Ex Parte Lee et alDownload PDFPatent Trial and Appeal BoardMay 31, 201613538174 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/538, 174 06/29/2012 11764 7590 Ditthavong & Steiner, P,C, 44 Canal Center Plaza Suite 322 Alexandria, VA 22314 06/02/2016 FIRST NAMED INVENTOR Wei Yeh Lee 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. P5243US01 5811 EXAMINER HARPER, ELIY AH STONE ART UNIT PAPER NUMBER 2166 NOTIFICATION DATE DELIVERY MODE 06/02/2016 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): docket@dcpatent.com Nokia.IPR@nokia.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WEI YEH LEE, SERGEY BOLDYREV, and JAN msTIN OLIVER1 Appeal2014-009819 Application 13/538, 174 Technology Center 2100 Before CARL W. WHITEHEAD JR., MICHAEL J. STRAUSS, and AMBER L. HAGY, Administrative Patent Judges. HAGY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse and enter new grounds of rejection within the provisions of 37 C.F.R. § 41.50(b). 1 Appellants identify Nokia Corporation as the real party in interest. (App. Br. 1.) Appeal2014-009819 Application 13/538, 174 According to Appellants: Introduction Service providers (e.g., wireless and cellular services) and device manufacturers are continually challenged to deliver value and convenience to consumers by, for example, providing compelling network services and advancing the underlying technologies. One area of interest has been the realm of asset management regarding tracking and locating items that belong to a user or group, as well as allowing these items to access personal data that is available in a cloud computing environment. Therefore, there is a need for an approach for creating an inventory of assets and enabling the assets to have access to a central database of information. (Spec. iTiT 2-3.) Exemplary Claim Claim 1, reproduced below, is exemplary of the claimed subject matter: 1. A method compnsmg facilitating a processing of and/ or processing (1) data and/or (2) information and/or (3) at least one signal, the (1) data and/or (2) information and/or (3) at least one signal based, at least in part, on the following: a determination of one or more devices to be part of one or more groups; a processing of a determination of one or more datasets to be stored on the one or more devices; a synchronization of the one or more datasets among the one or more devices that are part of the one or more groups; and a cryptographic connection between the one or more devices to be established. 2 Appeal2014-009819 Application 13/538, 174 REFERENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: Logan et al. ("Logan") US 2013/0006924 Al Jan.3,2013 REJECTION Claims 1-20 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Logan. (Final Act. 2-12.) ISSUES Whether the Examiner made findings supporting a prima facie case of anticipation by Logan of claims 1-20. ANALYSIS The Examiner maps Logan's teaching of "linked contact groups" (App. Br. 6) onto the "a determination of one or more devices to be part of one or more groups" limitation, recited in independent claims 1 and 11. (App. Br. 7.) Appellants argue this finding is in error because "Logan does not disclose that information specific to the devices of the contacts is stored in the personal information manager application. Thus, there is no link between a specific contact and a specific device for the contact." (Id. (emphasis added).) The Examiner finds "Logan's disclosure that takes user's (with individual devices) and places them into groups based on common associations ... inherently must mean that devices are placed into groupings as well since users do not all share one device." (Ans. 7 (emphasis added).) In other words, the Examiner finds Logan teaches 3 Appeal2014-009819 Application 13/538, 174 grouping "devices" because each grouped contact is associated with an individual device of a user. In making this finding, the Examiner invokes case law on the doctrine of inherent disclosure. (Ans. 6-7.) We agree with Appellants that the Examiner's finding regarding Logan's grouping of "contacts" falls short of establishing a prima facie case that Logan teaches "a determination of one or more devices to be part of one or more groups." (App. Br. 7.) As our reviewing court guides, "[i]nherency ... may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). Appellants argue, and we agree, Logan's disclosure of linking contacts into a group does not necessarily teach grouping devices. (App. Br. 8.) As Logan discloses, grouped contacts may include fields such as "company address" and "email address." (Logan i-fi-165-76.) Such fields do not necessarily identify unique devices. Although the Examiner correctly finds Logan's contact fields may also include telephone numbers, and we agree with the Examiner's finding that telephone numbers may be unique to individuals (see Ans. 7), this does not mean Logan necessarily discloses specific devices are determined to be grouped if contacts with different phone numbers are grouped. For the foregoing reasons, we are persuaded of error in the Examiner's finding Logan teaches all of the limitations of independent claim 1, including "a determination of one or more devices to be part of one or more groups." Because independent claim 11 contains the same limitation, we are similarly persuaded of error in the Examiner's finding Logan teaches all of the limitations of claim 11. We, therefore, reverse the Examiner's 35 4 Appeal2014-009819 Application 13/538, 174 U.S.C. § 102(b) rejection of independent