Ex Parte JIN et al

Patent Trial and Appeal Board

Aug 2, 2016

13279420 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/279,420 10/24/2011
23373 7590 08/04/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Ho JIN
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.
Ql25158 1010
EXAMINER
CAO,DIEMK
ART UNIT PAPER NUMBER
2196
NOTIFICATION DATE DELIVERY MODE
08/04/2016 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HO JIN and YOUNG-CHUL SOHN
Appeal2015-003212
Application 13/279,420
Technology Center 2100
Before ERIC S. FRAHM, LARRY J. HUME, and SCOTT B. HOWARD,
Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which constitute all of the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
THE INVENTION
The disclosed and claimed invention is directed to a method and
apparatus for executing shared applications installed in remote device. See
generally Abstract; Spec. i-f 2.
1 Appellants identify Samsung Electronics Co., Ltd. as the real party in
interest. Br. 2.
Appeal2015-003212
Application 13/279,420
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of controlling a controlled device via a
controller device, the method comprising:
obtaining, from the controlled device, a list of shared
applications which are remotely executable and are installed in
the controlled device, and parameter information which is
required to remotely execute the shared applications installed on
the controlled device;
generating a control message for executing at least one of
the shared applications installed in the controlled device using
the obtained parameter information; and
remotely executing, from the controller device, at least one
of the shared applications installed in the controlled device by
transmitting the control message to the controlled device.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Milton et al. ("Milton") US 2003/0117433 Al June 26, 2003
Cho US 2005/0120073 Al June 2, 2005
Washburn et al. ("Washburn") US 7,624,397 Bl Nov. 24, 2009
REJECTIONS
Claims 1, 2, 5, 6, and 9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cho in view of Washburn. Final Act. 2--4.
Claims 10, 11, 14, 15, 18, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Cho. Final Act 4--7.
Claims 3, 4, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cho in view of Washburn and Milton. Final Act 7-8.
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Application 13/279,420
Claims 12, 13, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cho in view of Milton. Final Act. 8.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We do not consider arguments Appellants could have made but chose not to
make in the Briefs and we deem any such arguments waived. See 37 C.F.R.
§ 41.37(c)(l)(vii); see also Ex parte Frye, 94 USPQ2d 1072, 1075
(BP AI 2010) (precedential) ("Filing a Board appeal does not, unto itself,
entitle an appellant to de novo review of all aspects of a rejection. If an
appellant fails to present arguments on a particular issue ... the Board will
not, as a general matter, unilaterally review those uncontested aspects of the
rejection.").
We are not persuaded by Appellants' arguments regarding claims
1-20, and we incorporate herein and adopt as our own: ( 1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 2-8), and (2) the reasons and rebuttals set forth in the
Examiner's Answer in response to Appellants' arguments (Ans. 3-7). We
incorporate such findings, reasons, and rebuttals herein by reference unless
otherwise noted. However, we highlight and address specific findings and
arguments regarding claims 1 and 10 for emphasis as follows.
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Application 13/279,420
Claims 1-9, 19, and 20
Generating Step
Appellants argue Washburn does not teach or suggest the generating
step recited in claim 1. Br. 8-11. Instead, Appellants argue Washburn
merely describes sending a request, which is different than the claimed
control message. Br. 9-10. Appellants also argue Cho merely "describes a
'description file,' which simply contains information on applications that
may be served and information on the service environment, and which is
entirely unrelated to remotely controlling or executing shared applications
installed on a controlled device." Br. 11. However, Cho does not teach or
suggest that the description file is used to control or execute a shared
application installed in the controlled device. Id. (citing Cho i-fi-140, 55).
The Examiner finds Cho paragraph 58 teaches "generating a control
message for executing at least one of the shared applications installed in the
controlled device." Final Act. 3; Ans. 5. Although the Examiner notes "Cho
does not explicitly teach a list of shared applications, and using the obtained
parameter information to generate a control message," the Examiner finds
Washburn teaches "using the obtained parameter information to generate a
control message." Final Act. 3 (citing Washburn 12:14-29); Ans. 6 (citing
Washburn 12:1-29).
The Examiner concludes the claim term "control message" is broad
enough to encompass a request. Ans. 5. According to the Examiner, the
Specification describes an embodiment in which a request is sent by the
controller device to the controlled device for executing a shared application.
Id. (citing Spec. i187). According to the Specification:
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Application 13/279,420
The application executing unit 963 executes at least one of the
shared applications according to the request of the controller
device 900. In a UPnP network, the executing may be performed
as a response if the controller device 900 invokes an action(s)
defined in the remote application execution service of the
controlled device 950.
Spec. i-f 87 (emphasis added).
During prosecution, claims must be given their broadest reasonable
interpretation while reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). During our claim
construction, we consult the patent's specification to help clarify the
meaning of claim terms, because the claims "must be read in view of the
specification, of which they are a part." Trading Technologies Intern, Inc. v.
eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010) (quoting Markman v.
Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995) (en bane),
aff'd, 517 U.S. 370; 116 S. Ct. 1384; 134 L.Ed.2d 577 (1996)). On the other
side of the claim construction coin, as a general rule, "there is a strong
presumption against a claim construction that excludes a disclosed
embodiment." See In re Katz Interactive Call Processing Patent Litig., 639
F.3d 1303, 1324 (Fed. Cir. 2011). "This does not mean, however, that each
and every claim ought to be interpreted to cover each and every
