Ex Parte Ricci

Patent Trial and Appeal Board

Jan 22, 2018

13042446 (P.T.A.B. Jan. 22, 2018)

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.
13/042,446 03/07/2011 Christopher Ricci 4366-558 6906
48500 7590
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
HAILU, TADESSE
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
01/24/2018 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):
cjacquet@ sheridanross.com
pair_Avay a @ firsttofile. com
edocket @ sheridanross .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER RICCI
Appeal 2017-009076
Application 13/042,446
Technology Center 2100
Before JASON V. MORGAN, BETH Z. SHAW, and
AMBER L. HAGY, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—20, which represent all the pending
claims. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
Appellant’s invention is directed to a client device capable of
displaying two or more desktop profiles. See Spec. 13.
Appeal 2017-009076
Application 13/042,446
Claim 1 is illustrative and is reproduced below:
1. A method, comprising:
determining a physical location and use-context information for at
least one of a client device and a user of the client device, the client device
comprising an operating system capable of generating a native desktop
profile for display via the client device;
mapping the physical location and use-context information to a
desktop profile selected from either the native desktop profile providing
native desktop data, and a virtual desktop profile generated by a server and
providing virtual desktop data, in communication with the client device to be
displayed by the client device; and
causing the client device to display the mapped desktop profile.
REJECTIONS
The Examiner rejected claims 1—11 and 13—20 under 35 U.S.C.
§ 102(e) as anticipated by Beaty et al. (US 2011/0131330 Al, June 2, 2011).
Final Act. 5.
The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Beaty and Gest (US 2003/0179240 Al, Sept. 25, 2003).
Final Act. 10.
CONTENTIONS AND ANALYSIS
Appellant argues the Examiner erred in finding Beaty discloses
“determining a physical location and use-context information,” and
“mapping the physical location and use-context information to a desktop
profile selected from either the native desktop profile desktop data, and a
virtual desktop profile generated by a server,” as recited in claim 1. App.
Br. 5—8; Reply Br. 1—3. Appellant does not proffer sufficient evidence to
persuade us of error in the Examiner’s findings.
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Application 13/042,446
As a preliminary matter, we note that several arguments by Appellant
are not commensurate with the scope of the claims. For example, Appellant
argues that Beaty’s desktop image modified by a delta file is not “location
specific.” App. Br. 6. Appellant also argues the personalization provided by
the delta file of Beaty is “user specific, not location specific.” Id. at 8. In
the Reply Brief, Appellant argues “Beaty is not directed to switching
desktop profiles.” Reply Br. 2. However, “limitations are not to be read
into the claims from the specification.” In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)). Here, Appellant’s arguments are not commensurate with the
limitations of representative claim 1, which does not require the claimed
“desktop profile” to be location specific and does not recite “switching
desktop profiles.” Rather, claim 1 merely recites determining a physical
location and mapping the location to a desktop profile. In other words,
Appellant argues limitations not recited in the claims. We decline to read
the argued limitations into the claims.
Appellant also argues that Beaty does not disclose the claimed
“physical location.” App. Br. 8. We are not persuaded by this argument.
Rather, as the Examiner finds, Beaty discloses determining a physical
location for a client device. Ans. 9 (citing Beaty 143 (“navigation system
coordinates from remote client 110... device 110 may be location aware,
GPS being merely one non-limiting example”)).
Appellant raises a new argument in the Reply Brief, asserting Beaty
does not disclose the claimed “use-context information.” Reply Br. 2—3.
We are not persuaded by this argument. Rather, as the Examiner finds,
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Appeal 2017-009076
Application 13/042,446
Beaty teaches “use-context information” at least in paragraphs 24 and 45.
Final Act. 5. For example, Beaty discloses that
Connection broker 612 can also track the connection
status of clients 614, 616, and 618 to their assigned virtual
machines, for example, but not limited to, identifying whether a
client is currently logged onto a virtual machine, or identifying
to which of clients 614, 616, and 618 a virtual machine has
been assigned.
Beaty 145. Appellant provides insufficient evidence that the claims limit
“use-context information” in a way that, under a broad but reasonable
interpretation, is not encompassed by Beaty’s disclosure. The Examiner’s
findings and explanations are reasonable, based on the broadest reasonable
interpretation of the claims, and Appellant has not demonstrated error in the
Examiner’s findings.
For the reasons discussed above, we are not persuaded by Appellant’s
arguments. Appellant does not persuasively distinguish claim 1 from
Beaty’s disclosures, or proffer sufficient evidence to show that the
Examiner’s findings are in error. Accordingly, we sustain the rejection of
claim 1 under 35 U.S.C. § 102(b). With respect to the remaining claims
rejected on that basis, Appellant presents no additional arguments in the
Appeal Brief, but argues those claims collectively with claim 1. App. Br. 2—
8. In the Reply Brief, however, Appellant introduces new arguments
regarding dependent claims 4 and 5. Reply Br. 4. Because the Examiner
addressed none of these claims specifically in the Response to Arguments
section of the Examiner’s Answer, we find nothing therein that would have
prompted these new arguments. Appellant could have made these
arguments for dependent claims 4 and 5 in the original brief, but did not.
“Any bases for asserting error, whether factual or legal, that are not
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Application 13/042,446
raised in the principal brief are waived.” Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (informative); see also Optivus Tech., Inc. v. Ion
Beam AppTns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not
raised by an appellant in its opening brief... is waived.”) (citations and
quotation marks omitted). The term “Reply Brief’ is exactly that, a brief in
reply to new rejections or new arguments set forth in an Examiner’s Answer.
Appellant may not present arguments in a piecemeal fashion, holding back
arguments until an Examiner answers the original brief. This basis for
asserting error is waived. See 37 C.F.R. § 41.41(b)(2) (2016). Therefore, we
conclude that Appellant has not shown that we should consider the new
arguments about claims 4 and 5.
We likewise sustain the Examiner’s obviousness rejection of
dependent claim 12 over the additionally cited prior art listed above (Gest).
Appellant has not particularly pointed out errors in the Examiner’s reasoning
regarding the additional teachings of Gest, but merely asserts patentability
based upon this claim’s dependency from independent claim 1. App. Br. 8.
For the same reasons as discussed with respect to claim 1, we sustain
the rejection of the remaining pending claims.
DECISION
The decision of the Examiner to reject claims 1—20 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).
AFFIRMED
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