Ex Parte KWON et al

Patent Trial and Appeal Board

Sep 28, 2016

11768323 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111768,323 0612612007
68103 7590 09/30/2016
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
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.
0502-0018 2846
EXAMINER
ASHRAF, WASEEM
ART UNIT PAPER NUMBER
2455
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
usdocketing@jeffersonip.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
Appeal2015-008271
Application 11/768,323
Technology Center 2400
Before ROBERT E. NAPPI, LINZY T. McCARTNEY, and
JAMES W. DEJMEK, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-16 and 19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2015-008271
Application 11/768,323
STATEMENT OF THE CASE
The present patent application concerns "a method and apparatus for
synchronizing content directory services that are provided by Universal Plug
and Play devices." Spec. i-f 2. Claim 1 illustrates the claimed subject matter:
1. A method for a device to synchronize a content directory
service (CDS) with other devices having a CDS, the method
compnsmg:
in response to a modification of content defined in a CDS
of the device, generating an event message comprising
information related to the modified content; and
transferring the generated event message on a network,
such that at least one of the other devices initiates a
synchronization operation to modify their CDS contents to be the
same as the CDS contents of the device, based on the information
and a synchronization policy of the at least one other devices,
wherein the synchronization policy indicates that the
synchronization is performed only if the device determines the
device is capable of reproducing the modified content referring
to a format specification of the modified content, \~1herein the
format specification is included in the received event message.
REJECTIONS
Claims 1, 2, 5, 7-9, 12, 14, 15, and 19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Phan et al. (US 2004/0193609 Al; Sept. 30.
2004 ), Janik et al. (US 2006/0194549 A 1; Aug. 31, 2006), and Wu et al. (US
6, 125,369; Sept. 26, 2000).
Claims 3, 4, 10, 11, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Phan, Janik, Wu, and Burnett et al. (US 2005/0262520
Al; Nov. 24, 2005).
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Application 11/768,323
Claims 6 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Phan, Janik, Wu, Stirbu et al. (US 2006/0041596 Al; Feb.
23, 2006).
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments, and we disagree with Appellants that the Examiner erred. To the
extent consistent with the analysis below, we adopt the Examiner's findings,
reasoning, and conclusions set forth in the appealed action and the
Examiner's response to Appellants' arguments. Appellants have waived
arguments they failed to raise or properly develop in their briefing. See 37
C.F.R. §§ 41.37(c)(l)(iv), 41.41(b)(2). We address Appellants' properly
raised arguments in tum below.
Appellants argue Phan does not teach or suggest claim 1 's
"transferring" limitation for several reasons. See App. Br. 4--8; Reply Br. 2-
3. First, Appellants contend that even if Phan discloses an embodiment in
which "UPnP control points may have their own master CDS[s], which are
synchronized among all of the other UPnP control points," "the master
CDSs in the control point could not modify themselves to be the same as the
CDS contents" ofUPnP devices without control points. App. Br. 5---6
( emphasis omitted). Put differently, Appellants argue not every device in
this embodiment would "initiate[] a synchronization operation to modify
their CDS contents to be the same as the CDS contents of the device" as
required by claim 1.
We find this argument unpersuasive. As concluded by the Examiner,
claim 1 does not require every device initiate the recited "synchronization
operation." Ans. 9-10. Rather, claim 1 recites "at least one of the other
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Application 11/768,323
devices initiates a synchronization operation to modify their CDS contents to
be the same as the CDS contents of the device." App. Br. 11 (emphasis
added). As found by the Examiner, Phan discloses an alternate embodiment
in which each UPnP control point has its own master CDS, which the
control points synchronize with the other UPnP control points. See Final
Act. 8 (citing Phan i-f 48); Ans. 4--5; see also App. Br. 5 (characterizing Phan
as disclosing "UPnP control points may have their own master CDS[s],
which are synchronized among all of the other UPnP control points"). Thus,
at least one device in this embodiment "initiates a synchronization operation
to modify their CDS contents to be the same as the CDS contents of the
device" as recited in claim 1.
Second, Appellants argue this embodiment of Phan "merely updates
the content listing within the master CDS, but does not modify their contents
to be the same as the contents of the device implementing the CDS." App.
Br. 6 (emphases added). Moreover, Appellants contend Phan "expressly
teaches away from the modification proposed by the Examiner" because
Phan describes this embodiment as not preferred and lists the embodiment's
deficiencies. Id. at 6-7 (emphasis omitted); see also Reply Br. 2-3.
We find these arguments unpersuasive. Claim 1 's "transmitting"
limitation recites in relevant part "modify their CDS contents to be the same
