Ex Parte Gupta et al

Patent Trial and Appeal Board

Nov 12, 2014

11316405 (P.T.A.B. Nov. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PARAG GUPTA and HESHAM ELBATOUTI
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Appeal 2012-007282
Application 11/316,405
Technology Center 2400
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Before CARLA M. KRIVAK, DANIEL N. FISHMAN, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–32. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
In reaching the decision, we have considered only the arguments
Appellants actually raised. Arguments Appellants did not make are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).

STATEMENT OF THE CASE
The present invention relates to exchanging data between computing
devices. See generally Spec. 2. Claim 1 is exemplary:
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1. A method for exchanging data between computing devices
being implemented by one or more processors and comprising:
identifying, on a first computing device, a data transfer
configuration that is to be used in a subsequent data transfer that is
conducted (i) between a second computing device and a third
computing device, and (ii) without the first computing device acting
as an intermediary between the second computing device and the third
computing device,
wherein the data transfer configuration is to cause selection of
data items from a larger collection of data items that are to be
exchanged in the subsequent data transfer; and
causing the data transfer configuration to be automatically
implemented on the second computing device as a result of the first
computing device communicating with the second computing device.

THE REJECTIONS
Claims 1–3 and 6–13 are rejected under 35 U.S.C. § 103 as being
unpatentable over Xue (US 2005/0060435 A1; Mar. 17, 2005), Marriott (US
7,433,546 B2; Oct. 7, 2008), and Christopher (US 2002/0163780 A1; Nov.
7, 2002).
Claims 20–25 are rejected under 35 U.S.C. § 103 as being
unpatentable over Xue and Marriott.
Claims 4, 5, 14–19, and 26–32 are rejected under 35 U.S.C. § 103 as
being unpatentable over Xue, Marriott, Christopher, and Abanami (US
2005/0235015 A1; Oct. 20, 2005).

ISSUE
Under 35 U.S.C. § 103, has the Examiner erred by finding Xue,
Marriott, and Christopher collectively teach,
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identifying, on a first computing device, a data transfer
configuration that is to be used in a subsequent data transfer
that is conducted (i) between a second computing device and a
third computing device, and (ii) without the first computing
device acting as an intermediary between the second computing
device and the third computing device,
wherein the data transfer configuration is to cause selection of
data items from a larger collection of data items that are to be
exchanged in the subsequent data transfer; and
causing the data transfer configuration to be automatically
implemented on the second computing device as a result of the
first computing device communicating with the second
computing device,
as recited in claim 1?

