Ex Parte Gulin et al

Board of Patent Appeals and Interferences

Jun 6, 2012

11243284 (B.P.A.I. Jun. 6, 2012)

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.
11/243,284 10/04/2005 Jens Gulin 9563-30 6467
54414 7590 06/07/2012
MYERS BIGEL SIBLEY & SAJOVEC, P.A.
P.O. BOX 37428
RALEIGH, NC 27627
EXAMINER
BUI, THUY T
ART UNIT PAPER NUMBER
2155
MAIL DATE DELIVERY MODE
06/07/2012 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 JENS GULIN, PER HYTTFORS, and KARL SODERSTROM
____________

Appeal 2010-001631
Application 11/243,284
Technology Center 2100
____________

Before JOHN A. JEFFERY, DENISE M. POTHIER, and
THOMAS L. GIANNETTI, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001631
Application 11/243,284

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 5, 7, 10, 13, 14, 16, 19, 20, 24, 25, 28, 32-34, 36, 38,
and 40-57. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

STATEMENT OF THE CASE
Appellants’ invention updates portable communication devices with
media files based on situation-dependent media profiles. See generally
Abstract; Spec. 21-23. Claim 1 is illustrative with key disputed limitations
emphasized:
1. Method of updating a portable communication device from a media
file server, the method comprising the steps of:
maintaining a plurality of situation dependent media profiles in
the portable communication device, wherein at least two of the
situation dependent media profiles are associated with different lists
of media files;
determining a first updating circumstance that includes
selecting among the situation dependent media profiles in response to
at least one predefined rule; and
automatically performing, in response to change from a
previously selected situation dependent media profile to a newly
selected situation dependent media profile, updating media files in the
portable communication device via a network connection, through the
steps of:
removing at least one media file that is within the list of
the previously selected situation dependent media profile and
which is not within the list of the newly selected situation
dependent media profile from a limited size file storage of the
portable communication device;
determining the available storage space for media files in
the file storage after the step of removing;
determining an updating volume based on said available
storage space;
requesting, via a wireless connection to a media file
server, a transfer of new media files, which are within the list of
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the newly selected situation dependent media profile, from the
media file server to the file storage to be fit into the updating
volume;
receiving new media files through the wireless
connection replacing at least some removed media files; and
storing the received media files in the media file storage.

THE REJECTIONS
1. The Examiner rejected claims 1, 5, 7, 10, 13, 19, 20, 24, 25, 28, 33,
34, 40-44, 46-48, 50-52, and 54-56 under 35 U.S.C. § 103(a) as unpatentable
over Loveland (US 7,024,214 B2; Apr. 4, 2006 (filed Feb. 6, 2002)) and
Peng (US 6,816,944 B2; Nov. 9, 2004). Ans. 4-9.1
2. The Examiner rejected claims 14, 16, 32, 36, and 38 under 35
U.S.C. § 103(a) as unpatentable over Loveland, Peng, and Kim (US
2006/0168323 A1; July 27, 2006 (filed July 12, 2005)). Ans. 9-10.
3. The Examiner rejected claims 45, 49, 53, and 57 under 35 U.S.C.
§ 103(a) as unpatentable over Loveland, Peng, and Steenstra (US
2005/0075134 A1; Apr. 7, 2005). Ans. 10-11.

THE OBVIOUSNESS REJECTION OVER LOVELAND AND PENG
The Examiner finds that Loveland discloses every recited feature of
representative claim 1 except for the six recited media file updating steps,
but cites Peng as teaching this feature in concluding that the claim would
have been obvious. Ans. 4-6, 14-16.

1 Throughout this opinion, we refer to (1) the Appeal Brief filed February 5,
2009 (supplemented March 26, 2009, and October 22, 2009); (2) the
Examiner’s Answer mailed May 28, 2009; and (3) the Reply Brief filed July
23, 2009.
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Appellants argue that the cited prior art does not teach or suggest
automatically updating media files responsive to changing from a
previously-selected situation dependent media profile to a newly-selected
situation-dependent media profile,2 let alone the first five recited updating
steps. App. Br. 9-12; Reply Br. 2-4. Among other things, Appellants
contend that the cited prior art does not teach or suggest removing at least
one media file that is (1) within the list of the previously-selected situation-
dependent media profile, and (2) not within the list of the newly-selected
situation-dependent media profile. App. Br. 10-12; Reply Br. 2-3.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Loveland and Peng collectively would have taught or suggested
automatically updating media files responsive to changing from a
previously-selected situation-dependent media profile to a newly-selected
situation-dependent media profile, by removing at least one media file that is
(1) within the list of the previously-selected situation-dependent media
profile, and (2) not within the list of the newly-selected situation-dependent
media profile?

