Ex Parte Chinnapathlolla et al

Patent Trial and Appeal Board

May 23, 2018

14502408 (P.T.A.B. May. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/502,408 09/30/2014 Anjil R. Chinnapathlolla
46429 7590 05/25/2018
CANTOR COLBURN LLP-IBM POUGHKEEPSIE
20 Church Street
22nd Floor
Hartford, CT 06103
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.
POU920130210US2 2653
EXAMINER
SU, SARAH
ART UNIT PAPER NUMBER
2431
NOTIFICATION DATE DELIVERY MODE
05/25/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANJIL R. CHINN AP ATHLOLLA,
RAJARAM B. KRISHNAMURTHY, and DANIEL ROGERS
Appeal2017-004136
Application 14/502,408 1
Technology Center 2400
Before HUNG H. BUI, BETH Z. SHAW, and MICHAEL M. BARRY,
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 Office Action rejecting claims 1-7, which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM. 2
1 According to Appellants, International Business Machines Corporation is
the real party in interest. App. Br. 1.
2 Our Decision refers to Appellants' Appeal Brief filed July 26, 2016 ("App.
Br."); Reply Brief filed January 4, 2017 ("Reply Br."); Examiner's Answer
mailed November 9, 2016 ("Ans."); Final Office Action mailed March 30,
2016 ("Final Act."); and original Specification filed September 3 0, 2014
("Spec.").
Appeal2017-004136
Application 14/502,408
STATEMENT OF THE CASE
Appellants' invention relates to "morphing a portable device profile,
and more specifically, to trigger based portable device morphoing." Spec. i-f
2. According to Appellants,
morphing refers to reconfiguring the portable device or
activating a profile that is more comprehensive than merely
changing the look and feel or enabling of one or more
applications of the device. The morphing activates a profile that
defines a particular quality of service provided by the device.
Morphing may also include a change in physical appearance of
the device. Quality of service refers to a predefined level of
security, reliability, and redundancy, as well as functionality.
Thus ... a trigger causes the portable device to morph to a profile
defining a particular quality of service.
Spec. i-f 13. For example, Appellants' Figures 4--5 illustrate a portable
device having a different profile activated when a user is at home or at work,
as reproduced below with additional markings for illustration:
Smart Phone
135
PROflLE AT HOME
140,
FIG. 4 FIG. 5
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Application 14/502,408
Claim I-the only independent claim-is illustrative of the claimed
subject matter, and reproduced below with disputed limitations in italics:
1. A method of morphing a portable device, the
method comprising:
executing an application among a set of applications of the
portable device to obtain an input;
comparing, using a processor, the input to a plurality of
triggers; and
activating, using the processor, a profile of the portable
device, based on the input matching one of the plurality of
triggers, the profile corresponding with the one of the plurality
of triggers and being one of a plurality of profiles, each of the
plurality of profiles defining enabled applications, security
settings for information access by the portable device, and
redundancy settings of the portable device including frequency
of document backup.
App. Br. 9 (Claims App'x).
Examiner's Rejections & References
( 1) Claims 1-7 stand provisionally rejected on the ground of non-
statutory obviousness-type double patenting as being unpatentable over
claims 1-5, 7, and 8 of Application No. 14/138,728. Final Act. 5---6.
(2) Claims 1-7 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Fan et al. (US 2012/0149350 Al; published June
14, 2012) (hereinafter "Fan") and Raduchel (US 2014/0167686 Al;
published June 19, 2014). Final Act. 7-10.
ANALYSIS
At the outset, we note Application No. 14/138,728 has been
abandoned. See Notice of Abandonment dated on August 28, 2017. As
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Application 14/502,408
such, the rejection of pending claims 1-7 on the ground of non-statutory
obviousness-type double patenting over claims 1-5, 7, and 8 of Application
No. 14/138,728 is moot.
35 USC§ 103(a): Claims 1-7
In support of the obviousness rejection of claim 1, the Examiner finds
Fan discloses Appellants' claimed "method of morphing a portable device"
in the context of a portable device operable in normal and stealth mode,
including:
"executing an application among a set of applications of
the portable device to obtain an input" (see Fan i-fi-f 14, 23);
"comparing, using a processor, the input to a plurality of
triggers" (see Fan i-fi-123-24); and
"activating, using the processor, a profile of the portable
device, based on the input matching one of the plurality of
triggers, the profile corresponding with the one of the plurality
of triggers and being one of a plurality of profiles" (see Fan
i-f 13).
Final Act. 7 (citing Fan i-fi-f 13-14, 23-24) (emphasis modified). According
to the Examiner, Fan's normal and stealth modes are considered Appellants'
claimed "plurality of profiles" and Fan's stealth mode is activated in
response to a list of triggers. Ans. 9 (citing Fan i-fi-13, 24).
The Examiner acknowledges Fan does not teach the specifics of "a
profile" but relies on Raduchel for teaching: [ 1] "defining enabled
applications, [2] security settings for information access by the portable
device, and [3] redundancy settings of the portable device including
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Application 14/502,408
frequency of document backup" in order to support the conclusion of
obviousness. Final Act. 8 (citing Raduchel i-fi-1 32, 49) (emphasis omitted).
Appellants acknowledge Fan teaches a portable device configured to
