Ex Parte Muhonen et al

Patent Trial and Appeal Board

Jun 27, 2013

10690656 (P.T.A.B. Jun. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte AHTI MUHONEN, ANTTI-PENTTI VAINIO, and
ARI HANNIKAINEN
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Appeal 2011-000646
Application 10/690,656
Technology Center 2400
____________________

Before: MARC S. HOFF, JEFFREY S. SMITH, and TREVOR M.
JEFFERSON, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE1
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-7, 9, and 11-39.2 Appellants cancelled claims 8 and 10. Br. 2, 10.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Introduction
The claims are directed to system and associated terminal, method and
computer program product for controlling storage of content. Claim 12,
reproduced below, is illustrative of the claimed subject matter:
12. An apparatus comprising a processor and a memory
storing executable instructions that in response to execution by
the processor cause the apparatus to at least perform the
following:
sending, to another apparatus located remote from the
apparatus, a status of at least one piece of content stored in
memory of the apparatus, each piece of content being
associated with parameters including a client expiration time
and a deletion priority value; and
receiving one or more instructions from the other
apparatus based upon the status and the associated parameters,
including the client expiration time and deletion priority value,
to at least partially control storage of the at least one piece of
content in memory of the apparatus.

Rejections
The Examiner made the following rejections:

1 Throughout the decision, we refer to the Appellants’ Appeal Brief (“Br.,”
filed Apr. 21, 2010) and the Examiner’s Answer (“Ans.,” mailed Jul. 7,
2010).
2 The Real Party in Interest is Nokia Corporation.
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Claims 1, 6, 7, 9, 11-13, 17-20, 24-29, 34-39 stand rejected under 35
U.S.C. §103(a) as being unpatentable over Pecus (US 7,130,908 B1, Oct. 31,
2006, filed Sep. 21, 2001) and Deo (US 6,157,982, Dec. 5, 2000). Ans. 4-9.
Claims 2-5, 14-16, 21-23 and 30-33 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Pecus, Deo and Jerding (US
2005/0172326 A1,Aug. 4, 2005, filed Mar. 28, 2005). Ans. 9-13.

OPINION
Independent Claim 12
Appellants contend that Pecus and Deo “do[] not explicitly or
inherently . . . . disclose an apparatus caused to direct transmission of a
status of stored content to a remote apparatus, and receive instructions from
the remote apparatus based upon the status and parameters associated with
the content including a client expiration time and deletion priority value” as
recited in independent claim 12. Br. 11 (emphasis omitted).
We are not persuaded by Appellants’ bare contention that the cited
references do not teach the recited claim limitation. See 37 C.F.R.
§ 41.37(c)(1)(vii) (requiring more substantive arguments in an appeal brief
than a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art); In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011). In any event, Appellants have not
rebutted the Examiner’s findings that Pecus and Deo teach or suggest the
limitations of claim 12. See Ans. 4-6.
Appellants also contend that the Examiner erred in combining Deo
and Pecus because the Examiner’s stated rationale for the combination is not
supported by the Pecus disclosure. Br. 12-13. Specifically, Appellants
argue that “Pecus does not teach or suggest the type of processing- limited
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device to which Deo is directed, and therefore does not lend itself to the
alleged motivation for modifying Pecus per Deo.” Br. 13. Thus, Appellants
assert, “the disclosure of Pecus in general clearly runs contrary to any
suggestion that a reduction in the processing burden on its edge node is a
concern that would lead one to modify the EN per Deo.” Br. 13.
We are not persuaded that the Examiner erred in combining the
references. As the Examiner noted, it is not necessary to bodily incorporate
Deo into Pecus such that Pecus must have a processor-limited device. In re
Keller, 642 F.2d 413, 426 (CCPA 1981) (stating further that “[t]he test of
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference”). The test
for obviousness is what the combined teachings of the references would
have suggested to those of ordinary skill in the art. Id. at 425. Here, we
agree with the Examiner that Deo discloses shifting the processing burden of
a terminal to a networked computer. Ans. 14 (citing Deo, col. 2, l. 65 – col.
4, l. 4). Thus, Deo is not limited to processing-limited devices as Appellants
assert. In sum, we find that the Examiner has provided a reasonable
rationale for the combination of Deo and Pecus, namely that it would have
been obvious to modify memory management method of Pecus with the
method of Deo (Ans.14-15). See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (stating that “there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness”).
We are also not persuaded with Appellants’ argument that Deo’s
solution “leads away” from the combination because Deo’s memory
mapping is different than the network operation center (NOC) control taught
in Pecus. Br. 13-14. The test for obviousness is what the combined
teachings of the references would have suggested to those of ordinary skill
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in the art. In re Keller, 642 F.2d at 425. Here, we agree with the
Examiner’s findings that it would have been obvious for a person of
ordinary skill in the art to modify Pecus using the memory management
methods in Deo. Ans. 16-17. We also find that Deo does not teach away
from the combination with Pecus, as it does not discourage or discredit
applying the methods of Deo in the system of Pecus. See Ricoh Co., Ltd. v.
Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008); In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004).
Based on the foregoing the Examiner did not err in combining Pecus
and Deo and finding that the references disclosed the “sending” and
“receiving” limitations of claim 12. Appellants argue independent claim 12
as representative of dependent claims 13-18 and independent claims 1, 19,
29 and 39 (and by dependency claims 2-7, 9, 11, 20-28 and 30-38) that recite
limitations similar to claim 12. Br. 15. Accordingly, we sustain the
Examiner’s rejection of independent claims 1, 12, 19, 29 and 39 and
dependent claims 2-7, 9, 11, 13-18, 20-28 and 30-38 under 35 U.S.C §103(a)
with respect to arguments presented for independent claim 12.

