Ex Parte Kharwa

Patent Trial and Appeal Board

Mar 25, 2013

11195179 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/195,179 08/02/2005 Bhupesh D. Kharwa 14528.00318 1415 16378 7590 03/26/2013 Broadcom/BHGL P.O. Box 10395 Chicago, IL 60610 EXAMINER PATEL, NIMESH G ART UNIT PAPER NUMBER 2111 MAIL DATE DELIVERY MODE 03/26/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte BHUPESH D. KHARWA _____________ Appeal 2010-010298 Application 11/195,179 Technology Center 2100 ______________ Before KALYAN K. DESHPANDE, BRYAN F. MOORE, and MICHAEL J. STRAUSS, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010298 Application 11/195,179 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-9 and 22-58 which represent all the pending claims. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. INVENTION The invention is directed to allowing a user to store data into and retrieve data from a docking station when a portable computing device is connected to the docking station. See Spec. ¶ [10]. Claim 1 is exemplary of the invention and is reproduced below: 1. A method by which a docking station provides data storage to one or more computing devices comprising: broadcasting a beacon signal from said docking station which identifies that said docking station has data storage functionality, said beacon signal received by said one or more computing devices, said beacon signal comprising a destination address, said destination address set equal to a predefined multicast address; and receiving a response from said one or more data computing devices if said one or more data computing devices implements a multicast socket using said predefined multicast address, said docking station comprising a data storage device, said data storage device providing a storage depository for one or more data files provided by said one or more data computing devices, said docking station communicatively coupled to said one or more computing devices by way of an electrically conductive connection while said broadcasting and said receiving is performed, said docking station performing synchronization and data back-up after said receiving occurs. Appeal 2010-010298 Application 11/195,179 3 REFERENCES Mastrianni US 2005/0131996 A1 Jun. 16, 2005 Shore US 2006/0023697 A1 Feb. 2, 2006 Kelly US 2007/0098019 A1 May 3, 2007 Universal Plug and Play Device Architecture, Version 1.0, Microsoft Corporation, June 8, 2000 REJECTIONS AT ISSUE Claims 1, 4-9, 22-23, 26-32 and 42-54 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Kelly and Mastrianni. Ans. 3-5. Claims 2-3, 24-25, 33-41 and 55-58 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Kelly, Mastrianni, and Shore. Ans. 6-7. ISSUES 1. Did the Examiner err in finding that Kelly and Mastrianni can be combined and that the combination teaches “broadcasting a beacon signal from said docking station which identifies that said docking station has data storage functionality,” “receiving a response from said one or more data computing devices,” and “docking station performing synchronization and data back-up after said receiving occurs,” as recited in claim 1; 2. Did the Examiner err in finding that the combination of Kelly and Mastrianni teaches a subnet, as recited in claim 5; Appeal 2010-010298 Application 11/195,179 4 3. Did the Examiner err in finding that the combination of Kelly and Mastrianni teaches “wherein said predefined multicast address is selected from any one of one or more unreserved IP multicast addresses,” as recited in claim 9; 4. Did the Examiner err in finding that the combination of Kelly and Mastrianni teaches “one or more messages" that “comprises the MAC address, name, and address of a data storage device resident within said docking station,” as recited in claim 23; 5. Did the Examiner err in finding that the combination of Kelly and Mastrianni teaches an actuator, as recited in claim 30; 6. Did the Examiner err in finding that the combination of Kelly and Mastrianni teaches “wherein said broadcasting is performed by executing a first software application resident within said docking station,” as recited in claim 31; 7. Did the Examiner err in finding that the combination of Kelly and Mastrianni teaches “establishing” of a multicast socket using a predefined address, as recited in claim 32; 8. Did the Examiner err in finding that the combination of Kelly and Mastrianni teaches “backing-up data stored in said portable computing device,” as recited in claim 51; 9. Did the Examiner err in finding that the combination of Kelly and Mastrianni teaches “first retrieving comprises restoring data in said portable computing device,” as recited in claim 52; Appeal 2010-010298 Application 11/195,179 5 10. Did the Examiner err in finding that the combination of Kelly and Mastrianni teaches depressing a “push button” for the purposes of "said first transmitting, first receiving and first performing,” as recited in claim 53; 11. Did the Examiner err in combining Kelly and Shore; and 12. Did the Examiner err in finding that the combination of Kelly and Shore teaches “forwarding one or more packets received at a primary port to one or more secondary ports based on said predefined multicast address,” as recited in claim 3? ANALYSIS 35 U.S.C. § 103(a) - Kelly and Mastrianni. Claims 1, 4-9, 22-23, 26-32 and 42-54 Claim 1 Appellant argues Kelly does not teach "broadcasting a beacon signal… which identifies that said docking station has data storage