ANALYSIS

On this record, we find the Examiner did not err in rejecting claim 1.
We disagree with Appellants’ arguments (App. Br. 7–12; Reply Br.
4–8), and agree with and adopt the Examiner’s findings and conclusions on
pages 18–22 of the Answer as our own. Therefore, we limit our discussion
to the following points for emphasis.
In light of the broad claim limitations, the Examiner reasonably
interprets the limitations to encompass the collective disclosures of Xue,
Marriott, and Christopher.
First, Appellants assert Xue does not teach identifying on a first
computing device, a data transfer configuration because Xue’s metadata is
included in the content sent by the data server. See App. Br. 7–8; see also
Reply Br. 4–5. Appellants assert because Xue’s metadata is additional
content information, it is not a data transfer configuration to be used in a
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subsequent data transfer, and does not cause selection of data items from a
larger collection of data items that are to be exchanged in the subsequent
data transfer. See App. Br. 7–8; see also Reply Br. 4–5. Appellants further
contend Xue does not teach a data transfer configuration that is to be used in
a subsequent data transfer between a second computing device and a third
computing device. See App. Br. 8–9.
We disagree. The Examiner correctly maps Xue’s metadata to the
recited data transfer configuration, which is identified on Xue’s content
server (mapped to “a first computing device”). See Ans. 18–19. Indeed, the
Examiner’s mapping is consistent with the Specification, which states:
“Data transfer configurations 240 may serve as designations, metadata,
criteria, or even programmatic elements that cause selection of specific data
items from the collection.” Spec. ¶ 37 (emphasis added).
The Examiner correctly finds Xue teaches the metadata is to be used
in a subsequent data transfer that is conducted between a second computing
device (mapped to Xue’s PC 32) and a third computing device (mapped to
Xue’s PDA 22). See Ans. 19; Xue ¶¶ 7–8, 19–22. Further, the Examiner
finds “the data transfer configuration is to cause selection of data items from
a larger collection of data items that are to be exchanged in the subsequent
data transfer,” as recited in claim 1, is taught by or at least obvious in light
of Xue’s disclosures. See Ans. 8, 18–19; Xue ¶¶ 7–8, 19–22. For example,
Xue states: “The content is provided by the content server 10 to the proxy
network device [such as PC 32], where the middleware filter selectively
filters the content ultimately destined for the end-user network device [such
as PDA 22].” Xue ¶ 19 (emphasis added).
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Second, Appellants argue Xue and Marriott do not teach causing the
data transfer configuration to be automatically implemented on the second
computing device as a result of the first computing device communicating
with the second computing device, because Marriott’s media management
program is not a data transfer configuration. See App. Br. 10.
Appellants’ argument is unpersuasive because, as discussed above, the
Examiner relies on Xue—not Marriott—to teach a data transfer
configuration. The Examiner relies on Xue to teach “causing the data
transfer configuration to be [] implemented on the second computing device
as a result of the first computing device communicating with the second
computing device,” and Marriott to teach “automatically.” See Ans. 20.
Combining Marriott’s “automatically” technique with Xue’s method would
have predictably used prior art elements according to their established
functions—an obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 417 (2007).
Third, Appellants assert the Examiner fails to provide a rationale for
combining Christopher with Xue because Christopher uses expansion slots
for reading memory cards, and using Christopher’s memory cards in Xue
would have rendered Xue’s intended purpose unsatisfactory. See App. Br.
10–12.
Appellants’ argument is moot because as the Examiner explains—and
Appellants do not dispute—Xue alone teaches “without the first computing
device acting as an intermediary between the second computing device and
the third computing device,” as recited in claim 1. See Ans. 20. As a result,
the Examiner’s citing Christopher is cumulative. In any event, Appellants’
arguments are unpersuasive because it is well settled that “a determination of
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obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for obviousness
whether a secondary reference’s features can be bodily incorporated into the
structure of the primary reference. See In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Further, arguing a system is rendered “inoperable for its intended
purpose” is a “teach[] away” argument. In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984) (“French teaches away from the board’s proposed
modification” because “if the French apparatus were turned upside down, it
would be rendered inoperable for its intended purpose.”). “A reference may
be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)
(citation omitted). In this case, Appellants fail to present any evidence that
the references criticize or even discourage the proposed combination.
In the Reply Brief and for the first time, Appellants assert (1) Xue is
not used in a subsequent data transfer and does not teach causing selection of
data items from a larger collection of data items that are to be exchanged in
the subsequent data transfer, because the metadata is used by the middleware
filter of the second network device to determine whether to forward the
entire content; and (2) Xue and Marriott do not teach causing the data
transfer configuration to be automatically implemented on the second
computing device as a result of the first computing device communicating
with the second computing device, because the Examiner’s rationale for
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combining the references is flawed—the synchronization processes in each
reference refers to different pairs of devices. See Reply Br. 4–9.
Appellants have waived such arguments because they are 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.”).
Regardless of the untimely presentation, we also find Appellants’
belated arguments are unpersuasive. Regarding argument (1), Xue teaches
“the middleware filter selectively filters the content ultimately destined for
the end-user network device [such as PDA 22]” (Xue ¶ 19 (emphasis
added)). As a result, the Examiner reasonably finds “caus[ing] selection of
data items from a larger collection of data items that are to be exchanged in
the subsequent data transfer” is taught by or at least obvious in light of
Xue’s disclosures. Further, Xue teaches determining whether to forward the
content (Xue ¶ 19), and Appellants add the word “entire,” which is absent
from Xue. Lastly, even if Xue teaches determining whether to forward the
entire content each time, Appellants’ argument still fails. For example, at
time 1, Xue teaches forwarding the entire content (Content 1); at time 2, Xue
teaches not forwarding the content (Content 2). Content 1 plus Content 2
constitute “a larger collection of data items,” and Xue’s metadata is to cause
selection of data items (Content 1) from the larger collection of data items.
Regarding argument (2), as discussed above, “a determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements.” Mouttet, 686 F.3d at 1332. Nor is
the test for obviousness whether a secondary reference’s features can be
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bodily incorporated into the structure of the primary reference. Keller, 642
F.2d at 425.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 2–32 for similar reasons.
We note regarding claim 14, Appellants argue the Examiner’s
rejection is deficient. See App. Br. 13. The Examiner responds by
clarifying the rejection (Ans. 22), and Appellants’ Reply Brief does not rebut
the Examiner’s response.
We further note the Examiner rejects claims 20–25 under Xue and
Marriott (Ans. 5). As discussed above with respect to claim 1, the
Examiner’s citing Christopher is cumulative in light of Xue’s disclosures.
Therefore, for similar reasons discussed above (and without relying on
Christopher), we sustain the Examiner’s rejection of claims 20–25.

DECISION
The Examiner’s decision rejecting claims 1–32 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

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