Ex Parte Plut

Patent Trial and Appeal Board

Mar 17, 2017

12777092 (P.T.A.B. Mar. 17, 2017)

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.
12/777,092 05/10/2010 William J. Plut 0203-0520 3649
68103 7590
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
EXAMINER
BOYD, JONATHAN A
ART UNIT PAPER NUMBER
2627
NOTIFICATION DATE DELIVERY MODE
03/21/2017 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):
u sdocketing @ j effersonip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM J. PLUT
Appeal 2014-003445
Application 12/777,0921
Technology Center 2600
Before MICHELLE N. WORMMEESTER, MELISSA A. HAAPALA, and
KAMRAN JIVANI, Administrative Patent Judges.
JIVANI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 33—52, which are all the claims
pending in the present application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant identifies Samsung Electronics Co., Ltd. as the real party in
interest. App. Br. 2.
Appeal 2014-003445
Application 12/777,092
STATEMENT OF THE CASE
The present application relates to techniques for conserving power by
altering video information for background portions of a display area.
Spec. 12.
Claim 33 is illustrative:
33. A method for reducing power consumed by an electronics
device that includes a display device, the method comprising:
altering background video information to produce altered
background video information such that the display device will
consume less power when displaying the altered background
video information than an amount of power that would be
required to display the background video information without the
alteration;
at least partially preserving video information for a
graphical user interface item; and
displaying the altered background video information with
the preserved video information for the graphical user interface
item.
The Rejections
Claims 33—52 stand rejected under 35 U.S.C. § 102(e) as anticipated
by Chandley (US 2006/0101293 Al; May 11, 2006).
Claims 47—51 stand rejected on the ground of non-statutory double
patenting over claims 14—18 of Plut (US 7,714,831 B2; May 11, 2010).
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Appeal 2014-003445
Application 12/777,092
ANALYSIS
Double Patenting
Appellant fails to address the Examiner’s double patenting rejection
of claims 47—51. Compare Final Act. 10-13 with generally App. Br. 4—18.
Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(l)(iv)
(2014). Accordingly, we sustain the Examiner’s non-statutory double
patenting rejection of claims 47—51.
Anticipation
The Examiner rejects claims 33—52 applying a priority date of June
20, 2006, later than Chandley’s filing date of November 10, 2004. Adv. Act.
2. Appellant contends the Examiner errs because the rejected claims are
entitled to an “effective priority date of at least July 15, 2004 or July 15,
2003, both of which are earlier than the filing date of Chandley.” App. Br.
5. Appellant’s specific dates are based on priority claims to “commonly-
owned and co-pending U.S. Patent Application No. 10/891,734, filed July
15, 2004” (the “’734 application”) and “U.S. Provisional Patent Application
No. 60/487,761 filed on July 16, 2003” (the “’761 application). Spec. 11.
Under 35 U.S.C. § 120, “a claim in a later application receives the
benefit of the filing date of an earlier application so long as the disclosure in
the earlier application meets the requirements of 35 U.S.C. § 112,11,
including the written description requirement, with respect to that claim.”
Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326 (Fed. Cir.
2008). To comply with the written description requirement of 35 U.S.C.
§ 112 in order to be entitled to an earlier priority date under 35 U.S.C. § 120,
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Appeal 2014-003445
Application 12/777,092
each claim limitation must be expressly, implicitly, or inherently supported
in the earlier-filed disclosure. Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed.
Cir. 1998). When an explicit limitation in a claim “is not present in the
written description whose benefit is sought it must be shown that a person of
ordinary skill would have understood, at the time the patent application was
filed, that the description requires that limitation.” Id. Significantly, the
Examiner bears the burden of presenting by a preponderance of evidence
why a person skilled in the art would not recognize in Applicant’s disclosure
a description of the invention defined by the claims. In re Wertheim, 541
F.2d 257, 263 (CCPA 1976).
Appellant sets forth detailed arguments identifying support for the
limitations of independent claims 33, 47, and 52 in each of the ’734 and ’761
applications. App. Br. 6—17. The Examiner, however, fails to address
Appellant’s evidence and arguments regarding the ’761 application,
choosing to respond only to Appellant’s evidence and arguments regarding
the ’734 application. Ans. 12—14; Adv. Act. 2. Having reviewed the
evidence proffered by Appellant on the ’761 application, we are persuaded
that the Examiner has failed to establish by a preponderance of evidence
why a person skilled in the art would not recognize in Applicant’s disclosure
in the ’761 application a description of the invention defined by independent
claims 33, 47, and 52. See In re Wertheim, 541 F.2d at 263.
Accordingly, we do not sustain the Examiner’s rejection of claims 33—
52 as anticipated.
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Appeal 2014-003445
Application 12/777,092
DECISION
We affirm the Examiner’s non-statutory double patenting rejection of
claims 47—51.
We reverse the Examiner’s anticipation rejection of claims 33—52.
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-IN-PART
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