functionality," as recited in claim 1. We are not persuaded by this argument. Kelly teaches that devices connected to the system provide UPnP protocol multicasting announcements of the services they provide. Kelly, ¶ [0021]. Kelly discloses components 102, 104, and 106 which are storage devices connected to the system. Id. Fig. 1. Kelly uses UPnP discovery to determine if a device can be used as a “backup medium.” Id. at ¶ [0021]. Mastrianni teaches a docking station, including data storage, said docking station communicatively coupled to said one or more computing devices by way of an electrically conductive connection. Mastrianni, Fig. 1. Thus, we find ample support for the Examiner’s finding that Kelly teaches the above Appeal 2010-010298 Application 11/195,179 6 limitation. Premised on the argument that a docking station storage device is not a UPnP device discussed above, Appellant also argues that Kelly does not disclose “said destination address set equal to a predefined multicast address.” App. Br. 20-21. Because we do not accept Appellant’s premise for the reasons above, neither do we accept their conclusion. Thus, for the same reasons presented above we are not persuaded by this argument. Appellant also argues that Kelly does not teach “said beacon signal received by said one or more computing devices,” “said beacon signal comprising a destination address,” and/or “said destination address set equal to a predefined multicast address.” App. Br. 20. Appellant merely recites the claim limitations and assert that it is not found in Kelly. Id. Pursuant 37 C.F.R. § 41.37(c)(1)(vii), we require more substantive argument in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Therefore these arguments are not persuasive of Examiner error. Appellant also argues that Kelly does not teach “receiving a response from said one or more data computing devices if said one or more data computing devices implements a multicast socket using said predefined multicast address.” App. Br. 25. Specifically, Appellant argues that “a ‘control point’ detect[ing] a service it wants to use via the Simple Service Discovery Protocol and control[ing] the service by sending Service Control Protocol actions to the control server URL” does not teach the above limitation. Id. We are not persuaded by this argument. The Examiner finds the Kelly teaches this limitation implicitly. As evidence, the Examiner cites Universal Plug and Play Device Architecture, Appeal 2010-010298 Application 11/195,179 7 Version 1.0, Section 1. Discovery (“When a new device is added to the network, it multicasts a number of discovery messages advertising its embedded devices and services. Any interested control point can listen to the standard multicast address for notifications that new capabilities are available.”). Ans. 9. Thus, predefined multicast address is a possible response that is sent when a new device is added . Therefore, we find ample support for the Examiner’s finding that Kelly implicitly teaches this limitation. Appellant argues in the Reply Brief that a control point (which receives the multicast messages) is not a device. Reply Br. 7. However, we are not persuaded by this argument because a control point is clearly associated with a computing device. Kelly, ¶ [0021] (“Control Points (CPs) . . . comprise, e.g., browsers running on PCs, wireless pads, etc.”). Appellant further argues Kelly does not teach “performing synchronization, as recited in claim 1.” App. Br. 22. Appellant admits that a backup occurs but assert a backup is not synchronization. Id. However, the Examiner finds that in Kelly a backup occurs after a response to a beacon signal is received from a device. Ans. 9. “The original content and the backup content (both of which are available on the network) are the same and thus synchronized, see Paragraphs 4-5 and 9).” Id. We agree with the Examiner’s finding that the backup is a synchronization. Motivation to Combine Appellant argues “it would not have been obvious for one of ordinary skill in the art to have known about a docking station capable of ‘broadcasting a beacon signal from said docking station which identifies that said docking station has data storage functionality,’ as recited in Claim 1.” Appeal 2010-010298 Application 11/195,179 8 App. Br. 22-23 (emphasis in original). We are not persuaded by this argument. We note that the U.S. Supreme Court has held that “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Instead, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). The Examiner finds that: It would have been obvious to one of ordinary skill in the art to use a docking station, with data storage, as disclosed by Mastrianni in the system of Kelly, so that laptop users in the home network can expand functionality for their respective laptop when attached to the docking station and other users in the home network can use the data storage in the docking station as backup data storage. Ans. 10. Upon reviewing the record before us, we find that the Examiner’s suggestion for modifying Kelly with the system of Mastrianni suffices as an articulated reason with rational underpinning to justify the legal conclusion of obviousness. We agree with the Examiner’s finding the one of ordinary skill at the time of the invention would combine Mastrianni’s teaching of connecting laptops to a docking station with the home network of Kelly. Ans. 10. Thus, a user would be motivated to use the docking