13447839 (P.T.A.B. Jan. 22, 2018)

Ex Parte Moganti et al

Patent Trial and Appeal BoardJan 22, 2018

13447839 (P.T.A.B. Jan. 22, 2018)

United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/447,839 04/16/2012 MADHAV MOGANTI 811702-US-NP 8061 46363 7590 01/24/2018 Tong, Rea, Bentley & Kim, LLC ALCATEL-LUCENT USA INC. 12 Christopher Way Suite 105 Eatontown, NJ 07724 EXAMINER NGUYEN, THU N ART UNIT PAPER NUMBER 2154 NOTIFICATION DATE DELIVERY MODE 01/24/2018 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): docketing @ trbklaw .com ipsnarocp @ nokia. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MADHAV MOGANTI, MAYURESH PANDIT, and ANISH SANKALIA Appeal 2017-004267 Application 13/447,839 Technology Center 2100 Before ALLEN MacDONALD, MICHAEL J. ENGLE, and AARON W. MOORE, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-004267 Application 13/447,839 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1—5 and 7—23. Claim 6 has been cancelled. App. Br. 26. We have jurisdiction under 35 U.S.C. § 6(b).1 Representative Claim Representative claim 15 under appeal reads as follows (emphasis, formatting, and bracketed material added): 15. An apparatus, comprising: a processor and a memory communicatively connected to the processor, the processor configured to: [A.] receive, from a core data porting engine, a template configured for use in configuring a data porting agent to control porting of personal data of a user from one or more environments storing personal data of the user to a personal data store of the user; and [B.] propagate information entered via the template toward the core data porting engine for use by the core data porting engine to configure the data porting agent to control porting of personal data of the user from the one or more environments storing personal data of the user to the personal data store of the user, wherein the data porting agent is configured to be executed, by the core data porting engine, for initiating porting of personal data of the user from the one or more environments storing the personal data of the user to the personal data store of the user. 1 We note independent claims 1 and 14 each contain a minor error. Unlike correctly written independent claims 15 and 23, in claims 1 and 14, the first introduction of “the personal data store” is without antecedent basis. 2 Appeal 2017-004267 Application 13/447,839 Rejections on Appeal The Examiner rejected claims 15—18 and 21—23 under 35 U.S.C. § 102(b) as being anticipated by Pollard (US 2010/0186066 Al; pub. July 22, 2010).2 The Examiner rejected claims 1—5, 7—14, 19, and 20 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Pollard and Selim (US 2011/0225000 Al; pub. Sept. 15, 2011).3 Issues on Appeal Did the Examiner err in rejecting claim 15 as being anticipated because Pollard fails to disclose the argued limitations? Did the Examiner err in rejecting claim 1 as being unpatentable under 35 U.S.C. § 103(a) because Pollard fails to disclose the argued limitations? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments (Appeal Brief and Reply Brief) that the Examiner has erred. The Examiner finds paragraphs 53, 58, and 66 of Pollard disclose step B of claim 15. Final Act. 4. 2 Separate patentability is not argued for claims 16—18 and 21—23. Except for our ultimate decision, the rejection of these claims is not discussed further herein. 3 As to this rejection, Appellants repeat the arguments presented for the rejection of claim 15. Therefore, our decision as to the rejection of independent claim 15 is determinative as to these claims. Except for our ultimate decision, the rejection of these claims is not discussed further herein. 3 Appeal 2017-004267 Application 13/447,839 Appellants contend4 that the Examiner erred in rejecting claim 15 under 35 U.S.C. § 102(b) because [t]he cited portion of Pollard is devoid of any teaching or suggestion that the communication network 350 of Pollard provides the [step B] functions of the “core data porting engine” of Appellants’ claim 15. App Br. 15. The Examiner responds by finding newly cited paragraphs 25, 44, and 45 Pollard disclose step B of claim 15. Ans. 2—3. The Examiner quotes from these paragraphs and finds [t]he claim language describes propagating] information and executing] data. Pollard discloses creating/updating personal data through a data control and execute the data to other subscribers which is the same/equivalent with the claim limitation. Therefore, Pollard discloses this limitation. Ans. 3. Appellants then assert the cited portions of Pollard merely disclose that the user may use the personal data update user interface to update the personal data items themselves, not to update a data porting agent that is configured to control porting of personal data of the user. Reply Br. 2 (emphasis omitted). As to Appellants’ above arguments, we agree with Appellants that Pollard does not explicitly describe the step B limitations in claim 15, e.g., a data porting agent. Nor has the Examiner provided an explanation of why Pollard otherwise describes the limitations. Merely achieving an “equivalent” end result is not the same as having a processor configured to 4 This contention is determinative as to the rejection of claim 15. Therefore, Appellants’ other contentions are not discussed herein. 4 Appeal 2017-004267 Application 13/447,839 perform the recited step. See In re Cox, 342 F.2d 1017, 1019 (CCPA 1965) (“While it is true that both methods accomplish the same ultimate result, and may possibly utilize the same apparatus, the paths by which the goal is reached are conceptually very different,” and therefore “appellant’s method would not have been obvious.”). Therefore, we conclude that there is insufficient support for a finding that claim 15 was anticipated at the time of Appellants’ invention. CONCLUSIONS (1) Appellants have established that the Examiner erred in rejecting claims 15—18 and 21—23 as being anticipated under 35 U.S.C. § 102(b). (2) Appellants have established that the Examiner erred in rejecting claims 1—5, 7—14, 19, and 20 as being unpatentable under 35 U.S.C. § 103(a). (3) On this record, claims 1—5 and 7—23 have not been shown to be unpatentable. DECISION The Examiner’s rejections of claims 1—5 and 7—23 are reversed. REVERSED 5