ClevX, LLC

Patent Trials and Appeals Board

Dec 24, 2020

2019002500 (P.T.A.B. Dec. 24, 2020)

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.
14/624,560 02/17/2015 Lev M. Bolotin 4654.005US1 4042
21186 7590 12/24/2020
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
RASHID, ISHRAT
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
12/24/2020 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):
SLW@blackhillsip.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEV M. BOLOTIN and ALEX LEMELEV

Appeal 2019-002500
Application 14/624,560
Technology Center 2400

Before JASON V. MORGAN, JEREMY J. CURCURI, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–28, which constitute all the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies ClevX, LLC, as the real party in
interest. Appeal Br. 3.
Appeal 2019-002500
Application 14/624,560
2
CLAIMED SUBJECT MATTER
Appellant describes the claimed subject matter as follows:
A data storage system, and a method of operation thereof,
includes: an interface module for creating a login credential for
storing on a removable storage device; a backup module, coupled
to the interface module, for transferring data for an automatic
backup of the removable storage device to a remote backup
system based on the login credential and a status of the
removable storage device; and a close module, coupled to the
backup module, for disconnecting an application from a cloud
backup service for closing a connection between a computing
device and the remote backup system with the data from the
automatic backup.
Abstract.
Claim 1 is reproduced below:
1. A method of operation of a data storage system
comprising:
storing an application on a removable storage device, the
application configured for automatic backup of files stored on the
removable storage device to a remote backup service;
detecting a connection of the removable storage device to
a computing device; and
running, on the computing device, the application stored
on the removable storage device, the application being run
without being installed in permanent storage of the computing
device, wherein running the application further comprises:
when a login credential for the remote backup service is
not available, receiving authentication information for creating
the login credential and storing the login credential on the
removable storage device;
connecting the application running on the computing
device to the remote backup service utilizing the login credential;
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Application 14/624,560
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transferring, after the connecting, data for the automatic
backup of the removable storage device to the remote backup
service based on a status of the removable storage device; and
disconnecting the application running on the computing
device from the remote backup service after the transferring the
data for the automatic backup.
REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Herz US 2007/0136541 A1 June 14, 2007
Elazar US 2008/0065911 A1 Mar. 13, 2008
Finkelstein US 2009/0063711 A1 Mar. 5, 2009
Pomerantz US 2011/0258333 A1 Oct. 20, 2011
Greeley US 2012/0023139 A1 Jan. 26, 2012
Shahbazi US 2013/0166918 A1 June 27, 2013
Roberts US 2013/0262669 A1 Oct. 3, 2013
Kleczynski US 2015/0172304 June 18, 2015
Pinola July, 2011
REJECTIONS
1. Claims 1, 10, and 15 stand rejected under 35 U.S.C. § 103 as
unpatentable over Pomerantz. Final Act. 3–6.
2. Claims 2, 11, 16, 24, and 25 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Pomerantz and Finkelstein. Final Act. 6–8.
3. Claims 3, 12, 17, and 26 stand rejected under 35 U.S.C. § 103
as unpatentable over Pomerantz and Roberts. Final Act. 8–9.
4. Claims 4 and 18 stand rejected under 35 U.S.C. § 103 as
unpatentable over Pomerantz and Greeley. Final Act. 9–10.
5. Claims 5 and 19 stand rejected under 35 U.S.C. § 103 as
unpatentable over Pomerantz and Shahbazi. Final Act. 11–12.
Appeal 2019-002500
Application 14/624,560
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6. Claims 6 and 20 stand rejected under 35 U.S.C. § 103 as
unpatentable over Pomerantz and Kleczynski. Final Act. 12–13.
7. Claims 7 and 21 stand rejected under 35 U.S.C. § 103 as
unpatentable over Pomerantz and Herz. Final Act. 13–14.
8. Claims 8 and 22 stand rejected under 35 U.S.C. § 103 as
unpatentable over Pomerantz and Elazar. Final Act. 14–16.
9. Claims 9 and 23 stand rejected under 35 U.S.C. § 103 as
unpatentable over Pomerantz and Pinola. Final Act. 16–17.
10. Claims 13 and 27 stand rejected under 35 U.S.C. § 103 as
unpatentable over Pomerantz and Greeley. Final Act. 17–18.
11. Claims 14 and 28 stand rejected under 35 U.S.C. § 103 as
unpatentable over Pomerantz, Pinola, Roberts. Final Act. 18–20.
OPINION
The Examiner finds Pomerantz teaches or suggests the limitations of
claim 1. Final Act. 3–6. Pomerantz discloses a “cloud connector key”
(“CCK”) that connects to a “network isolated device” such as a digital
camera. Pomerantz, Abstract, ¶ 15. The CCK includes a network interface
for connecting to a cloud repository and, after authentication, allows the
transfer of files between the network isolated device and the cloud
repository. Pomerantz, Abstract.
The Examiner finds Pomerantz teaches “running, on the computing
device, the application stored on the removable storage device, the
application being run without being installed in permanent storage of the
computing device.” Final Act. 4. Specifically, the Examiner finds that
Pomerantz’s disclosure of a digital camera (i.e., the network isolated device)
teaches the claimed “computing device” and Pomerantz’s cloud connector
Appeal 2019-002500
Application 14/624,560
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key with its embedded software teaches the claimed “application stored on
the removable storage device.” Final Act. 3–4 (citing Pomerantz ¶¶ 25, 34,
