Ex Parte Smith et al

Patent Trials and Appeals Board

Jan 29, 2019

14173934 - (D) (P.T.A.B. Jan. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/173,934 02/06/2014
155218 7590 01/31/2019
BANNER & WITCOFF, LTD.
Applications for Client 008916
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
FIRST NAMED INVENTOR
Robin Smith
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.
008916.00028 7773
EXAMINER
SPRATT,BEAUD
ART UNIT PAPER NUMBER
2143
NOTIFICATION DATE DELIVERY MODE
01/31/2019 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):
PT0-155218@bannerwitcoff.com
guy.pamela@outlook.com
guy.pamela@outlook.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBIN SMITH, SUNIL ANANT GUPTA,
MICHAEL STAPLETON, BENJAMIN JAMES DA VIS,
AMY ANNETTE HAHN, JORDAN HANEIL SHATSOFF,
JOSHUA BENJAMIN WAKEFIELD, BIYING HUANG,
SHADRACK CGAR FRAZIER SR.,
BRANDON WILLIAM ARTHER GRAHAM,
BEAU GUY TREMBLAY,
SONAL SHASHIKANT KULKARNI, DANIEL OBERLIN,
and JULIE E. NELSON
Appeal2018-005861
Application 14/173,934
Technology Center 2100
Before JOHNNY A. KUMAR, LINZY T. McCARTNEY, and
NORMAN H. BEAMER, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134 of the Examiner's final
rejection of claims 1-21, 23, 24, and 26. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
Appeal 2018-005 861
Application 14/173,934
BACKGROUND
The present patent application concerns "allow[ing] a user to share
data, such as one or more files from within an application with one or more
other (not necessarily co-located) computing devices using a gesture-based
sharing function." Specification 1:21-23, filed February 6, 2014 ("Spec.").
Claims 1, 21, 24, and 26 are independent. Claim 1 illustrates the
claimed invention:
1. A method of sharing files via a network-based sharing
service, the method comprising:
receiving, via a user interface, selection of at least one file
for sharing with a separate computing device;
identifying, by a processor of a computing device, one or
more members for sharing, wherein:
each of the one or more members for sharing is
associated with a member identifier, and
the member identifier is associated with an account
in a member device database of the network-based sharing
service and a respective member computing device
executing a data share application in communication with
the network-based sharing service;
for each member of at least a portion of the identified one
or more members for sharing:
receiving, via the network-based share service, a list
of eligible file types associated with one or more
applications installed on the respective member
computing device; and
determining, by the processor, one or more file
types for sharing associated with the member, based at
least in part on the list of eligible file types;
causing, by the processor, presentation of one or more
graphical identifiers within a display area of the computing
device, wherein each graphical identifier of the one or more
graphical identifiers is representative of a respective member of
2
Appeal 2018-005 861
Application 14/173,934
the one or more members, wherein the one or more graphical
identifiers represent at least a portion of the one or more
members;
identifying, by the processor, a user input gesture
indicative of moving the at least one file towards at least a first
graphical identifier of the one or more graphical identifiers;
causing, by the processor, conversion of the at least one
file from a first file type to a second file type, wherein the second
file type is selected from the one or more file types for sharing
associated with the member represented by the first graphical
identifier;
responsive to identifying the user input gesture,
causing, by the processor, presentation of a
graphical representation of the at least one file moving
towards the at least the first graphical identifier, and
issuing, by the processor, via a network, a request
for data sharing, wherein
the request for data sharing comprises a
member identifier associated with the first graphical
identifier,
the request for data sharing comprises
information associated with the at least one file, and
the request for data sharing is directed to the
network-based sharing service; and
receiving, via the network-based sharing service,
responsive to the request for data sharing, an acknowledgment of
data sharing, wherein the acknowledgment comprises the
member identifier.
Appeal Brief 43--44, filed January 31, 2018 ("App. Br.").
