Ex Parte SathishDownload PDFPatent Trial and Appeal BoardOct 9, 201412575254 (P.T.A.B. Oct. 9, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SAILESH KUMAR SATHISH ____________________ Appeal 2012-007448 Application 12/575,254 Technology Center 2400 ____________________ Before ROBERT E. NAPPI, JOHN A. EVANS, and WILLIAM M. FINK, Administrative Patent Judges. FINK, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE Appellant’s Invention Appellant’s invention relates to devices within a distributed network. (Spec. ¶ 2 and Abstract.)2 Specifically, Appellant claims systems and 1 According to Appellant, the Real Party in Interest is the Nokia Corporation. (App. Br. 1.) Appeal 2012-007448 Application 12/575,254 2 methods for enabling devices within a distributed network to receive differential information indicating differences between local capabilities and the capabilities of other devices within the network. (Spec. ¶¶ 2, 22.) Claims on Appeal Claims 1, 11, and 16 are the independent claims on appeal. Claim 16 is illustrative of Appellant’s invention and is reproduced below with disputed limitations emphasized: 16. A method comprising: receiving local capability information from a participant device in a distributed network, the local capability information describing the capabilities of the participant device; combining, via a processor, the local capability information from the participant device with other capability information defining capabilities of other participant devices to produce composite capability information; generating differential information indicating differences between the local capability information and the composite capability information; and providing the differential information to the participant device. Evidence Considered Sylvain US 2006/0007900 A1 Jan. 12, 2006 Gupta US 2007/0067310 A1 Mar. 22, 2007 Examiner’s Rejection Claims 1–20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gupta and Sylvain. (Ans. 4–8.) 2 Our decision refers to Appellant’s Appeal Brief filed November 14, 2011 (“App. Br.”); the Examiner’s Answer mailed February 16, 2012 (“Ans.”); Appellant’s Reply Brief filed April 3, 2012 (“Reply Br.”); Final Office Action mailed June 15, 2011 (“Final Act.”); and the original Specification filed October 7, 2009 (“Spec.”). Appeal 2012-007448 Application 12/575,254 3 Issue on Appeal Based on Appellant’s arguments, the issue on appeal is whether the combination of Gupta and Sylvain teaches “generating differential information indicating differences between the local capability information and the composite capability information” and “providing the differential information to the participant device” (hereinafter “differential information limitations”), as required by the independent claims. (App. Br. 5–9; Reply Br. 2–4.) ANALYSIS With respect to Appellant’s independent claims 1, 11, and 16, the Examiner relies on the combination of Gupta and Sylvain.3 (Ans. 4–8.) Appellant disputes the Examiner’s factual finding regarding the combination of Gupta and Sylvain. (App. Br. 6–9.) Specifically, Appellant argues that Sylvain neither discloses nor suggests the differential information limitations. (Id.) Regarding Gupta, Appellant disputes the Examiner’s finding that the “differential information” in the claims is broadly recited and not limited to specific mechanics. (Reply Br. 2–3.) Appellants point out that the claim is to differential information that “indicates differences between the local capability information and the composite capability information.” (Id.) Therefore, the “mechanics” are the differences between the local capability information and the composite 3 Appellant focuses on claim 16 as representative of all independent claims. (App. Br. 5.) We note each of independent claims 1, 11 and 16 recite a similar limitation directed to differential information as argued. Appeal 2012-007448 Application 12/575,254 4 capability information. (Id. at 3.) Appellant argues that Gupta contains no such disclosure or teaching. (Id. at 3–4.) On the record before us, we are constrained to agree with Appellant. As Appellant points out, the disputed term is not just “differential information” but “differential information indicating differences between the local capability information and the composite capability information.” (Reply Br. 2–3.) The Specification indicates that this qualifying phrase is important to the invention because by providing the differences “the composite capability tree 84 may not be pushed to each other device in its entirety.” (Spec. ¶ 40.) The Examiner finds Gupta discloses “devices includ[ing] a database having a capability of the devices, wherein the devices are adapted for executing a pre-defined set of activities . . . The device further includes an execution module adapted to perform the task in any of the devices based on the allocation of the optimal capability among the devices . . . .” (Ans. 12 (citing Gupta, Abstract, ¶¶ 42, 52).) Based on this description, the Examiner concludes that “such teaching [as differential information] would have been reasonably drawn from the disclosure of Gupta.” (Id.) However, this conclusion lacks any analysis for why the claimed differential information, including the required “differences between the local capability information and the composite capability information,” let alone “providing the differential information to the participant device,” would be “reasonably drawn” from this disclosure. Accordingly, we find this analysis lacks the required “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F. 3d 977, 988 (Fed. Cir. 2006). Appeal 2012-007448 Application 12/575,254 5 Appellant has persuaded us that on this record the Examiner has not articulated a prima facie case of unpatentability of claim 16. Accordingly, we do not sustain the Examiner’s rejection of independent claim 16. Independent claims 1 and 11 include similar limitations directed to the differential information; thus, for the same reasons, we do not sustain the rejection of independent claims 1 and 11. With respect to the dependent claims 2–10, 12–15, and 17–20, we reverse the rejections of these claims as well. DECISION We reverse the Examiner’s final rejection of claims 1–20.4 REVERSED lp 4 In the event of further prosecution of this application, the Examiner may wish to review the claims for compliance with 35 U.S.C. § 101 in light of the recently issued preliminary examination instructions on patent-eligible subject matter. See “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.” Memorandum from Andrew H. Hirshfeld to Patent Examining Corps (June 25, 2014), available at http://www.uspto.gov/patents/announce/alice_pec_25jun2014.pdf. Copy with citationCopy as parenthetical citation