Ex Parte Gantman et alDownload PDFPatent Trial and Appeal BoardJan 27, 201511454408 (P.T.A.B. Jan. 27, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ALEXANDER GANTMAN and JACK STEENSTRA ____________________ Appeal 2012-009441 Application 11/454,408 Technology Center 2100 ____________________ Before ELENI MANTIS MERCADER, JOHN A. EVANS, and JAMES W. DEJMEK, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-009441 Application 11/454,408 2 Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 31–51, 54, and 55. Claims 1–30, 52, and 53 are cancelled. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. STATEMENT OF THE CASE Introduction Appellants’ invention relates to a USB device that includes a communication interface allowing the USB device to autonomously connect to and/or map a networked drive. Abstract. In some embodiments, the USB device may i) appear as a storage device; ii) establish a virtual private network tunnel with a remote server; and/or iii) obtain software updates for itself or the device to which it is coupled. Spec. ¶¶ 5–9. Representative claims 31, 34, and 42 are illustrative of the subject matter on appeal and are reproduced below with the disputed limitations emphasized in italics: 31. A USB device comprising: a USB interface; a cellular communication interface communicatively coupled to the USB interface; a circuit coupled to the USB interface and the cellular communication interface, the circuit configured to: communicatively couple to a mobile terminal via the USB interface; establish a communication link over the cellular communication interface to a cellular service provider network and a service provider storage server operably coupled to the cellular service provider network, wherein the communication link is secured via at least one of: a virtual private network tunnel with the service provider storage server; Appeal 2012-009441 Application 11/454,408 3 or a security key stored in a limited use storage device of the USB device; automatically search the service provider storage server for a software or firmware patch or update, or a security upgrade, for the mobile terminal in response to communicatively coupling to the mobile terminal via the USB interface; and a communication controller configured to transmit the software or firmware patch or update, or the security upgrade, between the cellular communication interface and the USB interface; wherein the circuit is further configured to map a storage device on the cellular service provider network as local storage on the mobile terminal. 34. A universal serial bus (USB) device comprising: a USB interface configured to communicatively couple the USB device to a host computer; a non-USB communication interface communicatively coupled to the USB interface; and a circuit coupled to the USB interface and the non-USB communication interface, the circuit configured to: provide identification information through the USB interface indicating to the host computer that the USB device is a storage device, establish a communication link to a remote storage device over the non-USB communication interface, wherein the communication link is secured via at least one of: establishment of a virtual private network tunnel with a remote server through which the USB device communicates with the remote storage device, or access to a limited use storage device that stores a security key configured to secure the communication link; transmit data between the non-USB communication interface and the USB interface with an Appeal 2012-009441 Application 11/454,408 4 indication that the remote storage device is a local storage device over the USB interface; and employ the secured communication link to obtain a software patch for the host computer and transmit the software patch to the host computer via the USB interface. 42. A universal serial bus (USB) device comprising: means for providing identification information through a USB interface indicating that the USB device is a storage device; means for establishing a communication link to a remote storage device over a non-USB communication interface; means for transmitting data between the non-USB communication interface and USB interface and representing that the remote storage device is a local storage device over the USB interface; means for obtaining a software patch for the USB device; and means for automatically updating internal information of the USB device based on the software patch. References The prior art relied upon by the Examiner in rejecting the claims on appeal is: Ellison et al. US 2004/0177166 A1 Sept. 9, 2004 Kitajima US 2005/0186952 A1 Aug. 25, 2005 Bolay et al. US 7,769,836 B2 Aug. 3, 2010 Appeal 2012-009441 Application 11/454,408 5 The Examiner’s Rejections 1. Claims 31–33 and 41 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ellison and Bolay in further in view of Kitajima. Ans. 17–20.1 2. Claims 34–40, 42–51, 54, and 55 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ellison in view of Bolay. Ans. 4–16. Appellants’ Contentions 1. Appellants present several contentions on pages 13 through 24 of the Appeal Brief directed to the Examiner’s rejection of claims 31–33 and 41. The dispositive contention is: Ellison fails to disclose a USB device comprising both a USB interface and a cellular communication interface communicatively coupled to the USB interface as recited in claim 31. See App. Br. 15. 2. Appellants further contend that Bolay fails to teach or suggest a USB device obtaining a software patch for either itself or a target computer to which it is communicatively coupled. App. Br. 24–26. 