3
Appeal 2018-005 861
Application 14/173,934
1, 3-5, 7-17, and 24
2
6
18 and 19
20
21, 23, and 26
REJECTIONS
§ 103
§ 103
§ 103
§ 103
§ 103
§ 103
DISCUSSION
Forutanpour, 1 Helmig, 2
and Maharajh3
Forutanpour, Helmig,
Mahara·h, and Sip4
Forutanpour, Helmig,
Mahara "h, and Wan 5
Forutanpour, Helmig,
Maharajh, and
Shappell6
Forutanpour, Helmig,
Maharajh, Shappell,
and Pattan7
F orutanpour and
Maharajh
We have reviewed the Examiner's rejections in light of Appellants'
arguments, and except for the rejection of claims 21, 23, and 26, we disagree
with Appellants that the Examiner erred. As consistent with the analysis
below, we adopt the Examiner's findings, conclusions, and reasoning in the
1 Forutanpour et al. (US 2011/0083111 Al; Apr. 7, 2011).
2 Johannes Helmig, ADSL, WindowsNetworking.com (August 18, 2001),
http://www.windowsnetworking.com/ articles-tutorials/netgeneral/
adslinfo .html.
3 Maharajh et al. (US 2008/0195664 Al; Aug. 14, 2008).
4 Sip (US 2012/0216153 Al; Aug. 23, 2012).
5 Wang et al. (US 2014/0181219 Al; June 26, 2014).
6 Shappell et al. (US 2005/0091289 Al; Apr. 28, 2005).
7 Pattan (US 2014/0324960 Al; Oct. 30, 2014).
4
Appeal 2018-005 861
Application 14/173,934
Final Office Action mailed September 7, 2017 ("Final Act.") and Answer
mailed March 20, 2018 ("Ans."). We address Appellants' arguments in tum.
Claim 1
"Receiving ... an Acknowledgment of Data Sharing"
Claim 1 recites "receiving, via the network-based sharing service,
responsive to the request for data sharing, an acknowledgment of data
sharing." App. Br. 44. Appellants argue the written description limits "an
acknowledgment of data sharing" to an acknowledgment that data has been
shared. See Reply Brief2-3, filed May 21, 2018 (quoting Spec. 18:18-25,
30:20-28) ("Reply Br."); see also App. Br. 20-22 (quoting Spec. 18: 18-20;
citing Spec. Fig. 2). 8 Appellants contend that Forutanpour does not teach or
suggest "an acknowledgment of data sharing" because Forutanpour teaches
acknowledging that data can be shared, not acknowledging that data has
been shared. App. Br. 20-22; Reply Br. 2-3.
We disagree. On its face, claim 1 does not limit "an acknowledgment
of data sharing" to an acknowledgment that data has been shared, and
Appellants have not pointed to anything in the claim that suggests such a
limitation. For its part, the written description suggests that the broadest
reasonable interpretation of "an acknowledgment of data sharing" includes
an acknowledgment that data can be shared. The written description explains
that, in some implementations, after receiving an acknowledgment of data
sharing, the disclosed method presents a status notification "(e.g.,
acceptance or rejection of the offer to share, success or failure in file
8 The Examiner ( and on occasion, Appellants) cites the published version of
the application. See, e.g., Final Act. 33; Reply Br. 2-3. Throughout this
decision, we have changed these citations to the corresponding pages and
line numbers in the original application.
5
Appeal 2018-005 861
Application 14/173,934
transfer, etc.)." Spec. 30:25-26 (emphasis added). Because the notification is
responsive to "an acknowledgment of data sharing," the notification
indicates that "an acknowledgment of data sharing" includes an
acknowledgment of an acceptance or rejection of an offer to share, that is, an
acknowledgment that data can be shared.