37, Fig. 3, 4). The Examiner finds that the CCK’s computational module
remains on the CCK and is not stored on the digital camera but because the
cloud connector key presents a file system interface on the digital camera,
the software is running on the digital camera (i.e., the claimed computing
device). Final Act. 4 (citing Pomerantz ¶¶ 35, 41). The Examiner finds that
“by virtue of the fact that the computation module is running on the CCK
while the CCK is connected and plugged into the network isolated device
. . . . one of ordinary skill would consider the application to be running ‘on
the computing device.’” Ans. 5. The Examiner supports this interpretation
(that the application is running on the camera because the CCK is plugged
into it) by pointing to the Appellant’s Specification, which states “[t]he
application 204 can be stored on and run from the removable storage device
104 without host installation required.” Ans. 5 (citing Spec. ¶ 51).
Appellant argues the software of the cloud connector key does not run
on the network isolated device. Appeal Br. 6–15. For example, Appellant
argues that
Although the network isolated device may have access to
files accessed via the CCK, Pomerantz is silent with regards to
executing the computation module 124 on the network isolated
device. On the contrary, Pomerantz teaches that computational
module (124) is interposed between the mass storage interface
(118) and the network module (120), and all of these
components are inside the CCK. If the computation module 124
where executed in the network isolated device, then the
computation module 124 would not be interposed between the
mass storage interface (118) and the network module (120).
Appeal Br. 10. Appellant further argues:
Appeal 2019-002500
Application 14/624,560
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The assertion by the Examiner that the CCK is running on
the computing device just because the CCK is connected into the
network isolated device is technically incorrect. As described
above, a device runs a program when the device executes the
instructions of the programs. In Pomerantz, the cloud connector
key executes the instructions of the computation module 124.
Just because the computation module 124 is connected to the
network isolated device 102, does not mean that the network
isolated device 102 is executing the instructions of the
computation module 124.
Reply Br. 7. Appellant emphasizes that the Specification describes the
application as “run[ning] from” the removable storage device, rather than
“run[ning] on” the removable storage device. Reply Br. 7–8. Appellant
argues that “run from” refers to the storage of the program, while “run on”
refers to the device that executes the instructions of the program. Reply Br.
8.
We are persuaded by Appellant’s argument that the computation
module of Pomerantz is run on the CCK. Pomerantz explains that the CCK
includes a computation module (see Pomerantz, Fig 1) and that the
computation module “is configured to receive and present files to the
network isolated device (102) as if the files were locally stored in a directory
on the cloud connector key” (Pomerantz ¶ 34). Pomerantz also discloses
that the computation module includes a cloud connection unit which
“includes functionality to receive . . . requests to send information on the
network (106) and transmit the information in the form of packets to the
network.” Pomerantz ¶ 37. Since these functions are being performed by
the computation module on the CCK, we are persuaded by Appellant that the
CCK is running the computation module.
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Application 14/624,560
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The Examiner acknowledges that Pomerantz’s “computation module
is running on the CCK” but finds that the Specification supports an
interpretation where, so long as the CCK is connected to the network
isolated device, the network isolated device is running the computation
module. Ans. 5. We do not agree with the Examiner’s interpretation of the
claim. The Specification states “[t]he application 204 can be stored on and
run from the removable storage device 104 without host installation.” Spec.
¶ 51. Taken in context, the ordinary artisan would understand that the
application, while stored on the removable storage device, is being run on
the computing device. The Specification describes the computing device as
a personal computer which would include the capability to run software
(Spec. ¶ 36), and the removable storage device as a Universal Serial Bus
(“USB”) drive (Spec. ¶ 48) which typically does not have the capability to
run software. The Specification further describes that “[t]he monitoring
service 220 can be executed on the computing device 102. The monitoring
service 220 can be installed on the computing device 102 by the application
204 with minimal or no user interaction” which further illustrates that the
modules of the backup system are run (or executed) on the computing
device.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1 and of independent claims 10 and 15 which were
rejected on the same basis as independent claim 1. Final Act. 6. Claims 1,
10, and 15 constitute all pending the independent claims. Therefore, for the
same reasons, we also do not sustain the Examiner’s rejection of the pending
dependent claims.

Appeal 2019-002500
Application 14/624,560
8
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s) Affirmed Reversed
1, 10, 15 103 Pomerantz 1, 10, 15
2, 11, 16,
24, 25
103 Pomerantz, Finkelstein 2, 11, 16,
24, 25
3, 12, 17,
26
103 Pomerantz, Roberts 3, 12, 17,
26
4, 18 103 Pomerantz, Greeley 4, 18
5, 19 103 Pomerantz, Shahbazi 5, 19
6, 20 103 Pomerantz, Kleczynski 6, 20
7, 21 103 Pomerantz, Herz 7, 21
8, 22 103 Pomerantz, Elazar 8, 22
9, 23 103 Pomerantz, Pinola 9, 23
13, 27 103 Pomerantz, Greeley 13, 27
14, 28 103 Pomerantz, Pinola, Roberts 14, 28
Overall
Outcome
1–28

REVERSED