Ex Parte Wood et al

Patent Trial and Appeal Board

Jun 22, 2018

11773913 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111773,913 0710512007
82313 7590 06/26/2018
Conley Rose - BlackBerry Files
Attn: J. Robert Brown
5601 Granite Parkway, Suite 500
Plano, TX 75024
FIRST NAMED INVENTOR
Robert H. Wood
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.
32063-US-PAT(4214-02100) 2209
EXAMINER
COSME, NATASHA W
ART UNIT PAPER NUMBER
2465
NOTIFICATION DATE DELIVERY MODE
06/26/2018 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):
ConleyRoseReporting@dfw.conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT H. WOOD, MAXIME M. MATTON, and
CHRISTOPHER E.S. PATTENDEN
Appeal2018-000176
Application 11/773,913 1
Technology Center 2400
Before BRADLEY W. BAUMEISTER, HUNG H. BUI, and
IRVINE. BRANCH, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-14, 16, 18, and 19, which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART. 2
1 According to Appellants, the real party in interest is BlackBerry Limited.
App. Br. 3.
2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed
December 8, 2016; Examiner's Answer ("Ans.") mailed April 3, 2017; Final
Office Action ("Final Act.") mailed May 19, 2016; and original
Specification ("Spec.") filed July 5, 2007.
Appeal2018-000176
Application 11/773,913
STATEMENT OF THE CASE
Appellants' invention relates to "file sharing" and, more specifically,
"a mobile device [102, Figures 1-3] comprises a storage device [110]
storing one or more files and a serial port [ 106] for connecting the mobile
device to a remote system [ 104 ]" and "further comprises a user interface
["UI" 100] allowing a user of the mobile device [102] to select a file stored
on the storage device [110] such that when the mobile device [102] is
connected to the remote system [ 104] via the serial port 106, the remote
system [ 104] can only access the selected file." Abstract. Appellants'
Figure 3 is reproduced below.
Fig. 3 f--1
/,-----········ L~
f c::E~!::J ~
~ ::
Figure 3 shows mobile device 102 including user interface (UI) 100 to allow
a user to share selected files 200-202 with remote system 104 without
allowing remote system 104 access to or have knowledge of other files 204--
208. Spec. iii! 20, 23, 26.
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Application 11/773,913
Claims 1, 7, and 14 are independent. Claim 1 illustrates the claimed
subject matter, as reproduced below, with disputed limitations in italics:
1. A mobile device file sharing system comprising:
a storage device storing a first file and a second file;
a network connectivity device for connecting the mobile
device to a remote system;
[ 1] a user interface configured to receive an indication of
a selection of the first file stored on the storage device; and
a file system created responsive to the selection of the first
file to contain a location information for the first file and not the
second file, the file system comprising at least one of a file
allocation table (FAT) file system, a file allocation table -32
(F AT-32) file system, a New Technology File System (NTFS), a
second extended (Ext2) file system, a third extended (Ext3) file
system, and a UNIX file system (UPS);
[2] wherein when the mobile device is connected to the
remote system via the network connectivity device, the remote
system can only access the selected one or more files including
the first file using the location information in the file system and
the remote system only has knowledge of the selected one or
more files including the first file.
App. Br. 20 (Claims App'x.) (bracketing added).
REJECTION & REFERENCES
Claims 1-14, 16, 18, and 19 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Hatori (US 2003/0221122 Al; published Nov. 27,
2003), Cowart et al. (US 6,584,520B1; issued June 24, 2003), and Cleraux
et al. (US 2004/0088316 Al; published May 6, 2004). Final Act. 4--16.
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Appeal2018-000176
Application 11/773,913
ANALYSIS
Claims 1-6
In support of the obviousness rejection of claim 1, the Examiner finds
the combination of Hatori, Cowart, and Cleraux teaches Appellants' "mobile
device file sharing system" including all the claim limitations. Final Act. 4--
7. For example, the Examiner finds Hatori teaches a file sharing service on
a mobile device (personal digital assistant "PDA") equipped with most of
the claim limitations, including:
"a storage device storing a first file and a second file" (see
Hattori i-f 42); and
"a network connectivity device for connecting the mobile
device to a remote system" (see Hattori i-f 2, Fig. 8)
"wherein when the mobile device is connected to the
remote system via the network connectivity device, the remote
system can only access the selected one or more files including
the first file using the location information in the file system and
the remote system only has knowledge of the selected one or
more files including the first file."
Final Act. 4--5 (citing Hatori i-fi-12, 4, 38-39, 46, Figs. 1 and 8).
Hatori also teaches the use of a user interface (UI) in the context of a
browser and a setting screen for a user to select file( s) to be shared by
remote device 50 via a network, shown in Figures 7-8. Hattori i-fi-147, 55.
