Ex Parte Piccinini et al

Patent Trial and Appeal Board

Jan 10, 2017

13439327 (P.T.A.B. Jan. 10, 2017)

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.
13/439,327 04/04/2012 Sandro Piccinini AUS920100501US2 5797
35525 7590
IBM CORP (YA)
C/O YEE & ASSOCIATES PC
P.O. BOX 802333
DALLAS, TX 75380
EXAMINER
NGUYEN, HAO HONG
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
01/12/2017 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):
ptonotifs @yeeiplaw.com
mgamez @ yeeiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANDRO PICCININI, LUIGI PICHETTI,
MARCO SECCHI, and STEFANO SIDOTI
Appeal 2015-007871
Application 13/439,327
Technology Center 2400
Before ST. JOHN COURTENAY III, JENNIFER L. McKEOWN, and
KAMRAN JIVANI, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1, 3, 5—10, 21, 22, and 25—29. Claims 2, 4, 11—20, 23,
24, and 30 are cancelled. In the Answer (13—15), the Examiner withdraws
the rejections of claims 1, 3, 5—10, 21, and 22. Therefore, only the rejections
of claims 25—29 are before us on appeal. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
Appeal 2015-007871
Application 13/439,327
Invention
The disclosed and claimed invention on appeal “relates generally to
extending operational capabilities of mobile devices, and more specifically
to extending file download capabilities of mobile devices having diminished
memory capacity.” (Spec. 11.)
Illustrative Claim
25. A method for downloading a file by a data
processing system comprising a data processor and a memory,
comprising steps of:
receiving, at the data processing system, device
properties associated with a device;
establishing a communication session with the device to
form a communication session;
receiving, by the data processing system, a first portion
of the file; and
sending, by the data processing system, the first portion
of the file to the device while receiving another portion of the
file at the data processing system, wherein the data processing
system is a portable device, and further comprising:
transmitting the device properties to a server application
across a network, wherein available memory in the data
processing system is less than an overall size of the file when
the data processing system downloads the file.
Rejections
A. Claim 25 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ikami et al. (US 2002/0059400 Al; May 16, 2002)
(hereinafter “Ikami”), in view of Lamming et al. (US 2003/0069921
Al; Apr. 10, 2003) (hereinafter “Lamming”), and further in view of
Rajakarunanayake et al. (US 2009/0031390 Al; Jan. 29, 2009)
(hereinafter “Rajakarunanayake”).
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B. Claim 26 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ikami, Lamming, Rajakarunanayake, and De
Froment (US 2012/0270526 Al; Oct. 25, 2012).
C. Claims 27—29 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ikami, Lamming, Rajakarunanayake, and Hettish et
al. (US 2005/0071361 Al; Mar. 31, 2005) (hereinafter “Hettish”).
ANALYSIS
Rejection A of Independent Claim 25
Combinability of the References under 35 U.S.C. § 103(a)
Issue: We decide the question of whether the Examiner erred by
improperly combining the cited Ikami and Rajakarunanayake references
under 35 U.S.C. § 103(a).
We have considered all of Appellants’ arguments and any evidence
presented. In reviewing the record and the evidence relied on by the
Examiner, we find a preponderance of the evidence supports Appellants’
contentions that the Examiner has improperly combined the cited Ikami and
Rajakarunanayake references. We highlight and address specific findings
and arguments for emphasis in our analysis below.
We begin our analysis by noting the primary Ikami reference
describes a split download method. For example, see paragraphs (10-11),
describing two embodiments, respectively:
[0010] A download method according to the present invention
forms a download user network with a plurality of user
terminals which are going to download the same data. A
delivery server divides the data into data portions, and assigns
the data portions to the respective user terminals belonging to
the download user network. Then each of the user terminals
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downloads the assigned data portion from the delivery server.
Thereafter the downloaded data portions are mutually
transmitted among the user terminals within the download user
network so that each of the user terminals can obtain all the data
portions which constitute the data.