claims 1and11, and also dependent claims 2-10 and 12-20. NEW GROUND OF REJECTION PURSUANT TO 37 C.F.R. § 41.50(B) We enter a new ground of rejection for claims 1 and 11 under 3 5 U.S.C. § 102(e) as anticipated by Logan. Logan discloses "software applications" for controlling "basic device operations, including data and voice communication" on a portable electronic device. (Logan i-f 22.) These software applications can include "a Personal Information Manager (PIM)." (Logan i-f 23.) The PIM includes: functionality for organizing and managing data items of interest to the user, such as, but not limited to, email, contact data records, calendar events, voice mails, appointments, and task items. PIM applications include, for example, calendar, address book, tasks and memo applications. The PIM applications have the ability to send and receive data items via the wireless network 200. PIM data items may be seamlessly integrated, synchronized, and updated via the wireless network 200 with the portable electronic device subscriber's corresponding data items stored and/or associated with a host computer system. This functionality creates a mirrored host computer on the portable electronic device 100 with respect to such items. This can be particularly advantageous when the host computer system is the portable electronic device subscriber's office computer system. (Logan i-f24 (emphasis added).) Logan further discloses secure communications between the portable electronic device and the user's computer: For instance, a user's desktop computer 262a with an accompanying cradle 264 for the user's portable electronic device 100 is situated on a LAN connection. The cradle 264 for the portable electronic device 100 can be coupled to the computer 262a by a serial or a Universal Serial Bus (USB) connection, for 5 Appeal2014-009819 Application 13/538, 174 example. . . . The cradle 264 facilitates the loading of information (e.g. PIM data, private symmetric encryption keys to facilitate secure communications) from the user computer 262a to the portable electronic device 100, and may be particularly useful for bulk information updates often performed m initializing the portable electronic device 100 for use. (Logan i-f 46 (emphasis added).) Thus, Logan teaches all limitations of claim 1: • "[a] method comprising facilitating a processing of and/or processing (1) data and/or (2) information and/or (3) at least one signal, the (1) data and/or (2) information and/or (3) at least one signal" (e.g., Logan i-fi-123-24, transferring and synchronizing PIM data between a portable electronic device and a host computer); • "a determination of one or more devices to be part of one or more groups" (e.g., Logan i-fi-123-24, portable electronic device and user's computer are grouped through synchronization to create a "mirrored host computer"; see also Spec. i-f 33 (describing "devices" as including "a mobile device such as a cell phone, a laptop, tablet computer, or other electronic device such as a desktop computer ... "); • "a processing of a determination of one or more datasets to be stored on the one or more devices" (e.g., Logan i-fi-123-24, storing data such as "email, contact data records, calendar events, voice mails, appointments, and task items" on both the portable electronic device and the mirrored host computer); • "a synchronization of the one or more datasets among the one or more devices that are part of the one or more groups" (e.g., Logan i-fi-1 23-24, synchronizing PIM data between portable electronic 6 Appeal2014-009819 Application 13/538, 174 device and host computer system to create a "mirrored host computer"); and • "a cryptographic connection between the one or more devices to be established" (e.g., Logan ,-r 46, secure communications between portable electronic device and user computer, using "private symmetric encryption keys"). We, therefore, find Logan anticipates independent claim 1. We also apply the findings regarding claim 1 to the similar limitations of independent claim 11, and further find Logan also teaches the "processor," "memory," and "program code" limitations of claim 11. (E.g., Logan Fig. 1 - "Main Processor" 102, "Flash Memory" 108, "RAM" 106, and "Operating System Programs" 134; Logan i-fi-116, 17, 22.) We, therefore, find Logan anticipates independent claim 11. With regard to dependent claims 2-10 and 12-20, we note that we are primarily a reviewing body, rather than a place of initial examination. The fact that we did not enter new grounds of rejection for the claims that depend from claims 1 and 11 should not be construed to mean that we consider those claims to be patentable or directed to patent-eligible subject matter. Rather, we leave it to the Examiner to make that determination should further prosecution occur in this case. 7 Appeal2014-009819 Application 13/538, 174 DECISION For the above reasons, the Examiner's 35 U.S.C. § 102(e) rejection of claims 1-20 is reversed. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 1 and 11under35 U.S.C. § 102(e). Regarding the new rejection, section 41.50(b) of 37 C.F.R. provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides that Appellant, [WITHIN TWO MONTHS FROM THE DATE OF THE DECISION], must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. ... (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same Record .... 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). REVERSED 37 C.F.R. § 41.50(b) 8 Copy with citationCopy as parenthetical citation