Ex Parte Morita et al

Board of Patent Appeals and Interferences

May 25, 2012

11077885 (B.P.A.I. May. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex Parte TOSHIHIRO MORITA, MITSUYUKI HATANAKA,
KIYONOBU KOJIMA, IPPEI TAMBATA, and SHIN SHIROMA
____________

Appeal 2009-013766
Application 11/077,885
Technology Center 2400
____________

Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-013766
Application 11/077,885

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 17-44. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

THE INVENTION
Appellants’ claimed invention is directed to acquiring a device ID
from a portable device connected to a port when a connection of the portable
device to the port is detected (see Fig. 57, S261-S262) and automatically
transferring content stored in an information processor to the portable device
when it is judged that the portable device is a predetermined portable device
(see Fig. 57, S269-273).
Independent claim 17, reproduced below, is exemplary of the subject
matter on appeal.
Claim 17: An information processing method
comprising detecting that a portable device is connected to a
port of an information processor;

acquiring a device ID from the portable device connected
to the port when the connection of the portable device to the
port is detected;

judging whether the portable device connected to the port
is a predetermined portable device based on the device ID;

automatically transferring content stored in the
information processor to the portable device, when it is judged
that the portable device is the predetermined portable device.

Appeal 2009-013766
Application 11/077,885

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REFERENCES and REJECTIONS
The Examiner rejected claims 17, 18, 20-35, 37-40, and 42-44 under
35 U.S.C. § 102(e) as being anticipated by Uyehara (U.S. Patent No.
6,154,214 (filed May 28, 1998)).
The Examiner rejected claims 19, 36, and 41 under 35 U.S.C. § 103(a)
as being unpatentable over Uyehara in view of Sherman (U.S. Patent No.
6,636,897 B1 (filed September 28, 1999)).

ISSUES
The pivotal issues are whether the Examiner erred in finding that:
(1) Uyehara teaches the limitation of “acquiring a device ID from the
portable device connected to the port when the connection of the portable
device to the port is detected” as recited in claim 17; and
(2) Uyehara in view of Sherman teaches that “content is transferred in
accordance with a filtering package based upon history data indicating
previous exchanges between the portable device and the information
processor with respect to specific content” as recited in claim 19.

ANALYSIS
Analysis with respect to rejected claims 17, 18, 20-35, 37-40, and 42-44
under 35 U.S.C. § 102(e)
Appellants argue that the automatic copying of content to the portable
device of Uyehara is not based upon the identification of a predetermined ID
as required by claim 17 (App. Br. 19-20). Appellants explain that on the
contrary, in Uyehara (col. 4, ll. 51-54) when any device is placed in the
cradle the content will be automatically downloaded (App. Br. 20).
Appeal 2009-013766
Application 11/077,885

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We are persuaded by Appellants’ argument. We further note Uyehara
teaches that it is the user that identifies the device when the user purchases
an encrypted Title, rather than the device being automatically identified by a
predetermined ID (see Uyehara, col. 5, ll. 18-23).
Accordingly, we reverse the Examiner’s rejection of claim 17, as well
as the rejection of claims 18, 20-35, 37-40, and 42-44 for the same reasons.

Analysis with respect to rejected claims 19, 36, and 41
under 35 U.S.C. § 103
Appellants further argue that Sherman does not teach or suggest the
limitation of claim 19 wherein “content is transferred in accordance with a
filtering package based upon history data indicating previous exchanges
between the portable device and the information processor with respect to
specific content” (App. Br. 21).
We agree with Appellants’ argument. The Examiner relies on
Sherman’s teaching for allowing a user to select a subset of an object or
subset of e-mail folders (i.e., inbox folder) in a folder hierarchy instead of
selecting the whole e-mail folder for synchronization (Ans. 15-16). The
Examiner states that the system in Sherman “only synchronizes the specific
content ‘inbox folder’ per user’s selection (see Abstract and Column 9, lines
19-27)” (Ans. 16). We do not see how selecting a sub portion of the e-mail
folder for synchronization meets the temporal component of the disputed
limitation which requires the filtering to occur based “upon history data
indicating previous exchanges.”
Accordingly, we reverse the Examiner’s rejection of claim 19 and the
rejection of claims 36 and 41 for the same reasons.

Appeal 2009-013766
Application 11/077,885

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CONCLUSIONS
The Examiner erred in finding that:
(1) Uyehara teaches the limitation of “acquiring a device ID from the
portable device connected to the port when the connection of the portable
device to the port is detected” as recited in claim 17; and
(2) Uyehara in view of Sherman teaches that “content is transferred in
accordance with a filtering package based upon history data indicating
previous exchanges between the portable device and the information
processor with respect to specific content” as recited in claim 19.

DECISION
The Examiner’s decision rejecting claims 17-44 is reversed.

REVERSED

llw