Ex Parte Sarma

Board of Patent Appeals and Interferences

Aug 17, 2010

10260834 (B.P.A.I. Aug. 17, 2010)

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.
10/260,834 09/30/2002 Srinivas G. Sarma 2002-003 7266
54472 7590 08/17/2010
COATS & BENNETT/SONY ERICSSON
1400 CRESCENT GREEN
SUITE 300
CARY, NC 27518
EXAMINER
BILGRAMI, ASGHAR H
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
08/17/2010 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 SRINIVAS G. SARMA
____________

Appeal 2009-005785
Application 10/260,834
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT,
and CARLA M. KRIVAK, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005785
Application 10/260,834

2
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 6-41. Claims 1-5 are withdrawn from consideration. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Appellant’s invention relates to a method and apparatus for supporting
remote servicing of embedded systems that communicate with a local
system and a remote system (Spec. 1-2).
Independent Claim 6 is representative and reads as follows:
6. A method of supporting remote service of embedded
systems, the method comprising:
receiving a service request at a remote computer system linked
via computer network to a local computer system originating the
service request, and wherein the local computer is communicatively
coupled to an embedded device for which diagnostics are desired;
interacting with the embedded device from the remote computer
system responsive to the service request; and
providing service feedback to the local computer system based
on interacting with the embedded device.
The Examiner relies on the following prior art in rejecting the claims:
Koyama US 6,947,675 B2 Sep. 20, 2005
(filed May 2, 2002)
Claims 6-41 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Koyama.
Rather than repeat the arguments here, we make reference to the
Briefs and the Answer for the respective positions of Appellant and the
Examiner.

Appeal 2009-005785
Application 10/260,834

3
ISSUE
The issue is whether the Examiner erred in rejecting the claims under
35 U.S.C. § 102(e). The issue specifically turns on whether Koyama
anticipates Appellant’s claimed invention by disclosing the step of
“interacting with the embedded device from the remote computer system
responsive to the service request,” as recited in claim 6.

FINDINGS OF FACT (FF)
1. As depicted in Figure 1 of Koyama, the remote maintenance
and diagnosis system includes client appliances 11 – 1N, a customer
appliance administration apparatus 11, and a remote maintenance/diagnosis
apparatus 12, which are connected with one another via a network 10. (Col.
3, ll. 31-37)
2. Koyama discloses that the customer appliance administration
apparatus 11 collects and manages various information about the client
appliances 11 – 1N for remote diagnosis of the client appliances. (Col. 3, ll.
52-55.)
3. The customer appliance administration apparatus 11 processes
the information collected from the client appliances and transfers the
information to the remote maintenance/diagnosis apparatus 12.
Alternatively, the remote maintenance/diagnosis apparatus 12 can access
apparatus 11 anytime to obtain necessary information for diagnosis. (Col. 3,
l. 63 – col. 4, l. 3.)
4. Koyama further discloses that, upon detecting a failure, each of
the client appliances 11 – 1N can make a service call to the customer
appliance administration apparatus 11. (Col. 4, l. 62 – col. 5, l. 5.)
Appeal 2009-005785
Application 10/260,834

4
5. All types of information related to the failure of the client
appliances 11 – 1N are stored in the database 24 of the customer appliance
administration apparatus 11, which is accessed by the remote
maintenance/diagnosis apparatus 12 for making remote diagnosis of the
client appliances. (Col. 5, ll. 16-20.)

PRINCIPLES OF LAW
A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference. See In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994).
“Anticipation of a patent claim requires a finding that the claim at issue
‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d
1342, 1346 (Fed. Cir. 1999) (quoting Titanium Metals Corp. of Am. v.
Banner, 778 F.2d 775, 781 (Fed. Cir. 1985)).

ANALYSIS
As described above, the customer appliance administration apparatus
11 of Koyama obtains the information needed for diagnosis from the client
appliances 11 – 1N and stores the information in the database 24 (FF 1, 2, 5).
The stored information is later transferred to the remote
maintenance/diagnosis apparatus 12 for diagnosis (FF 3). The information
related to the client device failure may also be sent by each of the client
devices to the customer appliance administration apparatus 11 (FF 4). We
agree with Appellant (App. Br. 5) that the claimed interaction requires some
connection between the remote computer and the embedded devices such
Appeal 2009-005785
Application 10/260,834

5
that the remote computer provides service feedback based on the interaction
with embedded device. See claim 6.
Therefore, we disagree with the Examiner (Ans. 9) characterizing
Koyama’s access to the database of the customer appliance administration
apparatus 11 by the remote computer or the remote maintenance/diagnosis
apparatus 12 as the claimed interaction by the remote computer with the
embedded device. In that regard, the only interaction in Koyama with the
embedded device is by the customer appliance administration apparatus 11,
where the remote computer of Koyama obtains information regarding the
embedded device from the stored information in the local computer without
any interaction with the embedded device (FF 5). We therefore conclude
that Koyama cannot anticipate the claimed subject matter since the
Examiner has not pointed to any disclosure in the reference showing that the
remote maintenance/diagnosis apparatus 12 interacts with the embedded
device.

CONCLUSION
On the record before us, we find that the Examiner erred in finding
that Koyama anticipates Appellant’s claimed invention by disclosing the
step of “interacting with the embedded device from the remote computer
system responsive to the service request,” as recited in claim 6. Similarly,
we do not sustain the anticipation rejection of claim 32, which requires
interaction between the remote computer and the embedded device, nor of
claims 7-31 and 33-41 depending from claims 6 and 32.

Appeal 2009-005785
Application 10/260,834

6
ORDER
The decision of the Examiner rejecting claims 6-41 is reversed.

REVERSED

babc

COATS & BENNETT/SONY ERICSSON
1400 CRESCENT GREEN
SUITE 300
CARY, NC 27518