Ex Parte WilliamsDownload PDFPatent Trial and Appeal BoardApr 8, 201411835628 (P.T.A.B. Apr. 8, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID L. WILLIAMS ____________ Appeal 2011-013624 Application 11/835,628 Technology Center 2100 ____________ Before MICHAEL W. KIM, GAY ANN SPAHN, and NINA L. MEDLOCK, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-3, 7-11, 13-17, and 19-23 under 35 U.S.C. § 103(a) as unpatentable over Craswell (US 2006/0230081 A1, published Oct. 12, 2006), Choi (US 2003/0134625 A1, published Jul. 17, 2003), and Leppinen (US 6,985,719 B2, published Jan. 10, 2006). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2011-013624 Application 11/835,628 2 CLAIMED SUBJECT MATTER The claimed subject matter “relates generally to backing up the data of mobile client device to a backup server” and more specifically, “to backing up the data of the mobile client device in a manner that requires performance of minimal tasks on the part of the backup server.” Spec., para. [0001]. Claim 1, reproduced below, with paragraph identifiers added, is illustrative of the appealed subject matter. 1. A mobile computing device, comprising: [(a)] a computer-readable storage medium configured to store data; [(b)] a communication module configured to communicate with a backup storage device separate from the mobile computing device, the backup storage device storing backup data of the mobile computing device; and [(c)] a backup module coupled to the communication module and the computer-readable storage medium, the backup module comprising a backup program for operating the backup module, the backup module configured to: [(d)] encrypt the backup data based on key information, the key information is stored in the mobile computing device but is not stored in the backup storage device; [(e)] send the encrypted data to the backup storage device for storage; [(f)] send the backup program to the backup storage device for storage; and [(g)] retrieve the backup program from the backup storage device for deployment in the backup module. Appeal 2011-013624 Application 11/835,628 3 OPINION Appellant argues claims 1-3, 7-11, 13-17, and 19-23 as a group and we select independent claim 1 as the representative claim. See Br. 8-9; see also 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 2, 3, 7-11, 13-17, and 19- 23 fall with claim 1. The Examiner finds that Craswell substantially discloses the subject matter of claim 1. Ans. 4-6. Without explicitly setting forth what is missing from Craswell, the Examiner also finds that Choi discloses the subject matter of paragraphs (f) and (g) of claim 1 as quoted supra. Ans. 6 (citing Choi, para. [0006], ll. 3-6). Appellant argues that although the combination of Craswell and Choi discloses backing-up and retrieving programs, neither reference discloses that the programs that are backed-up and retrieved may include specifically the “backup program” itself. See Br. 7-8. Appellant also argues that because claim 1 specifically requires sending and retrieving “the backup program,” and because Craswell and Choi broadly disclose “programs” and do not specifically disclose “the backup program” as a program that is backed-up and retrieved, the Examiner’s rejection is deficient and fails to render claim 1 obvious. Id. The Examiner responds that both Craswell and Choi disclose sending backup data, including “programs,” from a mobile communication device to a remote backup device. See Ans. 11 (citing Craswell, para. [0016] and Choi, para. [0006]). The Examiner also responds that Choi discloses retrieving the stored backup data, including “programs,” from the remote storage device. See Ans. 11 (citing Choi, para. [0006]). We are not persuaded by Appellant’s arguments, because the alleged distinction between claim 1 and the combination of Craswell and Choi, i.e., Appeal 2011-013624 Application 11/835,628 4 “the backup program,” is directed to non-functional descriptive material. Nonfunctional descriptive material cannot render nonobvious an invention that would have otherwise been obvious. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability). The claim feature, i.e., “the backup program,” merely describes the program that is being acted upon by the procedures of claim 1. While we recognize that steps in addition to those steps recited in claim 1 may be necessary in order for the backup program to back-itself-up, no such steps are recited in claim 1. However, since claim 1 uses the transitional term “comprising,” which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended so as not to exclude additional, unrecited elements or method steps (see Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004), and since it is well established that limitations not appearing in the claims cannot be relied upon for patentability (see In re Self, 671 F.2d 1344, 1348 (CCPA 1982)), we note that simply describing the program that is sent or retrieved as “the backup program,” does not serve to infer or import any additional undisclosed steps into the claim. Therefore, we are not persuaded that the non-functional descriptive material, i.e. “the backup program,” of claim 1 is patentably distinguishable from the “programs” disclosed by the Examiner’s combination of Craswell, Choi, and Leppinen. Appellant further argues that Leppinen fails to disclose the paragraphs (f) and (g) of claim 1 as quoted supra. Br. 8. Although the Examiner relies on Leppinen in combination with Craswell and Choi for the rejection of Appeal 2011-013624 Application 11/835,628 5 claim 1, the Examiner does not rely on Leppinen to teach the features of paragraphs (f) and (g) of claim 1. See Ans. 6. Thus, we are not persuaded that Examiner’s rejection is in error with regard to its reliance upon Leppinen, because Appellant’s argument is not commensurate with the Examiner’s actual rejection. Accordingly, we sustain the Examiner’s rejection of claim 1, and claims 2, 3, 7-11, 13-17, and 19-23, which fall therewith, under 35 U.S.C. § 103(a) as unpatentable over Craswell, Choi, and Leppinen. DECISION We affirm the Examiner’s rejection claims 1-3, 7-11, 13-17, and 19- 23. 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 Klh Copy with citationCopy as parenthetical citation