station storage Appeal 2010-010298 Application 11/195,179 9 of Mastrianni to provide users of the system of Kelly the ability to store data on a docking station. Therefore, we are not persuaded by this argument. Because, for the reasons presented above, Appellant has provided insufficient evidence or argument to persuade us of Examiner error in the rejection of claim 1, we sustain its rejection. Appellant relies on the same arguments discussed above for the patentability of claims 22, 42-44, 46-50, and 54. Reply Br. 12, 18-20, 22-23, and 27. Thus, claims 22, 42-44, 46-50, and 54 fall with claim 1. Claim 5 Claim 5 recites “wherein said docking station and said one or more data computing devices reside within the same subnet of said local area network.” Appellant argues that this limitation is not met. App. Br. 26-27. We find that Kelly teaches or suggests that devices such as a docking station may be in the same subnet. See Ans. 10. In Kelly, components communicate via a data network 114 without the use of specialized hardware devices, such as routers or gateway devices. Kelly, ¶ [0017]. Therefore, we agree with the Examiner that devices on a local network can be considered a subnet. Additionally, we note the subnetting of devices on a network was well known by 2002. See Microsoft Computer Dictionary, Fifth edition (2002) (“subnetting n. The division of a network into subnets to improve network security and performance”). Thus, we are not persuaded by this argument and sustain the rejection of claim 5. Appellant relies on the same argument discussed above for the patentability of claim 45. Reply. Br. 21. Thus, claim 45 falls with claim 1. Claim 9 Appeal 2010-010298 Application 11/195,179 10 Claim 9 recites “wherein said predefined multicast address is selected from any one of one or more unreserved IP multicast addresses.” Appellant argues that “Kelly, at paragraph [0021], clearly states that ‘UPnP relies on AutoIP, which provides a means for an IP device to get a unique address in the absence of a DHCP server.’ Therefore, Kelly relies on a unique IP address such as a static IP address to implement its UPnP communication.” Reply Br. 11. The Examiner finds that using a reserved multicast address would cause a conflict with the owner of the address and that “[o]ne of ordinary skill in the art would recognize that this would cause errors and thus only unreserved multicast addresses would be used as the predefined multicast address.” Ans. 11. Appellant does not address this construction of the term “reserved,” but rather suggests that Kelly is limited to the use of a static IP. Id. However, the Appellant does not present persuasive evidence that a static IP is coextensive with a reserved IP address and thus would never be an unreserved IP address. Thus, we are not persuaded by this argument and sustain the rejection of claim 9. Claim 23 Claim 23 recites “one or more messages” that “comprises the MAC address, name, and address of a data storage device resident within said docking station.” Appellant argues that while the Examiner shows that network devices have MAC address, name, and address of a data storage device to distinguish themselves on a network, the Examiner has not shown that one or more messages comprise that MAC address, name and address. Reply Br. 13. We are not persuaded by this argument. Kelly teaches UPnP messages that would include this information. Kelly, ¶ [0021]; Ans. 11. Accordingly we sustain the rejection of claim 23. Appeal 2010-010298 Application 11/195,179 11 Claim 30 Claim 30 recites “an actuator is used to authenticate said portable computing device prior to generating said response.” Appellant argues that Mastrianni does not teach such an actuator. However, the Examiner cites to the security authentication in Mastrianni as the actuator. Ans. 11 (citing Mastrianni ¶ [0022]1). We agree with the Examiner that using data security involves authenticating prior to generating a response. Id. Thus we are not persuaded by this argument and sustain the rejection of claim 30. Claim 31 As to claim 31, Appellant argues that Kelly does not teach “wherein said broadcasting is performed by executing a first software application resident within said docking station.” App. Br. 38-39; Reply Br. 16. Appellant merely recites the claim limitations and assert that it is not found in Kelly. Id. We require more substantive argument in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. 37 C.F.R. § 41.37(c)(1)(vii); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Nonetheless, the Examiner finds that Kelly paragraph 21 teaches “UPnP software is executed in a UPnP network for broadcasting periodically multicast announcements of the services they provide and these announcements are received by CPs.” Ans. 12. Appellant has not provided persuasive argument that this finding is in error. Therefore we sustain the rejection of claim 31. 