Ex Parte Terrano et alDownload PDFPatent Trial and Appeal BoardSep 29, 201713490147 (P.T.A.B. Sep. 29, 2017) Copy Citation 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. 13/490,147 06/06/2012 Janine T. Terrano 023027-0423833 1394 909 7590 10/03/2017 Pillsbury Winthrop Shaw Pittman, LLP PO Box 10500 McLean, VA 22102 EXAMINER KASSIM, KHALED M ART UNIT PAPER NUMBER 2468 NOTIFICATION DATE DELIVERY MODE 10/03/2017 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): docket_ip@pillsburylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JANINE T. TERRANO, CHRISTOPHER J. LACINA, and JOHN HAAGER Appeal 2017-004691 Application 13/490,147 Technology Center 2400 Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOVAN, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—20, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2017-004691 Application 13/490,147 STATEMENT OF THE CASE Appellants’ invention is directed to methods and systems for “search[ing] and retriev[ing] or receiv[ing] multimedia content that is (a) indexed in a digital ‘catalog’ stored or otherwise located in [a] cloud, but (b) stored or otherwise located on client devices outside of the cloud” (Abstract). Claims 1,8, and 15 are independent. Independent claim 1, reproduced below, is exemplary of the subject matter on appeal. 1. A method for distributing a user’s files across a plurality of the user’s client devices, the method being implemented on a first user client device having one or more computer processors programmed by computer program instructions that, when executed, causes the one or more computer processors to perform the method, the method comprising: storing, via the one or more computer processors of the first client device of the user’s client devices, a first file of the user’s files on the first client device, wherein the first client device is registered in association with a user; generating, via the one or more computer processors, catalog data referencing at least the first file; transmitting, via the one or more computer processors, the catalog data to a server, so as to index the catalog data on the server, wherein the first file is not stored on the server; receiving, via the one or more computer processors, from the server, a selection of the indexed catalog data, the selection referencing the first file, and an identity of a second client device of the user’s client devices, wherein the second client device is registered in association with the user; and in response to said receiving the selection, automatically transmitting, via the one or more computer processors, the first file from the first client device to the second client device without storing the first file on the server. 2 Appeal 2017-004691 Application 13/490,147 REFERENCES and REJECTIONS (1) The Examiner rejected claims 1—15 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. (2) The Examiner rejected claims 1 and 8 under 35 U.S.C. § 103(a) based upon the teachings of Kessler (US 7,170,999 Bl; issued Jan. 30, 2007), Forsell (US 2004/0172336 Al; published Sept. 2, 2004), and Caso (US 2010/0287219 Al; published Nov. 11, 2010). (3) The Examiner rejected claims 2 and 9 under 35 U.S.C. § 103(a) based upon the teachings of Kessler, Forsell, Caso, and Stirbu (US 2006/0200570 Al; published Sept. 7, 2006). (4) The Examiner rejected claims 3—7 and 10—14 under 35 U.S.C. § 103(a) based upon the teachings of Kessler, Forsell, Caso, and Stults (US 2008/0263455 Al; published Oct. 23, 2008). (5) The Examiner rejected claims 15—20 under 35 U.S.C. § 103(a) based upon the teachings of Kessler, Kittel (US 2010/0250704 Al; published Sept. 30, 2010), and Caso. ANALYSIS Rejection under 35 U.S.C. § 112, first paragraph The Examiner finds the limitation “in response to said receiving the selection, automatically transmitting, via the one or more computer processors, the first file from the first client device to the second client device,” recited in claim 1, and similarly in claim 8, is not supported by Appellants’ Specification (Final Act. 3 4). Particularly, the Examiner finds “there is no explicit teaching ... in the specification . . . [of] automatically transmitting the first file in response to receiving the selection” (Final Act. 3 Appeal 2017-004691 Application 13/490,147 3; see also Ans. 3). With respect to claims 8 and 15, the Examiner additionally finds the limitation “without storing the first file on the server” is not supported by Appellants’ Specification (Final Act. 4). Appellants assert paragraphs 31, 36—37, and 129-132 of their Specification provide written description support (App. Br. 7—8; Reply Br. 3—4). We have reviewed the cited portions of the originally filed Specification, and concur with Appellants’ assertion that the Specification demonstrates Appellants possessed the claimed limitation: “in response to said receiving the selection, automatically transmitting, via the one or more computer processors, the first file from the first client device to the second client device without storing the first file on the