Ex Parte KWON et al

Patent Trial and Appeal Board

May 30, 2018

14264934 (P.T.A.B. May. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/264,934 04/29/2014
23373 7590 06/01/2018
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Won-seok KWON
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.
Q211531 1037
EXAMINER
SALAD,ABDULLAHIELMI
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
06/01/2018 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WON-SEOK KWON, JOO-YEOL LEE, SEUNG-JAE OH,
DONG-SHIN JUNG, and SE-HEE HAN 1
Appeal2017-002766
Application 14/264,934
Technology Center 2400
Before CAROLYN D. THOMAS, DEBRA K. STEPHENS, and
KEVIN C. TROCK, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-3, all the pending claims in the
present application (see Claims Appendix). We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants name Samsung Electronics Co., LTD. as the real party in
interest (App. Br. 2).
Appeal2017-002766
Application 14/264,934
The present invention relates generally to synchronizing a plurality of
content directory service (CDS) devices in a home network environment
(see Spec., Abstract).
Claim 1 is illustrative:
1. A device which is connected to a network, the device
compnsmg:
a synchronization descriptor which comprises
synchronization information for synchronization with another device;
a synchronization descriptor management unit which
manages the synchronization descriptor; and
a communication unit which, in response to receiving a
signal indicating that it is selected as the synchronization target from a
control point, transmits the synchronization descriptor to the other
device on the network, and receives, from the other device, a
synchronization descriptor of the other device connected to the
network.
Appellants appeal the following rejections:
RI. Claims 1-3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kang (US 2005/0021866 Al, Jan. 27, 2005); and
R2. Claims 1-3 are rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kang and White (US 2005/0055352 Al, Mar. 10, 2005).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
2
Appeal2017-002766
Application 14/264,934
Rejection under§ 103(a) over Kang
Issue 1: Did the Examiner err in finding that Kang teaches or
suggests the claimed invention?
Appellants contend that '[t]he Examiner does not give any reason
why the claimed invention would have been obvious in view of Kang ...
therefore[,] the Examiner has not met the burden of supporting a prima facie
conclusion of obviousness" (App. Br. 6). We agree with Appellants.
The one who bears the initial burden of presenting a prima facie case
of unpatentability is the Examiner. Here, the Examiner merely points out
that "[ t ]he applied reference has a common Assignee with the instant
application" and how this rejection might be overcome (see Final Act. 2-3).
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A prima facie case is
established when the party with the burden of proof points to evidence that is
sufficient, ifuncontroverted, to entitle it to prevail as a matter of law. See
Saab Cars USA, Inc. v. U S., 434 F.3d 1359, 1369 (Fed. Cir. 2006). In
particular, regarding the Patent Examiner's burden of production:
[A ]ll that is required of the office to meet its prima facie burden of
production is to set forth the statutory basis of the rejection and the
reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of [35 U.S.C.] §
13 2. As the statute itself instructs, the examiner must "notify the
applicant," "stating the reasons for such rejection," "together with such
information and references as may be useful in judging the propriety of
continuing prosecution of his application." 35 U.S.C. § 132.
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Here, the Examiner fails
to state any reasons useful in judging the propriety of this rejection.
Thus, we find that the Examiner has not met the initial burden of
presenting a prima facie case of obviousness, and therefore has not properly
3
Appeal2017-002766
Application 14/264,934
shifted the burden of coming forward with rebuttal or argument onto
Appellants. In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993).
Accordingly, the rejection of claims 1-3 under§ 103(a) over Kang is
reversed.
Rejection under§ 103(a) over Kang and White
Issue 2: Did the Examiner err in finding that the combined teachings
of White and Kang teach or suggest transmitting the synchronization
descriptor to the other device, as set forth in claim 1?
Appellants contend that "Kang fails to disclose a configuration in
which a content device 300 selects synchronization objects and then
synchronization is performed between the target device 220 and the
other device 240" (App. Br. 9). Appellants further contend that "Kang does
not disclose or suggest that the target device transmits or issues the action
command to perform synchronization with 'the other device"' (App. Br. 10)
because "Kang merely discloses that a content device (300) transmits a
command to a target device" (id. at 12).
The Examiner finds that Appellants' "arguments appear[] to be
directed against the references individually ... the combined teachings of
White and Kang does disclose that a synchronization is performed in
response to receiving a signal indicating that it is selected as the
