Ex Parte Myllyla et al

Patent Trial and Appeal Board

Apr 29, 2013

11604343 (P.T.A.B. Apr. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOMI MYLLYLA, JUKKA-PEKKA SALMENKAITA,
and TAPIO TALLGREN
____________

Appeal 2010-012470
Application 11/604,343
Technology Center 2100
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 13-17, 19-29, 31, 33-36, 38-46, 61, 63, 64, 66, 67, and 69. Claims 1-
12, 18, 30, 32, 37, 47-60, 62, 65, and 68 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

STATEMENT OF THE CASE
Appellants’ invention “relates to terminal devices. In particular, the
present invention relates to a novel and improved method, system, computer
programs, mobile terminal and storage system for synchronization of media
items stored in the mobile terminal and the storage system.” (Spec. 1).
Independent claim 13, reproduced below, is representative of the subject
matter on appeal:
13. A computer-readable storage medium encoded
with instructions that, when executed on a computer perform a
process, the process comprising:

storing at least one media item and metadata related to
the at least one media item, wherein the metadata of each media
item comprises at least one of a cell identifier, a name assigned
to the cell identifier, a location area code, and a name assigned
to the location area code related to the media item;

querying the metadata related to the at least one media
item; and

transmitting the queried metadata to a remote apparatus
to synchronize at least one media item in the remote apparatus
based on the queried metadata.

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REJECTIONS
1. The Examiner rejected claims 13-17, 31, 34, 35, and 64 under 35
U.S.C. § 103(a) based upon the combined teachings and suggestions
of Apfel (US 2005/0027716 A1) in view of Kahn (US 2004/0004737
A1).
2. The Examiner rejected claims 33, 61, and 66 under 35 U.S.C. § 103(a)
based upon the combined teachings and suggestions of Apfel in view
of Kahn and further in view of DeKoning (US 6,480,970 B1).
3. The Examiner rejected claims 19-24, 27-29, 36, 38-41, 44-46, 63, 67,
and 69 under 35 U.S.C. § 103(a) based upon the combined teachings
and suggestions of Apfel, in view of Kahn, Goodman (US
2002/0147728 A1), and DeKoning.
4. The Examiner rejected claims 25, 26, 42, and 33 under 35 U.S.C.
§ 103(a) based upon the combined teachings and suggestions of
Apfel, in view of Kahn, Goodman, DeKoning, and Breckner (US
2004/0215643 A1).

ANALYSIS
We disagree with Appellants’ contentions regarding the Examiner’s
obviousness rejections of the claims. Regarding these rejections, we adopt
as our own: (1) the findings and reasons set forth by the Examiner in the
action from which this appeal is taken, and (2), the reasons set forth by the
Examiner in the Answer in response to arguments made in Appellants’
Appeal Brief. (Ans. 16-23). We highlight and address specific findings and
arguments below:

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Independent Claim 13 (first-stated rejection)
Issue: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested:
storing at least one media item and metadata related to
the at least one media item, wherein the metadata of each media
item comprises at least one of a cell identifier, a name assigned
to the cell identifier, a location area code, and a name assigned
to the location area code related to the media item;

querying the metadata related to the at least one media
item; and

transmitting the queried metadata to a remote apparatus
to synchronize at least one media item in the remote apparatus
based on the queried metadata,
within the meaning of representative claim 13?
Regarding the rejection of representative claim 13, Appellants
contend:
Apfel discloses that the mobile phone stores one or more
contacts and metadata information related to the one or more
contacts, communicates the one or more contacts to the data
service provider, so that the data service provider can
synchronize the one or more contacts and metadata transmitted
from the mobile phone with new information, however, Apfel
fails to disclose that the mobile phone further “queries the
metadata related to the at least one media item” prior to
transmitting the one or more contacts and metadata information
to the data service provider.
(App. Br. 16).
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Appellants are arguing the references separately.1 Although
Appellants additionally contend that “Kahn fails to cure the deficiencies of
Apfel” (App. Br. 17), Appellants do not specifically rebut the Examiner’s
finding that Kahn’s teaching of metadata comprising location information
and user identity information (Kahn, ¶¶[0059], [0064]-[0065], [0093]), when
combined with the synchronization of contact lists between a mobile phone
and data service provider (Apfel, ¶¶ [0012]-[0013], [0044]), would have
taught or suggested the step of querying the metadata related to at least one
media item prior to the step of transmitting (Ans. 4).
Appellants further contend:
The data service provider fails to disclose the step of
“transmitting the queried metadata to a remote apparatus to
synchronize at least one media item in the remote apparatus
based on the queried metadata,” as recited in claim l3.
Therefore, neither the mobile phone nor the data service
provider disclosed in Apfel, taken as individual elements,
provides a computer readable storage medium is encoded with
instructions to execute a process including the steps of storing,
querying, and transmitting, as defined in the features recited in
claim 13.
(App. Br. 16-17).
We find the claimed medium is suggested by the respective memory
storage elements on Apfel’s mobile phone and the data service provider, as
well as the memory components of Kahn (e.g., Fig. 4, camera memory 430
and image servers 450). See also Apfel’s claim 14, directed to a “computer
program product” (Apfel, page 8). Moreover, we observe that Appellants’