3. Appellants further contend that the Examiner failed to set forth a prima facie case of obviousness in rejecting the claims rejected under 35 U.S.C. § 103(a) as being unpatentable over Ellison in view of Bolay. App. Br. 18–23, 26–27. 1 Throughout this opinion we refer to the Appeal Brief dated January 20, 2012, Reply Brief dated May 17, 2012, and the Examiner’s Answer mailed on March 29, 2012. Appeal 2012-009441 Application 11/454,408 6 Issues on Appeal 1. Did the Examiner err in finding that Ellison discloses a USB device comprising both a USB interface and a cellular communication interface? 2. Did the Examiner err in finding that the combination of Ellison and Bolay teaches or suggests a USB device obtaining a software patch for either itself or a target computer to which it is communicatively coupled as recited in the claims? ANALYSIS Claims 31–33 and 41 Appellants argue inter alia that the combination of Ellison, Bolay,2 and Kitajima fails to teach “a USB device comprising both a USB interface and a cellular communication interface communicatively coupled to the USB interface.” App. Br. 15. The Examiner finds that Ellison discloses a USB device comprising a USB interface (Ellison, Fig. 3 (305)) and a cellular communication interface communicatively coupled to the USB interface (Ellison, ¶¶ 21–25). Ans. 17. We agree that Ellison discloses a USB device having a USB interface. Ellison teaches “[t]he computer interface controller chip 308 shown [in Figure 3] is a USB or 1394 serial interface controller. . . . The USB or serial 1394 serial cable plugs into the computer interface 305 of 2 Appellants argue that Bolay was filed on July 3, 2008—after the filing date of the subject application—and is only available as prior art to the extent that the same disclosure appears in its parent application (“BolayParent”). App. Br. 16. We note that Bolay is a divisional application of BolayParent and that Bolay and BolayParent share the same specification and figures in relevant part. Accordingly, we will not reference or cite to BolayParent, but only Bolay, where appropriate. Appeal 2012-009441 Application 11/454,408 7 the computer interface controller 308.” Ellison, ¶ 25. See also Ellison, Fig. 2, ¶ 22 (the portable network access point device connects to the computer via USB or 1394 (i.e., FireWire) and to the network via Ethernet). However, we find no disclosure in Ellison that the network interface 308 is a cellular communication interface. Ellison discloses that although the computer interface may be wired or wireless, the network interface plugs into the network (“[t]he network cable plugs in to the network interface 306 of the network interface controller 309”). Ellison, ¶ 25. We agree with Appellants that Ellison does not disclose a USB device comprising both a USB interface and a cellular communication interface communicatively coupled to the USB interface, as required by independent claim 31.Accordingly, we will not sustain the Examiner’s rejection of independent claim 31and for the same reasons the rejections of claims 32 and 33. Although claim 41 depends from claim 34, discussed infra, it includes a limitation that “the non-USB communication interface is a cellular network interface and the communication link is at least in part a cellular communication link.” This is similar to the disputed limitation of claim 31, discussed supra. For the same reasons, we find the Examiner’s rejection of this claim to be in error. Claims 34–40, 42–51, 54 and 55 Appellants argue that the cited combination of Ellison and Bolay fails to disclose each of the limitations of independent claims 34 and 42 and dependent claim 35. App. Br. 24–26. Additionally, Appellants collectively argue that the Examiner has not set forth a prima facie case of obviousness regarding independent claims 34, 42, 49, 50, and 54 in view of the cited Appeal 2012-009441 Application 11/454,408 8 references. App. Br. 27. Separate patentability is not argued for claims 36– 40, 43–51. App. Br. 24–27. Therefore, based on Appellants’ arguments, we decide the appeal of claims 34–40, 42–51, 54, and 55 based on independent claims 34 and 42 and dependent claim 35. See 37 C.F.R. § 41.37(c)(1)(vii). a. Claim 34 Claim 34 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Ellison in view of Bolay. Ans. 4. In the Final Rejection, the Examiner notes that Ellison does not disclose the “employ the secured communication link to obtain a software patch for the host processing device and transmit the software patch to the host processing device via the USB interface” limitation, but that Bolay does. Final Act. 3–4. In their Appeal Brief, Appellants contend, without additional support or reference, that Bolay “does not disclose obtaining a software patch over a secured communication for a separate device, namely the host computer recited in claim 34.” App. Br. 25. In response,3 the Examiner identifies, for further clarification, an additional portion of Bolay (col. 4, l. 31–col. 7, l. 67; Fig. 5) which includes a description of a “bus master device” capable of interfacing with a system management application similar to a server module (211) located on a remote server machine (209). Ans. 20–22; see also Bolay, col. 7, ll. 23–67. The Examiner notes that the bus master device of Bolay may be connected to a computer system as a USB device and be capable of receiving updated configuration information from a system management application and retransmit the configuration data to the target computer system by writing the new information to the memory space of the 3 In the response to Appellants’ argument regarding claims 34–40, 