Ex Parte BLEKER et al

Patent Trial and Appeal Board

Oct 30, 2018

13766041 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/766,041 02/13/2013 JULIUS P. BLEKER
73109 7590 11/01/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
CHA920120024US1_8134-0135 3998
EXAMINER
ABOUELSEOUD,MOHAMED
ART UNIT PAPER NUMBER
2172
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIUS P. BLEKER, DAVID HERTENSTEIN,
CHRISTIANE. LOZA, and MATHEWS THOMAS
Appeal 2018-002426
Application 13/766,041 1
Technology Center 2100
Before BRADLEY W. BAUMEISTER, IRVINE. BRANCH, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 26-46. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants' Brief ("App. Br.") identifies IBM Corporation as the real party
in interest. App. Br. 1.
Appeal 2018-002426
Application 13/766,041
CLAIMED SUBJECT MATTER
The claims are directed to enabling gesture driven content sharing
between proximate computing devices. Spec., Title. Claim 26, reproduced
below, is illustrative of the claimed subject matter:
26. A computer-implemented method performed within a
source computer device, comprising:
identifying a plurality of computing devices proximate to
the source computer device;
selecting, based upon a direction associated with a gesture
performed using the source computer device, one of the plurality
of computing devices as a target device;
identifying a type of the gesture and an object associated
with the gesture;
selecting, based upon the identified type of the gesture, a
user-configured programmatic action; and
performing the programmatic action.
App. Br. 21 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Cook
Stallings
F orutanpour
Skirpa
US 8,464,184 B 1
US 8,547,342 B2
US 2011/0083111 Al
US 2012/0010995 Al
REJECTIONS
June 11, 2013
Oct. 1, 2013
Apr. 7, 2011
Jan. 12,2012
Claims 27, 34, and 41 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 2-3.
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Appeal 2018-002426
Application 13/766,041
Claims 26, 27, 29, 31, 33, 34, 36, 38, 40, 41, 43, and 45 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Forutanpour. Final Act. 3-
7.
Claims 28, 35, and 42 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Forutanpour and Cook. Final Act. 8-9.
Claims 30, 37, and 44 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Forutanpour and Skirpa. Final Act. 9-10.
Claims 32, 37, and 46 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Forutanpour and Stallings. Final Act. 11-12.
ISSUES
First Issue: Has the Examiner erred finding the Specification lacks
support for "transferring a data file associated with the object and a data file
corresponding to the state to the target device," as recited in claim 27?
Second Issue: Has the Examiner erred in finding Forutanpour
discloses "selecting, based upon the identified type of the gesture, a user-
configured programmatic action," as recited in independent claim 26?
Third Issue: Has the Examiner erred in finding Forutanpour discloses
"determining a state of the object when the gesture was performed" and
"transferring a data file associated with the object and a data file
corresponding to the state to the state of the target device," as recited in
claim 27?
Fourth Issue: Has the Examiner erred in finding Forutanpour
discloses "a first of the gestures selects only a portion of the object," as
recited in claim 29?
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Appeal 2018-002426
Application 13/766,041
ANALYSIS
First Issue
Dependent claim 27 recites "transferring a data file associated with
the object and a data file corresponding to the state to the target device."
App. Br. 21 (Claims Appendix). 2 The Examiner rejects claim 27 for lack of
written description, finding that the Specification lacks support for
transferring two separate data files to the target device. Final Act. 2. More
specifically, the Examiner finds that, although the Specification describes
"the ability to transfer metadata associated with the transferred file" ( citing
Spec. ,r 63), it does not describe metadata "transferred in a separate file as
claimed." Final Act. 2-3.
Appellants contend paragraph 45 of the Specification, which discloses
"the device that detected the gesture can be playing a video, which is
dynamically conveyed (along with state information) to the device targeted
by the gesture," supports the "transferring" limitation. App. Br. 8 ( quoting
Spec. ,r 45). Appellants argue the Examiner's finding of lack of written
description is premised on an erroneous interpretation of the limitation-that
the claim language requires transmitting two separate files-which,
according to Appellants, is "an unreasonably narrow interpretation of the
claim language." App. Br. 9.
We are not persuaded by Appellants' arguments. In order to satisfy
the written description requirement, the disclosure must convey with
reasonable clarity to those skilled in the art that the inventor was in
2 Although not specifically identified in the statement of rejection, dependent
claims 34 and 41 recite limitations identical to those recited in claim 27.
Therefore, we treat these claims as also having been rejected under 35
U.S.C. § 112, first paragraph for lack of written description.
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Appeal 2018-002426
Application 13/766,041
possession of the invention. Purdue Pharma L.P. v. Paulding, Inc., 230
F.3d 1320, 1323 (Fed. Cir. 2000). Appellants argue the claim does not
require that there be two separate files transmitted. Although Appellants are
correct that the claim does not require separate files, transmitting files
separately is within the scope of the claim. That is, the language of the claim
does not exclude the transmission of separate files. Thus, the claim
encompasses an embodiment in which the object and the state information
are transmitted in separate files. Appellants' Specification does not show
that Appellants possessed such an embodiment because neither the
description in paragraph 45 nor any other portion of the Specification
contemplates transmitting state information separately from the object.
Rather, the relied upon paragraph in the Specification indicates only that
state information is transmitted "along with" the object to the targeted
device. Accordingly, we are not persuaded the Examiner erred in rejecting
