Ex Parte Zettler et al

Patent Trial and Appeal Board

Oct 23, 2014

12014555 (P.T.A.B. Oct. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte THOMAS ZETTLER and
FRIEDRICH GEISSLER
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Appeal 2012-005298
Application 12/014,555
Technology Center 2400
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Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
JILL D. HILL, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1‒6 and 13‒26. App. Br. 2. Claims 7‒12 have been
cancelled. Claims App’x. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relate[s] to devices or methods for
providing data.” Spec. para. 1. Independent claim 1 is illustrative of the
claims on appeal and is reproduced below:
1. A device for providing data via a network, the device
comprising:
a processor to manage peer-to-peer connections via the
network;
a mass storage coupled to the processor, the mass storage
to store data; and
a power control coupled to the processor, wherein
the power control configured to control a
switched-on time of the device independent of actions
taken by a user of the device, and
the device provides data from the mass storage to
the network via a peer-to-peer connection during the
switched-on time such that data from the mass storage is
sufficiently available to the network.

REFERENCES RELIED ON BY THE EXAMINER
Khedouri US 2006/0008256 A1 Jan. 12, 2006
Parry
Moon
US 7,002,703 B2
US 7,617,231 B2
Feb. 21, 2006
Nov. 10, 2009

THE REJECTIONS ON APPEAL
Claims 1‒6, 13‒16, and 23‒26 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Khedouri and Parry. Ans. 5.
Claim 17 is rejected under 35 U.S.C. § 102(b) as being anticipated by
Khedouri. Ans. 11.
Claims 18‒22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Khedouri and Moon. Ans. 12.

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ANALYSIS
The rejection of claims 1‒6, 13‒16, and 23‒26
as being unpatentable over Khedouri and Parry
Appellants present separate arguments for claims 1‒6 (with additional
arguments directed to claim 5), claims 13‒16, and claims 23‒26 (with
additional arguments directed to claim 24). App. Br. 7‒13. We select
claims 1, 5, 13, 23, and 24 for review with the remaining claims, i.e., 2‒4, 6,
14‒16, 25, and 26, standing or falling with their respective parent claim. See
37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claim 1
Independent apparatus claim 1 includes the limitation of a power
control “configured to control a switched-on time of the device independent
of actions taken by a user of the device” and also the limitation of the device
providing “data from the mass storage [of the device] to the network via a
peer-to-peer connection during the switched-on time.”
The Examiner initially relies on Khedouri for only teaching the former
“switched-on time” limitation (Ans. 5) but subsequently finds that Khedouri
also teaches the latter limitation of providing data from the mass storage to
the network via a peer-to-peer connection (Ans. 15). The Examiner further
finds that Parry discloses both such limitations. Ans. 5, 6, 15. As the
Examiner initially only relied on Khedouri for disclosing the “switched-on
time” limitation, the Examiner concluded that it would have been obvious to
combine the teachings of Parry and Khedouri with the motivation being to
provide “automatic shut off/on [of the] device [] to conserve power if it is
not in use for a specified period of time.” Ans. 6.
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In the Reply Brief, Appellants address the Examiner’s additional
reliance on Khedouri for teaching the latter limitation of providing data to
the network. Reply Br. 3. Appellants state that the Examiner “adds a new
ground of rejection for this limitation” and understands that “the Examiner
now appears to assert that both Khedouri and Parry” disclose this limitation.
Reply Br. 3. Accordingly, Appellants contend that “it is not quite clear
exactly what combination of elements the Examiner is proposing to
combine.” Reply Br. 3, 6. Appellants do not further elaborate on this point
and instead, Appellants present arguments as to why Khedouri and Parry
each fail to teach these limitations.1 See, e.g., Reply Br. 3‒6. These
arguments, as well as those expressed in Appellants’ Appeal Brief, are
addressed as follows.
Appellants replicate that portion of the Examiner’s Answer where the
Examiner identifies where Khedouri discloses this latter limitation. Reply
Br. 3; see also Ans. 15 (referencing Khedouri para. 82 and Fig. 3 (and
specifically “peer-to-peer network connection between 311 and 314”)). In
this replicated portion, the Examiner concludes that “one can further assume
these devices are communicating while they are switched on and [their]
storage [is] available to the network.” Reply Br. 3 (emphasis added by
Appellants). Appellants contend that “the Examiner’s assumption is based
on conjecture and not based on Khedouri’s disclosure.” Reply Br. 3. We
disagree with Appellants’ contention. First, Appellants provide no

