Ex Parte Johnson et al

Patent Trial and Appeal Board

Jun 5, 2018

12303114 (P.T.A.B. Jun. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/303,114 12/01/2008 Simon B. Johnson
23524 7590 06/07/2018
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
104985-0426 2788
EXAMINER
GOLDSCHMIDT, CRAIG S
ART UNIT PAPER NUMBER
2132
NOTIFICATION DATE DELIVERY MODE
06/07/2018 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIMON B. JOHNSON and LEV M. BOLOTIN 1
Appeal 2017-011464
Application 12/303,114
Technology Center 2100
Before ROBERT E. NAPPI, STEVEN M. AMUNDSON, and
JASON M. REPKO, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1, 11, and 21through38. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is III Holdings 7, LLC.
App. Br. 2.
Appeal 2017-011464
Application 12/303,114
INVENTION
Appellants' disclosed invention is directed to a method and system to
backup information from a handheld device. Abstract. Claim 1 is
representative of the invention and reproduced below.
1. A method of operation of an information backup system, the
method comprising:
charging a handheld device through a cord from a
charger via a hardwire connector at a first end of the cord
connected to the handheld device and an electrical connector
module connected at a second end of the cord with the charger;
automatically detecting a handheld device type for the
connected handheld device;
storing information in a memory module, wherein the
information stored in the memory module is based on the
automatically-detected handheld device type; and
receiving, from a computing device via a USB connector,
edited information corresponding to the information in the
memory module.
REJECTIONS AT ISSUE2
The Examiner has rejected claims 1, 11, 22 through 28, and 30
through 37 under 35 U.S.C. § 103(a) as being unpatentable over Kobayashi
(US 2003/0098670 Al, pub. May 29, 2003) and Buniatyan (US
2005/0208967 Al, pub. Sept. 22, 2005). Final Act. 2-9.
The Examiner has rejected claim 21under35 U.S.C. § 103(a) as
being unpatentable over Kobayashi, Buniatyan, and Powell (US
2006/0080471 Al, pub. Apr. 13, 2006). Final Act. 9-10.
2 Throughout this Decision we refer to the Appeal Brief filed March 30,
2017, Reply Brief filed September 12, 201 7, Final Office Action mailed
August 30, 2016, and the Examiner's Answer mailed August 10, 2017.
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Application 12/303,114
The Examiner has rejected claims 29 and 38 under 35 U.S.C. § 103(a)
as being unpatentable over Kobayashi, Buniatyan, and Kokubun (US
2002/0023198 Al, pub. Feb. 21, 2002). Final Act. 10-11.
ANALYSIS
Appellants argue on pages 8 through 11 of the Appeal Brief that the
Examiner's office action is incomplete. These arguments are directed to an
issue petitionable to the Director and not an issue appealable to the Board.
See Manual of Patent Examining Procedure (MPEP) (9th ed. Rev. 08.2017,
Jan. 2018) § 1002.02(c), item 3(g) and§ 1201.
Appellants argue on pages 11 through 13 of the Appeal Brief, and
pages 4 through 7 of the Reply Brief that the Examiner's obviousness
rejection is in error. Appellants argue that the combination of Kobayashi
and Buniatyan does not disclose the claim 1 limitation of automatically
detecting a handheld device type and storing information in a memory
module based upon the automatically detected device type. App. Br. 11.
Appellants' arguments focus on Buniatyan, which the Examiner relies upon
to teach automatically determining a device type. App. Br. 11. Specifically,
Appellants argue:
Buniatyan disclose that "an appropriate adapter needs to be
selected" and that "a suitable interface adapter needs to be
connected to the main unit." These "needs" are precursors that
are fulfilled prior to when "a respective interface is detected by
a universal adapter interface," as disclosed in paragraph [0028].
Expressing a need for certain operations to be performed prior
to performing other operations, as in Buniatyan, is not the same
as actually performing the action of "automatically detecting a
handheld device type," as claimed.
App Br. 12. (emphasis original). Further, Appellants argue that:
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Application 12/303,114
Without a teaching of the claimed "detecting a handheld device
type," it is impossible for Buniatyan to disclose that "firmware
protocol is loaded to the main unit's communication logic" in
response to detecting an interface or performing a backup to
data once the device has been detected.
App Br 13. (emphasis original).
The Examiner provides a comprehensive response to Appellants'
arguments. Specifically the Examiner finds that Buniatyan teaches an
interface adaptor is selected based upon a type of cell phone and that in
response to detecting the type of interface connected to the universal data
storage device (USD) the firmware for is loaded into to the memory of the
USD device. Ans. 14. The Examiner:
interprets detection of the interface type used to connect the
handheld device as detecting a handheld device type since the
interface type is selected based on the device type (paragraph
27); all of the hand held devices that can connect via a specific
interface can be considered a "type" of handheld device (for
example, USB handheld device).
Ans. 14.
We have reviewed the Appellants' Specification and the teachings of
Buniatyan, we concur with the Examiner's interpretation of the "portable
device type" and finding that Buniatyan teaches the claimed automatically
determining the device type. Specifically, Buniatyan teaches that the
adaptor is selected based upon phone type, those types being types that
interface serially, or by USB connection or by IrDA/Infrared. See para's 27,
30, 31 and 32. Further, we concur that Buniatyan, teaches the protocol for
the specific adaptor interface (serial, USB, IrDA/Infrared) is loaded when
the adaptor is detected. Thus, by detecting a specific type of adaptor, which
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Application 12/303,114
corresponds to the type of phone connected; the system is also detecting the
type of phone connected. Appellants' arguments on page 12 of the Appeal
Brief, discussed above, concerning operations being performed prior to the
detecting, are not persuasive of error in the Examiner's finding.
Representative claim 1, does not recite detecting the handheld device in a
manner that precludes actions such as selecting an interface, from being
performed prior to the determining. Similarly, Appellants' arguments, on
page 5 of the Reply Brief, that Buniatyan teaches detecting an interface type
and not a cell phone type and that many different device types can use the
same interface, is not persuasive. These arguments a are not commensurate
with the scope of claim 1. Appellants' arguments have not shown, nor do
we find that representative claim 1 recites a limitation which precludes the
Examiner's interpretation of device type being a device that communicates
by serial, or USB, or IrDA/Infrared. Nor do we find that representative claim
1 recites a limitation that precludes many different devices from
communicating with the same interface. Thus, we are not persuaded the
Examiner erred in finding that Buniatyan teaches the claim 1 limitation of
automatically detecting a handheld device type.
As discussed above Appellants' arguments directed to the claim 1
limitation of storing information in a memory module based upon the
automatically detected device type, is premised upon Buniatyan not teaching
the limitation of automatically detecting a handheld device type. Thus,
Appellants have not persuaded us that the Examiner erred in finding that
Buniatyan teaches or suggests the claim 1 limitation of storing information
in a memory module based upon automatically detecting a device type.
Accordingly, we sustain the Examiner's rejection of claim 1 and we sustain
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Application 12/303,114
the Examiner's rejection of claims 11, 22 through 28 and 3 0 through 3 7
grouped with claim 1.
Appellants have not presented separate arguments directed to the
rejections of claims 21, 29 and 38 under 35 U.S.C. § 103(a). Accordingly,
we sustain the rejections of these claims for the same reasons as discussed
above with respect to claim 1.
DECISION
We affirm the Examiner's rejection: of claims 1, 11 and 21 through 38
under 35 U.S.C. § 103.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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