as the CDS contents of the device." Appellants have not identified anything
in the claims or the specification the explicitly defines the term "CDS
contents." The broadest reasonable interpretation of the term "CDS
contents" includes content stored by, or associated with, the CDS. In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) ("During
examination, claims ... are to be given their broadest reasonable
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Application 11/768,323
interpretation .... "). As found by the Examiner, in at least one
embodiment, each of Phan' s UPnP control point has its own master CDS
that includes a listing of content available on the network, and Phan's system
synchronizes each master CDS with the master CDSs of the other control
points. See Final Act. 8 (citing Phan i-f 48); Ans. 4--5, 10-11; see also App.
Br. 5. Accordingly, we agree with the Examiner that Phan teaches or
suggests "modify their CDS contents to be the same as the CDS contents of
the device."
With respect to Appellants' teaching away argument, "[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 Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
But "the mere disclosure of alternative designs does not teach away ....
just because better alternatives exist in the prior art does not mean that an
inferior combination is inapt for obviousness purposes." In re Mouttet, 686
F.3d 1322, 1334 (Fed. Cir. 2012) (quotation marks and citations omitted).
As put by the Manual of Patent Examining Procedure, "[ d]isclosed examples
and preferred embodiments do not constitute a teaching away from a broader
disclosure or nonpreferred embodiments." MPEP § 2123 (II) (citing In re
Susi, 440 F.2d 442 (CCPA 1971)).
Here, Phan discloses an alternate, non-preferred embodiment.
Specifically, Phan discloses that the embodiment cited by the Examiner is an
"alternate embodiment" that is "not preferred" because it "results in more
network traffic and congestion, which can lead to reduced performance of
the network." Phan i-f 48. However, the Examiner found-and Appellants
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Application 11/768,323
do not persuasively dispute-the cited embodiment has the advantage of
providing a "fail/safe" or "backup mechanism." Ans. 13. Thus, the cited
embodiment is simply an alternate embodiment that has advantages and
disadvantages relative to the other disclosed embodiments. As noted above,
the "mere disclosure of alternative designs does not teach away." In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Moreover, the claimed
invention "does not become patentable simply because it has been described
as somewhat inferior to some other product for the same use." Gurley, 27
F.3d at 553 (Fed. Cir. 1994). Accordingly, we find this argument
unpersuasive.
Finally, Appellants contend Wu fails to teach or suggest "wherein the
synchronization policy indicates that the synchronization is performed only
if the device determines the device is capable of reproducing the modified
content referring to a format specification of the modified content, wherein
the format specification is included in the received event message" as recited
in claim 1. See App. Br. 8-9; Reply Br. 3--4. In particular, Appellants assert
"Wu's system synchronization occurs even for objects having properties not
supported by the desktop," whereas claim 1 performing synchronization
"only if ... the UPnP device is capable of reproducing the modified
content." App. Br. 9 (emphasis modified); see also Reply Br. 4. Put
differently, Appellants contend Wu does not teach or suggest the disputed
"wherein" limitation because, in Appellants' view, Wu teaches
synchronizing both supported and unsupported properties. See App. Br. 8-
9; Rely Br. 3--4.
We find Appellants' arguments unpersuasive. Wu discloses
"[ d]esktop synchronization interfaces 90 are responsible for mapping
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Application 11/768,323
properties from H/PC object store 25 to corresponding properties in desktop
object store 18." Wu 15:31-34. Wu also discloses "[i]n some cases, certain
properties provided from H/PC object store 24 have no corresponding
properties in desktop store 18." Id. at 45--47. In these cases, "data
representing any unsupported properties is returned to the desktop
synchronization manager 82 ... without storing the properties in the desktop
object store. The properties are thus stored in reference store 84." Id. at 51-
55. As found by the Examiner, these disclosures suggest Wu's system only
synchronizes the desktop store when a property in the H/PC object store
corresponds with a property in the desktop store. Ans. 14--15. Thus, even if
"synchronization" includes storing unsupported properties in a different part
of memory-and Appellants have not presented any persuasive evidence or
argument to support this contention-Wu still suggests synchronizing
properties in the desktop store only if those properties correspond to existing
desktop store properties. Accordingly, we find this argument unpersuasive.
For the above reasons, we sustain the Examiner's rejection of claim 1.
Because Appellants have not presented separate, persuasive patentability
arguments for claims 2-16 and 19, see App. Br. 9, we also sustain the
Examiner's rejections of these claims.
DECISION
We affirm the Examiner's rejection of claims 1-16 and 19.
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
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