server,” as recited in claim 1, and similarly in claim 8. Particularly, paragraph 31 in the Specification explains that “a process that is performed ‘automatically’ may mean that the process is performed as a result of machine-executed instructions and does not, other than the establishment of user preferences, require manual effort” (Spec. 131; App. Br. 7). Further, paragraphs 131 and 132 in the Specification provide that “a user selection of a first file [from a catalog] may cause the first file (or a copy thereof) to be transmitted from one of the user’s devices to another one of the user’s devices” (App. Br. 8 (emphasis added)). We agree with Appellants that “machine executed instructions that cause a first file to be transmitted in response to receivins a selection of indexed catalos data would clearly constitute ‘automatically’ transmitting” as claimed (App. Br. 7). Additionally, paragraph 132 in the Specification discloses the “first file is only stored on the second device, and is not stored on a server or 4 Appeal 2017-004691 Application 13/490,147 otherwise in the cloud,” thereby supporting “without storing the first file on the server” recited in claims 1 and 8 (see Spec. 1132). With respect to independent claim 15, we agree with Appellants (App. Br. 6) that the claim does not recite “wherein the first client device is configured to transmit the first file from the first client device to the second client device without storing the first file on the server in response to receiving the identity” as asserted by the Examiner (see Final Act. 4) (emphasis added). Rather, claim 15 recites, inter alia, “receive a selection of the catalog data identifying the first file and at the second client device of the user’s client devices, transmit, to the first client device, an identity of the second client device and the selection of the catalog data,” and “cause the first file to be copied from the first client device to the second client device.” These limitations of claim 15 are similarly supported by the Specification portions discussed supra. Therefore, we do not sustain the Examiner’s rejection of claims 1—15 under 35 U.S.C. § 112, as failing to comply with the written description requirement. Rejections under 35 U.S.C. § 103 With respect to independent claims 1, 8, and 15, Appellants contend the combination of Kessler, Forsell (or Kittel for claim 15), and Caso does not teach or suggest “the automatic transferring of a first file from a first client device to a second client device” where “the first and second client devices are registered in association with the same user’'’ (App. Br. 11; Reply Br. 8). Particularly, Appellants assert Caso not only does not disclose, but also teaches away from, “transmitting or copying a first file from one of the user’s client devices to another one of the user’s client 5 Appeal 2017-004691 Application 13/490,147 devices” such that “there are multiples of the same files on both devices of the user at a given time” (App. Br. 9, 11 (citing Caso Abstract) (emphasis added)). Appellants further argue Caso cannot be combined with Kessler as it would change Kessler’s principle of operation (App. Br. 9). We do not agree. We agree with and adopt the Examiner’s findings as our own. Particularly, we agree with the Examiner that Caso discloses registering multiple devices associated with the same user and transmitting or copying files between such registered devices, as required by claims 1, 8, and 15 (Ans. 7—8 (citing Caso Tflf 29-35); Final Act. 7—8). Appellants argue Caso teaches away from transferring files between a user’s devices “where there are multiples of the same files on both devices of the user at a given time,” because “only one copy of a file (that is virtually represented across all devices registered to a user) is stored [by Caso] among all the devices registered to that user” (Reply Br. 8; App. Br. 11). Appellants’ argument is not persuasive because Caso teaches a file may be present on multiple devices of a user—e.g., on a remote device holding the file, and on a local device temporarily holding a local file copy to be “viewed, edited, or modified in any way by the user” (see Caso ^fl[ 31, 38; Ans- 8). Further, a “reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (citation omitted). In this case, Appellants fail to present any evidence that Caso criticizes or even discourages the proposed combination. 6 Appeal 2017-004691 Application 13/490,147 We are also not persuaded by Appellants’ argument that combining Caso with Kessler would change Kessler’s principle of operation (App. Br. 9). Particularly, Appellants contend the entire purpose of Kessler is “for a given user to search for and obtain files from other users because the given user does not already have those files” (App. Br. 9 (citing Kessler Abstract)). Appellants assert that “to modify the system of Kessler to move files from one device of the user to another device of the user would change [Kessler’s] principle of operation of searching for and obtaining files from other users’ ’’ (App. Br. 9 (emphasis added); Reply Br. 6). We are not persuaded, as we do not consider the principle operation of Kessler to be limited to obtaining files from other users, rather Kessler is concerned with secure file distribution between different devices registered in a peer-to-peer environment (see Kessler Abstract, col. 2,11. 