1 One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted).
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claim 13 does not recite who or what performs the steps of the process.
Apfel teaches synchronizing contact information between a mobile phone
and a data service provider (¶[0012]), which we find, when combined with
the metadata of Kahn, would have taught or suggested the disputed step of
“transmitting the queried metadata to a remote apparatus to synchronize at
least one media item in the remote apparatus based on the queried
metadata.” (Claim 13). As previously discussed, Kahn teaches metadata
that includes location information (¶¶[0064-65], [0093]). Therefore, on this
record, we are not persuaded of error regarding the Examiner’s underlying
factual findings and ultimate legal conclusion of obviousness regarding
independent claim 13. See Examiner’s “Response to Arguments” (Ans. 17-
19).

Claims 14-17, 31, 34, 35, and 64 (first-stated rejection)
Regarding claims 14-17, 31, 34, 35, and 64, Appellants present
nominal separate arguments that follow the general pattern of: (1) reciting
the disputed claim limitation(s), and, (2) repeating “[b]ecause the
combination of Apfel and Kahn fails to disclose or suggest, at least, a
computer readable storage medium encoded with instructions that, when
executed on a computer perform a process including the steps of storing,
querying, and transmitting, as recited in [the base] claim [], the combination
of Apfel and Kahn also fails to disclose or suggest the additional limitations
recited in [this] dependent claim [].” (See e.g., App. Br. 18-19).
Because we found Appellants’ contentions unpersuasive for base
claim 13, on this record, we are not persuaded of Examiner’s error.
Moreover, Appellants have failed to present substantive arguments
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traversing the specific factual findings made by the Examiner regarding the
associated dependent claims (see Ans. 5-7). “A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.” See 37 C.F.R. § 41.37(c)(1)(iv).
For these reasons, on this record, we are not persuaded of Examiner
error regarding claims 14-17, 31, 34, 35, and 64.

Dependent claims 33, 61, and 66 (second-stated rejection)
Representative dependent claim 33 recites “[t]he apparatus according
to claim 31, wherein the memory and the computer program code are further
configured to, with the processor, cause the apparatus at least to send a
media item request to the remote apparatus in case the metadata indicates a
different content checksum.”
Appellants contend the Examiner has relied on impermissible
hindsight (App. Br. 24).
Issue: Under § 103, did the Examiner err in combining the
references?
The Supreme Court guides that the conclusion of obviousness can be
based on the interrelated teachings of multiple patents and the background
knowledge possessed by a person having ordinary skill in the art and that an
obviousness “analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
While we are fully aware that hindsight bias often plagues determinations of
obviousness, Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 36
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(1966), we are also mindful that the Supreme Court has clearly stated the
“combination of familiar elements according to known methods is likely to
be obvious when it does no more than yield predictable results.” KSR, 550
U.S. at 401.
On this record, we find unavailing Appellants’ contention that the
Examiner has relied on impermissible hindsight reconstruction (App. Br. 24)
because we find the Examiner’s proffered combination of Apfel and Kahn
with Dekoning’s error checking feature (col. 4, ll. 35-39, CRC code) would
have yielded predictable results. (Ans. 6). Moreover, Appellants have not
rebutted the Examiner’s legal conclusion of obviousness by showing that the
claimed combination of familiar elements produces any new function. That
is, Appellants have not provided any factual evidence of secondary
considerations, such as unexpected or unpredictable results, commercial
success, or long felt but unmet need.
In particular, Appellants have presented no evidence that combining
Apfel’s teaching of synchronizing contact information between a mobile
phone and a data service provider (¶[0012]) with Kahn’s teaching of
metadata including location information (¶¶ [0064], [0093]), and
DeKoning’s teaching of metadata generated by performing a local verify
operation using a cyclical redundancy code (CRC) (col. 4, ll. 17-18, 34-39)
would 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)
(citing KSR, 550 U.S. at 418-19). Therefore, on this record, we are not
persuaded that the Examiner erred in combining the cited references.
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Appellants additionally contend: “[b]ecause the combination of Apfel,
Kahn, and DeKoning fails to disclose or suggest, at least, an apparatus that is
configured to store, query, transmit, and receive, as recited in claim 31, the
combination of Apfel and Kahn also fails to disclose or suggest the
additional limitations recited in dependent claim 33.” (App. Br. 26.)
In response, we find this argument unavailing for the same reasons
discussed supra regarding independent claim 13. Because dependent claims
61 and 66 recite commensurate checksum (error checking) limitations to
those of claim 33, on this record, we are not persuaded of Examiner error.