Although the parts of the written description cited by Appellants
suggest that "an acknowledgment of data sharing" also encompasses
acknowledgments that data has been shared, the cited parts of the written
description do not limit the term to these acknowledgments. The cited parts
of the written description simply provide examples of an acknowledgment of
data sharing. See Spec. 18:19-20 ("[J]n some implementations, the share
service 204 acknowledges, to the first computing device 202, the data has
been shared .... " (emphasis added)), 30:22-24 ("In some implementations,
the method 600 includes, responsive to receiving the acknowledgment,
causing presentation, within the display area, of a notification indicative of
success of sharing (626)." (emphasis added)). Although we must interpret
claims in light of the specification, we generally do not limit claims to
embodiments disclosed in the specification. See, e.g., In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) ("We have cautioned
against reading limitations into a claim from the preferred embodiment
described in the specification, even if it is the only embodiment described,
absent clear disclaimer in the specification."). Appellants have not presented
any persuasive reason that we should limit "an acknowledgment of data
sharing" to the acknowledgments described in these examples.
Given these disclosures, we conclude the broadest reasonable
interpretation of "an acknowledgment of data sharing" includes an
6
Appeal 2018-005 861
Application 14/173,934
acknowledgment that data can be shared. Under this interpretation, we agree
with the Examiner that Forutanpour teaches "an acknowledgment of data
sharing." The Examiner found-and Appellants do not dispute-that
F orutanpour teaches sending an authorization message in response to
receiving a request for permission to transmit a file. See Final Act. 5 ( citing
Forutanpour i-fi-fl 10, 144); see also Forutanpour Fig. 43 (showing a method
for obtaining user authorization to receive file transmissions). Forutanpour's
authorization message is at the very least an acknowledgment that data can
be shared.
"Causing ... Conversion of the at Least One File"
Claim 1 recites "causing, by the processor, conversion of the at least
one file from a first file type to a second file type." App. Br. 44. Appellants
suggest that the recited "conversion," considered in light of the written
description, means changing a file to "a completely different type of data."
App. Br. 23 (citing Spec. 1:15-18, 9:7-10, 11:1-10, 25:14--23). Appellants
contend Maharajh does not teach or suggest such a "conversion" because
Maharajh discloses encoding or transcoding data. App. Br. 23-24.
We disagree. Neither claim 1 nor the written description restricts the
recited "conversion" in the way argued by Appellants. Claim 1 does not
recite converting data to "a completely different type of data"; the limitation
simply recites "conversion of the at least one file from a first file type to a
second file type." Although the parts of the written description cited by
Appellants may indicate that "conversion" includes changing CDXML or
MOL files into image files, the written description does not limit
"conversion" to this type of change. At best, the cited parts of the written
description describe examples of a "conversion." See, e.g., Spec. 11: 1-10
7
Appeal 2018-005 861
Application 14/173,934
( disclosing that "in some implementations" selecting a different file type
causes conversion into a different file type before sharing), 25: 14--23 (same).
As explained above, we generally do not limit claims to examples in the
specification. See Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1369. Based on
the plain language of the claim, the recited "conversion" encompasses a
change from "a first file type to a second file type," regardless of whether
the conversion results in the second file type consisting of "a completely
different type of data" than the first file type.
As found by the Examiner, Maharajh suggests such a conversion. The
Examiner found Maharajh teaches transcoding a file (for example, a WA V
file) into another kind of file (for example, a MP3 file). See Final Act. 7
(citing Maharajh ,r 102); Ans. 36-37 (citing Maharajh ,r,r 111, 131, 133-
134); see also App. Br. 23-24 (acknowledging that "according to the
approach described in Maharajh, an audio file format ( e.g., WA V format)
may be encoded to another audio file format (e.g., AMR, MP2, MP3, AAC,
AIFF, or OG format)"). We agree with the Examiner that the broadest
reasonable construction of "conversion of the at least one file from a first file
type to a second file type" includes changing an MP3 file into a WA V file.
Maharajh indicates that MP3 and WA V files are different types of files that
have different characteristics. See, e.g., Maharajh ,r 102 ( disclosing a list of
"standard file types" including WA V and MP3 files and explaining the files
have different file extensions), 153 ( disclosing that WA V is an
uncompressed audio file format and MP3 is a compressed audio file format).