42–51, 54, and 55, the Examiner refers to the same analysis provided in responding to arguments directed to the rejections of claims 31–33 and 41. Ans. 24. Appeal 2012-009441 Application 11/454,408 9 computer system. Ans. 21–22. We agree. As set forth in Bolay, the bus master device may be a separate entity from the computer system (101), connected via “a USB port, serial port, parallel port, 1394 port (Firewire) or similar port or connection device of computer system 101.” Bolay, col. 7, ll. 31–33. Further, the bus master device of Bolay may be capable of storing obtained system configuration data, or retransmitting the system configuration data to the computer system. Bolay, col. 7, ll. 41–45. Appellants argue in their Reply Brief that “Bolay does not appear to teach or suggest that USB device 121 includes a cellular communication interface” (Reply Br. 6) and conclude, therefore, that Bolay fails to disclose that an update would not be sent “via the USB interface” as recited in claim 34. Reply Br. 6. As an initial matter, Appellants’ argument is untimely. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). Notwithstanding the untimeliness of Appellants’ argument, we find Appellants’ contention that Bolay does not disclose a cellular communication interface to be misplaced. This limitation does not appear in the language of claim 34. Appellants’ argument is not commensurate with the scope of claim 34, and thus, for that reason, does not demonstrate error in the Examiner’s rejection. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). Accordingly, we will sustain the Examiner’s rejection of independent claim 34, claims 36–39 which depend therefrom, and independent claim 49.4 4 “Claim 49 recites similar features as claim 34 in this regard.” App. Br. 25. Appeal 2012-009441 Application 11/454,408 10 b. Claim 35 Claim 35 depends from claim 34 and adds the following limitation: “wherein the non-USB communication interface is a wireless communication interface through which the USB device can access a wireless network.” In the Final Rejection, relying on paragraph 25 of Ellison, the Examiner asserts “Ellison discloses wherein the non-USB communication interface is a wireless communication interface through which the USB device can access a wireless network.” Final Act. 4. Appellants argue that Ellison “does not disclose that the network interface could be a wireless interface.” App. Br. 25 (emphasis added). The Examiner does not respond to this specific argument. We agree with the Appellants. As discussed supra, the cited portion of Ellison suggesting that the interface may be wired or wireless is referring to the computer interface 305 and not the network interface 306. See Ellison, ¶ 25, Fig. 3. Accordingly, we find that Ellison does not disclose the additional limitation recited in dependent claim 35. c. Claim 42 / Claim 40 The limitations at issue in claim 42 are the “means for obtaining a software patch for the USB device; and means for automatically updating internal information of the USB device based on the software patch.” App. Br. 25 (emphasis added). Appellants argue that neither Ellison nor Bolay obtain updated configuration information for the USB device itself—as opposed to obtaining updated configuration information for the target machine. Id. We agree. The Examiner does not respond specifically to this argument and instead relies on a similar analysis conducted for claims 31–33 and 41. Ans. 24. However, the limitation of obtaining a software patch for Appeal 2012-009441 Application 11/454,408 11 the USB device (as opposed to an update for the mobile terminal, see claim 31) is not present in claims 31–33 or 41. As discussed supra, although the bus master device of Bolay may be connected to a computer system as a USB device and be capable of receiving updated configuration information, the received updated configuration information is for the target computer system to which it is connected. See, e.g., Bolay, col. 7, ll. 39–52. Although not argued separately by Appellants, we note that claim 40, which depends from claim 34, includes limitations directed towards obtaining a software patch for the USB device and updating the USB device based on the software patch. Following the same analysis as provided for claim 42, we will not sustain the Examiner’s rejection of claim 40. d. Prima Facie Case of Obviousness Appellants further contend that the Examiner failed to provide a proper rationale for obviousness. App. Br. 26–27; Reply Br. 8. We are not persuaded by Appellants’ arguments. An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425 (CCPA 1981). We agree with the Examiner’s rationale and findings as found in the Answer (22–23) and we adopt them as our own without repeating them herein. Appeal 2012-009441 Application 11/454,408 12 CONCLUSION The Examiner erred in rejecting claims 31–33 and 41 by concluding that Ellison discloses a USB device comprising both a USB interface and a cellular communication interface. The Examiner did not err in rejecting claims 34, 36–39, and 49 by concluding that the combination of Ellison and Bolay teaches or suggests the disputed limitations of those claims. The Examiner erred in rejecting claims 35, 40–48, 50, 51, 54, and 55 by concluding that the combination of Ellison and Bolay teaches or suggests the disputed limitations. DECISION The rejection of claims 31–33, 35, 40–48, 50, 51, 54, and 55 are reversed. The rejection of claims 34, 36–39, and 49 under 35 U.S.C. § 103(a) 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) (2011). AFFIRMED-IN-PART msc Copy with citationCopy as parenthetical citation