Dependent claims 7, 25 and 35
With respect to dependent claims 7, 25, and 35, Appellants argue that
Pecus and Deo do not teach or suggest “a server expiration time according to
which content may be deleted from a network entity or apparatus (separate
from the terminal with content associated with a client expiration time
according to which locally-stored content may be deleted).” Br. 15.
Appellants argue that Pecus does not teach that its NOC monitors an
expiration time (a server expiration time) of its locally-stored content and
deletes content having so expired. Br. 15. Pecus only teaches, Appellants
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contend, deleting locally-stored content based on a single expiration time
(the client expiration time). Accordingly, Appellants argue that Pecus fails
to teach or suggest both a client expiration time and server expiration time.
Id.
We are not persuaded by Appellants’ arguments. We agree with the
Examiner that Pecus teaches or suggests that expiration times may be
relative to system or network clocks which correspond to server expiration
times. Ans. 17 (citing Pecus, col. 17, ll. 15-28). As the Examiner found, a
“server” is not explicitly specified as a structure in Appellants’ claims. Ans.
17-18. Thus, broadly interpreting the claimed “server expiration time,” the
network and system clock references in Pecus teach the claim limitation.
See Ans. 17-18.
Based on the foregoing, the Examiner did not err in finding that Pecus
and Deo teach or suggest “a server expiration time according to which
content may be deleted from a network entity or apparatus (separate from
the terminal with content associated with a client expiration time according
to which locally-stored content may be deleted).” We therefore sustain the
Examiner’s rejection of dependent claims 7, 25, and 35 under 35 U.S.C
§103(a).

Dependent Claims 3, 4, 14, 15, 21, 22, 31 and 32
With respect to dependent claims 3, 4, 14, 15, 21, 22, 31 and 32,
Appellants contend that Pecus fails to teach or suggest “determining content
having an exceeded client expiration time, and from that content, identifying
content having the highest deletion priority value (thereby identifying
content that is both expired and has the highest deletion priority value).” Br.
17. Appellants argue that Pecus teaches that the expiration time and forced
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deletion flags are separate and distinct in deciding whether to delete content.
Id. Pecus also fails to teach or suggest a comparison between the flags for
the pieces of content akin to the claimed deletion priority values of claims 3,
4, 14, 15, 21, 22, 31 and 23.
Appellants’ arguments are not persuasive, as we agree with the
Examiner that Pecus teaches or suggests identifying expired files, checking
if the deletion flags are set (including the flags for expired files), and
sending commands to manage or delete them. Ans. 18 (citing Pecus, col. 17,
ll. 15-28). Where a deletion flag is present for particular content, we also
find that Pecus teaches deletion priority where “true” flagged content have
higher priority than “false” flagged content. Pecus, col. 17, ll. 15-28; Ans.
18. We find that Pecus teaches checking files marked for deletion to
determine if they should be deleted. Id.
We conclude that the Examiner did not err in finding that the cited
references teach or suggest “determining content having an exceeded client
expiration time, and from that content, identifying content having the highest
deletion priority value (thereby identifying content that is both expired and
has the highest deletion priority value)” as recited in claims 3, 4, 14, 15, 21,
22, 31 and 32. Thus, we sustain the Examiners rejection of claims 3, 4, 14,
15, 21, 22, 31 and 32 under 35 U.S.C §103(a).

Dependent Claims 5, 16, 23 and 33
Appellants argue that Pecus, Deo and Jerding fail to teach or suggest
“sending or receiving instruction(s) to delete content having an exceeded
client expiration time, and from any remaining content, delete content
having the highest deletion priority value” as recited in claims 4, 15, 22 and
32. Br. 18. Appellants argue that Pecus’s disclosure deletes content marked
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for deletion and then expired content. Id. Instead, Appellants’ claims are
directed to first deleting expired content and then deleting content with the
highest deletion priority value. Id.
We disagree with Appellants’ arguments for error. The Examiner
found and we agree that when the terminals do not have sufficient storage
capacity, after the expired content is deleted, then forced deletion occurs for
files marked for deletion. Ans. 19-20 (citing Pecus, col. 17, ll. 15-24). As
discussed above, Pecus follows a deletion priority. See Pecus, col. 17, ll. 15-
28. Appellants have failed to persuasively rebut the Examiner’s finding that
that in the case “when there are no expired files or they have all been
deleted, clearly those with the highest deletion priority…will be deleted.”
Ans. 20. Thus, we find that the Examiner did not err in finding that Pecus,
Deo and Jerding teach or suggest “sending or receiving instruction(s) to
delete content having an exceeded client expiration time, and from any
remaining content, delete content having the highest deletion priority value.”
We sustain the Examiner’s rejection of claims 5, 16, 23, and 33 under 35
U.S.C §103(a).
DECISION
For the above reasons, the Examiner’s rejection of claims 1-7, 9 and
11-39 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)(1)(iv).

AFFIRMED
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