Ex Parte Lee

Patent Trial and Appeal Board

May 16, 2018

10997418 (P.T.A.B. May. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/997,418 11124/2004 Victor S. Lee
141746 7590 05/18/2018
ARENT FOX LLP& Microsoft Technology Licensing, LLC
1717 K Street, NW
WASHINGTON, DC 20006-5344
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.
037834.00175/309588-US-NP 6675
EXAMINER
SHERR, MARIA CRISTI OWEN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
05/18/2018 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):
patentdocket@arentfox.com
USDocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VICTORS. LEE
Appeal2017-000359 1
Application 10/997 ,4182
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 4, 5, 7-29, 31, and 40-44. 3 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
February 16, 2016) and the Examiner's Answer ("Ans.," mailed June 17,
2016) and Final Office Action ("Final Act.," mailed September 24, 2015).
2 Appellant identifies Microsoft Technology Licensing, LLC as the real
party in interest. App. Br. 3.
3 Claims 2 and 3 are withdrawn. Claims 6, 30, and 32-39 are canceled.
App. Br. 5.
Appeal2017-000359
Application 10/997 ,418
CLAIMED INVENTION
Appellant's claimed invention "relates generally to multimedia
networks and more specifically to synchronizing contents of removable
storage devices with a multimedia network" (Spec. i-f 2).
Claims 1, 26, 40, and 42 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method comprising:
detecting, by a server connected to a multimedia network,
a change in status of a connection between a removable storage
device and a client computing node of the multimedia network;
receiving, by the server and from the client computing
node, a local inventory list of recordings contained by the
removable storage device;
comparing the local inventory list to a network inventory
list of recordings to identify a recording on the local inventory
list of recordings with which to update the network inventory list
of recordings, wherein the network inventory list of recordings
is associated with at least one or more other client computing
nodes of the multimedia network; and
updating, by the server and based at least in part on
detecting the change in status, the network inventory list of
recordings with information associated with the recording on the
local inventory list of recordings identified based on the
comparmg.
REJECTIONS 4
Claims 40, 41, 43, and 44 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
4 The Examiner has withdrawn the separate rejections of dependent claims
31, 43, and 44 under 35 U.S.C. § 112, first paragraph. (See Ans. 2).
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Claims 1, 4, 5, 7-29, 31, and 40-44 are rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
Claims 1, 4, 5, 7-29, 31, and 40-44 are rejected under 35 U.S.C.
§ 112, second paragraph, as indefinite for failing to particularly point out
and distinctly claim the subject matter which Appellant regards as the
invention.
Claims 1, 4, 5, 7-12, 14--19, 26, 28, 29, 40, and 42--44 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Kusaka et al.
(US 7,382,405 B2, iss. June 3, 2008) ("Kusaka") and Kauffman et al.
(US 6,260,040 B 1, iss. July 10, 2001) ("Kauffman").
Claims 13, 20-25, 27, 31, and 41 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kusaka, Kauffman, and Stefik et al.
(US 5,629,980, iss. May 13, 1997).
ANALYSIS
Non-Statutory Subject Matter
Independent claim 40 recites "[ o ]ne or more devices storing
instructions" that, when executed, perform a number of steps. And each of
claims 41, 4 3, and 44 depends from independent claim 40.
We are not persuaded by Appellant's argument that the Examiner
erred in rejecting claims 40, 41, 43, and 44 under 35 U.S.C. § 101 (Br. 12-
13). Instead, we agree with the Examiner (see Final Act. 5---6; Ans. 2) that
the phrase "[ o ]ne or more devices storing instructions," when given its
broadest reasonable interpretation in light of the Specification, includes
transitory signals, which are non-statutory subject matter. See In re Nuijten,
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500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not
directed to statutory subject matter); see also Ex parte Mewherter,
107 USPQ2d 1857, 1862 (PTAB 2013) (precedential) (finding a machine
readable storage medium non-statutory under § 101 ).
Appellant argues that "the broadest reasonable interpretation of the
term 'device' does not encompass a 'signal"' (Br. 12), and that claims 40,
41, 43, and 44 are directed to an article of manufacture and, therefore,
patent-eligible under § 101 (id. at 10). Yet, we find nothing in the
Specification, nor does Appellant direct us to anything in the Specification,
that imposes any limitation on the form of the "one or more devices" or that
otherwise excludes transitory media. Instead, as the Examiner observes, the
Specification "is silent as to the type (hardware or software) of device"
(Ans. 2 (citing paragraph 79 of the published version of Appellant's
Specification)). 5
We are not persuaded, for the foregoing reasons, that the Examiner
erred in rejecting claims 40, 41, 43, and 44 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner's rejection.