synchronization target" (Ans. 2). We agree with the Examiner.
We refer to, rely on, and adopt the Examiner's findings and
conclusions set forth in the Answer. Our discussions here will be limited to
the following points of emphasis.
For example, White discloses "[s]ynchronization applications enable
devices to perform various forms of data synchronization. . .. between
4
Appeal2017-002766
Application 14/264,934
devices" (i-f 26), whereby "the synchronization application 110 provides the
synchronization communications sent from the first media server 100 to the
remote media server 170, and receives the synchronization communications
sent to the first media server 100 from the remote media server 170" (i-f 46;
see also i1 52). In other words, White discloses a target transmitting a
synchronization descriptor to the other device and the target receiving from
the other device a synchronization descriptor.
The Examiner imports Kang to disclose receiving a signal, from a
control point, indicating that it is selected as the synchronization target (see
Final Act. 4; Ans. 3) and defining a "SynchTime" that "articulates a
synchronization is performed in response to receiving a signal" (Ans. 3).
Specifically, Kang discloses "a synch data structure ... to allow a target
device to execute contents at a certain time without the intervention of a
user" (i-f 18; see also i1i142, 62 (i.e., "TriggerPoint 411 for defining the
time to perform synchronization."). Kang further discloses "a process of
selecting a target device" (i-f 50; see also i154).
It is this combined teaching of White and Kang that the Examiner is
relying on to teach and/or suggest the claimed in response to receiving a
signal indicating that it is selected as the synchronization target from a
control point, transmits the synchronization descriptor to the other device
... and receives, from the other device, a synchronization descriptor. Thus,
Appellants' argument against Kang separately from White does not
persuasively rebut the combination made by the Examiner. As noted by the
Examiner, one cannot show non-obviousness by attacking references
individually, where the rejections are based on combinations of references.
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the
5
Appeal2017-002766
Application 14/264,934
Examiner has directed our attention to White's teaching of transmitting the
synchronization descriptor to the other device. Even if we assume arguendo
(without deciding) that Kang fails to transmit a synchronization descriptor to
the other device (as proffered by Appellants), Appellants fail to rebut
White's teachings regarding transmitting a descriptor to the other device.
Further, Appellants concede that Kang teaches the claimed control point (see
App. Br. 1 O; Reply Br. 7).
As such, Appellants' arguments do not take into account what the
collective teachings of the prior art would have suggested to one of ordinary
skill in the art and is therefore ineffective to rebut the Examiner's prima
facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA
1981 )("The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested
in any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.") (citations omitted). This reasoning is applicable here.
Finally, Appellants contend that the Examiner "does not provide a
clear articulation for combining White and Kang" (App. Br. 13). We
disagree with Appellants.
The Examiner concluded that "it would have been obvious ... to
incorporate the teachings [of] Kang into the system [of] White [because] this
enables defining a certain criterion to select a certain device for data
synchronization ... [and] this allows a target device to execute contents at a
certain time without the intervention of a user" (Final Act. 4; Ans. 3).
6
Appeal2017-002766
Application 14/264,934
The Supreme Court has held that in analyzing the obviousness of
combining elements, a court need not find specific teachings, but rather may
consider "the background knowledge possessed by a person having ordinary
skill in the art" and "the inferences and creative steps that a person of
ordinary skill in the art would employ." See KSR Int'! Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1740-41 (2007). To be nonobvious, an improvement must
be "more than the predictable use of prior art elements according to their
established functions," and the basis for an obviousness rejection must
include an "articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness." Id.
As noted supra, the Examiner has found actual teachings in the prior
art and has provided a rationale for the combination. Further, the teachings
suggest that the combination involves the predictable use of prior art
elements according to their established functions. Thus, we find that the
Examiner has provided sufficient motivation for modifying White with the
teachings of Kang.
Accordingly, we sustain the Examiner's rejection of claim 1.
Appellants do not argue separate patentability for the dependent claims. We,
therefore, also sustain the Examiner's rejection of claims 2 and 3.
DECISION
We reverse the Examiner's§ 103(a) rejection of claims 1-3 over
Kang.
We affirm the Examiner's§ 103(a) rejection of claims 1-3 over White
and Kang.
7
Appeal2017-002766
Application 14/264,934
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).
AFFIRMED
8