Ex Parte White et al

Patent Trial and Appeal Board

Apr 25, 2018

10906065 (P.T.A.B. Apr. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/906,065 02/01/2005
82515 7590 04/27/2018
Sterne, Kessler, Goldstein & Fox P.L.L.C.
1100 New York Avenue, N.W.
Washington, DC 20005
FIRST NAMED INVENTOR
Shannon R. White
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1933.1620001 3065
EXAMINER
ORANGE, DAVID BENJAMIN
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
04/27/2018 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):
mlee@sternekessler.com
e-office@sternekessler.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHANNON R. WHITE, GENO COSCHI, and
ANDREW J. QUICK
Appeal2017-003086
Application 10/906,065 1
Technology Center 2600
Before MARC S. HOFF, CAROLYN D. THOMAS, and
PHILLIP A. BENNETT, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1, 2, 4--21, 23-32, and 35--48, all the
pending claims in the present application. Claims 3, 22, 33, and 34 are
canceled. See Claims Appendix. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appellants name iAnywhere Solutions, Inc. as the real party in interest.
App. Br. 1.
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The present invention relates generally to messaging between
applications. See Abstract.
Claim 1 is illustrative:
1. A system comprising:
a memory; and
at least one processor coupled to the memory, the
at least one processor configured to:
queue messages from a first application at a
first mobile device within a local database of the first mobile
device based upon a determination that a second application at a
second mobile device is unreachable over a network;
send a first data stream comprising a list of
updates to tables of a database at a server based on the queued
messages; and
update tables of the local database of the
first mobile device based on tables of the database at the server,
wherein the server is configured to send a second data stream
comprising updates to tables of a remote database of the second
mobile device based on tables of the database at the server upon
detecting the second mobile device is connected to the network.
Appellants appeal the following rejections:
RI. Claims 1, 2, 4--21, 23-32, and 35--48 are rejected under 35
U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to
comply with the written description requirement (Final Act. 5-6);
R2. Claims 1, 20, 35, 47, and 48 are rejected under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being
indefinite (id. at 6);
R3. Claims 1, 2, 4--21, 23-32, and 35--48 are rejected underpre-AIA
35 U.S.C. § 102(a) and possibly 102(b) as being anticipated by QAnywhere
released by iAnywhere not later than October 2004 (id. at 7);
R4. Claims 1, 2, 4--21, 23-32, and 35--48 are rejected underpre-AIA
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35 U.S.C. § 102(b) as being anticipated by Peersman et al., "The Global
System for Mobile Communications Short Message Service," Personal
Communication, IEEE, vol. 7, iss. 3, June 2000, pp. 15-23 (hereinafter
"SMS") (id. at 7-19); and
R5. Claims 1, 2, 4--21, and 23--47 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over SMS in view of Applicant Admitted
Prior Art (hereinafter "AAP A") (id. at 20-21 );
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
Rejection under§ 112, 1st paragraph
Claims 1, 2, 4-21, 23-32, and 35-48
Issue 1: Did the Examiner err in finding that the claims do not
comply with the written description requirement?
The Examiner finds that "each of the independent claims recites that
the first mobile device updates itself based on the tables at the server, and
that the server has received updates from the first mobile device. In contrast,
the original specification discloses a single, unidirectional commit that
synchronizes a first device with the server" (Final Act. 5---6).
In response, Appellants contend that "the Specification describes that
' [a] synchronization is the process of bidirectional data exchange between a
MobiLink client and the Mobilink synchronization server"' (App. Br. 11;
citing Spec. i-fi-f 145-149). We agree with Appellants.
For example, Appellants' Specification states:
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A MobiLink synchronization can be initiated from the server or
from the mobile client. (i-f 119)
Generally, in the upload phase the MobiLink client prepares
and sends an "upload stream" ... [i]n the download phase, the
MobiLink synchronization server prepares and sends a
"download stream" . . . . The upload and download phases of a
synchronization session are described in more detail below. (i-f
146)
In other words, as contended by Appellants, the original Specification does
indeed describe a bidirectional synchronization session.
However, the Examiner further finds that the "claims can be
interpreted in multiple ways, and this new matter rejection resulted because
not all of the ways were disclosed" (Ans. 3). Here, we agree with the
Examiner with respect to independent claim 1.
For example, we note that it is unclear in claim 1, as written, where
the at least one processor configured to ... is located. Is it in the first
mobile device, second mobile device, the server, or some other device? In
other words, who/what is performing the step of determining that a device is
unreachable?
