12728137 (P.T.A.B. Mar. 31, 2016)

Ex Parte Chen et al

Patent Trial and Appeal BoardMar 31, 2016

12728137 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121728, 137 98068 7590 Hollingsworth Davis 8000 West 78th Street Suite 450 03/19/2010 04/04/2016 Minneapolis, MN 55439 FIRST NAMED INVENTOR Ming-Fong Chen 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. STX.042.Al 4744 EXAMINER CHOI, YUK TING ART UNIT PAPER NUMBER 2164 NOTIFICATION DATE DELIVERY MODE 04/04/2016 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): tdotter@hdpatlaw.com roswood@hdpatlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MING-FONG CHEN and SVETLANA AVDANINA Appeal2014-009579 Application 12/728, 137 Technology Center 2100 Before JEAN R. HOMERE, JASON V. MORGAN, and JEREMY J. CURCURI, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1-5 and 7-21. Final Act. 1. We have jurisdiction under 35 U.S.C. Â§ 6(b). Claims 1--4, 7-16, and 18-21 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Anson (US 2009/0172384 Al; July 2, 2009), Spencer (US 2010/0138653 Al; June 3, 2010), and Huang (US 2005/0193188 Al; Sep. 1, 2005). Final Act. 3-15. Claim 5 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Anson, Spencer, Huang, and Brechner (US 7 ,660,808 B2; Feb. 9, 2010). Final Act. 15-16. Appeal2014-009579 Application 12/728, 137 Claim 17 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Anson, Spencer, Huang, Brechner, and Kaasten (US 2004/0172423 Al; Sep. 2, 2004). Final Act. 16-17. We reverse. STATEMENT OF THE CASE Appellants' invention relates to A method and system for automatically detecting a coupling of a storage device to one or more computing systems. The method automatically identifies a configuration specific to the computing system and accesses the configuration specific to the computing system. The method automatically identifies a plurality of files residing on the computing system corresponding to the configuration and automatically aggregates the plurality of files to the storage device. Abstract. Claim 1 is illustrative and reproduced below: 1. A method comprising: automatically detecting a coupling of a storage device to a computing system, the storage device containing configurations of multiple computing devices, each of the configurations comprising a path and a file type to aggregate that correspond to a different one of the multiple computing devices; responsive to the automatically detecting, automatically identifying, from the configurations, a configuration specific to the computing system; accessing the configuration specific to the computing system; responsive to the accessing, automatically identifying a plurality of files residing on the computing system corresponding to the configuration; and automatically aggregating the plurality of files to the storage device. 2 Appeal2014-009579 Application 12/728, 137 ANALYSIS THE OBVIOUSNESS REJECTION OF CLAIMS 1--4, 7-16, AND 18-21 OVER ANSON, SPENCER, AND HUANG The Examiner finds the combination of Anson, Spencer, and Huang teach all limitations of claim 1. Final Act. 3---6. The Examiner finds Anson teaches the recited (claim 1) "aggregating the plurality of files to the storage device." Final Act. 4 (citing Anson i-f 88). Anson (i-f 88) discloses: FIG. 7 is a flowchart illustrating a method 700 of booting an alternate operating system on a portable data reader from a USB [universal serial bus] mass storage device, according to one embodiment. At step 705, a portable data reader may be attached to a dock. At step 710, a USB mass storage device is connected to the dock (a further optional step may include storing an updated OS [operating system] image on the USB mass storage device). Appellants present, among other principal arguments, the following principal argument: Notably, all figures and all written description within Anson speak only of the PDR [portable data reader] uploading from the storage device; the PDR never downloads to the storage device, e.g., never aggregates files to a storage device, with the exception of a single sentence to which the Examiner has noted and relied upon in paragraph [0088]. App. Br. 5. Appellant[ s] submit[] that this sentence does not teach the PDR storing an OS image to the storage device. Rather, the more likely explanation is that the storage device is updated with an OS image by an external device (e.g., a computer) prior to connecting the storage device to the dock and prior to the PDR detecting its presence. All other figures and descriptions within Anson indicate a one-way transfer of data from the storage device to the PDR. 3 Appeal2014-009579 Application 12/728, 137 App. Br. 5---6. In response, the Examiner explains: [A Jn updated operating system image [an OS image] which comprises a plurality [of] types of file[ s] such as a * .img file, *.bin file, * .dmg file, or other file type (See Anson, para. [0071]) is added or aggregated to a USB mass storage device manually (See Anson, para. [0088]) before the USB mass storage device is connected to the computer dock. Ans. 4--5. We agree with Appellants (see App. Br. 5---6) that Anson (i-f 88) does not teach the PDR storing an OS image to the storage device. Moreover, Appellants have persuaded us that the Examiner erred in finding that Anson teaches the recited (claim 1) (emphasis added) "aggregating the plurality of files to the storage device" for reasons given by Appellants in the Reply Brief: The claimed aggregating of files recites that "the plurality of files" is aggregated (using claim 1 as an example). The aggregated plurality of files are files "residing on the computing system" that were automatically identified responsive to accessing a configuration, where the configuration was automatically identified in response to automatically detecting a coupling of a storage device to the computing system. Since Anson's OS image is stored before connecting to the computer dock the asserted OS image was not residing on the asserted PDR, as required by each of the independent claims. Reply Br. 6. We, therefore, do not sustain the Examiner's rejection of claim 1, or of claims 2--4 and 7-15, which depend from claim 1. We also do not sustain the Examiner's rejection of claim 16, which recites "aggregating to the storage device the selection of files," or of claims 18 and 19, which depend from claim 16. 4 Appeal2014-009579 Application 12/728, 137 We also do not sustain the Examiner's rejection of claim 20, which recites "operable to aggregate the subset of the plurality of files to the storage device," or of claim 21, which depends from claim 20. THE OBVIOUSNESS REJECTION OF CLAIM 5 OVER ANSON, SPENCER, HUANG, AND BRECHNER Claim 5 depends from claim 1. The Examiner does not find that Brechner overcomes the deficiencies of Anson, Spencer, and Huang. See Final Act. 15-16. We, therefore, also do not sustain the Examiner's rejection of claim 5. THE OBVIOUSNESS REJECTION OF CLAIM 17 OVER ANSON, SPENCER, HUANG, BRECHNER, AND KAASTEN Claim 1 7 depends from claim 16. The Examiner does not find that Brechner or Kaasten overcomes the deficiencies of Anson, Spencer, and Huang. See Final Act. 16-17. We, therefore, also do not sustain the Examiner's rejection of claim 17. DECISION The Examiner's decision rejecting claims 1-5 and 7-21 is reversed. REVERSED 5