Ex Parte Vasa

Patent Trial and Appeal Board

Feb 26, 2014

12132211 (P.T.A.B. Feb. 26, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/132,211 06/03/2008 Yojak Harshad Vasa 2002-672 / PU07
0074-US2
7268
54472 7590 02/27/2014
COATS & BENNETT/SONY ERICSSON
1400 CRESCENT GREEN
SUITE 300
CARY, NC 27518
EXAMINER
NGUYEN, PHUOC H
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
02/27/2014 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YOJAK HARSHAD VASA1
____________________

Appeal 2011-007858
Application 12/132,211
Technology Center 2400
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 The Real Party in Interest is Sony Ericsson Mobile Communications AB.
App. Br. 2.
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STATEMENT OF THE CASE2
The Invention
Appellant’s invention relates to a method and apparatus for sending a
dynamically updated data object to a user of a communication device.
Abstract.
Exemplary Claim
Claims 1 and 9, reproduced below, are representative of the subject
matter on appeal (emphasis added):
1. A method for sending a data object to a user of a
mobile communication device, comprising the steps of:
receiving updated data from an external source at a first
mobile communication device;
updating a stored data object associated with the first
mobile communication device using the updated data; and
transferring, upon the occurrence of a trigger, the
updated data object to a second mobile communication device,
wherein the updated data object comprises the updated data.

9. A first mobile communication device comprising
processing logic configured to:
receive updated data from an external source at the first
mobile communication device;

2 Our decision refers to Appellant’s Appeal Brief (“App. Br.,” filed
Nov. 9, 2010); Reply Brief (“Reply Br.,” filed Mar. 21, 2011); Examiner’s
Answer (“Ans.,” mailed Jan. 21, 2011); Final Office Action (“FOA,” mailed
June 11, 2010); and the original Specification (“Spec.,” filed June 3, 2008).
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update a stored data object associated with the first
mobile communication device using the updated data; and
transfer, upon the occurrence of a trigger, the updated
data object to a second mobile communication device, wherein
the updated data object comprises the updated data.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting all claims on appeal:
Multer US 2004/0054711 A1 Mar. 18, 2004
Rejection on Appeal
Claims 1-15 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Multer. Ans. 4.
Although not before us on appeal, in the event of further prosecution,
we invite the Examiner’s attention to claim 9 to determine: (1) enablement
of that claim;3 and (2) whether claim 9 should be interpreted under
35 U.S.C. § 112, ¶6, as a means plus function claim by its recitation of

3 Any analysis of whether a particular claim finds support in an
application’s disclosure requires a determination of whether that disclosure,
when filed, contained sufficient information regarding the subject matter of
the claims so as to enable one skilled in the pertinent art to make and use the
claimed invention. The statute (35 U.S.C. § 112) has been interpreted to
require that the claimed invention be enabled so that any person skilled in
the art can make and use the invention without undue experimentation. See
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
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“processing logic configured to [perform various functions],” and
specifically whether claim 9 should be construed as a “single means” claim.4
ISSUES AND ANALYSIS
We only consider those arguments actually made by Appellant in
reaching this decision, and we do not consider arguments which Appellant
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions with respect to claims 1 and 9, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
the Examiner’s Answer in response to Appellant’s arguments.
However, we agree with Appellant’s conclusions with regard to
dependent claims 2-8 and 10-15. We highlight and address specific findings
and arguments regarding claims 1, 2, and 9 for emphasis as follows.

