Ex Parte Locker et al

Patent Trials and Appeals Board

May 24, 2019

13854610 - (D) (P.T.A.B. May. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/854,610 04/01/2013
58127 7590 05/24/2019
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
FIRST NAMED INVENTOR
Howard Locker
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.
RPS920130015USNP(710.225) 6693
EXAMINER
KHAN, IBRAHIM A
ART UNIT PAPER NUMBER
2692
MAIL DATE DELIVERY MODE
05/24/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOWARD LOCKER, DARYL CROMER, and
JOHN WELDON NICHOLSON1
Appeal 2018-008069
Application 13/854,610
Technology Center 2600
Before ST. JOHN COURTENAY III, LARRY J. HUME and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3 and 5-20, which are all the claims pending in this application.
Claim 4 is canceled. App. Br. 19, 29. We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the Real Party in Interest as Lenovo (Singapore) PTE.
LTD. App. Br. 3.
Appeal 2018-008069
Application 13/854,610
STATEMENT OF THE CASE
Introduction
Appellants' invention relates generally to "Intuitive Touch Gesture-
Based Data Transfer Between Devices." Spec., Title.
Illustrative Claim
1. A method comprising:
receiving, at a network device, data from a source device;
receiving, at the network device, a first identification of a user
from the source device;
wherein the data from the source device comprises data issued
in response to a detection of a three dimensional gesture
performed by the user at the source device and wherein the data
and the three dimensional gesture are associated with the user
based upon the first identification;
storing, at the network device, the data from the source device;
detecting, at the network device, a request from a destination
device, the request from the destination device comprising a
second identification of the user occurring at the destination
device and wherein the request is in response to detection of a
second three dimensional gesture performed by the user at the
destination device;
transferring, based upon the request and from the network
device to the destination device, the data from the source device
based upon the first identification of the user identifying the
user as the same user identified from the second identification
of the user.
(Emphasis added regarding contested dispositive "transferring" limitation).
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Application 13/854,610
Rejections
Rl. Claims 1-3, 5-9 and 12 are rejected under 35 U.S.C. § 103 as
being obvious over the combined teachings and suggestions of Mooring et
al. (US 8,260,883 B2, issued Sept. 4, 2012) ("Mooring"), Schrecker (US
2013/0268758 Al, published Oct. 10, 2013), Chin (US 2011/0187497 Al,
published Aug. 4, 2011), and Thomas et al. (US 2013/0169546 Al,
published July 4, 2013) ("Thomas"). Final Act. 3.
R2. Claims 10 and 11 are rejected under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of Mooring,
Schrecker, Chin, Thomas, and Motes et al. (US 2014/0115116 A 1, published
April 24, 2014) ("Motes"). Final Act. 15.
R3. Claims 13-16, and 20 are rejected under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of Mooring,
Schrecker, Chin, Thomas, and Patterson (US 2003/0182326 Al, published
Sept. 25, 2003). Final Act. 16.
R4. Claims 17-19 are rejected under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of Mooring,
Schrecker, Chin, Thomas, Patterson and Motes. Final Act. 28.
Summary
We have reviewed all of Appellants' arguments in the Briefs, the
Examiner's obviousness rejections, and the Examiner's responses to
Appellants' arguments. For the reasons discussed infra, Appellants have
proffered sufficient arguments and evidence to persuade us of error
regarding the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness for all claims 1-3 and 5-20 on appeal.
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Application 13/854,610
The Examiner's Findings
The Examiner finds Schrecker teaches the limitation "upon the first
identification of the user identifying the user as the same user identified
from the second identification of the user," as explained in the Final Action:
First of all the second identification can be the exact same as
the first identification because the same user can use their user
device at the second locations. This corresponds to Schrecker
where a user can use the same authentication token on a
different device. Para 0031, and Para 0056 the wireless token
device is for authentication and can be used on a receiving
device see fig. 3E. Also see para 0022 servers clients and
computing devices are operable to receive, transmit, process,
store, communicate, or manage data and information associated
with software system 100, see para 0023 user profiles
associated with the different devices para 0024 one user can use
one or multiple computers or multiple users can use one or
multiple computers. Para 0026 users may have a smart phone
for work, a different personal smart phone, a table computer for
person use etc., para 0027 managing data across multitude of
devices by synchronizing devices to some degree, para 0029
wireless token can be used to authenticate more than one
computing device, para 0042 _ authenticate user to sever by
token para 0043 authenticate authorized users. So, a user can
upload data to a server on their work smartphone then receive
the data from their home laptop or computer when they get
home and the way they authenticate is through the wireless
token).
