Ex Parte Meisenheimer et al

Patent Trial and Appeal Board

Dec 21, 2015

12951953 (P.T.A.B. Dec. 21, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/951,953 11/22/2010
75322 7590 12/23/2015
BlackBerry Limited (Fitch Even)
Patent Team
2200 University A venue East
Waterloo, ON N2K OA 7
CANADA
FIRST NAMED INVENTOR
David Norman Richard Meisenheimer
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.
9169-102492-us 1681
EXAMINER
ROBINSON, GRETA LEE
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
12/23/2015 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):
portfolioprosecution@blackberry.com
ptoboca@fggbb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID NORMAN RICHARD, MICHAEL GORDON
WASHBURN, JORDAN DOUGLAS BARNES, and
EDWARD ERIC THOMAS
Appeal 2014-002416
Application 12/951,95 3
Technology Center 2100
Before JEFFREYS. SMITH, HUNG H. BUI, and AMBER L. HAGY,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 23-34. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM. 2
1 According to Appellants, the Real Party in Interest is Research In Motion
Limited. App. Br. 3.
2 Our Decision refers to Appellants' Appeal Brief filed August 19, 2013
("App. Br."); Reply Brief filed October 15, 2013 ("Reply Br."); Examiner's
Answer mailed September 12, 2013 ("Ans."); and original Specification
filed November 22, 2010 ("Spec.").
Appeal2014-002416
Application 12/951,953
STATEMENT OF THE CASE
Appellants 'Invention
Appellants' invention relates to a media syncing application
(software) to sync a mobile device with selected media items on a personal
computer (PC). Spec. i-fi-12, 19, 22-23, Fig. 1, Abstract.
Illustrative Claim
Claims 1, 10, and 18 are independent. Claim 1 is illustrative of
Appellants' invention and is reproduced below with disputed limitations in
italics:
1. A method comprising:
receiving one or more databases on a computing device
from a mobile electronic device, the one or more databases
comprising a key file and a data file, wherein the data file
comprises picture data and the key file comprises an index to
the picture data;
generating a synchronization set on the computing
device, wherein the synchronization set comprises one or more
picture files to be stored on the mobile electronic device;
transforming the one or more databases to one or more
updated databases, wherein transforming comprises updating
the key file to index pictures included in the synchronization set
and updating the data file to include thumbnails of the pictures
included in the synchronization set; and
transmitting the one or more updated databases to the
mobile electronic device.
App. Br. 13 (Claims App.).
Silverman
Heller
Bacastow
Evidence Considered
US 2006/0224620 Al
US 2007/0271312 Al
US 2008/0243959 Al
2
Oct. 5, 2006
Nov. 22, 2007
Oct. 2, 2008
Appeal2014-002416
Application 12/951,953
Examiner's Rejection
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Silverman, Heller, and Bacastow. Ans. 2---6.
Issue on Appeal
Based on Appellants' arguments, the dispositive issue on appeal is
whether the Examiner's combination of Silverman, Heller, and Bacastow
teaches or suggests the disputed limitation: "transmitting the one or more
updated databases to the mobile electronic device" as recited in Appellants'
independent claim 1 and similarly recited in claims 10 and 18. App. Br. 9-
11; Reply Br. 2--4.
ANALYSIS
In rejecting independent claim 1 and similarly, claims 10 and 18, the
Examiner finds Silverman discloses a method and system [with a
synchronization engine] to sync a mobile device with selected media items
on a personal computer including the disputed limitation: "transmitting the
one or more updated databases to the mobile electronic device." Ans. 4--5
(citing Silverman i-fi-f 11, 21, 31-35, 53, 57, Fig. 1). The Examiner also
finds: (1) Heller teaches synchronization of grouped collections (i.e.,
synchronization sets) including media files such as thumbnails, and
(2) Bacastow teaches synchronization of specific media files as including a
"data file" (picture data) and a "key file" (an index to the picture data) in
order to support the conclusion of obviousness. Id. at 5 (citing Heller i169;
Bacastow i-f 110).
3
Appeal2014-002416
Application 12/951,953
Appellants do not dispute the Examiner's factual findings regarding
Heller and Bacastow. Nor do Appellants challenge the Examiner's rationale
for combining the references. Instead, Appellants argue Silverman "seeks to
avoid re-sending content and therefore strives to update a database on a
given device by only sending updates to a database as versus the updated
database itself" App. Br. 9--10. To support this argument, Appellants cites
paragraph 57 of Silverman to disclose synchronization of metadata for a file
"as part of a sync without actually resending the file." Id. at 10.
We do not find Appellants' argument persuasive. As correctly
recognized by the Examiner,
"Silverman teaches at paragraph 0011 'managing transfer of
media files from source database to a portable device' through a
synchronization engine. The synchronization process makes
sure all devices or databases are synchronized. Silverman
teaches that thefzle metadata includes (e.g. music/artist and
albums) and the ability to transfer files to the appropriate
folders, see paragraph 0041 (i.e. the metadata includes photos,
the photo album, or pictures)."
Ans. 13 (citing Silverman i-fi-f 11 and 41).
According to Silverman, the transfer of selected "media files" from a
personal computer to a mobile device is based on a set of user-defined rules
(user-defined playlists). Silverman i-f 11. The media items can include, but
not limited to: "music, image, video, text documents, hypertext document,
documents of any format, applications, spreadsheets, graphics, playlists, and
data" and may include "a collection of other items." Silverman i-fi-12, 77. In
other words, media files selected to be transferred (synchronized) between
the mobile device and the personal computer can be any media items
including, for example, a collection of media files, as described in
4
Appeal2014-002416
Application 12/951,953
paragraphs 5, 23-28 of Silverman, or alternatively, only "individual
metadata updates without re-sending the content" as described in paragraphs
52 and 57 of Silverman. Silverman's disclosure is consistent with
Appellants' Specification describing the transfer of selected media items
between a mobile device and a personal computer. Spec. i-fi-122--45.
Moreover, the difference between "updates to a database" and
"updated database" as advocated by Appellants is not a patentable
distinction. Even assuming that Silverman does not expressly teach
"transmitting the one or more updated databases to the mobile electronic
device," such a difference would not have been "uniquely challenging or
difficult for one of ordinary skill in the art" or "represented an unobvious
step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citingKSRint'l Co. v. Teleflex Inc., 550
U.S. 398, 418-19 (2007) ).
For the reasons set forth above, we sustain the Examiner's
obviousness rejection of independent claims 1, 10, and 18 and their
respective dependent claims 2-9, 11-17, and 19-20, which Appellants do
not argue separately.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1-20 under 35 U.S.C.
§ 103(a).
DECISION
As such, we AFFIRM the Examiner's final rejection of claims 1-20.
5
Appeal2014-002416
Application 12/951,953
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
dw
6