kriv ak, - finnegan...2015/09/03 · teach the claimed "thermostat, a parking meter, and an...

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte GEOFFREY B. RHOADS and NICOLE RHOADS

Appeal2012-012416 Application 12/498,709 Technology Center 2600

Before JEAN R. HOMBRE, CARLA M. KRIV AK, and JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of

claims 1--8 and 25. Claims 9- 24 have been cancelled. App. Br. 3. We have

jurisdiction under 35 U.S.C. § 6(b).

We affirm.

Case: 15-1972 Document: 1-2 Page: 12 Filed: 09/03/2015 (13 of 25)

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Appeal2012-012416 Application 12/498,709

STATEMENT OF THE CASE

Appellants' claimed invention is directed to the interactions of cell

phones with other devices. Spec. 1:9-10.

Independent claim 1, reproduced below, is representative of the

subject matter on appeal.

1. A method comprising the acts:

with a mobile phone, obtaining identification information corresponding to a device, the device being selected from the group consisting of: a thermostat, a parking meter, and an alarm clock;

by reference to the identification information, identifying application software corresponding to said device;

downloading the identified application software to the mobile phone, from a repository remote from the device; and

through use of said application software, interacting with the device;

wherein the mobile phone serves as a multi-function controller-adapted to control a particular device through use of application software identified by reference to information corresponding to that device.

REFERENCES and REJECTIONS

The Examiner rejected claims 1-7 and 25 under 35 U.S.C. § 103(a) as

being unpatentable over Bloebaum (US 2009/0237546 A1, Sept. 24, 2009)

and Davis (US 2007/0108287 A1, May 17, 2007). Ans. 5-9.

The Examiner rejected claim 8 under 35 U.S. C. § 103(a) as being

unpatentable over B1oebaum, Davis, and Meade (US 2003/0073412 A1,

Apr. 17, 2003). Ans. 9- 12.

2



ANALYSIS 1

We consider Appellants' arguments seriatim as they are presented in

the Appeal Brief, pages 6-18. We have considered Appellants' Reply Brief

but find it unpersuasive to rebut the Examiner's responses.

Dispositive Issue: Under 35 U.S.C. § 103(a), did the Examiner err in

finding that the combination of Bloebaum and Davis teaches or suggests a

thermostat, a parking meter, and an alam1 clock, as recited in claim 1?

We fmd the preponderance of evidence supports the Examiner's

conclusion that Appellants' claims 1-7 and 25 are unpatentable over the

combination of Bloebaum and Davis, and claim 8 is unpatentable over

Bloebaum, Davis, and Meade. Accordingly, we sustain the Examiner's

rejection of each of these claims for the reasons set forth in the Answer

(Ans. 13-16). For emphasis only, we provide the following.

Appellants contend the combination of Bloebaum and Davis fails to

teach the claimed "thermostat, a parking meter, and an alarm clock" (App.

Br. 6-8). Appellants admit Davis teaches "robot, portable or desktop

1 On page 6 of the Reply Brief, Appellants argue "[i]fthe Office wishes to change the obviousness rejections to rely on Davis, for subject matter previously said to be found in Bloebaum, then the Office should re-open prosecution." See also Reply Br. 7. These arguments are directed to a petitionable issue and not an appealable issue. See In re Schneider, 481 F.2d 1350, 1356-57 (CCPA 1973) and In re Mindick, 371 F.2d 892, 894 (CCPA 1967). See also Manual of Patent Examining Procedure ("MPEP") (8th ed., August 2001) § 1002.02(c), item 3(g) and§ 1201. Thus, the relief sought by Appellants would have been properly presented by a petition to the Director under 37 C.P.R.§ 1.181 instead ofby appeal to this Board. Accordingly, we have not considered any of the issues raised by Appellants' arguments. We note, however, the Appellants have been provided with an opportunity to rebut the Examiner's Answer in their Reply Brief.

3



computer, consumer electronic device, telephone, embedded computer on

board a vehicle, or other machine, appliances." !d. at 8 (emphasis omitted).

However, we agree with the Examiner that it would be well known to

one of ordinary skill in the art to substitute a thennostat, a parking meter,

and an alann clock for a consumer electronic device or other machine or

appliances. Ans. 13.

Further, we deem using a thermostat or an alarm clock as an appliance

to be to be well within the skill of an ordinary artisan. As an example of the

state of the prior art, see Meade, paragraph 34 ("appliance set 40, which

includes heating and cooling them1ostat 42, alann clock 44").2

With respect to claims 7 and 25, Appellants assert these claims are

allowable because they depend from claim 1 (App. Br. 15). As we sustain

the Examiner's rejection of claim 1, we also sustain the rejection of claims 7

and 25.

Further, while Appellants raise additional arguments for patentability

of claims 1---6 and 8 (App. Br. 9-18), we find that the Examiner has rebutted

in the Answer each of the arguments by a preponderance of the evidence.

Ans. 5-16. Therefore, we adopt the Examiner's fmdings and underlying

reasoning, which are incorporated herein by reference. Consequently,

2 We further note a Markush group is recited in claim 1: "the device being selected from the group consisting of a thermostat, a parking meter, and an alarm clock" (emphasis added). See MPEP § 2173.05(h)(I). Accordingly, the Examiner is only required to show prior art disclosing any one of these devices. See Fresenius USA, Inc. v. Baxter Int'l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009) ("[T]he entire element is disclosed by the prior art if one alternative in the Markush group is in the prior art." (citing Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1380 (Fed. Cir. 2003))).

4



Appellants have failed to show error in the Examiner's rejections of claims

1-8 and 25.

DECISION

The Examiner's decision rejecting claims 1-8 and 25 is affirmed.

No time period for taking any subsequent action in connection with

this appeal may be extended under 37 C.P.R. § 1.136(a)(l)(iv).

AFFIRMED

msc

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kriv ak, - finnegan...2015/09/03 · teach the claimed "thermostat, a parking meter, and an...

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