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Paulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
5 US 2006/0112018 Al, pub. May 25, 2006.
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Application 10/997 ,418
using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellant was in
possession of the claimed invention. See id.
In rejecting the claims under 35 U.S.C. § 112, first paragraph, the
Examiner notes that independent claim 1 recites "detecting, by a server
connected to a multimedia network, a change in status of a connection
between a removable storage device and a client computing node of the
multimedia network" (Final Act. 7; see also, Ans. 3--4). However, the
Examiner finds that "in the Specification the said function is not recited as
being in a 'server' but rather in [an] 'engine'" (id.). The Examiner points to
paragraphs 32 and 64 of the published version of Appellant's Specification
as disclosing that "the 'media connection monitor' is part of the 'local
inventory engine' which 'resides on a set top box"' (id.). And, the Examiner
finds that the claimed "detecting" step being performed by a "server" lacks
written description support in the Specification because the Specification
only describes the "detecting" step being performed by local inventory
engine 114 and not by a "server."
We understand the rejection as applying to independent claims 1 and
42 only. Notwithstanding that the Examiner applies the same analysis to
independent claims 1, 26, 40, and 42, only claims 1 and 42 contain the
limitation that allegedly lacks written description support. Claim 42, similar
to claim 1, recites that the "detecting" step is performed "at a multimedia
hub." However, as Appellant points out (App. Br. 18), independent
claims 26 and 40 do not contain a similar limitation that requires the
"detecting" step to be performed by a "server" or "hub." Accordingly, we
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do not sustain the rejection of claims 26 and 40 under§ 112, first paragraph,
because they do not contain the allegedly problematic limitation.
Turning to the rejection of independent claims 1 and 42, we are
persuaded by Appellant's argument that the Examiner erred in rejecting
claims 1 and 42 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement (App. Br. 13-19). As the Examiner
correctly notes (Final Act. 7), the Specification discloses that local inventory
engine 114 performs the claimed "detecting" step (see, e.g., i-f Spec. 23).
However, the Specification discloses that the "detecting" step may also be
performed by network inventory engine 110, which resides on multimedia
server 104 (see, e.g., Spec. i-f 19 ("a network inventory engine 110 ...
resides in the multimedia server 104"), i-f 22 ("all the functions of a local
inventory engine 114 may be included in a network inventory engine 11 O") ).
As such, we agree with Appellant that a person of ordinary skill in the art
would understand from the Specification, additionally including
paragraph 59 and Figures 1 and 6, that Appellant was in possession of the
claimed invention, including "detecting, by a server connected to a
multimedia network, a change in status of a connection between a removable
storage device and a client computing node of the multimedia network," as
recited in independent claim 1, at the time the application was filed (App.
Br. 14--15).
Regarding the substantially similar step of "detecting, at a multimedia
hub, a change in a connection between a removable storage device and a
client node on a multimedia network," recited in claim 42, we note that the
Specification discloses that "[t]he term 'server' will be used herein to refer
to ... a multimedia network hub ... " (Spec. i-f 17). Therefore, we find that
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Appellant's Specification provides the requisite written description support
for the "detecting" limitation in claim 42 for the same reasons set forth
above with respect to claim 1.
In view of the foregoing, we do not sustain the Examiner's rejection
of claims 1, 4, 5, 7-29, 31, and 40-44 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Indefiniteness
In rejecting the pending claims under 35 U.S.C. § 112, second
paragraph, the Examiner asserts that independent claims 1, 26, 40, and 42
recite "recite detecting, by a computing device, a change in status of a
connection between a storage device and a client computing node ... and
then receiving, from the client computing node, a list of inventories
contained by the removable storage device" (Final Act. 8). The Examiner
determines that the claims are indefinite because "[i]t is unclear- ifthe
recordings are on the removable device - how the computing device can
receive the recordings from the client computing node" (id. at 8; see also
Ans. 4).
