Ex Parte Arnold et al

Patent Trial and Appeal Board

Jan 28, 2013

09863232 (P.T.A.B. Jan. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GREG ARNOLD and DAN TORRES
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Appeal 2010-005159
Application 09/863,232
Technology Center 2400
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Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
BRYAN F. MOORE, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows:
Claim 1. A method of transferring information comprising the
steps of:
a) at a remote server, responsive to receiving a signal from a
first mobile computing device, accessing an account stored on said
remote server, said account reserved for a second mobile computing
device, said account describing information that is not stored in said
second mobile computing device;
b) modifying said account to identify an information that
resides on said remote server but not on said second mobile
computing device;
c) responsive to establishing a connection with said second
mobile computing device, said remote server automatically
determining from said account that said information is new to said
second mobile computing device, and in response to said determining,
automatically downloading said information to said second mobile
computing device.

Rejections
The Examiner rejected claims 1-24 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Multer (US 6,757,696 B2) and
Coppinger (US 2001/0046862 Al). 1

1 Separate patentability is not argued for claims 3, 5, 7-11, 14, and 16-24.
Except for our ultimate decision, these claims are not discussed further
herein.
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Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because Multer teaches away from an account
stored on a server and Coppinger merely teaches creation of an account.
(App. Br. 12-14).2
2. Appellants further contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because Coppinger fails to teach or
suggest that the account describes information that is not stored in the
second mobile computer device and has absolutely no teaching of a second
wireless device. (App. Br. 14 and 17-19).
3. Appellants also contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because Coppinger fails to teach
synchronization between a wireless device and a server; and actually teaches
away from the present invention. (App. Br. 15-16).
4. Appellants contend that the Examiner erred in rejecting claim 2
under 35 U.S.C. § 103(a) because the Examiner improperly equates Multer’s
taught datapack with the recited token. (App. Br. 22-23). 3
5. Appellants contend that the Examiner erred in rejecting claim 4
under 35 U.S.C. § 103(a) because Multer does not teach a version of an
application program. (App. Br. 24). 4

2 Appellants also contend that the Examiner erred in rejecting claim 12 for
the same reasons as set forth in contentions 1-4. (App. Br. 26-30).
3 Appellants also contend that the Examiner erred in rejecting claim 13 for
the same reason. (App. Br. 31).
4 Appellants also contend that the Examiner erred in rejecting claim 15 for
the same reason. (App. Br. 33).
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6. Appellants contend that the Examiner erred in rejecting claim 6
under 35 U.S.C. § 103(a) because neither Multer nor Coppinger teaches or
suggests authority to download to said second mobile computing device.
(App. Br. 25).

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. We
concur with the conclusions reached by the Examiner.
Separately, we note that Appellants repeatedly argue that the
references teach away from the invention. However, Appellants fail to set
forth appropriate reasoning to support these arguments. A reference
“teaches away” when it suggests that the developments flowing from its
disclosures are unlikely to produce the objective of the Appellants’
invention. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appellants
fail to present any persuasive arguments as to how the teachings of Multer
combined with the teachings Coppinger would be unlikely to produce the
objective of Appellants’ invention.
Further as to Appellants’ above contentions, we note that Appellants
repeatedly attack one or the other of the references individually for lack of a
teaching where in fact the Examiner has relied on the other reference (or the
combination of references) for that teaching. Appellants point out certain
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deficiencies in each reference rather than challenging the conclusion based
upon their combined teachings. The fact that neither reference individually
disclose or suggest a particular limitation of the claimed method does not
rebut the obviousness conclusion reached by the Examiner based upon the
combined teachings of those references. The test for obviousness is what the
combined teachings of the prior art would have suggested to the hypothetical
person of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA
1981).
Further regarding above contention 2, as to the claim requirement of
describing information that is not stored in a wireless device, we particularly
note that the Examiner’s rejection points to paragraph 60 of Coppinger
which teaches sending a request so that the wireless device receives software
in accordance with the request. We agree with the Examiner’s reasoning
that an artisan would understand this to be the identification of software that
is not stored in the wireless device.
We note that Appellants’ Reply Brief presents an argument based on a
reading of In re Ratti, 270 F. 2d 810 ( CCPA 1959). We have reviewed that
venerable case of the CCPA, and find that much of its holding must be
updated by further developments in the law guided by the Supreme Court as
expressed in KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). Rather than
expressing obviousness as the physical placement of structure from one
reference within the confines of the structure from another reference as in
Ratti, the Supreme Court viewed the prior art as a combination of teachings
from different sources, and the use of those teachings by a practitioner in the
art. Appellants’ reasoning based on Ratti is not consistent with the Court’s
reasoning in KSR.
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CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-24 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-24 are not patentable.

DECISION

The Examiner’s rejections of claims 1-24 are 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

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