Motivation to Combine
Appellants argue that "Maharajh does not suggest any benefit or
motivation for modifying the approaches [ofJ Forutanpour and Helmig,
8
Appeal 2018-005 861
Application 14/173,934
alone or in combination" to include the recited "conversion" limitation. App.
Br. 25. In Appellants' view, "Maharajh is silent with respect to any benefits
that may be obtained by" applying its method to achieve the "quick and
visually intuitive option for sharing a file with other user(s)" offered by the
claimed invention. App. Br. 25.
We disagree. The Examiner found it would have been obvious to
combine the teachings of Maharajh, Forutanpour, and Helmig to arrive at the
disputed "conversion" limitation because doing so "would provide more
personalized, user centric, engaging community experiences with further
compelling interaction with all types of media content." Final Act. 18 ( citing
Maharajh ,r 5). Although this motivation may differ from Appellants'
motivation, one of ordinary skill in the art can be motivated to combine
references for different reasons than an inventor. "As long as some
motivation or suggestion to combine the references is provided by the prior
art taken as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventor." In re Beattie, 974
F.2d 1309, 1312 (Fed. Cir. 1992).
Analogous Art
Appellants contend Maharajh is non-analogous art because it is not
"reasonably pertinent" to the problem faced by the inventors. See App. Br.
25-29. This is so, according to Appellants, because Maharajh "is not
directed to a gesture-based approach" and "does not address a need for the
collaborative file sharing tools sought in the Appellant's approach but is
instead directed to the delivery of content." App. Br. 26-27 ( emphases
omitted). Appellants assert Maharajh "is largely directed to one-way content
9
Appeal 2018-005 861
Application 14/173,934
delivery," not a "back-and forth" collaborative sharing process. App. Br. 27-
28.
We disagree. For an obviousness determination under§ 103, a
reference qualifies as prior art only if the reference is analogous to the
claimed invention. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
Generally, a reference is analogous to the claimed invention when the
reference is from the same field of endeavor as the claimed invention or is
reasonably pertinent to the problem faced by the inventor. Bigio, 381 F.3d at
1325.
For the "same field of endeavor" test, the Examiner found Maharajh
concerns the field of mobile file sharing. Ans. 37-38 (finding that Maharajh
"address[ es] an arising problem in the field of mobile file sharing"); see also
Final Act. 8 (finding that Maharajh "address[ es] the same field of sharing
files"). The written description shows the claimed invention is also in the
field of mobile file sharing. The written description discloses that the
"present invention pertains to ... gesture-based sharing of data between
separate computing devices" and that "separate computing devices" can
include "a tablet computer ( e.g., an Apple® IPad® ... )," "computerized eye
glasses, or a mobile phone device." Spec. 9:6-10. Although other parts of
the written description may suggest a narrower field of endeavor, "[t]he field
of endeavor of a patent is not limited to the specific point of novelty, the
narrowest possible conception of the field, or the particular focus within a
given field." Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed.
Cir. 2016).
As for the "reasonably pertinent" test, "[a] reference is reasonably
pertinent if, even though it may be in a different field from that of the
10
Appeal 2018-005 861
Application 14/173,934
inventor's endeavor, it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor's attention in
considering his problem." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
The written description indicates that the problem faced by the inventors was
the "need for a file sharing and collaboration tool that is not application-
dependent ( e.g., does not require all member computing devices to
view/modify/share the file(s) using the same software application) and not
location-dependent (e.g., computing devices are not necessarily co-located
during file sharing and collaboration)." Spec. 1: 15-18. With this problem in
mind, Maharajh logically would have commended itself to an inventor's
attention because, as found by the Examiner, Maharajh discloses a method
of sharing files with a mobile device, the method changing file types that are
not supported by the device into file types that are. See Final Act. 7 ( citing
Maharajh ,r 102), 36 (citing Maharajh ,r,r 6, 11); Ans. 36-37 (citing
Maharajh ,r,r 111, 131, 133-134 ). The ability to convert unsupported file
types into supported file types would have been relevant to the "application-
dependent" aspect of the inventor's problem, and the ability to share content
with a mobile device would have been relevant to the "not location-
dependent" aspect.
