Appellants have not presented separate patentability
arguments or have reiterated substantially the same arguments as those
previously discussed for patentability above (see Br. 7–17), the remaining
pending claims fall for the same reasons as claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).

DECISION
The decision of the Examiner rejecting claims 1–13 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED