Ex Parte Lee et al

Patent Trial and Appeal Board

Jun 29, 2018

13296541 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/296,541 11/15/2011 Suk Young Lee
24978 7590 07/03/2018
GREER, BURNS & CRAIN, LTD
300 S. WACKER DR.
SUITE 2500
CHICAGO, IL 60606
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.
5540.114622 3400
EXAMINER
NGUYEN, HAO HONG
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUK YOUNG LEE, SOO YOUNG KIM, GYU IL KIM,
JIN SOOP ARK, AUSTIN KIM, and HAE SEONG CHOI
Appeal2018-001682
Application 13/296,541
Technology Center 2400
Before MAHSHID D. SAADAT, SCOTT B. HOWARD, and
JASON M. REPKO, Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-001682
Application 13/296,541
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 3-5, 7, 9, 10, 12-14, and 16-22. App. Br. 5. 2 Claims
2, 6, 8, 11, and 15 were canceled. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
THE INVENTION
Appellants' invention relates to file transmission in a mobile-
messaging service. Spec. i-f 3. According to the Specification,
conventional mobile-messaging services may only support
transmission of files stored on the mobile terminal. Id. i-f 6.
Consequently, a mobile terminal's storage capacity constrains file
transmissions within the service. Id. To address this limitation and
others, Appellants' invention uses an Internet-storage system to
manage the transmission between mobile terminals. Id. i-fi-135-39. In
one embodiment, a user can store a file in an Internet-storage system.
Id. i-f 39. This allows the user to send the file to another user without
downloading it. Id.
Claim 1 is reproduced below with our emphasis:
1. A file transmission management system for transmitting a file
through a mobile messaging service, comprising:
1 Appellants identify the real party in interest as NHN Corporation, NHN
Green Factory, 178-1 Jeongja-Dong, Bundang-Gu, Seongnam-Si, Gyeonggi-
Do, Republic Of Korea 463-867. App. Br. 3.
2 Throughout this opinion, we refer to the Non-Final Rejection ("Non-Final
Act.") mailed January 12, 2016; the Appeal Brief ("App. Br.") filed June 24,
2016; the Examiner's Answer ("Ans.") mailed October 4, 2017; and the
Reply Brief ("Reply Br.") filed December 4, 2017.
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Application 13/296,541
a controller, including a processor, in communication with
a first mobile terminal through a network;
a network storage unit associated with the first mobile
terminal for storing files of the first mobile terminal, the files of
the first mobile terminal being accessible by the first mobile
terminal and accessible by other terminals upon receiving
authorization from the first mobile terminal;
a temporary network storage unit in communication with
the controller, for temporarily storing files transmitted by the
controller through the mobile messaging service; and
a database gateway in communication with the controller,
configured to receive a command from the controller, convert the
command to a database query, and to return a result of the
database query to the controller,
wherein the controller retrieves from the network storage
unit, a file selected by the first mobile terminal from among the
files of the first mobile terminal, and transmits the selected file
to a second terminal without storing the selected file in the first
mobile terminal, responsive to the controller receiving an
authorization from the first mobile terminal to transmit the
selected file to the second terminal using the mobile messaging
service, and
wherein the controller includes an upload manager to
receive the selected file from the network storage unit in response
to the first mobile terminal authorizing transmission of the
selected file to the second terminal.
THE EVIDENCE
The Examiner relies on the following as evidence:
Pearson
Masuoka et al.
Pyhalammi
Leinonen et al.
Du et al.
Martino et al.
us 6,023,684
US 2003/0061350 Al
US 2005/0241004 Al
US 2005/0278794 Al
US 2007 /0203917 Al
US 2010/0082760 Al
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Feb. 8,2000
Mar. 27, 2003
Oct. 27, 2005
Dec. 15, 2005
Aug.30,2007
Apr. 1, 2010
Appeal2018-001682
Application 13/296,541
THE REJECTIONS
Claims 1, 3, 7, 9, 13, 14, and 16-22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Pyhalammi, Leinonen, and Masuoka. Non-
Final Act. 4--29.
Claims 4, 5, and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pyhalammi, Leinonen, Masuoka, Pearson, and Du. Non-
Final Act. 29-32.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Pyhalammi, Leinonen, Masuoka, Pearson, and Martino. Non-
Final Act. 32-34.
THE OBVIOUSNESS REJECTION OVER PYHALAMMI, LEINONEN,
andMASUOKA
The Examiner's Findings
The Examiner finds that Pyhalammi teaches every limitation recited
in representative3 claim 1 except for (1) retrieving and transmitting the
selected file without storing the selected file in the first mobile terminal and
(2) the recited temporary network storage unit. Non-Final Act. 4--6. In
concluding that claim 1 would have been obvious, the Examiner cites
Leinonen and Masuoka as teaching these features. See id. Of relevance to
Appellants' arguments, the Examiner concludes that it would have been
3 Appellants state that "[t]he subject of this appeal is independent claim 1,"
and "[ i ]ndependent claims 7, 14 and 17, along with dependent claims 3, 9,
13, 16 and 18-22, stand or fall with claim 1." App. Br. 5. Therefore, we
select independent claim 1 as representative of claims 1, 3, 7, 9, 13, 14, and
16-22. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 13/296,541
obvious to use Leinonen's retrieving and transmitting to overcome the
mobile devices' limited memory capacity. Id. at 6 (citing Leinonen i-f 1 ).
Appellants ' Contentions
Appellants argue that Pyhalammi would have no need to transmit a
file from a first mobile device to a second. App. Br. 9--10; Reply Br. 2-3.
According to Appellants, Pyhalammi' s mobile devices have direct access to
the device storing the files. App. Br. 10. Appellants argue that, although
Pyhalammi transfers files between mobile device 101 and terminal device
702, Pyhalammi does not transmit files between two mobile devices.
Reply Br. 3.
Appellants further contend that Leinonen teaches away from
uploading or sharing files. App. Br. 11. According to Appellants, Leinonen
teaches a business method involving receiving payment for delivering digital
media files, which inhibits sharing between users. Id. (citing Leinonen i-fi-1 6,
21).
Analysis
Claim 1 recites, in part, a controller that "transmits the selected file to
a second terminal without storing the selected file in the first mobile
terminal" (emphasis added).
The Examiner finds Pyhalammi's terminal device 702 corresponds to
the recited second terminal. Non-Final Act. 5. Appellants acknowledge that
"Pyhalammi clearly discloses that files are transferred between a mobile
device 101 and the terminal device 702." Reply Br. 3. Accordingly, the
issue here is whether the recited "second terminal" encompasses
Pyhalammi's terminal device 702.
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Notably, claim 1 recites a "first mobile terminal" (emphasis added),
but later omits the word "mobile," reciting only "a second terminal" in the
limitation at issue. Claim 1, therefore, does not expressly limit the second
terminal to mobile terminals. Nor is such an interpretation consistent with
the Specification. According to the Specification, "[ e ]xamples of a terminal
include, but are not limited to, a mobile phone, a smartphone, a navigation
device, a computer, a laptop, and, in general, any suitable portable electronic
device having the capacity to connect to the Internet." Spec. i-f 3 8 (emphasis
added). Furthermore, in the "Discussion of the Background" section, the
Specification contrasts a "terminal," which can be a personal computer, with
a "mobile terminal." Id. i-f 6. These passages illustrate that, although the
terminal can include mobile devices, Appellants use of the term "terminal"
includes other Internet-connected devices. See id. i-fi-16, 38.
On this record, the Examiner's interpretation of the recited "terminal"
as encompassing Pyhalammi's terminal device 702 is reasonable and
consistent with the Specification. Non-Final Act. 5. Like Appellants'
disclosed Internet-connected terminal (Spec. i-f 38), Pyhalammi's terminal
device 702 may be a digital-broadcast receiver with software to transfer files
to and from mobile device 101. Pyhalammi i-f 34, cited in Non-Final Act. 5.
Appellants' arguments are unpersuasive because they do not address the
Examiner's reliance on Pyhalammi in this regard. See App. Br. 9-10;
Reply Br. 2-3.
Moreover, Appellants' arguments are not commensurate with claim
1 's scope, which does not require two mobile devices. See id. That is,
because the Examiner's rationale is based on transferring files between
device 702 and device 101, we are unpersuaded by Appellants' argument
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that (1) Pyhalammi does not transmit files between two mobile devices (see
Reply Br. 3) and (2) Pyhalammi's devices would have no need to transfer
files between them (App. Br. 10).
We also note that Leinonen teaches two mobile devices transferring
files. See Leinonen i-fi-123-24. For this additional reason, we find
Appellants' arguments (App. Br. 9-10; Reply Br. 2-3) unpersuasive. In
particular, the Examiner relies on Leinonen's file transfer between two
mobile devices via a content provider. Non-Final Act. 6 (citing
Leinonen i-fi-f l, 23-24). For example, Leinonen teaches that mobile station
22 makes a request to send a song to mobile station 34. Leinonen i123.
