Ex Parte Waker et al

Patent Trial and Appeal Board

Jun 13, 2016

11741800 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111741,800 0413012007
22879 7590 06/15/2016
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Philip M. Waker
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.
82226006 3736
EXAMINER
BROOKS, DAVID T
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
06/15/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP M. WAKER and WILLIAM G. MCCOLLOM
Appeal2015-001849 1
Application 11/741,800
Technology Center 2100
Before JEAN R. HOMERE, JOHNNY A. KUMAR, and
MICHAEL J. STRAUSS, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Hewlett-Packard
Development Company, L.P. App. Br. 4. This Appeal is related to prior
Appeal No. 2011-002905, filed in connection with the subject Application
No. 11/741,800 (PTAB October 28, 2013), in which we affirmed the
Examiner's rejection of claims 1-3, 5-8, and 16-20. Appellants are
reminded of the requirement to identify:
all other prior and pending appeals ... before the Board ... which ...
involve an application or patent owned by the appellant or assignee, are
known to [A ]ppellant, the [A ]ppellant[ s]' legal representative, or assignee,
and may be related to, directly affect or be directly affected by or having a
bearing on the Board's decision in the pending appeal.
37 C.F.R. § 41.37(c)(l)(ii) (2013).
Appeal2015-001849
Application 11/741,800
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 21-33. Claims 1-8 and 16-20 have been cancelled. Claims 9-15
have been withdrawn. App. Br. 7. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
Appellants' Invention
Appellants invented a method and system for allowing the processor
(32) of a portable device to execute software (44) stored on a digital camera
memory ( 40) to select therefrom one or more files (e.g., image, text,
audio/video) ( 42) in accordance with a user-configured policy (20) retrieved
from a server ( 10), whereby the retrieved policy includes various criteria
(e.g., file size, type, date, copyright protection, encryption) indicating which
files to transfer to the server (10) across a network (25) in response to a
user's request. Spec. i-fi-113-16, 19, and Fig. 1, Table 1.
Illustrative Claim
Independent claim 21 further illustrates the invention, and reads as
follows:
21. A non-transitory computer-readable storage medium having an
executable program stored thereon, wherein the program is executed by a
processor of a portable device in response to a removable coupling of the
medium to the device, and wherein the program instructs the processor to:
automatically retrieve a policy from a policy source coupled across a
network to the portable device;
automatically select, based on the retrieved policy, at least one data file
stored on the medium, the data file having at least one of image, video, or
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Appeal2015-001849
Application 11/741,800
audio content; and
automatically transfer the selected at least one data file from the portable
device across the network.
Thomas
Silverman
Prior Art Relied Upon
U.S. 2004/0083473 Al
U.S. 2006/0224620 Al
Rejection on Appeal
Apr. 29, 2004
Oct. 5, 2006
The Examiner rejects claims 21-33 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Silverman and Thomas.
ANALYSIS
We consider Appellants' arguments seriatim as they are presented in
the Appeal Brief, pages 7-20 and the Reply Brief, pages 1-7. 2 We have
reviewed the Examiner's rejection in light of Appellants' arguments. We
are unpersuaded by Appellants' contentions. Except as indicated otherwise,
we adopt as our own the findings and reasons set forth in the rejections from
which the appeal is taken and in the Examiner's Answer in response to
Appellants' Appeal Brief. See Ans. 2---6, Fin. Act. 2-13. However, we
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed July 7, 2014), the Reply Brief (filed
November 10, 2014), and the Answer (mailed September 12, 2014) for their
respective details. We have considered in this Decision only those
arguments Appellants actually raised in the Briefs. Any other arguments
Appellants could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
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Appeal2015-001849
Application 11/741,800
highlight and address specific arguments and findings for emphasis as
follows.
First, Appellants argue that in Silverman, because the client computer
(not the portable device) is coupled to the computer readable medium
(CRM) to thereby transfer data from the client device to the portable device,
Silverman's client computer (not the portable device) teaches the portable
