Ex Parte Simelius et al

Board of Patent Appeals and Interferences

Sep 29, 2010

10645687 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/645,687 08/20/2003 Kim Simelius 864A.0004.U1(US) 8280
29683 7590 09/29/2010
HARRINGTON & SMITH
4 RESEARCH DRIVE, Suite 202
SHELTON, CT 06484-6212
EXAMINER
SYED, FARHAN M
ART UNIT PAPER NUMBER
2165
MAIL DATE DELIVERY MODE
09/29/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KIM SIMELIUS and PETRI LEHTOVIRTA
____________________

Appeal 2009-005095
Application 10/645,6871
Technology Center 2100
____________________

Before JAY P. LUCAS, ST. JOHN COURTENAY III, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed August 20, 2003. The real party in interest is Nokia
Corp. (App. Br. 3.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005095
Application 10/645,687

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STATEMENT OF THE CASE
Appellants appeal from the Examiner’s rejection of claims 1-22 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ Invention
The invention at issue on appeal relates to a method and apparatus for
transmitting or transferring data and synchronizing data between a user’s
mobile terminal and another electronic device. When a user stores data (a
data item) to the memory of the user terminal, the user may associate the
item with a grouping identifier that further associates the data item to a
specific group of data items and then synchronizes the data item between the
terminal and another electronic device utilizing the grouping identifier.
(Spec. 1, ll. 3-5, 9-13; 2, ll. 21-32; 3, ll. 4-14.)3
Representative Claim
Independent claim 1 further illustrates the invention. It read as
follows:
1. A method comprising:
forming a data item for the first time in a first electronic
device,
in response to said forming, providing to a user of the
first electronic device a possibility to associate an existing
grouping identifier with the formed data item;

3 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed May 5, 2008; and Reply Brief (“Reply Br.”) filed September 22, 2008.
We also refer to the Examiner’s Answer (“Ans.”) mailed July 21, 2008.
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in response to a situation in which the user associates
said existing grouping identifier for the formed data item,
associating the formed data item with said existing grouping
identifier, said existing grouping identifier being associable
with at least one other data item,
in response to a situation in which the user does not want
to use said existing grouping identifier for the formed data item,
obtaining a new grouping identifier and associating the formed
data item with the new grouping identifier,
selecting one of the following: said existing grouping
identifier and the new grouping identifier, to be a selected
grouping identifier, and
synchronizing said data item between said first electronic
device and a second electronic device on the basis of said
selected grouping identifier, said devices being capable of
communication with each other.

References
The Examiner relies on the following references as evidence of
unpatentability:
Hunkins US 6,141,663 Oct. 31, 2000

Alam US 6,324,544 B1 Nov. 27, 2001

Champagne US 2005/0086199 A1 Apr. 21, 2005
(Cont. of US Application No. 09/052,769 filed Mar. 31, 1998)

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Rejections on Appeal4
The Examiner rejects claims 1-8, 12-20, and 22 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Alam and
Champagne.
The Examiner rejects claims 9-11 and 21 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Alam, Champagne, and
Hunkins.

ISSUE
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us is as follows:
Does the Examiner err in finding the Alam and Champagne references
would have collectively taught or suggested “providing to a user of the first
electronic device a possibility to associate an existing grouping identifier
with the formed data item . . . [and responsively] obtaining a new grouping
identifier and associating the formed data item with the new grouping
identifier,” as recited in claim 1?

4 The Examiner withdraws the rejection to claims 1-22 under 35 U.S.C.
§ 102(b) as being anticipated by Celik (US Patent Pub. No. 2004/0236792)
(Ans. 3). We do not address Appellants’ arguments directed to the
withdrawn rejection.
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Application 10/645,687

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FINDINGS OF FACT (FF)
Alam and Champagne References
We adopt as our own the Examiner’s findings with respect to the
Alam and Champagne references set out in the Answer. (Ans. 4-6, 16-18.)