The Examiner relies on Coward for expressly teaching "a user
interface configured to receive an indication of a selection of one or more
files stored on the storage device;" and "a file system created responsive to
the selection of the one or more files to contain a location information only
for the selected one or more files, the file system comprising at least one of a
file allocation table (FAT) file system, a file allocation table-32 (F AT-32)
file system, a New Technology File System (NTFS), a second extended
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Application 11/773,913
(Ext2) file system, a third extended (Ext3) file system, and UNIX file system
(UPS)" to support the conclusion of obviousness. Final Act. 5-6 (citing
Cowart 2:10-15, 7:49-59, Fig. 3). While not necessary, the Examiner also
relies on Cleraux for expressly teaching "a file system created responsive to
the selection of the first file to contain a location information for the first file
and not the second file." Final Act. 6 (citing Cleraux i-fi-155, 63, 65, 67---68,
Figs. 8 and 15).
Appellants contend the Examiner's combination of Hatori, Cowart,
and Cleraux does not teach or suggest disputed limitations of claim 1,
including:
( 1) "a user interface configured to receive an indication of a
selection of the first file stored on the storage device;" and
(2) "when the mobile device is connected to the remote
system via the network connectivity device, the remote system
can only access the selected one or more files including the first
file using the location information in the file system and the
remote system only has knowledge of the selected one or more
files including the first file."
App. Br. 10-14.
In particular, Appellants argue "Cowart makes no mention of the
interface 30 receiving an indication of a selection of a first file stored on a
storage device." App. Br. 10. According to Appellants, Cowart's interface
30 is used to receive a command to attach a program 28 and obtain "file
storage information from the storage medium 20." App. Br. 11. Cowart's
"interface 32 is a storage medium device driver 32, which is separate and
distinct from the interface 30." Id. Appellants argue "the Examiner is
improperly mapping two different interfaces 30 and 32 in Cowart to the user
interface in claim 1." Id.
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Application 11/773,913
In addition, Appellants argue "Hatori does not suggest that a remote
system can only access select files when connected to a secure network."
App. Br. 13. According to Appellants, "Hatori appears limited to an all-or-
nothing scheme in which access to all files is permitted or denied if a
network location is secure or insecure (respectively)" and "files may not be
downloaded or executed'' and, as such, "cannot disclose that 'when the
mobile device is connected to the remote system via the network
connectivity device, the remote system can only access the selected one or
more files including the first file using the location information in the file
system and the remote system only has knowledge of the selected one or
more files including the first file."' App. Br. 13-14.
Appellants' arguments are not persuasive. The Examiner has
provided a comprehensive response to Appellants' arguments supported by a
preponderance of evidence. Ans. 2--4. As such, we adopt the Examiner's
findings and explanations provided therein. Id. For example, Cowart's user
interface 30 (not Cowart's device driver 32), shown in Figure 2, is
"configured to obtain file storage information from storage medium and
dynamically generate FAT [file allocation table] using the obtained file
storage information." Ans. 2 (citing Cowart 7:49-59, Fig. 3). Likewise,
Hatori teaches the use of a user interface (UI) in the context of a browser and
a setting screen, shown in Figures 7-8, for a user to select file(s) to be shared
by remote device 50 via a network. Hattori i-fi-147, 55. As such, we agree
with the Examiner that the combination of Hatori and Cowart teaches
Appellants' claimed "mobile device sharing system comprising a user
interface configured to receive an indication of a selection of the first file
stored on the storage device." Ans. 3.
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Application 11/773,913
Hatori also teaches a file sharing service, via a network, where a user
is permitted to select files and control file accesses from other mobile
devices connected to the network, via a switching device 10 for switching
between stop (sharing disabled) and start (sharing enabled) of the file
sharing service. Hatori i-fi-14, 10, 15-16. As recognized by the Examiner,
Hatori further teaches ( 1) security information for each location is provided
as a profile and (2) file sharing (e.g., file download/execution) at locations is
permitted with a security profile ensured. Hatori i-fi-1 46-4 7. As such, we
agree with the Examiner that Hatori teaches Appellants' claimed "remote
system can only access the selected one or more files including the first file
using the location information in the file system and the remote system only
has knowledge of the selected one or more files including the first file"
recited in claim 1. Ans. 4 (citing Hatori i-fi-14, 38, 39, 46, Fig. 1).
Based on this record, we are not persuaded of Examiner error.
Accordingly, we sustain the Examiner's obviousness rejection of
independent claim 1 and dependent claims 2---6, which Appellants do not
argue separately. App. Br. 19.
Claims 7-13
Independent claim 7 is substantially similar to claim 1, except that "a
user interface" is further "configur[ ed] to detect selection of the first file
stored on the storage device and to detect selection of a type of access by the
remote system as read/write or read-only" and that "the remote system can
only access the first file as read/write or read only as designated by the user
using the access information in the file system" (emphasis added).