[0011] Alternatively, one of the user terminals belonging to the
download user network may download the entire data from the
delivery server and transmit the downloaded data to each of the
other user terminals.
We particularly note that according to either embodiment 10, 11),
each user terminal of Ikami is described as having sufficient storage capacity
“so that each of the user terminals can obtain all the data portions which
constitute the data” (110 (emphasis added)); “[ajlternatively, one of the
user terminals belonging to the download user network may download the
entire data ....”(111 (emphasis added)).
In the Final Action (23—24), the Examiner sets forth a rationale to
modify the split download method of Ikami (see, e.g., H 10-11) with the
streaming video system of Rajakarunanayake, in which the “Internet Video
received via [a] DSL/Cable Modem[] cannot be buffered to a hard disk if the
STB 114 does not include [sufficient] local disk capability . . . .” (140).
Thus, the Examiner finds Rajakarunanayake teaches an embodiment
in which the receiving set top box (STB) has insufficient storage capacity to
store the contents of the entire video download file. (Final Act. 23—24.) To
combine the references under § 103, the Examiner provides a rationale for
modifying Ikami:
[i]t would have been obvious to a person with ordinary
skill in the art at the time the invention was made to incorporate
recording a program or file to a storage server because of a
device having the buffers as memory of a device less than an
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overall size of the program or file of Rajakarunanayake, into
Ikami as modified because Ikami as modified teaches dividing
delivery server 1 the data to be delivered among the user
terminals 21-23 belonging to the download user networks 31
(para. 0035), and Rajakarunanayake suggests to transmitting the
data packets from the first settop box through the network to a
network storage server (para. 0007-0008).
A person with ordinary skill in the art would have been
motivated to make the modification to Ikami as modified
because having such recording a program or file to a storage
server because of a device having the buffers as memory of a
device less than an overall size of the program or file would
facilitate data transfer.
(Final Act. 23—24.) (emphasis added.)
The Supreme Court guides: ‘“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.’” KSR Int’l. Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Here, we particularly observe the Examiner is modifying Ikami with
the teachings of Rajakarunanayake to solve a problem not found or
contemplated in Ikami (where the “memory of a device [is] less than an
overall size of the program or file [to be transferred].”) (Final Act. 23—24.)
(emphasis added.) As discussed above, in either embodiment (|| 10, 11),
each user terminal of Ikami is described as having sufficient storage capacity
to store the entire data to be downloaded.
In the principal Brief (App. Br. 6), Appellants initially assert
(regarding all the rejections, including the withdrawn rejections) that “[t]he
Examiner is [] using impermissible hindsight analysis in combining the
teachings from various references that describe mutually-exclusive
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techniques for providing [] file-download capabilities.” Specifically,
regarding rejection A of claim 25, Appellants contend the Examiner’s
proffered rationale is erroneous because:
the Ikami user terminals are preferably mobile phones
(Ikami paragraph [0026]) having reduced hardware
functionality due to physical size and power consumption
constraints — strongly evidencing that a person of ordinary skill
in the art would not have been motivated to modify the simple
Ikami user terminals with sophisticated video storage server
hardware components as described by Rajakarunanayake.
(App. Br. 22.)
Appellants further contend:
such proposed modification would severely impact the speed at
which data is actually stored. For example, Ikami is
particularly keen on efficiently downloading data (Ikami
paragraph 0008]) using a plurality of download links that are
operated in parallel to facilitate such downloading efficiency
(Ikami paragraph [0038]. Accordingly, modifying the Ikami
parallel-based download scheme in accordance with the
Rajakarunanayake serial data stream processing would severely
impact overall system performance since the downloading of
data using a serial-mode of operation in lieu of a parallel-mode
of operation is inherently slower (Ikami paragraph [0007]) —
further evidencing that a person of ordinary skill in the art
would not have been motivated to make such modifications to
the teachings of Ikami.
(App. Br. 22—23.)