4 Where a means recitation does not appear in combination with another
recited element of means, it may be subject to an undue breadth rejection
under 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714-715,
(Fed. Cir. 1983) (A single means claim which covered every conceivable
means for achieving the stated purpose was held nonenabling for the scope
of the claim because the specification disclosed at most only those means
known to the inventor). When claims depend on a recited property, a fact
situation comparable to Hyatt is possible, where the claim covers every
conceivable structure (means) for achieving the stated property (result),
while the specification discloses at most only those known to the inventor.
Such may be the case with independent claim 9.
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1. Anticipation Rejection of Claims 1, 3-5, 9, 11, and 12
Issue 1
Appellant argues (App. Br. 5-10; Reply Br. 4-11) the Examiner’s
rejection of claims 1 and 9 under 35 U.S.C. § 102(b) as being anticipated by
Multer is in error. These contentions present us with the following issue:
Did the Examiner err in finding that Multer discloses the limitations
of “updating a stored data object associated with the first mobile
communication device using the updated data; and transferring, upon the
occurrence of a trigger, the updated data object to a second mobile
communication device,” a recited in independent claim 1, and as
commensurately recited in independent claim 9?
Analysis
Claim 1
Appellant contends Multer does not anticipate claim 1 and, in
particular, contends Multer “does not disclose a system in which a stored
data object associated with a first mobile communication device is updated,
and then the updated data object sent to a second mobile communication
device.” App. Br. 4. Appellant further contends the Examiner does not
appreciate the distinction between the recited “updated data” received at a
mobile device, and the recited “updated data object” resulting from applying
the updated data to a stored data object. Id. In addition, Appellant argues
Multer contrasts with the claimed invention by being directed to a system
that merely exchanges “difference information” between a server and other
devices, rather than an updated data object transferred to another mobile
device, as claimed. App. Br. 5.
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We disagree with Appellant, and find Multer’s disclosure of the
interaction between Delta Module 950 and Application Object Store (AOS)
920 (see Multer Fig. 9A; ¶ [0074]-[0075]; and see Ans. 4, 6, and 7) meets
the limitations in dispute, i.e., “updating a stored data object associated with
the first mobile communication device using the updated data; and
transferring, upon the occurrence of a trigger, the updated data object to a
second mobile communication device.” We find the limitations are
disclosed by Multer because Delta Module 950 “calculates differences in
data between the output of the application object 910 and the copy of the
data which is provided in an application object store (AOS) 920 . . . [to
create a change log which may be] compressed before output to the
network.” Multer ¶ [0075].
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us the Examiner erred in rejecting independent claim 1
as being anticipated by Multer.
Claim 9
With respect to independent claim 9, Appellant contends:
The rejection of claim 9 (and its dependent claims 10-15) is in
error for the same reasons given above for claim 1. However,
the rejection of claim 9 fails to account for the fact that the
various operations are carried out by a mobile device. The
analysis of Multer, on the other hand, focuses on Multer’s
server 300. Multer’s server 300 is clearly not a mobile device.
Thus, even if the Final Office Action’s findings with respect to
claim 1 are fully credited, Multer does not disclose a mobile
communication device configured to update a stored data object
using updated data received from an external source, and does
not disclose a mobile communication device configured to
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transfer the updated data object to a second mobile
communication device.
App. Br. 10. We disagree with Appellant because, as pointed out by the
Examiner (Ans. 8), Multer discloses (see Multer Figures 5 and 8) “the delta
engine for producing the delta object as the updated stored object . . .
belong[s to] the system as [a] mobile device as seen in Figures 5 and 8,
rather in the server 300 as alleged by the applicant.” We further find the
recited “mobile communication device” reasonably reads on any of the
devices 86X in Multer Figure 8 (i.e., Device Engine/Cellular 862, Device
Engine/Palm 864, Device Engine/Windows 866, Device Engine/Web 868 –
all mobile devices) that receives updated data from external sources 812-
818.
Therefore, considering our findings above with respect to the
anticipation rejection of independent claim 1, which we find also apply to
claim 9, we agree with the Examiner’s findings cited above that Multer
discloses all the limitations of claim 9.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner’s anticipation rejection of independent claims 1 and 9. As
Appellant has not provided separate arguments with respect to dependent
claims 3-5, 11, and 12, we similarly sustain the Examiner’s rejection of these
claims under 35 U.S.C. § 102(b).
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2. Anticipation Rejection of Claims 2, 6-8, 10, and 13-15
Issue 2
Appellant argues (Reply Br. 12-16) the Examiner’s rejection of claims
2, 6-8, 10, and 13-15 under 35 U.S.C. § 102(b) as being anticipated by
Multer is in error. These contentions present us with the following issue:
Did the Examiner err in finding that Multer discloses all the
limitations of claims 2, 6-8, 10, and 13-15?
Analysis
In the Reply, Appellant contends the Examiner erred in the Answer
(Ans. 8-10) by stating various limitations in dependent claims 2, 6-8, 10, and
13-15 “[are] obvious existed [sic] in the system . . . .” Reply Br. 12-16.
Because the rejection of these claims is for anticipation by Multer and
not for obviousness under § 103, Appellant timely petitioned to have the
Examiner’s position designated as a new ground of rejection.5 The Decision
on Petition6 dismissed Appellant’s petition stating, inter alia, “the
Examiner’s language . . . appears to be an explanation of inherency . . . in
response to Appellant’s argument that the Multer reference does not teach[]
the features of dependent claims . . . [t]hus it is apparent that such a
disagreement [is] related to claim interpretation and as such [is] an
appealable, not petitionable, matter.” Dec. on Pet., 2.