The Examiner's indefiniteness rejection, as best understood, appears
based on absence of a claim step of retrieving/sending information contained
by the removable storage device to the client computing node, prior to the
step of "receiving" the information (i.e., a list inventories contained by the
removable storage device."). Claims 1, 26, 40, and 42 admittedly are broad
in that the claims do not require any specific way of retrieving/ sending
information contained by the removable device. However, "breadth is not to
be equated with indefiniteness." In re Miller, 441 F.2d 689, 693
(CCPA 1971).
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Therefore, we do not sustain the Examiner's rejection of claims 1, 4,
5, 7-29, 31, and 40-44 under 35 U.S.C. § 112, second paragraph.
Obviousness
Independent claim 1 and Dependent Claims 4, 5, 7-12, and 14-19
We are persuaded by Appellant's argument that the Examiner erred in
rejecting independent claim 1 under§ 103(a) because Kauffman, on which
the Examiner relies, does not disclose or suggest "comparing the local
inventory list to the network inventory list," as recited in claim 1 (App.
Br. 25-27).
Kauffman is directed to a shared file system, including a file
management system that provides version control (Kauffman col. 2, 11. 9-15)
via "a checking mechanism by which only one user is allowed to 'check out'
a file at a time" (id. at col. 2, 11. 17-18). After editing the file, the user
checks the file back in, and that copy of the file becomes the latest version
of the file (id. at col. 2, 11. 24--26).
Kauffman, at column 6, lines 41---65, discloses a process for checking
out a file from the file management system, and describes that that the
check-out process begins when a "user requests a file for a write operation at
his workstation, thereby invoking a digital library client application." The
library client application sends the request to a digital library server. The
server's file management system determines whether the user has write
permission and, if the user has write permission, checks whether the file is
already checked out (i.e., to another user/workstation). If the file is not
checked out, the server checks it out to the requesting user and the file is
copied onto a local store of the user's workstation.
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The Examiner maintains that the "comparing" step, as recited in
claim 1, is met by Kauffman's disclosure of the check-out procedure in
column 6, lines 41-65 (Final Act. 10; see also Ans. 5). However, we agree
with Appellant that Kauffman's disclosure of "controlling write protections
is not the same as comparing a 'local inventory list' and a 'network
inventory list,' as claim 1 recites" (App. Br. 27).
Claim 1, on its face, requires comparing two distinct inventory lists: a
local inventory list of recordings contained by the removable storage device,
and a second network inventory list of recordings. The Examiner has not
pointed to any comparison of two different lists in Kauffman. The Examiner
has merely pointed to disclosure in Kauffman that a single file may be
checked out from a file management server.
Kauffman's disclosure of checking out a single file is insufficient to
meet the claim language. Therefore, we do not sustain the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a). For the same reasons, we also
do not sustain the Examiner's rejection of dependent claims 4, 5, 7-12, and
14--19. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent
claims are nonobvious if the independent claims from which they depend are
nonobvious").
Independent Claims 26, 40, and 42 and Dependent Claims 28, 29, 43 and 44
Independent claims 26, 40, and 42 include language substantially
similar to the language of claim 1, and stand rejected based on the same
rationale applied with respect to claim 1 (Final Act. 9-10). Therefore, we do
not sustain the Examiner's rejection under 35 U.S.C. § 103(a) of
independent claims 26, 40, and 42, and claims 28, 29, 43, and 44, which
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depend therefrom, for the same reasons set forth above with respect to
claim 1.
Dependent claims 13, 20-25, 27, 31, and 41
Each of dependent claims 13, 20-25, 27, 31, and 41 depends from one
of independent claims 1, 26, and 40. The Examiner's rejections of these
dependent claims under 35 U.S.C. § 103(a) are based on the same rationale
with respect to Kauffman applied in the rejection of independent claims 1,
26, and 40. Therefore, we do not sustain the rejections of dependent
claims 13, 20-25, 27, 31, and41under§103(a) for substantially the same
reasons set forth above with respect to the independent claims.
DECISION
The Examiner's rejection of claims 40, 41, 43, and 44 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter is affirmed.
The Examiner's rejection of claims 1, 4, 5, 7-29, 31, and 40-44 under
35 U.S.C. § 112, first paragraph, is reversed.
The Examiner's rejection of claims 1, 4, 5, 7-29, 31, and 40-44 under
35 U.S.C. § 112, second paragraph, is reversed.
The Examiner's rejections of claims 1, 4, 5, 7-29, 31, and 40-44
under 35 U.S.C. § 103(a) are reversed.
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-IN-PART
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