Ex Parte Petersen

Patent Trial and Appeal Board

Feb 18, 2014

11754757 (P.T.A.B. Feb. 18, 2014)

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.
11/754,757 05/29/2007 Steven L. Petersen CT-SMA-001/US (P048) 7951
71739 7590 02/18/2014
Concert Technology Corporation
5400 Trinity Road, Suite 303
Raleigh, NC 27607
EXAMINER
NGUYEN, PHUOC H
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
02/18/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEVEN L. PETERSEN
____________________

Appeal 2011-010713
Application 11/754,757
Technology Center 2400
____________________

Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and
PATRICK R. SCANLON, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-45. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method for increasing availability of a data collection,
comprising the steps of:
receiving an operating mode message identifying an
operating mode of a mobile device;
determining a subset of data among the data collection
that is more likely to be accessed at the mobile device based on
the operating mode; and
sending the subset of data to the mobile device.

Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Dacosta
Gonzalez
Sorvari
US 2006/0069769 A1
US 2007/0005795 A1
US 7,570,943 B2
Mar. 30, 2006
Jan. 4, 2007
Aug. 4, 2009
Rejections
The following rejections are before us for review:
Claims 1-5, 10-13, 17, 19-26, 30-36, and 38-42 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Dacosta.
Claims 6-9, 14, 15, 18, 27-29, 37, and 43-45 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Dacosta and Sorvari.
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Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dacosta and Gonzalez.

OPINION
This appeal focuses on the limitation in claims 1, 21, and 39:
“[determine] a subset of data among the data collection that is more likely to
be accessed at the mobile device based on the operating mode” and the
limitation in claim 30: “receive a subset of data from the data aggregator that
is more likely to be accessed at the mobile device based on the operating
mode of the mobile device.”

Independent Claims 1, 21, and 39 and their dependent claims
Claim 1 is directed to a method comprising the aforementioned
“determining” step. Claims 21 and 39 require a data aggregator and
software, respectively, to perform the “determine” function. The Examiner
finds the above limitation in claims 1, 21, and 39 to be met by Dacosta,
stating that the operating mode is one of sleep mode 40, normal mode 42,
and off mode 44 of the mobile device 12 in Dacosta and the subset of data is
the selected e-mail, data, or website that is requested to be updated. Ans. 15.
The Examiner then finds that the “determining a subset of data among the
data collection that is more likely to be accessed at the mobile device”
limitation is met by the establishment of the update programming list 46 in
Dacosta. Id. at 4 (citing Dacosta, para. [0013]).
Appellant argues that “the mode of the device is not a criterion for
determining what data is likely to be accessed in Dacosta, since the data is
always utilized and downloaded ‘upon awakening the apparatus from [the]
sleep mode.’” App. Br. 11. Appellant further argues that the selection of
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data to be updated in Dacosta is “not a determination of what is most likely
to be accessed at the mobile device based on the sleep mode or low-power
mode, just what is to be communicated to the mobile device during the sleep
mode or low-power mode.” Reply Br. 4.
We agree with Appellant that the Examiner fails to show that Dacosta
discloses a “determining” function as called for in claims 1, 21, and 39. See
App. Br. 8. In the instant invention, the “determining” function is carried
out by the data aggregator 12, which performs a probability analysis to
determine which data is more likely to be accessed at the mobile device
based upon the operating mode. Spec., paras. [0056], [0061]. Dacosta
discloses updating data to or from the mobile device in accordance with an
update list 50, which “details both the web sites, or portions thereof, and
depths to which updating is to be performed.” Dacosta, para. [0046].
Dacosta’s update list can be user selected or can be generated automatically,
such as in response to historical use of the device. Id. at para. [0052].
Further, Dacosta’s mobile device commences executing the update operation
to send or receive the elements of data in the update list upon awakening
from sleep mode. Id. at para. [0050]. However, Dacosta does not disclose
determining a subset of data that is more likely to be accessed at the mobile
device based on whether the mobile device is in the normal, sleep, or off
mode. Rather, Dacosta’s mobile device updates data from among all the
available data based on the update list, which is wholly independent of the
operating mode (normal, sleep, or off) of the mobile device. Id. at [0050].
Accordingly, we reverse the Examiner’s rejection of claims 1-5, 10-
13, 17, 19-26 and 38-42 under 35 U.S.C. § 102(b) as anticipated by Dacosta.
The Examiner’s application of the teachings of Sorvari and Gonzalez
in rejecting the remaining claims depending from independent claims 1, 21,
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and 39 does not make up for the deficiency in the rejection of these
independent claims. Thus, we also reverse the rejection of claims 6-9, 14,
15, 18, 27-29, and 43-45 under 35 U.S.C. § 103(a) as unpatentable over
Dacosta and Sorvari and the rejection of claim 16 under 35 U.S.C. § 103(a)
as unpatentable over Dacosta and Gonzalez.