In the “Response to Arguments” portion of the Answer, the Examiner
shifts the basis for the rejection, and proffers two new rationales for an
artisan to have modified Ikami’s user terminals (which have no storage
deficiencies, ^fl[ 10, 11), with the set top box (STB) storage deficiencies of
Raj akarunanay ake:
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Furthermore, Ikami (para. 0063-0064) and
Rajakarunanayake (para. 0022 and 0025) both teach the
function of transfer data between two devices due to lack of
memory/buffer space for the purpose of receiving all full
downloading content. Ikami borrows the server storage content
for holding the downloading content. In the similar “method”,
Rajakarunanayake discloses the borrowing the memory space
of a sever [sic] to temporary holding the partial downloaded
content(s). A terminal can also be configured to a server
serving the same purpose with burden of reconfiguration. The
both server and terminal perform the same function
interchangeably.
Therefore, it would have been obvious to a person with
ordinary skill in the art at the time the invention was made to
utilize the teaching of Rajakarunanayake to the method of
Ikami in order to provide in time streaming mechanism that is
both error free and efficient with respect to CPU usage as
taught by Rajakarunanayake (para. 0040).
(Ans. 17—18.) (emphasis added.)
[Cjlaim 25 of the present application does not exclude
parallel-based download scheme and discloses receiving data
by a device and transmitting the data to another device.
Parallelism is an inclusive of serialization because the
parallelism allows one to one and continues whereas
parallelism also allows one to many and continues to from one
of many to one. Ikami (para[s]. 0063-0064) and
Rajakarunanayake (para[s]. 0022 and 0025) and both teach a
device receives data and then transmits the data to another
device.
Therefore, it would have been obvious to a person with
ordinary skill in the art at the time the invention was made to
utilize the teaching of Rajakarunanayake to the method of
Ikami in order to provide the resilience needed and achieve
the error free transmission ([Rajakarunanayake] paragraph
0060).
(Ans. 19.) (emphasis added.)
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Because the Examiner has shifted the basis for the rejection of claim
25 in the Answer (17—19), we find the Examiner has “opened the door” to
permit new responsive arguments in the Reply Brief to be considered by the
Board as a matter of fairness and due process. See 37 C.F.R. § 41.41(b)(2).
Appellants urge in the Reply Brief (2—3): “On pages 17-18, the
Examiner re-hashes what is alleged to be taught by the cited references —
which is not in dispute. Instead, what is in dispute is the ‘lack of
motivation’ in combining the references by a person of ordinary skill in
the art.” (emphasis added).
In support, Appellants enumerate five purported errors (labeled 1—5,
infra) regarding in the Examiner’s proffered rationales to combine the
references:
[1.] First, modifying the teachings of Ikami to have a
smaller memory than the size of the file would not provide an
error-free recording since now the Ikami file would have
multiple file-portions spread across multiple devices that are
interconnected via a wireless network due to such memory
constraints — and such splitting/spreading of a file across
multiple devices is more prone to errors than if the entire file
were wholly contained within a given device/terminal since
multiple devices would then have to coordinate with one
another when a given file is accessed which adds system
complexity and associated potential for errors.
(Reply. Br. 2.)
We find Appellants’ first responsive argument is plausible, but not
persuasive, because Appellants have not provided citations to specific
portions of the references as evidence in support. However, Appellants
further contend:
[2.] Second, Ikami already provides error protection
(Ikami paragraph [0038]), and therefore the proposed
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modification to Ikami would not provide additional error-free
operation — which is the purported motivation for making the
Ikami modification, and further evidence that a person of
ordinary skill in the art would not have been motivated to
modify Ikami to provide a smaller buffer size in order to
provide error-free operation since Ikami already provides such
error-free functionality without such modification.
(Reply. Br. 2.)
We find Appellants’ second responsive argument is supported by a
preponderance of the evidence. Specifically, Ikami (| 38) teaches
“verifying] the received data fragments based on the error detecting codes.”
