Ex Parte Moganti

Board of Patent Appeals and Interferences

Aug 28, 2012

11026498 (B.P.A.I. Aug. 28, 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.
11/026,498 12/30/2004 Madhav Moganti Moganti 7 (LCNT/126641) 7814
46363 7590 08/28/2012
WALL & TONG, LLP/
ALCATEL-LUCENT USA INC.
25 James Way
Eatontown, NJ 07724
EXAMINER
RAMPURIA, SHARAD K
ART UNIT PAPER NUMBER
2617
MAIL DATE DELIVERY MODE
08/28/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte MADHAV MOGANTI
________________

Appeal 2010-004692
Application 11/026,498
Technology Center 2600
________________

Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
ANDREW CALDWELL, Administrative Patent Judges.

CALDWELL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004692
Application 11/026,498

2
SUMMARY
Appellant appeals under 35 U.S.C. §§ 6(b) and 134(a) from the
Examiner’s rejection of claims 1-20. We reverse.

STATEMENT OF CASE
Appellant describes the present invention as a method and apparatus
for performing switchover of a session between different user terminals.
Abstract.
Independent claim 1 is illustrative of a method for performing
switchover of a session with disputed limitations in italics:
1. A method of performing switchover of a session between
different user terminals, comprising:

receiving at a mobile end-user agent device (MEAD), from a
first device, data representing a session, said session data comprising
application and authentication data required to reestablish the session;

suspending said session at said first device; and

reestablishing via said MEAD said suspended session on a
second device using said suspended session data.

THE REJECTION
The Examiner rejected claims 1-20 under 35 U.S.C. § 102(e) as being
anticipated by Hawkins (US 2006/0242278 A1; Oct. 26, 2006).
1
Ans. 3-7.

1
Throughout this opinion, we refer to the Appeal Brief (App. Br.) filed
October 6, 2009, the Examiner’s Answer (Ans.) mailed December 24, 2009,
and the Reply Brief (Reply Br.) filed on January 29, 2010.
Appeal 2010-004692
Application 11/026,498

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ARGUMENTS
The Examiner finds that Hawkins anticipates claim 1. Ans. 3-7.
Regarding claim 1, Appellant argues that Hawkins is not prior art
under 35 U.S.C. § 102(e) based upon Hawkins’ effective filing date since the
subject matter upon which the Examiner relies is not disclosed in the earlier
filed applications in compliance with 35 U.S.C. § 112 first paragraph. App.
Br. 8-9; Reply Br. 4-5. Appellant also argues that Hawkins does not teach a
first and second device between which a session is transferred as well as a
mobile end-user agent device that facilitates the session transfer. App. Br. 7-
8; Reply Br. 2-3.

ISSUES
1. Is Hawkins prior art?
2. Does Hawkins teach a first and second device between which a
session is transferred as well as a mobile end-user agent that facilitates the
session transfer as in claim 1?

ANALYSIS
Appellant raises the threshold question of whether Hawkins is prior
art. This application was filed on December 30, 2004 and does not claim the
benefit of any earlier filed application. Hawkins was filed on April 12,
2005, which is after this application’s filing date. However, as a
continuation-in-part application, Hawkins claims the benefit under 35 U.S.C.
§ 120 of an earlier filed application (10/815,406; filed Apr. 1, 2004), which,
in turn, claims the benefit under 35 U.S.C.
Appeal 2010-004692
Application 11/026,498

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§ 119(e) of an earlier filed provisional application (60/460,013; filed Apr. 2,
2003).
Appellant contends that the Examiner cannot rely upon Hawkins’
effective filing date. App. Br. 8-9. Appellant explains that the subject
matter from Hawkins relied upon by the Examiner in the rejection is not
disclosed in either the prior utility or provisional application. Id. Although
Hawkins’ parent ‘406 utility application predates the present application’s
filing date, the Examiner nonetheless does not cite the parent utility
application, but instead finds that the subject matter is shown in paragraphs
0011, 0031, and 0036 of Hawkins’ ‘013 provisional application. Ans. 8.
The Examiner finds that these portions of the Hawkins’ ‘013 provisional
application provide written description for various portions of Hawkins’
published ‘278 application (i.e., ¶¶ 0014, 0035, 0053, 0068, 0073, 0085, and
0088). Id. at 3-4, 7-8.
The relevant portions of the Hawkins’ ‘013 provisional application
describe a peripheral device that downloads applications residing upon a
wireless communication device and then runs the applications using the
peripheral device CPU. ¶ 0011. The Hawkins’ ‘013 provisional application
also describes how software applications from the wireless communication
device are copied to the peripheral device. See ¶ 0031. Results from a
user’s interaction with the software applications are then transferred or
copied to the wireless peripheral device. Id. Finally, the Hawkins’ ‘013
provisional application how the peripheral device maintains instructions and
data from session to session in order to avoid repeatedly transferring such
information from the wireless peripheral device. See ¶ 0036.

Appeal 2010-004692
Application 11/026,498

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We are not persuaded, however, that the general teachings of the
Hawkins ‘013 provisional application provide adequate written description
for the specific details of the implementation described in Hawkins’
published ‘278 application. For example, the Hawkins ‘013 provisional
application is silent as to the details of how a software application is copied
to and then executed on the peripheral device. The Hawkins’ published ‘278
application, however, describes specific implementation details of a
switchover between devices. A switchover manager in each device performs
the functions for enabling a user to switch devices. See ¶ 0053. In this case,
we do not see how a general teaching provides written description of the
specific. A similar analysis can be made for the other portions of Hawkins’
published ‘278 application relied upon in the rejection. Accordingly, for
purposes of this appeal, Hawkins is not entitled to the benefit of either of the
prior applications and is therefore not prior art.
Even if Hawkins were prior art, however, we agree with Appellant
that Hawkins (US 2006/0242278 A1) does not anticipate claim 1. Appellant
asserts that the claim, as a whole, recites a first and second device between
which a session is transferred as well as a mobile end-user agent device that
facilitates the session transfer. See App. Br. 7. Appellant explains that a
proper construction of claim 1 requires three devices: a first device, a
second device, and a MEAD. Id. Appellant argues that Hawkins teaches a
pair of devices as opposed to three devices. Id. Based upon our review of
the cited portions of Hawkins, we see no probative evidence that Hawkins
teaches the three devices required by claim 1. Furthermore, the Examiner
does not respond to Appellant’s argument to explain how Hawkins teaches
three devices as opposed to two. See Ans. 7-8. Based upon our own review
Appeal 2010-004692
Application 11/026,498

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and the absence of some explanation from the Examiner, we are persuaded
that Appellant has identified reversible error in the rejection.
For the foregoing reasons, Appellant has persuaded us of error in the
rejection of independent claim 1. Independent claims 15 and 20 include
similar limitations, and the rejection of these claims is reversed for the same
reasons. As to dependent claims 2-14 and 16-19, since we do not sustain the
rejection of the independent claims, we also do not sustain the rejection of
the dependent claims.

CONCLUSIONS
Appellant has shown that Hawkins is not prior art as to the subject
matter of the claims on appeal.
Appellant has shown that Hawkins does not teach a first and second
device between which a session is transferred as well as a mobile end-user
agent device that facilitates the session transfer.
Appellant has, therefore, shown that the Examiner erred in rejecting
claims 1-20 under 35 U.S.C. § 102(e) as anticipated by Hawkins.

DECISION
The Examiner’s decision rejecting claims 1-20 is reversed.

REVERSED

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