ANALYSIS
Claims 1, 5, 7, 10, 13, 19, 20, 24, 25, 28, 33, 40, 42-44, 46-48, and 54-56
Based on the record before us, we find error in the Examiner’s
obviousness rejection of independent claim 1. That said, we see no error in

2 Although Appellants do not hyphenate these terms in connection with the
recited media profiles, we nonetheless add them for proper grammatical
form.
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the Examiner’s mapping the “weekday morning” and “weekend personal
items” synchronization (sync) groups in Loveland’s rule-based
synchronization example to the recited situation-dependent media profiles,
particularly since both groups each contain a list of associated updatable data
items as the Examiner indicates. Ans. 4, 14-15 (citing Loveland, col. 9, l. 58
– col. 10, l. 7; col. 10, ll. 41-50).
Based on this functionality, Loveland teaches automatically updating
a mobile device responsive to (1) changes associated with a particular
situation-dependent media profile (i.e., every morning at 5 AM according to
the “weekday morning” sync group rules), and (2) changing from one sync
group (“media profile”) to another (i.e., from weekdays to weekends). See
Loveland, col. 9, l. 58 – col. 10, l. 59. In this sense, we can see how
Loveland’s changing from one sync group to another with its associated
updating at least suggests changing from a previously-selected to a newly-
selected situation-dependent media profile as claimed, despite the temporal
nature of this change. That is, nothing in the claim precludes automatically
selecting a profile based on a particular schedule.
But we fail to see any reasonable teaching or suggestion of removing
at least one media file that is (1) within the list of the previously-selected
situation-dependent media profile, and (2) not within the list of the newly-
selected situation-dependent media profile as claimed. As noted above, the
Examiner maps the recited situation-dependent media profiles to the
“weekday morning” and “weekend personal items” groups in Loveland.
Although these groups contain some related items (e.g., Inbox, calendar,
email) (see Loveland, col. 10, ll. 1-6, 42-47), items in a particular group are
nonetheless distinct from those in another group. Nor is a determination
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made regarding whether one group’s item is or is not contained in another
group, let alone using such determination as a basis for removing files
responsive to changing from one group to another.
The Examiner’s reliance on Peng is unavailing in this regard.
Although Peng updates and removes outdated cached files as the Examiner
indicates (Ans. 5, 15 (citing Peng, col. 2, ll. 28-32, 48-51; col. 2, l. 64 – col
3, l. 6)), this update still does not account for files that are within the
previously-selected situation-dependent media profile, but not within the
newly-selected situation-dependent media profile according to the
Examiner’s mapping noted above. To the extent that the Examiner’s
position is based on situation-dependent media profiles existing within a
single sync group (e.g., corresponding to particular days of the week in the
weekday morning sync group), this is a position that has not been
sufficiently articulated on this record; nor will we speculate in that regard
here in the first instance on appeal. What we can say, however, is that the
Examiner’s position is untenable on this record.
We are therefore persuaded that the Examiner erred in rejecting (1)
independent claim 1; (2) independent claims 20 and 40 which recite
commensurate limitations; and (3) dependent claims 5, 7, 10, 13, 19, 24, 25,
28, 33, 42-44, 46-48, and 54-56 for the same reasons. Since this issue is
dispositive regarding our reversing the rejection of these claims, we need not
address Appellants’ other arguments pertaining to various dependent claims.
App. Br. 12-14; Reply Br. 4-6.

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Claims 34, 41, and 50-52
For similar reasons, we reach the same conclusion regarding
independent claim 34 which recites, in pertinent part, responsive to changing
from a previously-selected to a newly-selected situation-dependent media
profile, automatically selecting at least one new media file in an archive that
is (1) within the list of the previously-selected situation-dependent media
profile, and (2) not within the list of the newly-selected situation-dependent
media profile to send to a portable communication device for storage.3
Although claim 34 differs from independent claim 1 in pertinent part by the
emphasized limitations above, there is still no teaching or suggestion on this
record to determine whether one group’s media file is or is not contained in
another group, let alone using such determination as a basis for removing
files responsive to changing from one group to another as noted above.
We are therefore persuaded that the Examiner erred in rejecting (1)
independent claim 34; (2) independent claim 41 which recites commensurate
limitations; and (3) dependent claims 50-52 for the same reasons.

THE OTHER OBVIOUSNESS REJECTIONS
Since the Examiner has not shown that the cited prior art cures the
deficiencies noted above regarding the independent claims, we will not
sustain the obviousness rejections of dependent claims 14, 16, 32, 36, 38, 45,
49, 53, and 57 (Ans. 9-11) for similar reasons.

3 Although the last clause of claim 34 reads “to send the selected at least one
new media file and to a portable communication device for storing in local
storage therein,” (emphasis added), we presume the term “and” here is a
typographical error.
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CONCLUSION
The Examiner erred in rejecting claims 1, 5, 7, 10, 13, 14, 16, 19, 20,
24, 25, 28, 32-34, 36, 38, and 40-57 under § 103.

ORDER
The Examiner’s decision rejecting claims 1, 5, 7, 10, 13, 14, 16, 19,
20, 24, 25, 28, 32-34, 36, 38, and 40-57 is reversed.

REVERSED

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