Content provider 24 receives and fulfills this request. Id. To fulfill this
request, content provider 24 sends mobile station 34 a song that is stored in
its database. Id. i124. In this way, we agree with the Examiner that
Leinonen teaches transmitting a selected file (e.g., a song) to a second
terminal (mobile station 34) without storing the selected file in the first
mobile terminal (mobile station 22), as recited. Non-Final Act. 6.
Likewise, we are unpersuaded by Appellants' argument that the
Examiner erred in combining Pyhalammi with Leinonen. See App. Br. 10-
11.
First, Appellants argue that Pyhalammi would have no need to
transmit files between mobile devices. Id. at 10. We disagree. The
Examiner identifies an advantage of using Leinonen' s transfer method that is
applicable to Pyhalammi. Non-Final Act. 6. In particular, the Examiner
concludes that it would have been obvious to use Leinonen's retrieving and
transmitting to overcome the limited memory capacity of mobile stations.
Id. (citing Leinonen i-f l ). Such a problem would have also affected
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Pyhalammi's system, which relies on mobile devices 101. Pyhalammi i-f 34.
That is, even if Pyhalammi' s mobile devices 101 have access to the file,
Leinonen's method conserves resources and provides a way to avoid storing
the file on the first device (22) or even the second device (34), when the
second device is unavailable. See Leinonen i-fi-1 1, 23, 24 (explaining that
voicemail storage 32 may store a copy of the media file when the second
mobile station 34 is unavailable). In this way, the Examiner supports the
obviousness conclusion with articulated reasoning with some rational
underpinning.
Second, we are unpersuaded by Appellants' teaching-away argument.
App. Br. 11. A reference does not teach away "if it merely expresses a
general preference for an alternative invention but does not 'criticize,
discredit, or otherwise discourage' investigation into the invention claimed."
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009). We, however, note that "even if a reference is not found to
teach away, its statements regarding preferences are relevant to a finding
regarding whether a skilled artisan would be motivated to combine that
reference with another reference." Polaris Indus. v. Arctic Cat, Inc., 882
F.3d 1056, 1069 (Fed. Cir. 2018) (citing Apple Inc. v. Samsung Elecs. Co.,
839 F.3d 1034, 1051 n.15 (Fed. Cir. 2016) (en bane)). Here, Appellants
have not shown that Leinonen criticizes, discredits, or otherwise discourages
investigation into the invention claimed. See App. Br. 11.
Specifically, we disagree with Appellants' characterization of
Leinonen indicating the reference discourages sharing files between users.
Id. Appellants point to an embodiment that stores copyright protected files.
Id. To be sure, Leinonen explains that content provider 24 stores files with a
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restricted use. Leinonen i-f 21. This finding, however, does not undermine
the Examiner's obviousness conclusion because Leinonen provides a way to
share files consistent with a business arrangement. See id i-f 23. That is, the
Examiner does not propose circumventing content restrictions. See Non-
Final Act. 6. Instead, the Examiner proposes modifying Pyhalammi with
Leinonen's file-sharing method (id.), which provides a way to comport with
the restrictions (see, e.g., Leinonen i-f 25). On this record, we are
unpersuaded that one of ordinary skill in the art would have been
discouraged from using Leinonen's method to share files and conserve
resources in Pyhalammi.
Accordingly, we sustain the Examiner's rejection of independent
claim 1. We also sustain the Examiner's rejection of independent claims 7,
14 and 17, along with dependent claims 3, 9, 13, 16 and 18-22, which
"stand or fall with claim 1." App. Br. 5. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, such
arguments are waived. See 37 C.F.R. § 41.37 (c)(l)(iv).
THE REMAINING OBVIOUSNESS REJECTIONS
Claims 4, 5, 10, and 12 depend from claims 1 and 7. In arguing for
the patentability of claims 4, 5, 10, and 12, Appellants refer to the arguments
presented for the independent claim 1. App. Br. 5. Therefore, for the
reasons discussed in connection with claim 1, we also sustain the rejections
of claims 4, 5, 10, and 12. To the extent Appellants have not advanced
separate, substantive arguments for particular claims, such arguments are
waived. See 37 C.F.R. § 41.37 (c)(l)(iv).
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DECISION
We affirm the Examiner's rejection of claims 1, 3-5, 7, 9, 10, 12-14,
and 16-22.
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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