Final Act. 4-5 ( emphasis omitted).
Appellants' Contentions
Appellants contend: "Schrecker does not teach a system that even
mentions 'based upon the first identification of the user identifying the user
as the same user identified from the second identification of the user.'
Claim 1 (emphasis added)." App. Br. 24.
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Appeal 2018-008069
Application 13/854,610
In support, Appellants contend:
In other words, the identification as claimed is not used for
authentication as taught by Schrecker. Rather, it is used to
identify the user to identify "any object(s) waiting for a drop
tied to that identification." Specification at [0032]. Applicant
respectfully submits that this is not taught by Schrecker, or any
of the other references.
App. Br. 24 ( emphasis omitted).
The Examiner's Answer
In response, the Examiner further explains the basis for the rejection:
Schrecker teaches a user can use the same authentication token
on a different device. Para 0031, and Para 0056 the wireless
token device is for authentication and can be used on a
receiving device see fig. 3E below. Also see para 0022 servers
clients and computing devices are operable to receive. transmit,
process, store, communicate, or manage data and information
associated with software system 100, see para 0023 user
profiles associated with the different devices para 0024 one user
can use one or multiple computers or multiple users can use one
or multiple computers. Para 0026 users may have a smart phone
for work, a different personal smart phone, a table computer for
person use etc., para 0027 managing data across multitude of
devices by synchronizing devices to some degree, para 0029
wireless token can be used to authenticate more than one
computing device. para 0042 authenticate user to sever by token
para 0043 authenticate authorized users. So, a user can upload
data to a server on their work smartphone then receive the data
from their home laptop or computer when they get home and
the way they authenticate is through the wireless token).
Ans. 4.
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Application 13/854,610
Appellants' Response in the Reply Brief
However, Appellants disagree and respond in the Reply Brief:
Schrecker does not link the first identification and the second
identification, specifically, Schrecker does not "based upon the
first identification of the user identifying the user as the same
user identified from the second identification of the user."
Claim 1 ( emphasis added). Rather, Schrecker teaches a system
that "authenticat[ es] a user on one or more computing devices
and/or particular data and programs accessible through the other
computing devices" using a wireless token device. Schrecker at
[0031]. In other words, Schrecker teaches a system for
authenticating a user.
Reply Br. 25 (underline in original omitted).
Appellants summarize and clarify their argument in the Reply Brief:
In other words, the identification as claimed is not used for
authentication as taught by Schrecker. Rather, it is used to
identify the user to identify "any object(s) waiting for a drop
tied to that identification." Specification at [0032]. Applicant
respectfully submits that this is not taught by Schrecker, or any
of the other references.
Reply Br. 26 ( emphasis omitted).
ANALYSIS
Rejection RI of claims 1-3, 5-9, and 12
Dispositive Issue on Appeal
Issue: Under 35 U.S.C. § 103, did the Examiner err by finding the
cited combination of references teaches or suggests the limitation:
transferring, based upon the request and from the network
device to the destination device, the data from the source device
based upon the first identification of the user identifying the
user as the same user identified from the second identification
of the user[,]
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Application 13/854,610
within the meaning of independent claim 1? 2 (Emphasis added). Claims
App'x 28; see also App. Br. 23-24.
Based upon our review of the record, we find the Examiner does not
explain in sufficient detail how the cited prior art combination teaches or
suggests the disputed limitation: "transferring ... the data from the source
device based upon the first identification of the user identifying the user as
the same user identified from the second identification of the user." Claim 1
( emphasis added).
In setting forth the rejection of claim 1, we find the Examiner paints
with a broad brush. Final Act. 5. On this record, we find the Examiner's
proffered mapping of the disputed claim limitation to the corresponding
specific features found in each of the cited references is imprecise, and thus
would require us to engage in some degree of speculation. 3
Although the Examiner finds Schrecker teaches "identifying the user
as the same user identified from the second identification of the user," we do
not see the Examiner's cited portions of Schrecker as teaching or suggesting
"the same user." Id. ( emphasis added).