Independent Claim 30 and its dependent claims
The Examiner finds that Dacosta discloses all the features of claim 30.
Ans. 7-8. The Examiner finds the above limitation in claim 30 to be met by
Dacosta, stating that the operating mode is one of sleep mode 40, normal
mode 42, and off mode 44 of the mobile device 12 in Dacosta and the subset
of data is the selected e-mail, data or website that is requested to be updated.
Id. at 15. In particular, the Examiner finds that the limitation of the control
system being adapted to “receive a subset of data from the data aggregator
that is more likely to be accessed at the mobile device” is met in Dacosta
through updating the mobile data and/or software described at paragraphs
[0065]-[0066] and shown at component 110 in Figure 2 of Dacosta. Id. at 7-
8.
Appellant argues that Dacosta’s update list “does not disclose the data
aggregator” because Dacosta’s apparatus does not use the mode of the
mobile device as a “criteria for determining ‘what is more likely to be
accessed.’” App. Br. 14. Consequently, according to Appellant, Dacosta’s
mobile device “cannot have a control system adapted to ‘receive’ the ‘subset
of data . . . that is more likely to be accessed at the mobile device based on
the operating mode’ from the data aggregator.” Id. Thus, Appellant argues

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that the mobile device of Dacosta cannot have a control system adapted to
receive the subset of data more likely to be accessed at the mobile device.
Id.
We observe that claim 30, unlike claims 21 and 39, is directed only to
a mobile device and does not positively recite a data aggregator or other
structure for determining a subset of data among a data collection that is
more likely to be accessed at the mobile device based on the operation
mode. Claim 30 requires nothing more than a mobile device having an
onboard control system that is adapted to receive such a subset of data. In
accordance with Appellant’s Specification, this receiving function is
performed by interface 32. Spec., para. [0039]. Appellant’s interface 32
does not determine a subset of data more likely to be accessed by the mobile
device. Rather, the determining function is performed by data aggregator
12, which is resident on the host portion 14 of the system disclosed, not on
the mobile device itself. Id. at paras. [0034], [0056], [0061]; Fig. 1. Thus,
viewing the claims in light of the Specification, claim 30, which is directed
to a mobile device, does not recite and cannot be interpreted to recite a data
aggregator or its data subset determining function. Appellant’s arguments
regarding Dacosta lacking a data aggregator are therefore misplaced. We
agree with the Examiner’s determination that Dacosta discloses a control
system adapted to perform the “receive” function through updating the data
at paragraphs [0065]-[0066]. Ans. 7-8; see also Dacosta, Fig. 2.
For the above reasons, Appellant’s arguments do not apprise us of
error in the Examiner’s rejection of claim 30. We thus sustain the rejection
of claim 30 under 35 U.S.C. § 102(b) as anticipated by Dacosta. We also
sustain the rejection of claims 31-33, 35, 36, and 38, for which Appellant
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does not provide any separate argument and which thus fall with claim 30,
as anticipated by Dacosta. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
In contesting the rejection of claim 37 under 35 U.S.C. § 103(a) as
unpatentable over Dacosta and Sorvari, Appellant merely relies on the
arguments asserted against the rejection of claim 30, from which claim 37
depends. See App. Br. 17. This argument is not convincing, for the reasons
discussed above in regard to claim 30. We thus also sustain the rejection of
claim 37.
We turn finally to claim 34, which depends from claim 30 and further
recites that “the control system is further adapted to send the operating mode
message to the data aggregator in response to a cache miss to the data
cache.” The Examiner does not explain sufficiently and coherently how
Dacosta meets this claim limitation. As pointed out by Appellant, even
accepting the Examiner’s position that the update list is a “cache miss data
since this data is not yet at the mobile device,” the Examiner’s rejection does
not account for the requirement in claim 34 that the operating mode message
be sent in response to a cache miss, “not vice versa.” Reply Br. 5.
Accordingly, we reverse the Examiner’s rejection of claim 34 under
35 U.S.C. § 102(b) as anticipated by Dacosta.

DECISION
We reverse the following rejections:
1. Claims 1-5, 10-13, 17, 19-26, 34, and 39-42 as anticipated by
Dacosta;
2. Claims 6-9, 14, 15, 18, 27-29, and 43-45 as unpatentable over
Dacosta and Sorvari; and
3. Claim 16 as unpatentable over Dacosta and Gonzalez.
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We affirm the following rejections:
1. Claims 30-33, 35, 36, and 38 as anticipated by Dacosta; and
2. Claim 37 as unpatentable over Dacosta and Sorvari.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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