ANALYSIS
We select independent claim 1 as representative of Appellant’s
groupings and arguments with respect to the Examiner’s obviousness
rejection of claims 1-8, 12-20, and 22, and we will address Appellants’
arguments with respect thereto. 37 C.F.R. § 41.37 (c)(1)(vii). See In re
Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). The Examiner sets forth a
detailed explanation of a reasoned conclusion of obviousness in the
Examiner’s Answer with respect to representative claim 1. (Ans. 4-6, 16-
18.) Therefore, we look to the Appellants’ Briefs to show error in the
proffered reasoned conclusions. See Kahn, 441 F.3d at 985-86.
Arguments Concerning the Examiner’s Rejection of Claims
1-8, 12-20, and 22 under 35 U.S.C. § 103
The Examiner rejects representative claim 1 for being obvious in view
of the combination of the Alam and Champagne references. (Ans. 4-6, 16-
18.) Appellants contend, inter alia, that Alam and Champagne do not teach
obtaining a new grouping identifier and associating the formed data item
with the new grouping identifier (App. Br. 17-20), i.e., the user obtaining
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(creating) a new grouping identifier and associating (linking) the data item to
the new identifier. The Examiner finds that Alam and Champagne teach the
disputed features. (Ans. 4-6, 16-18.)
Specifically, the Examiner finds that “Alam teaches . . . forming a
data item for the first time into the first electronic device” (Ans. 4), but
“Alam does not explicitly teach[ ] . . . in response to said forming, providing
to a user of the first electronic device a possibility to associate an existing
grouping identifier with the formed data item” (Ans. 4) or “obtaining a new
grouping identifier and associating the formed data item with the new
grouping identifier” (Ans. 5).
The Examiner finds Champagne teaches these features, citing
paragraphs 11 and 36 of Champagne (Ans. 5). The Examiner also finds, in
response to Appellants’ arguments, that Alam teaches associating an existing
grouping identifier and the formed data item into a “tailored grouping of
data items” (Ans. 16; see Ans. 16-17 – discussing Personal Information
Manager (PIM) programs), and the combination of Alam and Champagne
teaches obtaining a “new grouping item” and associating “a formed data
item within the new grouping item” (Ans. 18, citing Alam, col. 10, ll. 10-
67).
Based on the record before us, we find error in the Examiner’s
obviousness rejection of representative claim 1. We agree with Appellants
that the Alam and Champagne references do not teach or suggest the
disputed features of a user obtaining a new grouping identifier and
associating the formed data item with the new grouping identifier for
essentially the reasons espoused by Appellants.
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The Examiner concedes that Alam does not teach providing a user of
with the capability of associating an existing grouping identifier with the
formed data item (supra, Ans. 4), nor the user obtaining a new grouping
identifier and associating the data item with the new identifier (supra, Ans.
5). The Examiner relies on Champagne to cure these deficiencies, finding
that Champagne describes lists of “field categories (identifiers) for grouping
of data items” and “information identify[ing] both the categories and the
properties of a plurality of fields of the record structure.” (Ans. 5).
The cited sections of Champagne (¶¶ [0011] and [0036]), however, do
not describe any user interaction, nor do they describe obtaining a new
identifier. Instead these sections of Champagne describe automated
synchronization between databases, and equivalent categories. We do not
find these sections of Champagne describe a user obtaining a new grouping
identifier and associating the data item with the new identifier.
The Examiner provides an additional citations to Alam (col. 10, ll. 10-
67), which discusses Application Programming Interfaces (APIs)
(specifically handler interfaces that manipulate object handles (names)), as
well as Champagne (¶¶ [0017], [0018], [0020], [0036], [0040], [0042],
[0050]-[0056], and [0060]) – without additional explanation. (Ans. 18.) We
do not find either the cited portion of Alam, or the cited portions of
Champagne to describe a user obtaining a new grouping identifier and
associating the data item with the new identifier.
Rather, Alam describes automated processes, APIs, which manipulate
object names, but do not describe any user interaction, much less a user
creating or obtaining a new group identifier and associating an item with the
new identifier. The Examiner fails to provide any explanation of the cited
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portions of Champagne, and we find the cited portions of Champagne
describe mapping categories between databases, but do not describe user
interaction, much less a user creating or obtaining a new group identifier and
associating an item with the new identifier. Consequently, we agree with
Appellants that Alam and Champagne do not teach a user obtaining a new
group identifier and associating an item with the new identifier as recited in
claim 1.
We, therefore, are constrained by the record before us to find that the
Alam and Champagne references would not have collectively taught or
suggested at least the disputed feature of “providing to a user of the first
electronic device a possibility to associate an existing grouping identifier
with the formed data item . . . [and responsively] obtaining a new grouping
identifier and associating the formed data item with the new grouping
identifier” as recited in claim 1. The Examiner has failed to set forth a prima
facie obviousness rejection. It follows that Appellants have persuaded us to
find error in the Examiner’s obviousness rejection of representative
independent claim 1.
Independent claims 15 and 22 include limitations commensurate in
scope to the disputed limitations of claim 1. Dependent claims 2-14
(dependent on claim 1) and 16-21 (dependent on claim 15) depend on their
respective base independent claims. For the reasons set forth with respect to
claim 1 (supra), we find that the combination of the Alam and Champagne
falls short of teaching or suggesting at least one feature of claims 2-22. The
addition of the Hunkins reference, cited by the Examiner with respect to
claims 9-11 and 21 (Ans. 14-16), does not cure these noted deficiencies.
Consequently, we are constrained by the record before us to find that the
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Examiner’s cited prior art combinations of Alam and Champagne, and Alam
and Champagne with Hunkins would not have collectively taught or
suggested the disputed limitations of claims 2-22. It follows that Appellants
have also persuaded us to find error in the Examiner’s obviousness rejection
of claims 2-22. Accordingly, we reverse the Examiner’s obviousness
rejection with respect to claims 1-22.

CONCLUSIONS OF LAW
Appellant has shown that the Examiner erred in rejecting claims 1-22
under 35 U.S.C. § 103(a).

DECISION
We reverse the Examiner’s rejection of claims 1-22 under 35 U.S.C.
§ 103(a).

REVERSED

llw

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