Ex Parte Otaka et al

Patent Trial and Appeal Board

Mar 1, 2016

13535051 (P.T.A.B. Mar. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/535,051
22913 7590
Workman Nydegger
60 East South Temple
Suite 1000
06/27/2012
03/03/2016
Salt Lake City, UT 84111
FIRST NAMED INVENTOR
OsamuOTAKA
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.
050547A 1019
EXAMINER
HONG, DUNG
ART UNIT PAPER NUMBER
2643
NOTIFICATION DATE DELIVERY MODE
03/03/2016 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):
Docketing@wnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OSAMU OT AKA, MINEKO MOROTO,
NORIOKI WATANABE, TOSHIHIKO MURAKAMI,
SATOSHI OGAWA, and NAOMI NISHIKATA
Appeal2014-003461
Application 13/535,051
Technology Center 2600
Before KRISTEN L. DROESCH, TERRENCE W. McMILLIN, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
RAAP ALA, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 32 and 33. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2014-003461
Application 13/535,051
REPRESENTATIVE CLAIM
Claim 32 is representative of the subject matter on appeal:
32. A method for downloading an application to a mobile
communications terminal, the terminal comprising Email
confidential information having access protection, the method
compnsmg:
instructing the download of the application at the mobile
communications terminal;
retrieving information representing whether the
application is expected to access the Email confidential
information having access protection, prior to downloading the
application;
determining, in the mobile communications terminal,
whether download of the application is permitted based on which
of said Email confidential information the application is expected
to access; and
downloading the application to the mobile
communications terminal, if download of the application is
permitted.
REJECTIONS ON APPEAL
Claims 32 and 33 stand rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claim 1 of
Otaka (US 8,406,734 B2; issued Mar. 26, 2013). 1
Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination ofBeresin (US 2004/0158829 Al; published
1 The Examiner withdrew the provisional obviousness type double patenting
rejection and entered a non-provisional double patenting rejection because of
the issuance of the cited patent. Ans. 3-5.
2
Appeal2014-003461
Application 13/535,051
Aug. 12, 2004) and Kashito (US 2002/0116401 Al; published Aug. 22,
2002).
ISSUES
Appellants' contentions present us with the following issues:
A) Did the Examiner err in rejecting claims 32 and 33 on the grounds
of nonstatutory obviousness-type double patenting?
B) Did the Examiner err in finding the combined teachings of Beresin
and Kashito teach or suggest "Email confidential information having access
protection," as recited in claim 32?
ANALYSIS
We have reviewed the Examiner's rejections in consideration of
Appellants' contentions. We disagree with Appellants' conclusions that the
Examiner's rejections of the claims are in error.
Issue A: Double Patenting Rejection
Appellants contend the obviousness-type double patenting rejection is
in error. In particular, Appellants argue that the PTO is estopped because
the Examiner required election in the parent application, the claims did not
materially change, and, thus, the rejection is contrary to 35 U.S.C. § 121.
App. Br. 10-11; Reply Br. 1. Appellants further "question whether a
method claim can comprise double patenting of an apparatus claim." App.
Br. 10.
We are not persuaded by Appellants' arguments. A later claim is not
patentably distinct from an earlier patent claim if the later claim is obvious
over, or anticipated by, the earlier claim. Eli Lilly & Co. v. Barr Labs., Inc.,
251F.3d955, 968 (Fed. Cir. 2001). We disagree with Appellants'
conclusory statement that a method claim cannot obviate the apparatus
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Appeal2014-003461
Application 13/535,051
claims of the present application. The Examiner has set forth sufficient
findings to establish the rejected claims are obvious over Otaka (Ans. 3-5).
Furthermore, 35 U.S.C. § 121 does not apply to remove a patent as a
reference when the principle of consonance is violated. Symbol Techs., Inc.
v. Opticon, Inc., 935 F.2d 1569, 1579 (Fed. Cir. 1991); see also Manual of
Patent Examining Procedure (MPEP) § 804.01 (9th Ed., Mar. 2014).
Consonance requires the line of demarcation that prompted the restriction
requirement to be maintained. Gerber Garment Tech., Inc. v. Lectra Sys.,
Inc., 916 F.2d 683, 688 (Fed. Cir. 1990). In the Office Action of the parent
Application 10/556,528 in which Examiner made the restriction requirement
(mailed Mar. 5, 2010) ("Rest. Act."), the Examiner grouped the claims into
"method and apparatus for determining whether an application is to access a
predetermined resources ... "(Group I) and "method and apparatus for
determining whether a mail application can access the mailing resource such
as transmitting and receiving'' (Group II). Rest. Act. 2. We agree with the
Examiner (Ans. 8) that the scope and content of claims 32 and 33 has
changed in material respects compared to the original restricted claims 28-
29 (Group II) of the parent Application that led to the filing of this divisional
application. Claim 28 was directed to a mailer application program, in
contrast to claim 32 which is directed to a method for downloading an
application and recites "retrieving information representing whether the
application is expected to access the Email confidential information"
(emphasis added). Compare claim 32 (App. Br. 16) with claim 28 (Spec.
69). Claim 32 and its dependent claim 33 have crossed the line of
demarcation and are no longer consonant with the restriction requirement.
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Application 13/535,051
Therefore, we are not persuaded by Appellant's arguments that the
prohibition in Section 121 should apply to pending claims 32 and 33.
For the reasons stated above, Appellants fail to persuade us of error in
the double-patenting rejection. Accordingly, we sustain the nonstatutory
obviousness-type double patenting rejection of claims 32 and 33.
Issue B: Obviousness Rejection
Appellants contend the combination of Beresin and Kashito, and in
particular Kashito, does not teach the claimed "access protection" recited in
claim 32. App. Br. 12-13; Reply Br. 2-3. Appellants argue the Examiner's
interpretation of "access protection" is "far broader than anything suggested
by the claim language, the Appellants' disclosure, or the prior art." Reply
Br. 3--4. Appellants further argue the combination is improper because
"the references teach oppositely and would not have been combined by the
person of ordinary skill," and the rationale to support obviousness is not
mentioned or applied. App. Br. 12-14.
During prosecution, claims are given their broadest reasonable
interpretation consistent with the specification. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Examiner finds, and we
agree, Kashito teaches prior to deleting an email (email confidential
information), a user confirms deletion of data (access protection). Final Act.
7 (citing Kashito i-fi-f 111, 114). We agree with the Examiner that "access
protection" can broadly, yet reasonably, encompass preventing deletion (not
permitting delete access to the email). Thus, Appellants fail to persuade us
that Kashito does not teach or suggest "Email confidential information with
access protection."
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Application 13/535,051
Appellants also fail to persuade us that the combination is improper.
The Examiner finds modifying Beresin with Kashito is a simple substitution
of one known element for another to obtain predictable results. Ans. 10-11.
This is sufficient articulated reasoning to support the combination. See KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Furthermore, to teach
away, a reference must "criticize, discredit, or otherwise discourage"
investigation into the claimed solution. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Appellants do not provide sufficient argument or evidence
to show that either reference teaches away from the combination.
For the reasons stated above, Appellants fail to show reversible error.
It is not our function to examine the claims in greater detail than argued,
looking for patentable distinctions over the prior art. See In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991). Accordingly, we
sustain the 35 U.S.C. § 103(a) rejection of claim 32 and its dependent claim
33, which is not separately argued.
DECISION
We affirm the Examiner's decision to reject claims 32 and 33.
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.
§ 41.50(±).
AFFIRMED
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