device recited in claim 21. App. Br. 8-12, Reply Br. 2-3. Appellants also
submit that Thomas' disclosure of coupling a removable storage medium to
a client computer bolsters the argument that the client teaches the portable
device. App. Br. 10. This argument is not persuasive.
At the outset, we note Appellants' argument is not responsive to the
Examiner's specific and unambiguous finding that the portable device
disclosed in Silverman teaches the portable device recited in claim 21. Ans.
3--4. As correctly noted by the Examiner, Silverman's portable device
includes a processor as well as a removable/non-removable media. Id.
(citing Silverman i-fi-162, 64). 3 Accordingly, we do not agree with Appellants
that the portable device configuration disclosed in Silverman would need to
be modified in any shape or form in order to teach the claimed coupling.
Reply Br. 2-3. Further, we agree with the Examiner that Thomas'
disclosure of a processor, upon detecting a removable medium being
inserted in a computer/portable device, executing an application program
3 We note in passing, as recognized by Appellants, Silverman's portable
device is coupled to the CRM, albeit via the client computer. Reply Br. 2.
Because the claim does not require a direct coupling between the portable
device and the CRM, we do not agree with Appellants that the portable
device configuration disclosed by Silverman falls short of teaching the
claimed coupling.
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Appeal2015-001849
Application 11/741,800
stored thereon to synchronize the medium with the portable device would
further complement Silverman's portable device to predictably result in the
portable device having a processor for automatically launching an
application in a removable medium inserted therein. Fin. Act. 8.
Second, Appellants argue the data transfer disclosed in Silverman is
limited to a one-way transfer from the client computer. App. Br. 12-13.
Further, Appellants argue Silverman does not teach retrieving the policy
from a source to the portable device. Id. at 14--15. These arguments are
unavailing because they are not responsive to the Specific findings made by
the Examiner on these points. In particular, the Examiner emphasizes, and
we agree that Silverman teaches a two-way data transfer between the client
computer and the portable device, as indicated by the use of "vice-versa",
and the bidirectional communication arrow between the cited devices in
figure 1. Ans. 4 (citing Silverman i-f 28). Likewise, we agree with the
Examiner that Silverman teaches the portable device retrieving playlist rules
(i.e., policy) from the client computer (policy source) to the portable device
as a way to determine which files should be synchronized. Ans. 4--5 (citing
Silverman i-fi-1 9-10).
Third, Appellants argue that because Silverman's disclosure of the
client computer teaches the claimed portable device, the Examiner erred in
finding same element in Silverman teaches two different and distinct claim
elements. App. Br. 13-14. This argument is not persuasive because it is
premised upon Appellants' mischaracterizations of the Examiner's findings
with respect to Silverman, as noted above. That is, Appellants have
improperly erected a strawman based upon such mischaracterizations, only
to then knock it down in the present argument.
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Appeal2015-001849
Application 11/741,800
We are therefore satisfied that the combination of Silverman and
Thomas teaches the disputed limitations. Accordingly, Appellants have not
shown no error in the Examiner's rejection of claim 21 over the cited
combination of references.
Regarding the rejection of claims 22-33, to the extent Appellants have
either not presented separate patentability arguments or have reiterated
substantially the same arguments as those previously discussed for
patentability of claim 21 above, claims 22-33 fall therewith. See 37 C.F.R.
§ 41.37(c)(l)(iv). Further, to the extent Appellants have raised additional
arguments for patentability of these claims (App. Br. 16-20), we find that
the Examiner has rebutted in the Answer each and every one of those
arguments by a preponderance of the evidence. Ans.6-8. We adopt the
Examiner's findings and underlying reasoning, which we incorporate herein
by reference. Because Appellants have failed to persuasively rebut the
Examiner's findings regarding the rejections of claims 21-33, Appellants
have failed to show error in the Examiner's rejections of these claims.
DECISION
We affirm the Examiner's rejection of claims 21-33 as set forth
above.
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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