Ex Parte Albanese et al

Patent Trial and Appeal Board

Dec 3, 2014

11219529 (P.T.A.B. Dec. 3, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MICHAEL J. ALBANESE, JAMES ROLAND HENDERSON,
KEITH BARRACLOUGH, DAVID IRVINE, and
RODRIGO PHILANDER
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Appeal 2012-005153
Application 11/219,5291
Technology Center 2400
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Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
CARL L. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–22 and 24–36. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

1 The real party in interest is Nokia Corporation. Appeal Br. 1.

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STATEMENT OF THE CASE
The claimed invention is directed to the presentation of application-
specific data with a remote network node via a network. Spec. 1, ll.1013.
Claim 1, reproduced below, is representative of the subject matter on appeal:
1. An apparatus comprising:
at least one processor; and
at least one memory including computer program code,
the at least one memory and the computer program code configured
to, with the at least one processor, cause the apparatus to perform at
least the following,
receive an authenticated data transfer request,
load an asset space plug-in for each particular application to which the
application-specific data applies, and implement each of the asset
space plug-in to access metadata to identify application-specific data
corresponding to the request;
transcode the identified application-specific data from a first format
type to a second Internet-communication format type, the first format
type being executable by a first software application, the second
format type being compatible with a second software application at
one of a plurality of remote network appliances; and
determine to transmit the transcoded data to the one of a plurality of
remote network appliances.

