Ex Parte ObertDownload PDFBoard of Patent Appeals and InterferencesMay 10, 201010409726 (B.P.A.I. May. 10, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JAMES E. OBERT ____________ Appeal 2009-006716 Application 10/409,726 Technology Center 3600 ____________ Decided: May 11, 2010 ____________ Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and STEPHEN C. SIU, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-006716 Application 10/409,726 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-27. We have jurisdiction over the appeal under 35 U.S.C. § 6(b) (2002). We AFFIRM. BACKGROUND Appellant’s invention is directed to systems and methods for automated replenishment of consumables, replacement of maintenance components, and/or repair of failed components in an electrical device (Spec. [1]). Claim 1 is illustrative: 1. A method for servicing a device, comprising: receiving a service request signal from a serviced device, the service request signal corresponding to a need for service to the serviced device and having an identifier which identifies the serviced device; identifying a service agreement that is applicable to the serviced device based upon the received identifier; retrieving entitlement information corresponding to the service agreement, the entitlement information defining at least one attribute of service that is to be provided under the service agreement, and the attribute of service corresponding to the need for service; determining a response specifying a service that corresponds to the need for service; communicating a message to an entity with instructions to provide the service; and receiving a service completed signal from the serviced device, the service completed signal corresponding to a condition indicating that the need for service has been provided. Appeal 2009-006716 Application 10/409,726 3 The Examiner relies on the following prior art reference as evidence of unpatentability: Iihoshi US 6,754,570 B2 Jun. 22, 2004 Toyama US 6,662,090 B2 Dec. 9, 2003 Appellant appeals the rejection of claims 1-4 and 11-27 under 35 U.S.C. § 102(e) as anticipated by Toyama; and claims 5-10 under 35 U.S.C. § 103(a) as being unpatentable over Toyama in view of Iihoshi. ISSUES Did the Examiner err in asserting that vehicle 2’s transmittal of environment data to service provider 3 in Toyama corresponds to the service request signal and service completed signal received from the serviced device, as recited in independent claims 1, 23, 26, and 27? Did the Examiner err in asserting that a combination of Toyama and Official Notice renders obvious dependent claims 2 and 25? FACTUAL FINDINGS We rely on the Examiner's factual findings stated in the Answer (Exam’r’s Ans. 2-6, 9-12, 15-19). PRINCIPLES OF LAW During examination of a patent application, a pending claim is given the broadest reasonable construction consistent with the specification and should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Appeal 2009-006716 Application 10/409,726 4 While the specification can be examined for proper context of a claim term, limitations from the specification will not be imported into the claims. CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005). To adequately traverse a finding of Official Notice, the appellant must specifically point out the supposed errors in the Examiner's action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art. In re Chevenard, 139 F.2d 711, 713 (CCPA 1943). ANALYSIS We are not persuaded the Examiner erred in asserting that vehicle 2’s transmittal of environment data to service provider 3 in Toyama corresponds to the service request signal and service completed signal received from the serviced device, as recited in independent claims 1, 23, 26, and 27 (App. Br. 8-10, 12-13, 15-19). The sending of raw environmental data that makes up “service request” and/or “service completed” signals in Toyama, even without an express recognition by vehicle 2 of the “service request” and/or “service completed” signals in the raw environmental data, is sufficient to meet the claimed recitations (Ex. Ans. 16, 18). See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1364; CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d at 1231. We are also not persuaded the Examiner erred in asserting that a combination of Toyama and Official Notice renders obvious dependent claims 2 and 25 (App. Br. 10-11, 14-15). Appellant traverses the Examiner’s findings of Official Notice concerning the subject matter of Appeal 2009-006716 Application 10/409,726 5 dependent claims 2 and 25, and requests that the Examiner provide “specific factual findings predicated on sound technical and scientific reasoning in support of the conclusion of common knowledge.” The Examiner has set forth such findings on page 19 of the Examiner’s Answer. As the Appellant has not set forth specific, technical arguments as to why these findings are inadequate, we will sustain the rejection. See In re Chevenard, 139 F.2d at 713. DECISION The Examiner’s rejections of claims 1-27 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). See 37 C.F.R. § 1.136(a)(1)(v) (2007). AFFIRMED Appeal 2009-006716 Application 10/409,726 6 hh HEWLETT-PACKARD COMPANY Intellectual Property Administration 3404 E. 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