1 Where the Examiner’s Answer contains a “new ground” of rejection not
designated as such, remedy may be sought by way of petition under 37
C.F.R. 1.181. See MPEP § 1207.03(b); see also 37 C.F.R. 41.40.
Appellants, having elected to maintain this appeal by filing a reply brief,
have waived any right to remedy that may have existed via petition for
purposes of the present appeal.
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explanation as to why one cannot assume that the devices communicate
while they are switched on and their storage available. Further, and perhaps
more importantly, Khedouri’s newly cited paragraph 82 teaches “transfers of
content to and from other peer devices.” In short, Appellants do not explain
how this teaching in Khedouri fails to disclose providing “data from the
mass storage [of the device] to the network via a peer-to-peer connection
during the switched-on time” as recited in claim 1. We also note the
Examiner’s earlier reference to Khedouri’s next paragraph, paragraph 83,
and its teaching that “FIG. 6 depicts a peer-to-peer communication.” See
Ans. 5. We further note that Appellants’ own reference to Khedouri,
paragraph 73 (a paragraph not expressly cited by the Examiner), teaches that
“[u]sers preferably have the option to turn privacy on or off in order to
disable other users from seeing their audio and/or video files and from
obtaining copies from the player device” (emphasis added). App. Br. 9.
Appellants do not explain how this paragraph 73 also fails to teach the
limitation of “provid[ing] data from the mass storage to the network via a
peer-to-peer connection.” Additionally, Appellants state that Khedouri
teaches using a timer “to limit the length of video recordings provided to the
peer-to-peer network.” App. Br. 9. This understanding of Khedouri appears
to be an acknowledgement by Appellants that Khedouri teaches the
limitation of providing “data from the mass storage [of the device] to the
network via a peer-to-peer connection,” albeit for a limited time.
Appellants also contend that Khedouri teaches that the devices’
“‘device-network synchronization’ is an operation that is separate from
Khedouri’[s] peer-to-peer operations that do not use the Internet.” Reply Br.
4 (referencing Khedouri, para. 77). More precisely, Appellants contend that
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“[t]here is no teaching in Khedouri that Khedouri’s portable audio/video
device provides data from a mass storage to the network via a peer-to-peer
connection.” Reply Br. 4. We disagree. Khedouri, paragraph 77 discusses
“how the system provides a way for player devices to connect peer-to-peer
(also known as ‘P2P [sic ’]) to share content without having to access the
Internet” (emphasis added). This same paragraph of Khedouri continues
that, as of the time of its writing, “all P2P software is currently written for
PC’s and requires a continuous Internet connection during use.” Hence,
portable or not, Khedouri’s paragraph 77 teaches a device (i.e., a PC or a
player device) having a P2P connection for sharing content whether the
device is connected to the Internet or not. Accordingly, ascertaining whether
Khedouri’s “device-network synchronization” is separate from Khedouri’s
peer-to-peer operation (as Appellants allege at Reply Br. 4) is not indicative
that Khedouri, paragraph 77 fails to teach or suggest the limitation of “the
device provides data from the mass storage to the network via a peer-to-peer
connection” as claimed.
Appellants also address the Examiner’s finding that Khedouri
discloses the former limitation directed to “a switched-on time of the
device.” App. Br. 8, 9. Here, Appellants contend that Khedouri’s “device
has a user settable timer that shuts off the WiFi connection in order to
conserve power” and as such, does not teach this “switched-on” limitation.
App. Br. 8, 9 (referencing Khedouri, paras. 46 and 74). To be clear, the
Examiner addresses Khedouri’s disclosure, at paragraph 46, of an
“automatic-off function that shuts off the player to conserve power if it is not
in use for a specified period of time and preferably includes a WiFi on/off
timer.” Ans. 5. The Examiner “broadly interpret[s]” this passage finding
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that as this “off function” shuts off the player, Khedouri teaches the
limitation of the power control being “configured to control a switched-on
time of the device.” Ans. 5. The Examiner further finds that Khedouri’s
“automatic” off function further satisfies the limitation that this switched-on
time is “independent of actions taken by a user of the device.” Ans. 5; see
also App. Br. 9. Appellants’ contention that Khedouri’s disclosure of a
“timer that shuts off the WiFi connection” (App. Br. 8, 9) is a failure to
teach the claimed “control a switched-on time of the device” is not
persuasive of Examiner error.
It is also noted that Appellants additionally reference Khedouri,
paragraph 74, a paragraph not expressly cited by the Examiner. App. Br. 9.
Khedouri, paragraph 74 states that “[w]hen items are queued in the stack, the
WiFi will preferably periodically turn on to scan for WiFi connectivity and
then turn off again in order to conserve power.” This is further indication
that Khedouri’s device will independently operate or “turn on” consistent
with the Examiner’s findings.
Appellants also address Khedouri and that it “already teaches a user
settable timer.” App. Br. 9. Appellants use this as a premise that “[o]ne of
skill in the art would not combine Parry with Khedouri to provide a feature
that Khedouri already has.” App. Br. 9; Reply Br. 6. However, at the time