7—10 and 16—21). As recognized by the Examiner, “[e]ven[] with devices of the same user, [the] user can still utilize [Kessler’s] operation of searching for and obtaining files from other devices” regardless of device ownership (Ans. 5). We agree with the Examiner that modifying Kessler to move files from one user’s device to another of the user’s devices, as taught by Caso, would not change Kessler’s principle of operation; rather, the Kessler-Caso combination advantageously allows “transferring] files between the user’s different registered devices for the purpose of having copies of important or purchased media content files at multiple and different devices of a common user” (Ans. 5). In light of the above, we sustain the Examiner’s obviousness rejection of independent claims 1, 8, and 15, and dependent claims 2—7, 9-14, 16, 17, and 20 not argued with particularity (App. Br. 9, 11). 7 Appeal 2017-004691 Application 13/490,147 Appellants separately argue dependent claim 18, which recites “causing] the first file to be deleted from the first client device after the first file is copied from the first client device to the second client device.” Particularly, Appellants argue Caso’s paragraph 31 “describe[s] that a modified version of the file replaces the file stored remotely at the second device” in contrast to Appellants’ system—which causes a file “to be moved from one of the user’s devices (e.g., the ‘first client device’) to another one of the user’s devices (e.g., the ‘second client device’)” (App. Br. 11—12 (emphasis added); Reply Br. 9). Appellants’ arguments do not address the Examiner’s specific findings that Caso deletes the file from a first client device (“the local device removes the aforementioned file from memory”) after the file: i) has been “viewed... by the user” on the local device, and ii) has been copied from the first client device/local device to the second client device/remote device “so that [the file] is stored only in the single location/[remote] device on which it was originally kept” (see Caso 131 (emphasis added); Ans. 9-10 (citing Caso 131)). Thus, Caso causes the file to be deleted from the first client device/local device after the file is copied to the second client device/remote device, as required by claim 18. As Appellants’ arguments have not persuaded us of error in the Examiner’s rejection, we sustain the Examiner’s rejection of claim 18. With respect to dependent claim 19 argued separately, Appellants restate the claim language and assert Caso does not teach the claimed limitations (see App. Br. 12) without addressing the Examiner’s specific findings (see Final Act. 22—23). Such arguments are not substantive arguments of Examiner error (see 37 C.F.R. 41.37(c)(l)(iv) (2013); see also 8 Appeal 2017-004691 Application 13/490,147 In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board [has] reasonably interpreted Rule 41.37 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’ additional argument that “[w]ith respect to dependent claim 19 . . . the Office Action merely includes alleged teachings of the relied-upon references without any rationale for combining, those alleged teachings'” (App. Br. 9), does not address the Examiner’s specific rationale for combining Kessler, Kittel, and Caso in claim 15’s rejection (see Final Act. 18—19), which “is incorporated” in claim 19’s rejection (see Final Act. 22). Appellants also contend, for the first time in the Reply Brief, that “the cited portion of Caso merely describes the use of ‘cache memories that provide temporary storage of at least some program code in order to reduce the number of times code must be retrieved from bulk storage during execution’,” and this “caching program code . . . fails to teach caching of files responsive to the recited condition” in claim 19 (Reply Br. 9 (emphasis added)). The Reply Brief is not an opportunity to present new arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejection. See Ex parte Borden, 2010 WL 191083 at *2 (BPAI 2010) (informative); see also 37 C.F.R § 41.41(b)(2) (2012). Moreover, the “argument” made in the Reply Brief is not supported by Appellants’ originally-filed Specification, which does not mention the term “caching.” Thus, Appellants’ arguments have not persuaded us of error in the Examiner’s rejection, and we sustain the Examiner’s rejection of claim 19. 9 Appeal 2017-004691 Application 13/490,147 DECISION The Examiner’s decision rejecting claims 1—15 under 35 U.S.C. § 112, first paragraph is reversed. The Examiner’s decision rejecting claims 1—20 under 35 U.S.C. § 103 is affirmed. 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). AFFIRMED 10 Copy with citationCopy as parenthetical citation