5 See “Petition to the Director Under 37 CFR 1.181(a) to Designate New
Ground of Rejection in Examiner’s Answer and/or to Issue a Corrected
Examiner’s Answer,” filed Jan. 25, 2011.
6 See “Decision on Petition Under 37 CFR § 1.181,” mailed Feb. 15, 2011.
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If indeed, we are to interpret the Examiner’s statement as an
explanation of inherency as suggested by the Decision on Petition cited
above, we find the Examiner has not properly met his burden of production
to establish inherency and, as such, the burden of proof has not properly
been shifted to Appellant.
Anticipation of a claim under 35 U.S.C. § 102 occurs when each
claimed element and the claimed arrangement or combination of those
elements is disclosed, inherently or expressly, by a single prior art
reference. Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325,
1332 (Fed. Cir. 2010). A reference inherently discloses an element of a
claim “if that missing characteristic is necessarily present, or inherent, in the
single anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d
1373, 1377 (Fed. Cir. 2003) (citation omitted) (emphasis added).
“Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” Therasense, 593 F.3d at 1332 (citing
Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir.
1991)).
The Examiner has the burden of providing reasonable proof that a
claim limitation is an inherent characteristic of the prior art. In re Best, 562
F.2d 1252, 1254-55 (CCPA 1977); see also Crown Operations Int’l, LTD v.
Solutia Inc., 289 F.3d 1367, 1377 (Fed. Cir. 2002). The Examiner meets this
“burden of production by ‘adequately explain[ing] the shortcomings it
perceives so that the applicant is properly notified and able to respond.’” In
re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting Hyatt v. Dudas, 492
F.3d 1365, 1370 (Fed. Cir. 2007)). The burden of proof then shifts to the
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applicant “to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.” Best, 562 F.2d at 1254-55; In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (holding that once the
Examiner established a prima facie case of anticipation, the burden of proof
was properly shifted to the inventor to rebut the finding of inherency).
In this Appeal, we find the Examiner has not met his burden because
the rejection merely states the various claim limitations would be obvious,
but does not provide any supporting analysis as to why the purported
obvious features would necessarily be present in the prior art.
Accordingly, Appellant has provided sufficient evidence and
argument to persuade us of at least one reversible error in the Examiner’s
reading of the contested limitations on the cited prior art. Therefore, we
cannot sustain the Examiner’s anticipation rejection of dependent claims 2,
6-8, 10, and 13-15 under 35 U.S.C. § 102(b).
CONCLUSIONS
(1) The Examiner did not err with respect to the anticipation
rejection of claims 1, 3-5, 9, 11, and 12 under 35 U.S.C. § 102(b) over
Multer, and we sustain the rejection.
(2) The Examiner erred with respect to the anticipation rejection of
claims 2, 6-8, 10, and 13-15 under 35 U.S.C. § 102(b) over Multer, and we
do not sustain the rejection.
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DECISION
We affirm the Examiner’s decision rejecting claims 1, 3-5, 9, 11,
and 12; and we reverse the Examiner’s decision rejecting claims 2, 6-8, 10,
and 13-15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).
AFFIRMED-IN-PART
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