Independent claim 19–Third-stated rejection
Appellants’ contend “[t]here is no reasonable way that a person of
ordinary skill in the relevant art would pick and choose elements from 4
different references to yield the claimed invention.” (App. Br. 29).
Appellants’ mere assertion that the number of references is an
indication of non-obviousness is insufficient to overcome the rejection.
“The criterion, however, is not the number of references, but what they
would have meant to a person of ordinary skill in the field of the invention.”
In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991) (citation omitted). The
Examiner looks to Goodman for teaching that the metadata of each media
item comprises at least one user-specified category (Ans. 8, citing Goodman,
Abstract; claim 1). We agree with the Examiner’s proffered rationale: “[i]t
would have been obvious for one of ordinary skill in the art at the time the
invention was made to combine the teachings of Apfel, Kahn and the
teachings of Goodman which have metadata associated therewith including
category value data because such combination would have improved the
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method for organizing the media items according to hierarchical structure of
categories.” (Ans. 8).
Accordingly, we conclude that Appellants have not shown the
Examiner erred in combining four references to form a basis for the
obviousness rejection of representative claim 19. Although Appellants
additionally contend that “Goodman fails to cure the deficiencies of Apfel,
Kahn, and DeKoning” (App. Br. 31), we find no deficiencies with Apfel,
Kahn, and DeKoning, for the reasons discussed above.
Regarding the disputed “finding at least one unique identifier”
limitation of claim 19, we agree with the Examiner’s findings:
Kahn discloses wherein the metadata of each media item
comprises wherein the metadata of each media item comprises
at least a unique identifier, at least one timestamp of the
metadata related to the media item, and at least one of a cell
identifier, a name assigned to the cell identifier, a location area
code, and a name assigned to the location area code related to
the media item (Kahn: paragraph [0058] - image unique
identifier; paragraph [0060] - image timestamp information;
paragraph [0089] - images are organized automatically, based
on a given location category; paragraphs [0059, 0064-0065,
0093] – metadata comprising location information, location
[10], geographic location and user identity information).
(Ans. 7, emphasis added).
For these reasons, on this record, we are not persuaded of Examiner
error regarding independent claim 19.

Dependent claims 20-24, 27-29, 36, 38-41, 44-46, 63, 67, and 69
(third-stated rejection)
Regarding claims 20-24, 27-29, 36, 38-41, 44-46, 63, 67, and 69,
Appellants again present nominal separate arguments that follow the general
pattern of: (1) reciting the disputed claim limitation(s), and, (2) repeating
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that “[b]ecause the combination of Apfel, Kahn, DeKoning, and Goodman
fails to disclose or suggest, at least, the process includes the steps of storing,
transmitting, receiving, and finding, as recited in [base] claim [], the
combination of Apfel, Kahn, DeKoning, and Goodman also fails to disclose
or suggest the additional limitations recited in [this] dependent claim []” (See
e.g., App. Br. 31-32).
Because we found Appellants’ contentions unpersuasive for base
claim 19, on this record, we are not persuaded of Examiner error. Moreover,
Appellants have failed to present substantive arguments traversing the
specific factual findings made by the Examiner regarding the
aforementioned claims. (See Ans. 7-12). “A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim.” See 37 C.F.R. § 41.37(c)(1)(iv).
For these reasons, on this record, we are not persuaded of Examiner
error regarding claims 20-24, 27-29, 36, 38-41, 44-46, 63, 67, and 69.

Dependent Claims 25, 26, 42, and 43 (fourth-stated rejection)
Dependent claim 25 recites: “[t]he computer-readable storage medium
according to claim 19, the process further comprising: creating at least one
index file in a storage system, an index file describing at least some of the
media items in the storage system and metadata associated with the media
items.”
We agree with the Examiner that the claimed index file is taught or
suggested by Brechner’s automatic indexing of media files (Ans. 12-13
citing Breckner,¶[0075]).
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However, Appellants contend “[t]here is no reasonable way that a
person of ordinary skill in the relevant art would pick and choose elements
from 5 different references to yield the claimed invention.” (App. Br. 46).
As discussed supra, “[t]he criterion, however, is not the number of
references, but what they would have meant to a person of ordinary skill in
the field of the invention.” Gorman, 933 F.2d at 986 (citation omitted).
Appellants additionally contend that “Breckner fails to cure the
deficiencies of Apfel, Kahn, DeKoning and Goodman with respect to the
features recited in claims 19 and 25 relating to the configuration of the
metthod.” (App. Br. 47). However, we find no deficiencies with Apfel,
Kahn, DeKoning, and Goodman for the reasons discussed above. Thus, on
this record, we are not persuaded of Examiner error regarding representative
dependent claim 25.
Claims 26, 42, and 43 each recite the aforementioned index file
limitation in commensurate form. Therefore, we find Appellants’
contentions unavailing. (App. Br. 48-52). We refer to, rely on, and adopt
the Examiner’s findings and conclusions set forth in the Answer (see Ans.
12-13).

DECISION
We affirm the Examiner’s decision rejecting claims 13-17, 19-29, 31,
33-36, 38-46, 61, 63, 64, 66, 67, and 69 under 35 U.S.C. § 103.
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).

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ORDER
AFFIRMED

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