Ex Parte Gisby

Patent Trial and Appeal Board

Jul 26, 2016

12817349 (P.T.A.B. Jul. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/817,349 06/17/2010
95866 7590 07/28/2016
Fleit Gibbons Gutman Bongini & Bianco P,L,
551 NW 77th street
Suite 111
Boca Raton, FL 33487
FIRST NAMED INVENTOR
Douglas Michael Gisby
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.
34950-US-PAT 5382
EXAMINER
NGUYEN, VAN KIM T
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
07/28/2016 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):
ptoboca@fggbb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS MICHAEL GISBY
Appeal2015-001823
Application 12/817,349
Technology Center 2400
Before TERRENCE W. McMILLIN, NATHAN A. ENGELS, and
NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-24. 1 We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b ).
We affirm.
1 In the Appeal Brief, Appellant identifies Research in Motion Limited as the
real party in interest. (App. Br. 1.)
Appeal2015-001823
Application 12/817,349
THE INVENTION
Appellant's disclosed and claimed inventions are directed to
performing a swap operation of archive files between user equipment.
(Abstract.) Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of performing a swap operation of data between
two mobile devices, the method comprising:
establishing communication between a first mobile device
and a server;
establishing communication between the first mobile
device and a second mobile device;
receiving, at the first mobile device, permission from the
server to perform the swap operation with the second mobile
device; and
executing a swap application to facilitate transferring of an
archive file from the first mobile device to the second mobile
device utilizing removable memory responsive to the permission
from the server.
REJECTION
The Examiner rejected claims 1, 3, 4, 6, 8-11, 13-14, 16-17, 19-21,
and 23-24 under 35 U.S.C. § 103(a) as being unpatentable over Wallis et al.
(US 2006/0234623 Al, pub. Oct. 19, 2006) and Rakic et al. (US
2009/0282256 Al, pub. Nov. 12, 2009). (Final Act. 2-5.)
The Examiner rejected claims 2, 12, and 22 under 35 U.S.C. § 103(a)
as being unpatentable over Wallis, Rakic, and Grosse et al. (US 7,565,405
B2, issued July 21, 2009). (Final Act. 5.)
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Appeal2015-001823
Application 12/817,349
The Examiner rejected claims 5, 7, 15, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Wallis, Rakic, and Vataja et al. (US
7,580,894 B2, issued Aug. 25, 2009). (Final Act. 5---6.)
ISSUE ON APPEAL
Appellant's arguments in the Appeal Brief present the following
issue:2
Whether the combination of Wallis and Rakic teaches or suggests the
independent claim 1 limitation, "executing a swap application to facilitate
transferring of an archive file from the first mobile device to the second
mobile device utilizing removable memory responsive to the permission
from the server." (App. Br. 4--9.) Appellant states that claim 1 is
"exemplary," and characterizes independent claims 11 and 21 as "recit[ing]
similar operable imitations." (App. Br. 4.) Therefore, we decide this appeal
based on the merits of the Examiner's rejection of claim 1.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner erred. We disagree with Appellant's
arguments. We adopt as our own (1) the pertinent findings and reasons set
forth by the Examiner in the Action from which this appeal is taken (Final
Act. 2---6) and (2) the corresponding reasons set forth by the Examiner in the
2 Rather than reiterate the arguments of Appellant and positions of the
Examiner, we refer to the Appeal Brief (filed Apr. 22, 2014); the Reply
Brief (filed Nov. 10, 2014); the Final Office Action (mailed Jan. 30, 2014);
and the Examiner's Answer (mailed Sept. 11, 2014) for the respective
details.
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Appeal2015-001823
Application 12/817,349
Examiner's Answer in response to Appellant's Appeal Brief (Ans. 6-8). We
concur with the applicable conclusions reached by the Examiner and
emphasize the following.
In rejecting independent claim 1, the Examiner relies on the disclosure
in Wallis of an application gateway automatically registering the runtime
environment and related component applications with an application
gateway when transferring the applications and application data from a first
wireless device to a second wireless device via a backup data storage. (Final
Act. 2-3; Wallis Abstract, Fig. 2, i-fi-f 15, 18, 19-24.) The Examiner further
relies on the disclosure in Rakic of exchanging client devices by transferring
removable memory form one device to the other. (Final Act. 3; Rakic i153.)
Appellant argues the Examiner errs, because "[in] Wallis, a swap
refers not to an operation, but a change in the use of a device." (App. Br. 6.)
Appellant further argue that the disclosure in Wallis of transfer of
applications from one device to the other is insufficient to teach or suggest
certain limitations of claim 1 that the Examiner found are taught or
suggested by Wallis. (Id.) Appellant further argues the SIM card transfer
disclosed in Rakic "has nothing to do with the claimed subject matter."
(App. Br. 8.)
Appellant's arguments are unpersuasive as they argue the references
individually, whereas the Examiner relies on the combination of the
references as teaching or suggesting the claimed subject matter. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d
413, 426 (CCPA 1981). We are not persuaded the Examiner errs in finding
the limitation, "executing a swap application to facilitate transferring of an
archive file from the first mobile device to the second mobile device
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Appeal2015-001823
Application 12/817,349
utilizing removable memory responsive to the permission from the server,"
as recited in claim 1, is taught or suggested by the "swap" disclosed in
Wallis, which involves the transfer of data from one device to the other with
involvement of the application gateway, together with the disclosure in
Rakic of using a removable memory to transfer information between
devices. (Ans. 6-8.)
In the Reply Brief, Appellant argues the cited art does not teach or
suggest communication between the first and second device, or the server
granting permission for a swap, per the requirements of claim 1. (Rep. Br.
2-5.) These arguments were not raised in the opening brief, and are
therefore waived. 37 C.F.R. § 41.37(c)(l)(iv). In any event, the arguments
are not persuasive. As discussed above, the combination of references
teaches or suggests the use of removable memory which is transferred from
one device to the other - which transfer constitutes "communication"
between the devices under the broadest reasonable interpretation of the
claims, as confirmed by the Specification. (Spec. i-f 31: "the swap
application facilitates transfer [which] may occur ... via physically
swapping one or more memory cards.") In addition, the synchronization
role of the application gateway disclosed in Wallis, including deletion of
transferred applications which are no longer found on a "support list," at
least teaches or suggests the required "receiving permission," under the
broadest reasonable interpretation of that claim language.
CONCLUSIONS
For the reasons discussed above, we sustain the obviousness rejection
of claim 1 over Wallis and Rakic. We also sustain the obviousness
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Appeal2015-001823
Application 12/817,349
rejections of claims 2, 3, 4, 6, 8-11, 13-14, 16-17, 19-21, and 23-24 over
Wallis and Rakic, of claims 2, 12, and 22 over Wallis, Rakic, and Grosse,
and of claims 5, 7, 15, and 18 over Wallis, Rakic, and Vataja, which claims
are not argued separately with particularity. 3 (App. Br. 4.)
DECISION
We affirm the Examiner's rejection of claims 1-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
3 Claims 21-24 are directed to "A computer readable storage medium storing
a computer program .... " In the event of further prosecution, we leave to
the Examiner to decide whether to reject claims 21-24 as being directed to
nonstatutory subject matter under 35 U.S.C. § 101. Appellant's
Specification does not define computer readable storage medium to exclude
transitory media. Consequently, the claimed medium encompasses
transitory media, which is not patent eligible. See Ex parte Mewherter, 107
USPQ2d 1857 (PTAB 2013) (precedential).
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