Ex Parte Orhomuru

Patent Trial and Appeal Board

Aug 8, 2016

09862789 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
09/862,789 09/21/2001
65591 7590 08/10/2016
MICHAEL J. BOOTCHECK, LLC
P.O. BOX 3505
MCDONOUGH, GA 30253
FIRST NAMED INVENTOR
Sunday Orhomuru
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3049.00lUSUl 8994
EXAMINER
DALENCOURT, YVES
ART UNIT PAPER NUMBER
2457
NOTIFICATION DATE DELIVERY MODE
08/10/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
MICHAELBOOTCHECK@BOOTCHECKLA W.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUNDAY ORHOMURU
Appeal2015-005268
Application 09/862,789
Technology Center 2400
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-005268
Application 09/862,789
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 5,
6, and 12-26. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The invention relates to data transfer using a wireless mobile device.
Claim 5, reproduced below, is illustrative of the claimed subject matter1:
5. A system for transferring data, said system comprising the
steps of:
obtaining a wireless mobile device, said wireless mobile
device having a wireless mobile device browser;
utilizing said wireless mobile device to access, post,
update, manage and delete data online;
utilizing said wireless mobile device to wirelessly access
an online computer on a very secure environment with data
integrity.
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Desai US 2005/0192008 Al Sep. 1, 2005
REJECTIONS
The Examiner made the following rejections:
Claims 5, 17, and 23 stand rejected under 35 U.S.C § 112, second
paragraph, as being indefinite.
1 We reproduce claim 5 as presented in the "Response to Notice ofNon-
Compliant Appeal Brief' filed November 14, 2014.
2
Appeal2015-005268
Application 09/862,789
Claims 5, 6, and 12-26 stand rejected under 35 U.S.C § 102(e) as
being anticipated by Desai.
ANALYSIS
The Indefiniteness Rejections
Claims 5 and 23
The Examiner concludes claims 5 and 23 are indefinite because they
do not provide "the components with structures supporting the
functionalities" (Non-Final Act. 2 6). We agree with the Examiner because
the preambles of claims 5 and 23 are drawn to "A system for wireless data
transfer," but the bodies of the claims recite only steps such as "obtaining a
wireless mobile device" and "utilizing said wireless mobile device" rather
than structures for performing the various functions. "A single claim which
claims both an apparatus and the method steps of using the apparatus is
indefinite under 35 U.S.C. 112, second paragraph." MPEP § 2173.05(p)(II)
(citing In re Katz Interactive Call Processing Patent Litigation, 639 F .3d
1303 (Fed. Cir. 2011)); see also IPXL Holdings, L.L.C. v. Amazon.com, Inc.,
430 F.3d 1377, 1384 (Fed. Cir. 2005) (holding invalid a claim covering both
a system and a method as a "hybrid" claim). Appellant's Appeal Brief
provides no arguments specifically addressing the indefiniteness rejection of
claims 5 and 23. Arguments not made are considered waived. See 37 C.F.R.
§ 41.37(c)(l)(iv). Therefore, we are not persuaded the Examiner erred in
rejecting claims 5 and 23 as indefinite.
Claim 17
2 The Non-Final Action dated March 3, 2014.
3
Appeal2015-005268
Application 09/862,789
The Examiner concludes claim 17 is indefinite because "the limitation
of 'wherein said data are data' is unclear" (Non-Final Act. 6). Appellant
does not present specific arguments in the Appeal Brief addressing this
indefiniteness rejection. Absent such arguments, we are not persuaded the
Examiner erred in rejecting claim 17.
The Anticipation Rejection
Appellant contends Desai fails to anticipate claim 5 because "The
Registered User (PDA/WAP phone/pager) 104 can only be connected to the
server/data set 100/lOOa by first connecting it to a Network Device (personal
computer) 104a, and only then to the data set via the internet 102" (Br. 3 15).
"A person of ordinary skill in this technology at the time of the present
invention would know that Desai would be using cables to connect the
mobile device to the network devices (Computer) which will then be
connected to the internet" (Br. 16). We disagree with Appellant.
Desai discloses the following regarding the embodiment shown in
Figure 1:
The network device 12a may be any device that is adapted to
communicate with the information exchange system 10 through
the network 14, such as a personal computer running a standard
Internet web browser application, a personal digital assistant
("PDA"), a wireless application protocol telephone ("W AP
phone"), a pager or a network appliance.
(Desai, i-f 92). Appellant has not shown that Desai requires the W AP phone
to first connect via cables to another device such as a computer before
connecting over the network to the information exchange system. Rather,
Desai simply discloses that "network device 12a ... is adapted to
3 The Appeal Brief filed August 2, 2014.
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Appeal2015-005268
Application 09/862,789
communicate with the information exchange system 10 through the network
14" and that the network device can be a WAP phone (Desai, i-f 92). The
name W AP, which stands for "wireless application protocol" (Desai, i-f 14 ),
indicates that the WAP phone can connect to the network wirelessly.
Accordingly, we find Desai meets the claim 5 limitation "utilizing said
wireless mobile device to wirelessly access an online computer."
We are, therefore, not persuaded the Examiner erred in rejecting claim
5, and claims 6 and 12-26 not specifically argued separately.
CONCLUSIONS
Under 35 U.S.C. § 112, second paragraph, the Examiner did not err in
rejecting claims 5, 17, and 23.
Under 35 U.S.C. § 102(e), the Examiner did not err in rejecting claims
5, 6, and 12-26.
DECISION
For the above reasons, the Examiner's rejection of claims 5, 6, and
12-26 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)(l )(iv).
AFFIRMED
5