Ex Parte Mody et al

Board of Patent Appeals and Interferences

May 18, 2010

10680542 (B.P.A.I. May. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RASHESH C. MODY
and GURUPRASAD Y. P. RAO
____________

Appeal 2009-005171
Application 10/680,542
Technology Center 2100
____________

Decided: May 18, 2010
____________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
THU A. DANG, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants’ Request for Rehearing (filed Mar. 29, 2010) contends that
we erred in our Decision on Appeal entered January 27, 2010 (“Decision”),1
in which we affirmed the Examiner’s decision to reject claims 1-18.

1 Electronic “Notification Date” January 29, 2010.
Appeal 2009-005171
Application 10/680,542

2
OPINION
Appellants’ Request argues again that the prior art does not teach the
“set of tablet PC interface services” as recited in instant claim 1. As made
plain at the bottom of page 4 of the Request, Appellants’ position is based on
“services” that are “incorporated into” the claimed set of application
programs. However, Appellants do not point to anything that we might have
misapprehended or overlooked in reaching the determination that neither
Appellants’ Specification nor the language of claim 1 requires that the set of
services be incorporated into, or part of, any of the “application programs”
recited in the claim (Decision 6).
Moreover, Appellants admit that the Specification does not provide a
definition for the “set of tablet PC interface services.” The following
discussion at the oral hearing concerned instant claim 1.

JUDGE DIXON: Annotations? Where is that in the
claim?

MR. JOY: That’s -- it goes back to what is the term “a
set of tablet PC interface services.”

JUDGE DIXON: Have you defined that in the
specification?

MR. JOY: I believe I have.

JUDGE DIXON: Where?

MR. JOY: The actual term, “a set of tablet PC interface
services,” no. That term you would not see it verbatim in the
specification. However, the claim itself states that the
application programs interact with a user via the tablet PC
interface services.

Appeal 2009-005171
Application 10/680,542

3
Transcript at 5-6.
Appellants thus seem to rely on the syntax of claim 1 to distinguish
the claimed “interface services” from prior art Tablet PC interfaces, such as
the ViewSonic reference’s description of how application programs may
interact with the Tablet PC user. See Decision 5-6. However, we hold to the
view that instant claim 1 does not require that the “services” be incorporated
into (part of) the “application programs.” Appellants’ arguments are thus
not commensurate with the scope of the claim.
Further, Appellants have not demonstrated that the claim 1 “services”
somehow distinguish over what Appellants characterize as “standalone
applications” in the prior art, which perform the function that the claim
requires. In other words, since Appellants acknowledge that the
Specification does not set forth a distinguishing definition for “a set of tablet
PC interface services,” we fail to see how claim 1 does not cover (i.e.,
precludes) the application programs interacting with a user via a set of
Tablet PC interface standalone applications associated with the human-
machine interface.

DECISION
We have granted Appellants’ request for rehearing to the extent that
we have reconsidered our decision affirming the rejection of claims 1-18,
but we decline to modify the decision in any way.

DENIED

Appeal 2009-005171
Application 10/680,542

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msc

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