The Examiner finds that "the specification describes the server
making the claimed determination [i.e., whether the second device is
unreachable]. However, the claim recites the determination in a step that is
explicitly performed by the first mobile device and not the server" (Ans. 4).
We find that claim 1, as written, can be interpreted as either the server or the
first mobile device making the determination about a second application at a
second mobile device being unreachable. Thus, we agree with the Examiner
that respect to independent claim 1, that not all ways of performing this step
are disclosed in the specification. Specifically, "the [E]xaminer agrees with
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[] Appellant[ s] that the specification describes the server [as] making the
claimed determination" (Ans. 4; see also App. Br. 13), not the first mobile
device.
Although Appellants point out that "the specification describes that a
'synchronization can be initiated from the server or from the mobile client
... and can also be used to cause remote databases to upload data to the
Consolidated Database"' (App. Br. 12, citing Spec. i-f 119), we find that
Appellants' aforementioned response fails to explain how the
aforementioned disclosure shows that a first mobile device determines that a
second application at a second mobile device is unreachable over a network.
Appellants' contention suggests that the server, not the mobile device,
causes this step to occur (see App. Br. 13).
Accordingly, we affirm the Examiner's rejection of claims 1, 2, and
4--19 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written description requirement.
On the other hand, independent claims 20, 4 7, and 48, explicitly recite
the aforementioned limitation being performed by the server (see claims 20,
47, and 48), consistent with Appellants' and the Examiner's interpretations.
Independent claim 35 broadly recites the aforementioned limitation without
requiring anyone to perform this aforementioned step.
Accordingly, we reverse the Examiner's rejection of claims 20, 21,
23-32, and 35--48 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA),
first paragraph, as failing to comply with the written description
requirement.
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Rejection under§ 112, 2nd paragraph
Claims 1, 20, 35, 47, and 48
Issue 2: Did the Examiner err in finding that the claims are
indefinite?
The Examiner finds that "the claims do not clarify if the database
tables were updated (or if the invention works whether or not the tables are
updated)" (Final Act. 6). The Examiner then clarifies that "[t]he question is
if the database is updated before sending the new updates (i.e., when the
database is updated, not whether it is eventually updated)" (Ans. 4)
(emphasis omitted) because "[ t ]he issue is that the claims don't specify the
timing of the updates relative to each other" (id. at 5). We agree with the
Examiner.
Appellants contend that "claim 4 7, as recited, does 'clarify if the
database tables were updated"' (App. Br. 14) and the Specification describes
'a two-step process where a server receives messages, updates tables, then
sends an update back to the first mobile device which then updates itself"
(id. at 15). Although Appellants further contend that the method claims
"recite logic and grammar that 'requires that the steps be performed in the
order written"' (Reply Br. 4), we note that unless the steps of a method
claim actually recite an order, the steps are not ordinarily construed to
require one. Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir.
2003). Interactive Gift Express, Inc. v. CompuServe Inc., 256 F.3d 1323,
1342--43 (Fed. Cir. 2001). See also Loral Fairchild Corp. v. Sony Corp.,
181 F.3d 1313, 1322 (Fed. Cir. 1999). However, such a result can ensue
when the method steps implicitly require that they be in the order written.
Interactive Gift Express, 256 F.3d at 1342--43.
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We find that the claims, as written, do not implicitly require that the
method steps be performed in the order written because the "tables of the
database at the server" are not necessarily tied to the queued messages.
For example, claim 1 recites, inter alia, update tables of the local
database of the first mobile device based on tables of the database at the
server (see claim 1 ). However, as written, this step does not refer back to
the server tables based on the queued massages. Thus, we agree with the
Examiner that it is unclear whether the database is updated based on the
messages before sending updates to the first mobile device.
Accordingly, we affirm the Examiner's rejection of claims 1, 2, 4--21,
23-32, and 35--47 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA),
second paragraph, as being indefinite.
On the other hand, independent claim 48, as written, does refer back
to "the tables of the database at the server" that were based on the queued
messages (see claim 48 (emphasis added)). Therefore, we reverse the
Examiner's rejection of claim 48 under 35 U.S.C. § 112(b) or 35 U.S.C.
§ 112 (pre-AIA), second paragraph, as being indefinite.
Rejection under§ 102(b) over Peersman
Issue 3: Did the Examiner err in finding that Peersman discloses
updating tables of the local database of the first mobile device based on
tables of the database at the server?