embodiment." PPC Broadband, Inc. v. Corning Optical Commc 'ns. RF,
LLC, 815 F.3d 747, 755 (Fed. Cir.2016) (quoting Baran v. Med. Device
Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010) ("It is not necessary that
each claim read on every embodiment.")). Based on the disclosure in the
Specification of the controller sending a request (Spec. i-f 87), we agree with
the Examiner that claim term "control message" is broad enough to
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Application 13/279,420
encompass such a request. Because Appellants' arguments are not
commensurate with the scope of the claims, they are unpersuasive. See In re
Self, 671F.2d1344, 1348 (CCPA 1982).
We are also not persuaded by Appellants' arguments that are directed
to the references individually, and not the combination of teachings as
applied by the Examiner. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. In re Merck & Co. Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986). The test for obviousness is not whether the claimed
invention is expressly suggested in any one or all of the references, but
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Finally, Appellants arguments regarding Cho are based on the
disclosure of paragraphs 40 and 55. See Br. 11. However, the Examiner's
findings are based on paragraph 58 (see Final Act. 3; Ans. 5), which states:
The process of executing the session (S890) is performed using
a conventional remote display system. First, if a user's input,
namely, a control is sent from the second peer 20 as a client to
the first peer 10 as a server ( 5 891 ), an output value of the
application as well as display information is sent from the first
peer 10 to the second peer 20 (S892). The processes such as
S891 and S892 are repeated several times according to a request
from the second peer 20 as the client. Thereafter, if the
application utilization in the second peer 20 is ended, a file and
any other log information generated as a result of the application
execution are stored in a local computer (S893) and an end
instruction is sent to the first peer 10 (S894). Thereafter, the first
peer 10, receiving the end instruction, terminates the session and
completes a normal performance process (S895).
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Cho il 58 (emphasis on original omitted, emphasis added). We are not
persuaded of error based on Appellants' argument because it does not
address the reasoning relied upon by the Examiner (Final Act. 3; Ans. 5)
and, thus, does not adequately address the rejection on appeal. Instead, we
agree with the Examiner that Cho teaches generating a control message for
executing at least one of the shared applications installed in the controlled
device.
Remotely Executing Step
Appellants also argue the Examiner erred in finding Cho teaches the
remotely executing step. Br. 12-14. Specifically, Appellants argue "Cho
illustrates a method and apparatus for allowing respective peers to use
applications installed on other peers using a Peer-to-Peer (P2P) scheme."
Br. 12. However, according to Appellants, "Cho fails to teach or suggest
using the input control from the second peer 20 to the first peer 10 to execute
the application." Br. 14. Therefore, there is no remote execution by
transmitting the control message to the controlled device. Id.
As discussed in the previous section, the combination of Cho and
Washburn teach generating a control message using the obtained parameter
information. Because Appellants' argument is premised on the same
arguments discussed above in the generating step, for the same reasons we
are not persuaded by Appellants' arguments the Examiner erred.
Accordingly, we sustain the Examiner's rejection of claim 1, along
with the rejection of claim 5 (Br. 15), which is argued on the same grounds,
and claims 2, 6, and 9, which are not argued separately (id).
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We also sustain the Examiner's rejection of dependent claims 19 and
20, for which Appellants rely on the same arguments as were raised for
claim 1. See Br. 16.
With regard to claims 3, 4, 7, and 8, Appellants merely contend,
because the additional reference used in the rejection of these claims
(Milton) does not cure the shortcomings of the other references applied
against claims 1 and 5, from which they depend, the Examiner failed to
make a prima facie case of obviousness for these claims. App. Br. 15-16.
Because we determine that the rejections of claim 1 and 5 are not erroneous
for the reasons discussed above, we sustain the rejections of these claims.
Claim 10-18
Appellants argue independent claim 10 "recite[ s] features similar to
the above-discussed features of claim 1" and the Examiner erred for the
same reasons discussed above. Br. 15.
We disagree with Appellants' characterization of the claims, as
claim 10 does not require the controller device to generate a command
message "using the parameter information obtained by the obtaining unit."
Specifically, claim 10 does not recite where the command message is
generated, nor whether the command message is generated using parameter
information obtained from the controlled device as recited in claim 10.
Because Appellants' arguments are not commensurate with the scope of the
claims, they are unpersuasive. See In re Self, 671 F.2d at 1348.
Similarly, Appellants' argument regarding the remotely executing step
focused on where the command message was generated and whether it used
obtained parameters. See Br. 12-14. Because claim 10 does not contain
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similar limitations, Appellants' arguments are not commensurate with the
scope of the claims and are, therefore, unpersuasive. See Self, 671 F.2d at
1348.
Accordingly, we sustain the Examiner's rejections of claim 10, along
with the rejection of claim 14, which is argued on the same grounds, and
dependent claims 11, 15, and 18, which are not argued separately.
With regard to claims 12, 13, 16, and 17, Appellants merely contend
that because the additional reference used in the rejection of these claims
(Milton) does not cure the shortcomings of the other references applied
against claim 10 and 14 from which they depend, the Examiner failed to
make a prima facie case of obviousness for these claims. App. Br. 15-16.
Because we determine that the rejections of claim 10 and 14 are not
erroneous for the reasons discussed above, we sustain the rejections of these
claims.
DECISION
For the above reasons, we affirm the Examiner's decisions rejecting
claims 1-2 0.
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
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