Other Arguments
Appellants assert that the "result of combining [the cited] references
would not have been predictable to one of ordinary skill in the art." App. Br.
30 (emphasis modified). Appellants contend it would not have been "clear to
one of ordinary skill in the art how to modify the location-based sharing of
Forutanpour with the content tagging and delivery described in Maharajh"
because their approaches would have been incompatible. App. Br. 30.
11
Appeal 2018-005 861
Application 14/173,934
Appellants thus believe the Examiner's combination "would render
Forutanpour and Helmig unsatisfactory for their intended purpose" and
make one of Forutanpour's principles of operation "nonfunctional." App. Br.
30. For these reasons, Appellants also contend the Examiner's rejection rests
on "improper hindsight." App. Br. 30.
Appellants have not explained why these assertions are true or
provided evidence to support them. See App. Br. 30. Because Appellants
have provided no support for these assertions, we find them unpersuasive.
Cf In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (explaining in the
context of unexpected results that "[m]ere argument ... does not suffice.");
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding "that the Board
reasonably interpreted Rule 41.3 7 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art").
Appellants also argue that "claim 1 yields synergistic benefits beyond
what could be achieved through any combination" of the cited art. App. Br.
31. Appellants contend these benefits flow from a combination of certain
limitations recited in claim 1 and assert "[ t ]he cited art is silent regarding the
combination of these, or similar, elements and/or their respective benefits."
App. Br. 32.
Appellants fail to provide persuasive evidence or reasoning to support
these assertions. Appellants simply assert, without explanation, that the cited
art does not teach certain limitations. See App. Br. 31-32. This type of
conclusory assertion is not enough to show the Examiner erred. See 37
C.F.R. § 4I.37(c)(l)(iv); Lovin, 652 F.3d at 1357. Appellants' assertion that
the claimed invention yields "unique benefits" that are "beyond what could
12
Appeal 2018-005 861
Application 14/173,934
be achieved through any combination" of the cited art also lacks adequate
support and is thus unpersuasive. See App. Br. 31-32.
Conclusion
For the above reasons, we find Appellants' arguments for claim 1
unpersuasive. We thus sustain the Examiner's rejection of claim 1. Because
Appellants do not present separate persuasive arguments for the rejections of
claims 2-20 and 24, we also sustain the Examiner's rejections of these
claims.
Claims 21, 23, and 26
Claim 21 recites "providing, via the network, to the first data share
application, the list of eligible file types." App. Br. 49. Claim 23 depends
from claim 21, and claim 26 recites a similar limitation. App. Br. 50, 53-54.
Appellants contend the cited portions of Maharajh are silent about claim
21 's "providing" limitation. App. Br. 37; Reply Br. 3--4.
We agree with Appellants. The Examiner relied on paragraphs 77-84,
102, and 131 of Maharajh for the disputed "providing" limitation. See Final
Act. 27 (citing Maharajh ,r 78), 36 (citing Maharajh ,r,r 77-79, 102); Ans.
38-39 (citing Maharajh ,r,r 80-84, 102, 131). The Examiner has not
adequately explained why these paragraphs teach or suggest this limitation.
Thus, on this record, we do not sustain the Examiner's rejections of claims
21, 23, and 26.
13
Appeal 2018-005 861
Application 14/173,934
1, 3-5, 7-17,
§ 103
and24
2 § 103
6 § 103
18 and 19 § 103
20 § 103
21,23,and
§ 103
26
Summary
DECISION
Forutanpour,
1, 3-5, 7-17,
Helmig, and
and24
Maharajh
Forutanpour,
Helmig,
2
Maharajh,
and Sip
Forutanpour,
Helmig,
6
Maharajh,
and Wang
Forutanpour,
Helmig,
18 and 19
Maharajh,
and Shappell
Forutanpour,
Helmig,
Maharajh, 20
Shappell,and
Pattan
F orutanpour
21, 23, and
and
26 Mahara·h
1-20 and 24
21, 23, and
26
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
14