Appellants contend that the "language of Peersman provides
absolutely no teaching or suggestion regarding updating any tables, let alone
specifically 'updat[ing] tables of the local database of the first mobile device
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based on tables of the database at the server"' (App. Br. 22). Appellants
further contend that the "Examiner's possible reading of Peersman would
update a local database based on whether information was or was not
received by the server, and not 'update tables of the local database of the
first mobile device based on tables of the database at the server,' as recited
by claim 1" (id.).
The Examiner finds that "Peersman has a server (the Short Message
Service Center) and that when the SMSC electronically stores messages, this
constitute a database .... The [E]xaminer maintains that data stored in this
way is a table in a database" (Ans. 8) (italic omitted). The Examiner further
finds that in Peersman "[t]he confirmation are stored in the fields of
Peersman ... The server sends this information to a mobile phone. The
phone then stores this information in its corresponding message field. Thus
the table in the local database ... has been updated based on the table at the
server database" (id. at 10) (italic omitted). We agree with the Examiner.
In essence, Appellants emphasize that Peersman does not disclose
storing information/messages in a database, neither at the server nor the
mobile device. However, contrary to Appellants' contention that "Peersman
contains no discussion of storing any information in a database before the
confirmation is sent" (Reply Br. 14), we note that Peersman specifically
discloses that "messages are maintained and transmitted by an SMS Center
(SMSC) ... that stores and then forwards the messages when they can be
delivered" (p. 15, right column, last paragraph) and "[i]t also receives and
passes on any confirmation messages" (id. at p.16 left column, first line).
Peersman further discloses "[a] confirmation will always be returned to the
SMSC . . . A confirmation will also be returned to the MS from an SMSC
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indicating whether the [message] has been received successfully. The
software within the MS must be able to decode and store the messages" (id.
at p. 18, left column last line to right column, line 7). In addition, Peersman
discloses that "[ w ]hen the phone is not within coverage ... the SMSC will
hold the messages and deliver it shortly after the phone comes back into
range or there is space in memory" (id., right column, lines 14--18).
In other words, Peersman discloses that both the SMSC and the MS
store the messages/confirmations within their respective memories and that
the SMSC holds and delivers the messages to the phone when feasible.
Thus, we find unavailing Appellants' contention that Peersman fails to
update tables of a local database (App. Br. 22) and/or "contains no
discussion of storing any information in a database" (Reply Br. 14 ), given
the aforementioned disclosure. Furthermore, the Examiner explains, and we
agree, that "when the SMSC electronically stores messages, this constitute a
database" (Ans. 8) and Peersman describes storing "this information in its
corresponding message fields" which discloses database tables (id. at 10).
Appellants fail to persuasively distinguish the claimed tables of the database
from Peersman's storage capabilities presented by the Examiner.
Accordingly, we sustain the Examiner's rejection of claim 1.
Appellants' arguments regarding the Examiner's rejection of independent
claims 20, 35, 47, and 48 rely on the same arguments as for claim 1, and
Appellants do not argue separate patentability for the dependent claims (see
App. Br. 18-23). We, therefore, also sustain the Examiner's rejection of
claims 2, 4--21, 23-32, and 35--48.
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Rejections under§ 102(a) over QAnywhere and
§ 103 (a) over Peersman and AAPA - Not Reviewed
Our affinnance of all the claims under § 102(b) over Peersman supra
is dispositive as to all claims on appeal. Therefore, it is unnecessary to
address the other grounds of rejection entered by the Examiner. See In re
Suong-Hyu Hyon, 679 F.3d 1363, 1367 (Fed. Cir. 2012) (Affirmance of
rejection of all claims under§ [102(b)]/103(a) made it unnecessary to reach
other grounds of rejection); Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423
(Fed. Cir. 1984) (Having decided a single dispositive issue, the ITC was not
required to review other matters decided by the presiding officer).
DECISION
We affirm the Examiner's rejection of claims 1, 2, and 4--19 under 3 5
U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to
comply with the written description requirement.
We reverse the Examiner's rejection of claims 20, 21, 23-32, and 35-
48 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph,
as failing to comply with the written description requirement.
We affirm the Examiner's rejection of claims 1, 2, 4--21, 23-32, and
35--47 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second
paragraph, as being indefinite.
We reverse the Examiner's rejection of claim 48 under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being
indefinite.
We affirm the Examiner's rejection of claim 1, 2, 4--21, 23-32, and
35--48 under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Peersman.
Since at least one rejection encompassing all claims on appeal is
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affirmed, the decision of the Examiner 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)(l )(iv).
AFFIRMED
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