Appeal Br. 26, Claims Appendix.
THE REJECTIONS
The following rejections are before us:
Claim 36 is rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1–22 and 31–35 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Applicants regard as the invention.
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Claims 1–3, 6, 8–22, 24–26, 28, 29 and 31–36 are rejected under
35 U.S.C. § 103(a) over Cai (US 7,356,615 B2) in view of Ketonen (US
7,035,828 B2) and further in view of Ramaswamy (US 7,827,312 B2).
Claims 4, 5, 7, 27 and 30 are rejected under 35 U.S.C. § 103(a) over
Cai, Ketonen, Ramaswamy and further in view of Evans (US 7,200,680 B2).
ANALYSIS
A claim in a patent application is given the broadest reasonable
interpretation consistent with the Specification, as understood by one of
ordinary skill in the art. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
Great care should be taken to avoid reading limitations of the Specification
into the claims. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369
(Fed. Cir. 2003).
THE 35 U.S.C. § 101 REJECTION OF CLAIM 36
We are not persuaded of error by the Examiner by Appellants’
argument that “‘computer-readable storage medium’ cannot reasonably be
interpreted as pertaining to ‘transitory propagating signals per se.’” Appeal
Br. 10–11. Instead, we agree with the Examiner that
The “computer-readable storage medium” is given [the]
broadest reasonable interpretation in view of what is considered
well known in the art. The broadest reasonable interpretation of
a claim drawn to a computer-readable storage medium typically
covers forms of non-transitory tangible media and transitory
propagating signals per se in view of the ordinary and
customary meaning of computer readable media in general.
The computer-readable storage medium as claimed is not
limited to tangible embodiments and therefore the claim is
deemed non-statutory.
Ans. 45.
Accordingly, we sustain the rejection of claim 1.
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THE 35 U.S.C. § 112, SECOND PARAGRAPH, REJECTION OF
CLAIMS 1–22 AND 31–35
We are persuaded of error by the Examiner by Appellants’ argument
that one skilled in the art would reasonably understand that the phrase “the
application-specific data” refers to data that is specific to the term
“application.” Appeal Br. 11–12, Reply 3. One of ordinary skill in the art
would understand that application-specific data is content usually managed
by an application, e.g., email, music. See Spec., 9, ll. 8–14. Therefore, the
inclusion of the term “the” in the phrase “the application-specific data” does
not render the claims indefinite because of insufficient antecedent basis.
Accordingly, we do not sustain the rejection of claims 122 and 3135
under 35 U.S.C. § 112, second paragraph.
The 35 U.S.C. § 103(a) Rejection of
Claims 1–3, 6, 8–22, 24–26, 28, 29 and 31–36
We are persuaded of error by the Examiner by Appellants’ argument
that the Examiner has not shown that Cai discloses the claim limitation “load
an asset space plug-in for each particular application to which the
application-specific data applies” (claim 1). Appeal Br. 14. The Examiner
states that “[in] the system taught by Cai, a user can request from a user’s
first device a certain set of data and the data will be transformed to be
viewable on the first device. The aspect of being transformed teaches within
the scope of ‘application-specific data’ for compatibility reasons between
different devices.” Ans. 22 (citing Cai, col. 4, ll. 6–20 and 27–35). Cai’s
discussion of “transforming,” however, does not support the Examiner’s
finding and the Examiner has not provided a basis for such a finding because
Cai does not teach that a plug-in device is associated with a particular
application to which the application specific data applies. See, for example,
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col. 4., ll. 14–19 (“. . . for transforming the information representation XML
into a file format which is adapted for various devices for displaying and
transforming among communication protocols based on the script language
of various devices stored in the device profile.”).
Accordingly, we find that in Cai being transformed does not disclose
that any plug-ins are for a particular application, nor for a particular
application to which the application-specific data applies. See Appeal Br.
14.
We are persuaded of error by the Examiner by Appellants’ argument
that no combination of the cited references would render the claimed
invention obvious because none of the cited references discloses this claim
limitation. Appeal Br. 13–14.
Accordingly, we do not sustain the rejection of claim 1 and its
dependent claims 2, 3, 6, 8–22 and 31–35. Independent claims 24 and 36
recite this limitation and, for the same reason, we do not sustain the rejection
of these claims and their dependent claims 25–29.
THE 35 U.S.C. § 103(A) REJECTON OF CLAIMS 4, 5, 7, 27 AND 30
Claims 4, 5, 7 and 27 depend from the independent claims discussed
above and in which we do not sustain the 35 U.S.C. § 103(a) rejection over
Cai, Ketonen, and Ramaswamy. The additional reference, Evans, was not
cited by the Examiner to show “load an asset space plug-in for each
particular application to which the application-specific data applies.” Ans.
15–16. Accordingly, for the reasons discussed above in connection with the
independent claims, we do not sustain the rejection of claims 4, 5, 7, and 27.
Claim 30 is an independent method claim that recites the claim
limitation “populating at least one asset space with an identification of data
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stored at a base network appliance as a function of metadata stored at a base
appliance and an authenticated user associated with a remote network
appliance.” Appeal Br. 32.
As reasonably broadly interpreted by one of ordinary skill in the art,
the plain and ordinary meaning of “asset space” is a storage location, e.g.,
for data. See Spec. 13, ll. 5–17, and Ans. 21.
We are persuaded of error by the Examiner by Appellants’ argument
that Cai does not disclose this claim limitation and that none of the cited
references cure this deficiency. Appeal Br. 16. Cai discloses pluggable
delivery services for supporting a plurality of devices. The Examiner’s cited
portions of Cai (col. 4, ll. 2735) do not disclose an asset space because Cai
does not disclose a storage location. Appeal Br. 16–17. Therefore, we find
that the cited portions of Cai do not disclose populating an asset space with
an identification of data stored at a base network, nor populating the asset
space with an identification of data at the base network as a function of
metadata stored at the base network appliance. We also find that none of the
cited references discloses this claim limitation and, therefore, no
combination of these references would render the claimed invention
obvious.
Accordingly, we do not sustain the rejection of claim 30 under
35 U.S.C. § 103(a).
CONCLUSION
The Examiner did not err in rejecting claim 36 under 35 U.S.C. § 101
as directed to non-statutory subject matter.
The Examiner erred in rejecting claims 1–22 and 31–35 under
35 U.S.C. § 112, second paragraph.
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The Examiner erred in rejecting claims 1–3, 6, 8–22, 24–26, 28, 29
and 31–36 under 35 U.S.C. § 103(a) over Cai, Ketonen, and Ramaswamy.
The Examiner erred in rejecting claims 4, 5, 7, 27 and 30 under
35 U.S.C. § 103(a) over Cai, Ketonen, Ramaswamy, and Evans.
DECISION
For the above reasons, the Examiner’s decision rejecting claims
1–22 and 24–35 is REVERSED.
For the above reasons, the Examiner’s decision rejecting claim 36 is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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