1 We note that the Examiner referred to Kelly ¶ [0022] in an apparent typographic error. Ans. 10. We will treat this as a reference to Mastrianni ¶ [0022] which properly supports the Examiners comments. Appeal 2010-010298 Application 11/195,179 12 Claim 32 As to claim 32, Appellant argues that Kelly does not teach “establishing is performed by executing a second software application resident within each of said at least one computing device.” App. Br. 40; Reply Br. 17. As discussed above, a statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim. Nonetheless, the Examiner finds that Kelly paragraph 21 teaches: UPnP software is executed on the computing devices in a UPnP network; After a CP has detected a service it wants to use, it sends SCP actions or queries state variables [and] CP receives announcements of services on a multicast address and sends a response to these announcements [further i]t is inherent the CP implements a multicast socket using said predefined multicast address. Ans. 12. Appellant has not provided persuasive argument that this finding is in error and we therefore sustain the rejection of claim 32. Claim 51 As to claim 51, Appellant argues “Kelly, at paragraph [0005], may teach a backup of content information on a home network; however, Kelly, at paragraph [0005], does not teach ‘backing-up data stored in said portable computing device,’” Reply. Br. 24. However, we agree with the Examiner that one of ordinary skill in the art at the time of the invention would have known that a portable computing device may be part of a home network. Thus, we are not persuaded by this argument and sustain the rejection of claim 51. Claim 52 Appeal 2010-010298 Application 11/195,179 13 Claim 52 recites “wherein said first retrieving comprises restoring data in said portable computing device.” Appellant argues that “Kelly's home network may use storage devices that only act as a reservoir for storage and could not be used for restoring data in a portable computing device.” Reply. Br. 25. We disagree and find that one of ordinary skill in the art would know that Kelly’s storage devices which are used for backup can be also used for recovery. See Ans. 14-15. We therefore sustain the rejection of claim 52. Claim 53 Claim 53 recites depressing a “push button” for the purposes of "said first transmitting, first receiving and first performing.” Appellant argues “[w]hile Mastrianni, at paragraph [0018], may disclose that a release button or release mechanism on the docking station allows a client system to be removed from a network, such a release button does not teach anything about depressing a ‘push button’ for the purposes of ‘said first transmitting, first receiving and first performing,’ as recited in Claim 53.” Reply. Br. 26. We are not persuaded by this argument. Mastrianni teaches that the backup, i.e. transmitting, first receiving, and first performing, is performed after the release button is pressed when the device snaps into the docking station. Mastrianni, ¶¶ [0018] and [0021]. We therefore sustain the rejection of claim 53. 35 U.S.C. § 103(a) - Kelly, Mastrianni, and Shore. Claims 2-3, 24-25, 33-41 and 55-58 Motivation to Combine Appellant argues: Appeal 2010-010298 Application 11/195,179 14 [T]he gigabit Ethernet communication disclosed in Shore cannot be combined with Kelly because Kelly discloses UPnP devices communicating via the UPnP protocol. Therefore, for at least this reason, the proposed combination of Shore with Kelly would destroy the intended function and/or change the principle of operation of communication via UPnP as presented in Kelly. Reply Br. 28. We are not persuaded by this argument. Appellant does not explain why and how the combined teachings would not function as intended. Moreover, attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). “Argument in the brief does not take the place of evidence in the record.” In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re Cole, 326 F.2d 769, 773 (CCPA 1964)). Nonetheless, the Examiner notes that “Gigabit Ethernet is becoming widespread in personal computers, laptops and switches, thereby providing the necessary infrastructures for handling data traffic of PCs and packetized telephones.” Ans. 15 (citing Shore, ¶ [0012]). We find that Shore would not destroy the intended function of Kelly. Claim 3 Appellant argues “Shore does not teach anything about a ‘switching device’ that ‘provides address resolution logic capable of forwarding one or more packets received at a primary port to one or more secondary ports based on said predefined multicast address,’ as recited in Claim 3.” App. Br. 54 (emphasis in original). The Examiner finds that “Shore does disclose a method wherein said switching device provides address resolution logic (Figure 2, 256) capable of forwarding one or more packets received at a primary port to one or more Appeal 2010-010298 Application 11/195,179 15 secondary ports based on said predefined multicast address (Paragraph 99; In networking, switching devices inherently forward packets based on an address and Kelly discloses packets that are addressed using a predefined multicast address).” Ans. 16. Thus, Shore teaches switching that can forward packets to one or more ports which one of ordinary skill in the art at the time of the invention would know may be primary or secondary (See Shore ¶ [0099]) and therefore teaches the limitation at issue. We therefore sustain the rejection of claim 3. Appellant relies on the previous arguments discussed above for the patentability of claims 24-25, 33-41, and 55-58. Reply Br. 30. Thus, claims 24-25, 33-41, and 55-58 fall with the claims discussed above. Appellant does not separately argue the rejection of the remaining claims not discussed above. Thus, for the reasons stated above, we affirm the Examiner’s decision to reject claims 1-9 and 22-58. DECISION The Examiner’s decision to reject claims 1-9 and 22-58 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED tj