Ex Parte Frencel et al

Board of Patent Appeals and Interferences

Mar 14, 2012

11211050 (B.P.A.I. Mar. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TOM FRENCEL and SUAVEK ZAJAC
____________________

Appeal 2009-012334
Application No. 11/211,0501
Technology Center 2600
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Before MARC S. HOFF, CARLA M. KRIVAK, and ELENI MANTIS
MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ invention concerns mobile access to backup and recovery
services. A request to access a service associated with a backup application

1 The real party in interest is EMC Corporation.
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is received via a mobile telecommunication network from a client running
on the mobile telecommunication device. Communication between the
client and the backup application occurs, providing access to the service
associated with the backup application (Abstract).
Claim 1 is exemplary of the claims on appeal:
1. A method of providing access to a backup application
comprising:

receiving via a mobile telecommunication network from
a client running on a mobile telecommunication device a
request to access a service associated with a backup application,
wherein the client is loaded onto the mobile telecommunication
device, runs on an operating system of the mobile
telecommunication device, and is configured to exchange and
display information associated with accessing the service
associated with the backup application;

determining information to be exchanged with the
backup application in order to provide access to the service
associated with the backup application; and

communicating, on behalf of the client running on the
mobile telecommunication device, with the backup application,
including by exchanging with the backup application the
determined information, to provide access to the service
associated with the backup application.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Sheikh US 6,266,721 B1 Jul. 24, 2001
Smith US 6,333,973 B1 Dec. 25, 2001
Mlinarsky US 6,724,730 B1 Apr. 20, 2004
Crockett US 6,781,963 B2 Aug. 24, 2004
Joyce US 6,798,358 B2 Sep. 28, 2004

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Claims 1, 2, 5, 18, 19, 24, and 25 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Smith.
Claims 3, 4, 16, 20, and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Smith in view of Crockett.
Claims 6-10, 12, 13, 15, 17, 22, 23, 28, and 29 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Smith in view of Sheikh.
Claims 11, 21, and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Smith in view of Mlinarsky.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smith in view of Sheikh and Joyce.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.” filed October 2, 2008), the Reply Brief (“Reply Br.” filed
February 2, 2009), and the Examiner’s Answer (“Ans.” mailed November
28, 2008) for their respective details.
ISSUES
Appellants argue, inter alia, that Smith does not teach receiving, via a
mobile telecommunication network from a client running on a mobile
telecommunication device, a request to access a service associated with a
backup application (App. Br. 10-11). Appellants further argue that Smith
does not teach “communicat[ing], on behalf of the client running on the
mobile telecommunication device, with the backup application . . . to
provide access to the service associated with the backup application.” (Id.)
According to Appellants, Smith does not teach a backup application that is
controlled or initiated by a client on a mobile telecommunications device,
and Smith does not teach an intermediary that communicates with a backup
application on behalf of a client (id.).
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Appellants’ contentions present us with the following issues:
1. Does Smith teach receiving, via a mobile telecommunication
network from a client running on a mobile telecommunication device, a
request to access a service associated with a backup application?
2. Does Smith teach communicating, on behalf of the client running
on the mobile telecommunication device, with the backup application to
provide access to the service associated with the backup application?
PRINCIPLES OF LAW
“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)
(quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)).
“Anticipation of a … claim requires a finding that the claim at issue ‘reads
on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1346 (Fed. Cir. 1999) (quoting Titanium Metals Corp. v. Banner, 778 F.2d
775, 781 (Fed. Cir. 1985)).
ANALYSIS
CLAIMS 1, 2, 5, 18, 19, 24, AND 25
The Examiner finds that user application 4200 and, specifically, voice
mail server 5600 correspond to the claimed backup application (Ans. 3-4).
The Examiner further finds that mobile telephone 1100 translates the user’s
action into corresponding DTMF tones to control voice mail server 5600 and
states that this meets the “communicating … on behalf of the client”
limitation (Ans. 6).
We disagree with both of these findings. The term “backup
application” is understood by those of ordinary skill in the art to be a
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software application for storing (backing up) data, often on a different
storage device and/or at a different location, so that such data may be
retrieved in the event the original storage device fails. We do not agree that,
and the Examiner does not explain why, the voice mail server of Smith may
be equated with the claimed backup application.
The claims further require communicating, on behalf of the client,
with the backup application. As noted supra, we do not agree with the
Examiner that voice mail server 5600 of Smith may be equated with a
backup application. Therefore, Smith’s teaching of the translation of key
presses into corresponding DTMF tones for communication with the voice
mail server (see Ans. 42) fails to establish that Smith communicates, on
behalf of the client, with a backup application.
Lastly, the Examiner, attempting to establish that Smith anticipates
the subject matter of claim 1, cites to Sheikh as teaching certain limitations
of the claim (Ans. 39). The teachings of Sheikh are wholly irrelevant to the
question of whether Smith anticipates the claimed invention. As such, these
remarks are given no legal weight.
We find that Smith does not teach all of the limitations of the claimed
invention. We therefore find that the Examiner erred in rejecting claims 1,
2, 5, 18, 19, 24, and 25 under § 102 as being anticipated by Smith. We will
not sustain the rejection.
CLAIMS 3, 4, 6-17, 20-23, AND 26-29
We have reviewed the Mlinarsky, Sheikh, Crockett, and Joyce
references. We find that they do not remedy the deficiencies found supra in
the Smith reference. Accordingly, we will not sustain the § 103 rejection of
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claims 3, 4, 6-17, 20-23, and 26-29, for the reasons given with respect to the
§ 102 rejections of independent claims 1, 18, and 24.

CONCLUSIONS
1. Smith does not teach receiving, via a mobile telecommunication
network from a client running on a mobile telecommunication device, a
request to access a service associated with a backup application.
2. Smith does not teach communicating, on behalf of the client
running on the mobile telecommunication device, with the backup
application to provide access to the service associated with the backup
application.
ORDER
The Examiner’s rejection of claims 1-29 is reversed.
REVERSED

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