of the stated combination, the Examiner was relying on Parry for disclosing
the limitation directed to providing data from the mass storage to the
network. Ans. 5. As such, Appellants’ contention that one skilled in the art
would not combine the two references is without merit.
In view of the above, Appellants have not persuaded us that the
Examiner’s reliance on Khedouri is misplaced or in error.
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Appellants also address Parry and the reasons provided by the
Examiner for reliance thereon. App. Br. 7‒9; Reply Br. 4‒6. Appellants
initially contend that “Parry teaches scheduling for downloading data from
the network” and that Parry “does not teach data from the mass storage
being sufficiently available to the network during the switched-on time.”
App. Br. 7. There is merit to Appellants’ contention regarding the
Examiner’s reliance on Parry for disclosing the limitation of providing “data
from the mass storage to the network.” This is because the portion of Parry
referenced by the Examiner as disclosing this limitation (i.e., Parry 10:38‒
48; Ans. 5) is directed to Parry’s device receiving a “download” rather than
issuing data “from” the device “to” the network. Accordingly, we agree that
the Examiner’s reliance on this portion of Parry for disclosing this limitation
is faulty. However, the Examiner also found that a different portion of
Parry, i.e., Parry 8:24‒26, discloses that the device “provides data from the
mass storage to the network via a peer-to-peer connection.” Ans. 15. This
portion of Parry states that “[a] Web server 32 may also be accessed by other
web devices in a peer-to-peer relationship.” Parry 8:24–26. The Examiner
finds that “a web server can be [a] hardware or software application that can
deliver content[] through [the] [I]nternet to the devices, web server also
host[s] websites and can be used as a data storage.” Ans. 15.
In addressing this additional recitation to Parry, Appellants understand
that Parry “makes data available to the network” “because the claim term
‘switched-on time’ is broad enough to cover the teaching.” Reply Br. 4.
That is not a proper understanding of the Examiner’s reliance on Parry. The
Examiner finds that Parry discloses both the “providing data from storage”
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limitation and also the “switched-on time” limitation (Ans. 15), not that the
one is taught because of the broad definition of the other.
Appellants also contend that “Parry only relates to the web server
being powered up at the scheduled download time to download data from
the network to the device, which is the opposite of providing data to the
network from the device.” Reply Br. 5. However, this contention addresses
the Examiner’s initially referenced location in Parry (i.e., Parry 10:38‒48;
Ans. 5 and addressed supra); this contention does not explain how the
Examiner’s subsequently referenced location in Parry (i.e., Parry 8:24‒26
directed to web server 32; Ans. 15) also fails to disclose this limitation.
Appellants also note an apparent discrepancy between these two
referenced locations in Parry because one is directed to web server 32 while
the other is directed to web server 52; and that they are separate
embodiments such that the disclosure of web server 32 being available to a
peer-to-peer network does not teach the same for web server 52. Reply Br.
5. A closer reading of Parry disproves Appellants’ contention. Both web
server 32 and 52 of Parry are described as being “embedded Web servers.”
Parry 7:38; 9:5. Web server 32 is directed to “the present invention” while
web server 52 is directed to “a preferred embodiment according to the
present invention.” Parry 7:28, 29; 9:4, 5. Further, Parry states that Figure 2
(where web server 32 is described and illustrated) “is a block diagram . . .
for use in the methods of the present invention” while Figure 3 (where web
server 52 is described and illustrated) is “a system of network components
used in the methods of the present invention.” Parry 6:61‒65. Accordingly,
Appellants’ contention that a description of the capabilities of web server 32
is not applicable to web server 52 is not persuasive.
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Appellants also contend that “Parry does not even teach a timer that
shuts off/on the device.” App. Br. 9. On this point, the Examiner references
Parry, column 10, lines 38‒48. Ans. 5, 15. This cited portion states that
Parry’s “internal timer may also be configured to automatically ‘power up’
Web server 52 at the scheduled download time, allowing printing device 50
to be turned off prior to the download time.” Appellants do not adequately
explain how this automatic powering up of the web server for downloading a
document to be printed, and its ability to be turned off at other times, fails to
teach “a timer that shuts off/on the device,” or, more critically, fails to teach
the limitation of a “power control configured to control a switched-on time
of the device independent of actions taken by a user of the device.”
In view of the above, Appellants have not persuaded us that the
Examiner’s reliance on Parry is misplaced or in error.
In summary, we are not persuaded of Examiner error in relying on
Khedouri and Parry for rendering claim 1 obvious.
Claim 5
Claim 5 depends from claim 1 and includes the limitation of the
switched-on time “depending on a ratio between an amount of data
downloaded by the device from the network and an amount of data uploaded
by the device to the network.” The Examiner relies on Parry, column 4,
