Ex Parte Newton et al

Patent Trial and Appeal Board

Apr 25, 2013

10598988 (P.T.A.B. Apr. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte PHILIPS STEVEN NEWTON
and DECLAN PATRICK KELLY
_____________

Appeal 2011-000743
Application 10/598,988
Technology Center 2400
______________

Before ERIC B. CHEN, BRYAN F. MOORE, LYNNE E. PETTIGREW,
Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000743
Application 10/598,988

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This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-10 which represent all the pending claims. Br. 4. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

INVENTION
The invention is directed to a method of providing data storage for a
user device that is connectable to a remote server via a network.
Claim 1 is exemplary of the invention and is reproduced below:
1. A method of providing data storage for a user device, the
method comprising the steps acts of:
initiating a socket connection between a user device and
a remote server,
providing an application interface which enables access
to a virtual local storage by an application running on the user
device by processing a request from the application to store
auxiliary data associated with the application in the virtual local
storage, and, when a storage request is received, having the
auxiliary data stored on the remote server via the network.

REFERENCES
Johnson US 2002/0161934 A1 Oct. 31, 2002
Yanosy US 2004/0204073 A1 Oct. 14, 2004

REJECTIONS AT ISSUE
Claims 7 and 8 stand rejected under a new ground under 35 U.S.C.
§ 112, 2
nd
paragraph as being indefinite for failing to particularly point out
and distinctly claim the subject matter which applicant regards as the
invention. Ans. 7-9.
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Claims 1-10 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Yanosy and Johnson. Ans. 4-6.
ISSUES
1. Did the Examiner err in finding that Yanosy teaches “providing an
application interface which enables access to a virtual local storage
by an application running on the user device by processing a
request from the application to store auxiliary data associated with
the application in the virtual local storage, and, when a storage
request is received, having the auxiliary data stored on the remote
server via the network,” recited in claim 10; and
2. Did the Examiner err in finding the specification does not provide
the algorithm for the “control means” for performing applications
and “processing means” for executing a storage application recited
in claims 7 and 8?
ANALYSIS
35 U.S.C. § 112, 2nd paragraph
Claims 7 and 8
Claim 7 recites “control means for performing applications that may
generate auxiliary data relating to the applications” and “processing means
for executing a storage application for initiating a socket connection to a
remote server via the network.” Claim 8 recites “control means are arranged
for retrieving applications to be performed from the storage medium.”
For a computer-implemented claim limitation interpreted under § 112,
sixth paragraph, the corresponding structure must include the algorithm
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needed to transform the general purpose computer or processor disclosed in
the specification into the special purpose computer programmed to perform
the disclosed algorithm. Aristocrat Techs. Australia Pty Ltd. v. Int'l Game
Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008); see also Function Media,
L.L.C. v. Google Inc, 708 F.3d 1310, 1318 (Fed. Cir. 2013). Thus, the
specification must sufficiently disclose an algorithm to transform the general
purpose computer or processor to a special purpose processor programmed
to perform the disclosed algorithm. Id. at 1338. An algorithm is defined, for
example, as “a finite sequence of steps for solving a logical or mathematical
problem or performing a task.” Microsoft Computer Dictionary 23 (5th ed.
2002). An applicant may express the algorithm in any understandable terms
including as a mathematical formula, in prose, in a flow chart, or “in any
other manner that provides sufficient structure.” Finisar Corp. v. DirecTV
Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008).
An indefiniteness rejection under § 112, second paragraph, is
appropriate if the specification discloses no corresponding algorithm
associated with a computer or processor. Aristocrat, 521 F.3d at 1337-38.
Mere reference to a general purpose computer or processor with appropriate
programming without providing an explanation of the appropriate
programming, or to “software” without providing detail about the means to
accomplish the software function is not an adequate disclosure. Id. at 1334;
Finisar, 523 F.3d at 1340-41. In addition, simply reciting the claimed
function in the specification, while saying nothing about how the computer
or processor ensures that those functions are performed, is not a sufficient
disclosure for an algorithm which, by definition, must contain a sequence of
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steps. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed.
Cir. 2009).
If the specification explicitly discloses an algorithm, the sufficiency of
the disclosure must be determined in light of the level of ordinary skill in the
art. Aristocrat, 521 F.3d at 1337. The specification must sufficiently disclose
an algorithm to transform a general purpose processor to a special purpose
processor so that a person of ordinary skill in the art can implement the
disclosed algorithm to achieve the claimed function. Id. at 1338.
Appellants argue that the Specification does describe the structure and
operation of the control means and processing means. More particularly,
Appellants point to their disclosure that “control unit 20 comprises control
circuitry, for example a microprocessor, a program memory and control
gates” that is contained in an optical disc player (Reply Br. 2 (citing Spec.
5:5-18)). Appellants further point to their disclosure of an algorithm for the
“control means” in the form of a protocol including the procedure for
reading and writing to a storage device (Id. at 2 (citing Spec. 10:4-19)) and,
as to the “processing means,” an algorithm in the form of software code used
to initiating a socket connection to a remote server via the network (Id. at 2
(citing Spec. 9:4-28)). Additionally, as to the processing means, we also note
the disclosure that “user devices [may be] as portable disc players or low-
end set top 10 boxes that are capable of receiving interactive digital TV
(Spec. 6:9-10) . . . [and a] storage application 32 is provided in the user
device” (Spec. 8:4-5). Thus, we agree with Appellants that this disclosure
provides sufficient corresponding structure for the limitations in question.
We do not sustain the rejection of claims 7 and 8 as indefinite.
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35 U.S.C. § 103(a) - Yanosy and Johnson
Claims 1-10
Claim 1 recites:
providing an application interface which enables access to a
virtual local storage by an application running on the user
device by processing a request from the application to store
auxiliary data associated with the application in the virtual local
storage, and, when a storage request is received, having the
auxiliary data stored on the remote server via the network.
Appellant argues that “[s]toring data on a remote server in response to
a request to store data from an application running on the user device is
nowhere disclosed or suggested in Yanosy. Rather, Yanosy merely discloses
to provide access to a remote service provider is in response to a service
augmentation.” App. Br. 12. The argument is not persuasive of Examiner
error.
We agree with the Examiner that “Yanosy teaches Mobile Device
Application 103, at Step 1501, making a request to store data on a remote
server, Shareable Network Resource 122, and storing data on said remote
server at Step 1512.” Ans. 10 (citing Yanosy, Figure 16, ¶ 0045). Thus,
Yanosy teaches providing access to a remote service provider in response to
a request to store data, as recited in claim 1.
Appellants do not substantively argue the rejection of claims 2-10.
Thus, for the reasons stated above, we affirm the Examiner’s decision to
reject claims 1-10 under 35 U.S.C. 103(a).
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DECISION
The Examiner’s decision to reject claims 1-10 under 35 U.S.C.
§ 103(a) is affirmed.
The Examiner’s decision to reject claims 7 and 8 under a new ground,
under 35 U.S.C. § 112, 2nd paragraph, is reversed.
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

ELD