Based upon our review of the record, we find a preponderance of the
evidence supports Appellants' contentions that "Schrecker does not link the
2 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
3 See 37 C.F.R. § l.104(c)(2) ("When a reference is complex or shows or
describes inventions other than that claimed by the applicant, the particular
part relied on must be designated as nearly as practicable. The pertinence of
each reference, if not apparent, must be clearly explained and each rejected
claim specified.") ( emphasis added).
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Application 13/854,610
first identification and the second identification." Reply. Br. 25. Rather,
"Schrecker teaches a system for authenticating a user." Id.
Because the Examiner has not fully developed the record to establish
how Schrecker, in combination with Mooring, Chin, and Thomas, teaches or
suggests the disputed limitation, we find speculation would be required to
affirm the Examiner on this record. We decline to engage in speculation.
"A rejection ... must rest on a factual basis." In re Warner, 379 F.2d 1011,
1017 (CCPA 1967). "The Patent Office has the initial duty of supplying the
factual basis for its rejection. It may not ... resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis." Id.
Therefore, based upon a preponderance of the evidence, Appellants
have persuaded us the Examiner erred in concluding that Appellants' claim 1
is obvious over the cited combination of Mooring, Schrecker, Chin, and
Thomas.
Accordingly, we reverse the Examiner's§ 103 rejection Rl of
independent claim 1. For the same reasons, we also reverse rejection Rl of
independent claim 6, which recites the disputed limitation using similar
language of commensurate scope. Because we have reversed the rejection
of all independent claims (1 and 6) rejected under rejection Rl, for the same
reasons, we reverse the Examiner's rejection of all dependent claims 2, 3, 5,
7-9, and 12, also rejected under Rejection Rl.
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Appeal 2018-008069
Application 13/854,610
Rejection R2 of claims 10 and 11
Regarding dependent claims 10 and 11, rejected under § 103
Rejection R2, the Examiner has cited one additional reference, Motes, in
addition to the same four base references cited as evidence in support of
Rejection Rl. On this record, we find the Examiner has not shown how
Motes overcomes the deficiencies of the Mooring, Schrecker, Chin, and
Thomas combination, as discussed above regarding Rejection Rl of
independent claims 1 and 6. Therefore, we are constrained on this record to
also reverse § 103 Rejection R2 of dependent claims 10 and 11.
Rejection R3 of claims 13-16 and 20
Regarding rejection R3, we note remaining independent claims 13 and
20 recite the disputed limitation using similar language of commensurate
scope. As per claims 13-16 and 20, rejected under § 10 3 Rejection R3, the
Examiner has cited one additional reference, Patterson, in addition to the
same four base references cited as evidence in support of Rejection Rl. On
this record, we find the Examiner has not shown how Patterson overcomes
the deficiencies of the Mooring, Schrecker, Chin, and Thomas combination,
as discussed above regarding Rejection Rl of independent claims 1 and 6.
Therefore, we are constrained on this record to also reverse§ 103 Rejection
R3 of claims 13-16 and 20.
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Appeal 2018-008069
Application 13/854,610
Rejection R4 of claims 17 and 19
Regarding the remaining dependent claims 17-19, rejected under
§ 103 Rejection R4, the Examiner has cited two additional references, Motes
and Patterson, in addition to the same four base references cited as evidence
in support of Rejection Rl. On this record, we find the Examiner has not
shown how Motes and Patterson overcome the deficiencies of the Mooring,
Schrecker, Chin, and Thomas combination, as discussed above regarding
Rejection Rl of independent claims 1 and 6. Therefore, we are constrained
on this record to also reverse§ 103 Rejection R4 of dependent claims 17-19.
CONCLUSION
The Examiner erred in rejecting claims 1-3 and 5-20 as being
obvious over the cited combinations of references under 35 U.S.C. § 103.
DECISION
We reverse the Examiner's decision rejecting claims 1-3 and 5-20
under 35 U.S.C. § 103.
REVERSED
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