Ex Parte Lorenz et al

Patent Trial and Appeal Board

Feb 23, 2016

12271856 (P.T.A.B. Feb. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/271,856 11115/2008
121363 7590 02/25/2016
Shook, Hardy & Bacon L.L.P.
(Adobe Systems Incorporated)
Intellectual Property Department
2555 Grand Blvd
Kansas City, MO 64108
FIRST NAMED INVENTOR
Jon Lorenz
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.
2055.198US1 5121
EXAMINER
LO,WEILUN
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
02/25/2016 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
kspringer@shb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN LORENZ and GEYER TULLEY
Appeal2014-004083
Application 12/271,856
Technology Center 2100
Before JASON V. MORGAN, JOSEPH P. LENTIVECH, and
JOHN R. KENNY, Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the final
rejection of claims 1-15, 18-32, and 36, which constitute all claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
Appellants' disclosed invention "relates generally to the technical
field of algorithms and programming .... " (Spec. i-f 2.) Claim 1, which is
representative, reads as follows:
Appeal2014-004083
Application 12/271,856
1. A computer-implemented method comprising:
receiving selection input to select content to be
presented by a first application executing at a first
device and a second application executing at a
second device, the first and second devices
participating in and in communication with one
another over a common network-based session
having a unique identifier;
selecting at least a first presentation option from a
plurality of presentation options of the first and
second applications for a presentation of the
content, the selecting of the at least the first
presentation option being based upon both a
content type of the content and a presentation
attribute, the presentation options including at least
one of viewing, playing, listening, and executing;
detecting a mismatch in presentation
functionalities of the applications executing
on the first and second devices based on the first
application having less functionality to process the
content than functionality of the second
application; and
retrieving a software module for the first device
based, at least in part, on the mismatch as detected
to bring parity to the presentation functionalities of
the first and second applications executing on the
first and second devices.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
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Appeal2014-004083
Application 12/271,856
Chen (et al.)
Spataro (et al.)
Sidon et al.
Skinner (et al.)
US 2005/0102660 Al May 12, 2005
US 2006/0053196 Al Mar. 9, 2006
US 2008/0092051 Al Apr. 17, 2008
US 2010/0070901 Al Mar. 18, 2010
Filed Sept. 16, 2008
Jamie Oberdick, Best Uses for LionShare, Penn State's Peer-to-Peer
Academic Collaboration Tool (2006),archived version available at
https://web.archive.org/web/201006 l 7065624/http://www.psu.edu/
dept/itscss/news/nlfa06/lionshare.html (last visited Feb. 19, 2016)
("Oberdick"). (A copy of Oberdick was placed in the image file
wrapper on March 15, 2013.)
REJECTIONS APPEALED
Claims 1--4, 8, 9, 11-15, 18-21, 25, 26, 28-32, and 36 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Spataro, Skinner, and
Chen. (Final Act. 2.)
Claims 5-7 and 22-24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Spataro, Skinner, Chen, and Sidon. (Final Act. 8.)
Claims 10 and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Spataro, Skinner, Chen, and Oberdick. (Final Act. 9.)
ISSUES
Appellants argue that Spataro, Skinner, and Chen do not teach or
suggest the limitation recited in claim 1 of "detecting a mismatch in
presentation functionalities of the applications executing on the first and
second devices based on the first application having less functionality to
process the content than functionality of the second application." (App. Br.
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Appeal2014-004083
Application 12/271,856
14.) Appellants also argue that the Examiner fails to present articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness of claim 1. (Id.)
ANALYSIS
Claims 1--4, 8, 9, 11-15, 18-21, 25, 26, 28-32, and 36
The Examiner finds that the combination of Spataro, Skinner, and
Chen suggests the limitation-at-issue in claim 1. In particular, the Examiner
finds that: Chen detects a mismatch between two applications to update one
of the applications (Ans. 14); Skinner teaches detecting that a viewing
application has less presentation capabilities than required to present a file
and updating the viewing application based on that determination (Ans. 12);
and Spataro teaches having two users on two computers share a document
and escalating their shared space based on the characteristics of the shared
document. (Ans. 3--4, 12). The Examiner finds that these teachings
collectively suggest the limitation-at-issue. (Ans. 3-14.)
Appellants argue that none of those references teach or suggest the
limitation-at-issue. (App. Br. 14.) Appellants reiterate the Examiner's
finding that neither Spataro nor Skinner detects a mismatch of presentation
functionalities of applications operating on two devices. (App. Br. 10, 11.)
Appellants argue that the reference that the Examiner relies on for detecting
a mismatch, Chen, does not teach or suggest the limitation-at-issue because
Chen merely detects whether the software image on one device is the same
as on another device. (App. Br. 12.) Appellants also argue that the
limitation-at-issue requires detecting a difference in functionality between
two executing applications, whereas Chen compares an image of an
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Appeal2014-004083
Application 12/271,856
application on a device to an image of an application on another device in a
repository. (Reply Br. 3.) Further, Appellants suggest that the application in
the repository may not be executing. (Id.)
Appellants' arguments concern whether the individual references
teach or suggest the limitation-at-issue, an issue that is not relevant when the
Examiner relies on a combination of references. In re Mouttet, 686 F .3d
1322, 1332-33 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 413, 425-26
( CCP A 19 81)). Here, the Examiner relies on Skinner (rather than Chen) as
teaching or suggesting executing applications on two devices (Ans. 3--4), a
finding Appellants do not persuasively challenge. Similarly, the Examiner
finds that Skinner teaches or suggests examining the functional capabilities
of an application, a finding that Appellants also do not persuasively
challenge. (Ans. 5.) Because Appellants' arguments do not address the
combined teachings of the references, Appellants have not persuaded us that
the Examiner erred in finding that the combination of references suggests the
limitation-at-issue.
Appellants also argue that the Examiner fails to present an articulated
reason for combining Chen with Spataro and Skinner. (App. Br. 13.) We
disagree. The Examiner finds that Spataro and Skinner combine to teach or
suggest: (i) detecting that a software application needs to be updated to
present a file and (ii) providing capabilities to update the application. (Ans.
6-7.) Further, the Examiner finds that Spataro and Skinner are silent on how
to detect that a software application needs to be updated, but that Chen
teaches a way to determine whether to update software. (Id.) Appellants
have not persuaded us that the Examiner fails to set forth an adequate
rational for combining these references. (Ans. 3-7.)
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Appeal2014-004083
Application 12/271,856
Accordingly, we sustain the rejection of claim 1 and of claims 2--4, 8-
9, 11-15, 18-21, 25, 26, 28-32, and 36, not separately argued. (App. Br.
14.)
Claims 5-7 and 22-24
Appellants argue that the Examiner made the same errors with respect
to claims 5-7 and 22-24 as with claims 1 and 18. (App. Br. 15.) Therefore,
we sustain the Examiner's rejection of claims 5-7 and 22-24 for the same
reasons as for claims 1 and 18.
Claims 10 and 2 7
Appellants argue that the Examiner made the same errors with respect
to claims 10 and 27 as with claims 1 and 18. (App. Br. 15.) Therefore, we
sustain the Examiner's rejection of claims 10 and 27 for the same reasons as
for claims 1 and 18.
DECISION
The decision of the Examiner to reject claims of claims 1-15, 18-32,
and 3 6 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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