claim 27 for lack of written description, and we sustain the rejection under
35 U.S.C. § 112, first paragraph.
Second Issue
Independent claim 26 recites the limitation "selecting, based upon the
identified type of the gesture, a user-configured programmatic action." App.
Br. 21 (Claims Appendix). Relevant to this issue, the Examiner finds
Forutanpour discloses the recited "user-configured programmatic action"
because it "explicitly sets forth that the computing device may be configured
to be trainable so that each user can correlate flick gesture speeds with
intended travel distances." Ans. 3 ( citing F orutanpour ,r 102 ). Appellants
contend the Examiner has erred:
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Appeal 2018-002426
Application 13/766,041
Paragraph [0102] merely describes correlating speed of flick
gesture with travel distance. Notably, changing the travel
distance does not change ( or configure) the programmatic action
described by Forutanpour (i.e., a selection of the device). This is
no different than changing the direction of the flick gesture. In
both instances, the direction and speed of the flick gesture
determine what particular device is selected. However, what
particular device is selected does not serve to configure the
programmatic action itself. Rather, it merely changes the input
used by the programmatic action. Changing inputs for a
programmatic action is not the same as configuring a
programmatic action since the programmatic action itself ( e.g.,
the selection of a device) remains unchanged.
Reply Br. 5. We disagree.
Forutanpour discloses that a user can train a device to select a
particular target device based on the speed of a flick gesture. Forutanpour
,r,r 102-103. When the user inputs a swipe gesture at a particular speed, a
programmatic action is selected-namely, selecting a target device at a
particular distance. Because the distance is determined based on the training
provided by user-inputs, the action is user-configured. Accordingly, we are
not persuaded the Examiner erred in finding Forutanpour's disclosure of
training the device to correlate flick gesture speeds with intended travel
distances discloses the disputed limitation.
Third Issue
Dependent claim 27 recites the limitations "determining a state of the
object when the gesture was performed" and "transferring a data file
associated with the object and a data file corresponding to the state to the
target device." App. Br. 21 (Claims Appendix). The Examiner finds this
limitation disclosed by the Forutanpour's determination of an
"'authorization state' that automatically accepts file sharing with known
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Application 13/766,041
computing devices." Ans. 5 (citing Forutanpour ,r,r 79--80). Appellants
argue the Examiner has erred because the "authorization state" relied on by
the Examiner is not a "state of the object," but instead "refers to a
characteristic of the computing device to which the file is to be shared."
Reply Br. 6. We agree with Appellants.
In rejecting claim 27, the Examiner identifies "the object" in
Forutanpour as the target device associated with the gesture. Ans. 5.
However, the claim requires "transferring ... a data file corresponding to the
state to the target device." Because the Examiner finds the "object" is the
target device in Forutanpour, and because the "state of the object" is
Forutanpour's "authorization state" of the target device, we agree with
Appellants that F orutanpour provides no disclosure of "transferring ... a
data file corresponding to [ the authorization state of the target device] to the
target device." Accordingly, we are persuaded the Examiner has erred, so
we do not sustain the rejection of claim 27 under 35 U.S.C. § 102.
Fourth Issue
Claim 29 depends from claim 26 and recites the limitation "a first of
the gestures selects only a portion of the object." The Examiner finds
Forutanpour discloses this limitation because Forutanpour describes
selecting a file/icon with a gesture, and because a file/icon is a portion of the
user interface, which is also an object. Ans. 6-7 (citing Forutanpour Figs.
24--26). Thus, under the Examiner's mapping of Forutanpour to claim 29,
the user interface is the "object associated with the gesture" and the file/icon
is the "portion of the object."
Appellants argue the Examiner has erred because "a file is not a
portion of a user interface-they are separate and distinct entities." Reply
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Application 13/766,041
Br. 8. Appellants further argue "the Examiner points to no portion within
Forutanpour that identically discloses that a data file associated with only the
selected portion of the object (i.e., 'icon or identified part of an image
displayed') is sent to the target device." Reply Br. 8.
We are not persuaded by Appellants' arguments. A file/icon is
encapsulated in a desktop object as shown in Figs. 24--26 of Forutanpour.
As such, selecting the file/icon with the gesture as described in F orutanpour
discloses "a first of the gestures selects only a portion of the object."
Accordingly, we are not persuaded the Examiner erred in rejecting claim 29,
and we sustain its rejection under 35 U.S.C. § 102.
Remaining Claims
Appellants offer no separate arguments for patentability for any other
claim. Accordingly, we treat claim 26 as representative of the remaining
claims not specifically discussed above, and they fall along with claim 26.
DECISION
We affirm the Examiner's rejection of claims 27, 34, and 41 under
35 U.S.C. § 112, first paragraph.
We affirm the Examiner's rejection of claims 26, 29, 31, 33, 34, 36,
38, 40, 41, 43, and 45 under 35 U.S.C. § 102(b).
We affirm the Examiner's rejections of claims 28, 30, 32, 35, 37, 42,
44, and 46 under 35 U.S.C. § 103(a).
We reverse the Examiner rejection of claims 27, 34, and 41 under
35 U.S.C. § 102(b).
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Appeal 2018-002426
Application 13/766,041
Because we have affirmed at least one ground of rejection for each
claim on appeal, we affirm the Examiner's decision to reject the claims.
37 C.F.R. § 4I.50(a)(l).
No time 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
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