enter a stealth mode (from a normal mode) in response to a trigger and/ or
trigger event. App. Br. 4 (citing Fan's Abstract). However, Appellants
argue Fan does not teach "a plurality of profiles" recited in claim 1. App.
Br. 4. According to Appellants, Fan's stealth mode is not and cannot be
considered as the claimed "profile" because: (1) "the functionality
associated with the stealth mode of Fan is inconsistent with what is generally
understood by one of ordinary skill in the relevant art to be a profile of a
portable device"; (2) "[t]he profile of a portable device is understood to refer
to the specific configuration settings that affect one or more of the look (e.g.,
wallpaper, arrangement of applications), sound (e.g., ringer settings,
ringtones ), and operation (e.g., passwords, available applications) of the
device" whereas Fan's stealth mode does not alter the appearance and
operation of the portable device; and (3) Fan's stealth mode does not
"defin[ e] enabled applications, security settings for information access by
the portable device, and redundancy settings of the portable device including
frequency of document backup" as required by Appellants' claim 1. App.
Br. 5; Reply Br. 2.
Appellants also argue because Fan's stealth mode is configured for
providing communication or obtaining evidence using a scanner or camera
in an emergency situation without drawing attention to the device, "[ t ]here is
no logical connection between stealthy emergency communication (as in
Fan) and content download via a network-enabled power charging device (as
in Raduchel)." App. Br. 6-7. According to Appellants, there is no rational
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underpinning to make the combination because "both the backup process
and the content download [as disclosed by Raduchel] are inconsistent with
the intended purpose of Fan to facilitate stealth operations in an
inconspicuous way." App. Br. 7.
Appellants' arguments are not persuasive. Instead, we find the
Examiner has provided a comprehensive response to Appellants' arguments
supported by evidence. Ans. 8-11. As such, we adopt the Examiner's
findings and explanations provided therein. Id. For example, as correctly
recognized by the Examiner, "[t]he claims only require that the profiles
define [i] enabled applications, [ii] security settings, and [iii] redundancy
settings, and are not required to refer to specific configuration settings that
affect the look, sound, and operation as Appellants assert. Ans. 9.
Appellants do not direct us to evidence to support their interpretation of a
"profile" or to show the Examiner's interpretation is unreasonable. As such,
Appellants' claimed "plurality of profiles" can be broadly, but reasonably
interpreted to encompass Fan's stealth and normal modes (Ans. 9 (citing Fan
i-f 3)) because when Fan's "stealth mode is activated, the [portable] device
will automatically record voice and/or video information and forward it to
external storage over a virtual secure channel ... (i.e.[,] enables application
to record and perform[] backup)." Ans. 9 (citing Fan i-fi-118, 43).
In addition, we find the Examiner's rationale to incorporate
Raduchel's teachings regarding "security settings and redundancy settings
including frequency of document backup" into Fan's stealth mode is
supported with sufficient "rational underpinning" as required by KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), and In re Kahn, 441F.3d977,
988 (Fed Cir. 2006). For example, the Examiner reasons "it would have
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been obvious ... to modify the modes of Fan with the further configuration
settings taught by Raduchel in order to further specify the settings with
which the device may be used." Ans. 11; see also Final Act. 8 (citing
Raduchel i-f 32 (finding Raduchel's discussion of device profiles provided
motivation for an ordinarily skilled artisan to combine its teachings with
those of Fan because it "would have improved the teachings of Fan by
defining applications, security settings, and backup settings in a profile in
order to specify how content is accessed and obtained").
Obviousness is a question of law based on underlying factual findings,
In re Baxter, 678 F.3d 1357, 1361 (Fed. Cir. 2012), including what a
reference teaches, In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992), and
the existence of a reason to combine references, In re Hyon, 679 F.3d 1363,
1365---66 (Fed. Cir. 2012). As discussed previously, Fan teaches a portable
device configured to enter a stealth mode (from a normal mode) in response
to a trigger and/or trigger event. Fan i-f 13. When Fan's stealth mode is
activated, the portable device enables application to automatically record
voice and/or video information and forward the same to an external storage
over a virtual secure channel. Fan i-fi-1 16, 18, 43. We agree with the
Examiner that a skilled artisan is able to modify Fan's stealth mode to
incorporate Raduchel's teachings regarding "security settings and
redundancy settings including frequency of document backup" into Fan's
stealth mode, as proffered by the Examiner. Final Act. 8; Ans. 11. As such,
we are not persuaded that the Examiner's rationale for incorporating
Raduchel's teachings into Fan's stealth mode in the manner suggested by the
Examiner is not supported by "rational underpinning."
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For these reasons, we sustain the Examiner's obviousness rejection of
independent claim 1 and its dependent claims 2-7.
DECISION
As such, we affirm the Examiner's Final Rejection of claims 1-7
under 35 U.S.C. § 103(a).
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) (2011 ).
AFFIRMED
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