lines 15‒21 and column 10, lines 16‒54 for disclosing this limitation. Ans.
7, 16. Appellants contend that Parry does not disclose “a switched-on time
that depends on a ratio” as claimed. App. Br. 10; Reply Br. 6, 7.
Parry, column 4, lines 15‒21 teaches that “[b]andwidth and file size
are particularly determinative of data transmission speed” and that
bandwidth “is directly proportional to the amount of data transmitted or
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received per unit time.” The Examiner paraphrases Parry, column 10, lines
16‒54 stating that “the timer is configured to power up the web serve[r] for
scheduling and rescheduling data and [that] the scheduling can be
configured based on the available bandwidth.” Ans. 16. This section of
Parry discusses the ability to schedule “to avoid peak periods of bandwidth
use, busy servers, peak periods of microprocessor 62 use, more expensive
internet connection charges, etc.” Parry 10:21–23. This same section also
states that “[v]arious intervals or frequencies for data downloads can also be
scheduled.” Parry 10:24–25. Hence, Parry addresses the scheduling of
bandwidth use which is contingent on “the amount of data transmitted or
received.” Appellants do not explain how this disclosure in Parry fails to
teach or suggest a time “depending on a ratio between an amount of data
downloaded . . . and an amount of data uploaded” as claimed. See App. Br.
10; Reply Br. 7. In short, Appellants are not persuasive in indicating how
these disclosures in Parry, and their application by the Examiner, are in
error.
Claim 13
Independent apparatus claim 13 includes the limitation of a “remote
control circuit activating time periods in which the device provides data
from the storage device to the network via a peer-to-peer connection.”
Appellants repeat the contention that Parry, column 10, lines 38‒53 is
directed to “downloading data from the network” and hence, does not
disclose this limitation. App. Br. 11. As indicated supra, we are in
agreement that this section of Parry is directed to downloading. However,
the Examiner also relies on another section of Parry, and on Khedouri, for
the limitation of providing “data from the storage device to the network.”
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Ans. 15. Appellants do not indicate how these findings by the Examiner are
in error, as expressed supra. Appellants also repeat the previous allegations
pertaining to “time periods independent of actions taken by a user of the
device.” App. Br. 11. Such allegations are not persuasive for reasons
previously stated. Appellants also contend that their discussion of claim 1
above “may also be applied to independent claims 13 and 23” as well. As
Appellants’ discussion regarding claim 1 is not persuasive of Examiner error
(see supra), we likewise are not persuaded that the Examiner’s rejection of
claim 13 is likewise in error.
Claim 23
Independent method claim 23 contains limitations which track those
of apparatus claims 1 and 13. Appellants repeat the arguments made relating
to these similar limitations. App. Br. 12, 13. For similar reasons, we are not
persuaded the Examiner’s rejection of claim 23 is in error.
Claim 24
Method claim 24 depends from claim 23 and includes the additional
step of “wherein the controlling step comprises setting an upload/download
ratio for the at least one peer.” Appellants contend that “Khedouri and Parry
do not teach or suggest this limitation and do not [teach] setting a ratio.”
App. Br. 13; see also Reply Br. 7. More succinctly, Appellants contend that
the Examiner addressed claim 24 in a manner similar to claim 5 and
therefore, Appellants submit “that the above discussion regarding dependent
claim 5 may also be applied to dependent claim 24.” Reply Br. 8. As
before, Appellants are not persuasive in indicating how these disclosures in
Parry, and their application by the Examiner, are in error.
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In summary, for the above reasons and based on the record presented,
we sustain the Examiner’s rejection of claims 1‒6, 13‒16, and 23‒26 as
being obvious over Khedouri and Parry.
The rejection of claim 17 as being anticipated by Khedouri
Independent claim 17 is directed to a “hardware-implemented
function to support managing of peer-to-peer connections.” Appellants
contend that this limitation is not disclosed in Khedouri because Khedouri is
directed to a “software” function. App. Br. 13, 14. Appellants focus on
Khedouri’s teaching, in paragraph 46, of “software on the portable player
device” but do not address the Examiner’s reference to Khedouri, paragraphs
44 and 45. Ans. 11, 20. These identified paragraphs discuss such hardware
as controllers, microprocessors, memories, clocks, a user interface display,
buttons, keys, toggles, etc. Appellants do not explain how such hardware
fails to “function to support managing of peer-to-peer connections” as
claimed. Appellants’ contention of Examiner error is not persuasive. We
sustain the Examiner’s rejection of claim 17 as being anticipated by
Khedouri.
The rejection of claims 18‒22
as being unpatentable over Khedouri and Moon
Appellants contend that dependent claims 18‒22 “stand or fall with
claim 17.” App. Br. 15. Accordingly, we sustain the Examiner’s rejection
of claims 18‒22.

DECISION
The Examiner’s rejections of claims 1‒6 and 13‒26 are affirmed.
No time period for taking any subsequent action in connection with
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this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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