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Application 11/773,913
The Examiner relies on Cleraux for teaching the limitations of
claim 7. Final Act. 10-11 (citing Cleraux i-fi-151, 55, 61---63, 65, 67---68,
Figs. 7-9 and 15). In particular, paragraph 62 of Cleraux is cited for
teaching "the remote system can only access the selected file as read/write or
read-only as designated by the user using the access information in the file
system." Final Act. 11.
Appellants contend (1) "paragraphs cited by the Examiner generally
describes 'a UI (e.g., a user interface such as the Universal Interface shown)
[that] allows a user to select packages 666 that will comprise the resulting
file system for the target"' and (2) "paragraph 62 of Cleraux simply
describes an embodiment of using a 'find' feature to retrieve a package
within a file system," but "none of the paragraphs cited from Cleraux make
any mention of the UI configurable to [] 'detect selection of a type of access
by the remote system as read/write or read-only' as in claim 7." App.
Br. 14--15. Appellants also argue "there is no reasonable basis to support the
Examiner's conclusion that 'it would have been obvious to one of ordinary
skill in the art ... to modify the file system of Hatori and Cowart with
Cleraux in order to securely share resources." App. Br. 15.
In response, the Examiner repeats the same paragraphs of Cleraux for
teaching the disputed limitations of claim 7, but does not address
Appellants' contention. Ans. 4--5.
We agree with Appellants. As recognized by the Examiner,
paragraph 55 of Cleraux only describes that "files are selected/deselected for
saving to memory/directory by user selection." Ans. 5 (citing Cleraux i155).
However, none of the paragraphs [55, 61, 63, 65, 67, 68] cited from Cleraux
teaches or suggests any user interface configured to "detect selection of a
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Application 11/773,913
type of access by the remote system as read/write or read-only" recited in
claim 7. App. Br. 14--15.
Based on this record, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner's obviousness rejection of
independent claim 7 or of dependent claims 8-13, which depend from
claim 7. App. Br. 19.
Claims 14, 16, 18, and 19
Independent method claim 14 is broader than system claim 1 and does
not require the use of a storage device, a network connectivity device, and a
user interface. However, method claim 14 recites substantially similar
steps/functions of system claim 1, including the disputed limitations:
( 1) "selecting the first file from the first file system to be shared with the
remote system" and (2) "responsive to selection of a first file, creating a
second file system having a location information for the first file and not the
second file" (emphasis added).
The Examiner relies on Cowart for teaching the disputed limitations
of claim 14, including: (1) "selecting the first file from the first file system
to be shared with the remote system" and (2) "responsive to selection of a
first file, creating a second file system having a location information for the
first file and not the second file." Final Act. 14 (citing Cowart Fig. 3).
Appellants argue Cowart does not teach or suggest "[a] method of file
sharing between a mobile device and a remote system comprising ...
selecting the first file from the first file system to be shared with the remote
system." App. Br. 17-18.
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Application 11/773,913
We disagree. Contrary to Appellants' arguments, Hatori (not Cowart)
is relied upon by the Examiner for teaching "a method of file sharing
between a mobile device and a remote system comprising: storing a first file
and a second file [in] a first file system on the mobile device." Final Act. 13
(citing Hatori i-fi-12, 42, Fig. 8). Hatori also teaches the use of a user interface
(UI) in the context of a browser and a setting screen, shown in Figures 7-8,
for a user to select file(s) to be shared by remote device 50 via a network.
Hattori i-fi-1 4 7, 5 5.
As recognized by the Examiner, Cowart "teaches obtain file storage
information from storage medium and [ d]ynamically generate FAT using the
obtained file storage information, [and create] the second file system
comprising at least one of a file allocation table (FAT) file system, a file
allocation table-32 (F AT-32) file system, a New Technology File System
(NTFS), a second extended (Ext2) file system, a third extended (Ext3) file
system, and UNIX file system (UPS)." Ans. 7 (citing Cowart Fig. 3,
steps 42 and 44); see also Cowart 7:49-59. As such, we agree with the
Examiner that Cowart teaches the claimed "selecting a first file from a first
file system to be shared with a remote system, and creating a second file
system responsive to selecting the first file" recited in claim 14.
Based on this record, we are not persuaded of Examiner error.
Accordingly, we sustain the Examiner's obviousness rejection of
independent claim 14 and dependent claims 16, 18, and 19, which
Appellants do not argue separately. App. Br. 19.
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Application 11/773,913
CONCLUSION
On the record before us, Appellants have demonstrated the Examiner
erred in rejecting claims 7-13, but not in rejecting claims 1---6 and 14, 16, 18,
and 19 under 35 U.S.C. § 103(a).
DECISION
As such, we AFFIRM the Examiner's Final Rejection of claims 1---6
and 14, 16, 18, and 19. However, we REVERSE the Examiner's Final
Rejection of claims 7-13.
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-IN-PART
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