Therefore, we find an artisan would have had little or no need to look to
Rajakarunanayake’s “error free transmission of the data from the STB 112 to
the storage server 122” (| 60) to solve a problem already contemplated and
addressed by Ikami with the use of error detecting codes. (138).
Appellants further contend:
[3.] It is also noted that a person of ordinary skill in the
art would not have been motivated to combine the references
due to Ikami’s strong desire to efficiently download data to a
plurality of terminals (Ikami Abstract, lines 5-13), which is a
completely different mode of operation than
Rajakarunanayake’s set-top box data streaming mechanism that
streams an incoming data stream to both a display and a storage
device (Rajakarunanayake paragraph [0024]). If the proposed
modification or combination of the prior art would change the
principle of operation of the prior art invention being modified,
then the teachings of the references are not sufficient to render
the claims prima facie obvious. In re Ratti, 270 F.2d 810, 813,
123 USPQ 349, 352 (CCPA 1959); MPEP 2143.01(VI). The
proposed modification to the teachings of Ikami to include
Rajakarunanayake’s set-top box data streaming operation would
provide such change in the principle of operation by adding a
sophisticated data streaming storage server to a simple user
appliance that operates in a completely different ad-hoc
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network fashion (Ikami paragraph [0027]) — further evidencing
that Claim 25 has been erroneously rejected.
(Reply. Br. 2—3.)
[4.] In addition, because the fundamental Ikami
objective of providing an exact copy of a downloaded file at the
user terminal requires that the buffer size of such terminal not
be less than the size of the file being downloaded, making such
a change would fundamentally alter the principal of operation
that Ikami seeks to provide of having an entire file at the
terminal device — further evidencing that Claim 25 has been
erroneously rejected per In re Ratti, Id.
(Reply. Br. 3.)
[5.] It is further noted that a person of ordinary skill in
the art would not have been motivated to modify the teachings
of Ikami to have available memory of its user terminal being
less than a size of the file since a key advantageous feature that
is sought to be provided by the Ikami teachings is that the entire
file can be re-created at the user terminal (Ikami paragraph
[0044]), and such advantage would not be possible if the user
terminal had a smaller memory than the size of the downloaded
file — strongly evidencing that a person of ordinary skill in the
art would not have been motivated to make such a modification.
(Reply. Br. 3.)
We find Appellants’ contentions 3—5 are persuasive and supported by
a preponderance of the evidence. (Reply. Br. 2—3.) Regarding argument 3,
the Abstract of Ikami describes: “Each of the user terminals combines the
obtained data portions into the original data.” (Emphasis added.) As used
in Ikami (Abstract), we find the term “original data” refers to the complete
data download, i.e., the entire data download, and not a portion thereof.
Given that either described embodiment of Ikami (|| 10, 11) provides
sufficient storage capacity for the entire data to be stored in each user
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terminal, as discussed above, we find Appellants’ contentions 3—5 are
persuasive.
For the aforementioned reasons advanced by Appellants, and based
upon a preponderance of the evidence, we find the Examiner’s articulated
reasoning (Final Act. 23—24; Ans. 17—19) fails to provide a rational
underpinning to support the legal conclusion of obviousness. Given that the
Examiner has failed to establish any reasonable motivation to combine
Ikami and Rajakarunanayake, we further find Appellants’ initial contentions
(App. Br. 6) regarding the Examiner’s reliance on impermissible hindsight
are supported by a preponderance of the evidence. 1
Accordingly, we reverse rejection A of independent claim 25.
Because rejections B and C present the same deficiency regarding the lack
of a rational underpinning to combine Ikami, Lamming, and
Rajakarunanayake, we also reverse the Examiner’s rejections of dependent
claims 26—29.
DECISION
We reverse the Examiner’s rejections of claims 25—29 under
35U.S.C. § 103(a).
REVERSED
1 “Obviousness cannot be established by hindsight combination to produce
the claimed invention.” In re Dance, 160 F.3d 1339, 1343 (Fed. Cir. 1998).
11