Lenovo (Singapore) Pte. Ltd.

Patent Trials and Appeals Board

Jan 13, 2022

2020006521 (P.T.A.B. Jan. 13, 2022)

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. 14/296,940 06/05/2014 John Carl Mese RPS920140171- US-NP(018-2) 2153 38790 7590 01/13/2022 THE SMALL PATENT LAW GROUP LLC 1423 Strassner Dr. Suite 100 Brentwood, MO 63144 EXAMINER BLAUFELD, JUSTIN R ART UNIT PAPER NUMBER 2176 NOTIFICATION DATE DELIVERY MODE 01/13/2022 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): Docket@splglaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JOHN CARL MESE, NATHAN J. PETERSON, RUSSELL SPEIGHT VANBLON, and ARNOLD S. WEKSLER ____________________ Appeal 2020-006521 Application 14/296,940 Technology Center 2100 ____________________ Before ERIC S. FRAHM, JOHN A. EVANS, and JOYCE CRAIG, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Introduction Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 2, 4-7, and 9-26, all of the claims pending on 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Lenovo (Singapore) Pte. Ltd. (Appeal Br. 3). Appeal 2020-006521 Application 14/296,940 2 appeal. Claims 3 and 8 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE the Examiner’s anticipation and obviousness rejections of all pending claims. Appellant’s Disclosed Invention Appellant’s disclosed invention, entitled Method and Device to Manage Temporary Content on a Mobile Device (see Spec., Title), “generally relate[s] to mobile device content management in connection with cloud synchronization services” (Spec. ¶ 11:10-5:3), and more specifically, to a way of managing temporary content (e.g., various content not wished by the user to be backed up to cloud storage device, such as unwanted selfies or photos and content that are only of short-term interest) by avoiding backing up temporary content without having to turn off or disconnect WiFi (see Spec., Abstr.; id. ¶¶ 2, 3). Exemplary Claim Claims 1 (method), 10 (device), and 17 (computer program product) are independent claims, and each recites designating user collected content on a mobile device as temporary or non-temporary content and performing a synchronization operation with a remote backup storage medium by i) transferring the non-temporary content from the mobile device to the remote backup storage medium, and: ii) preventing transfer and storage of the temporary content on the remote backup storage medium of the hosting service based on the indicator, while maintaining the temporary content on the local storage medium of the mobile device. Appeal Br. 40, Claims App. (claim 1; see also claims 10, 17). Exemplary independent claim 1 under appeal, with emphases and bracketed lettering added, reads as follows: Appeal 2020-006521 Application 14/296,940 3 1. A method, comprising: collecting content at a mobile device based on user input to obtain user collected content; receiving, through a user interface of the mobile device, an indicator designating one or more of i) a type of content, and ii) at least a portion of the user collected content previously collected, to represent temporary content, wherein a remainder of the user collected content, other than the temporary content, represents non-temporary content; and performing a synchronization operation with a remote backup storage medium of a hosting service, wherein the synchronization operation includes: i) transferring the non-temporary content from a local storage medium of the mobile device to a remote backup storage medium of the hosting service; and ii) preventing transfer and storage of the temporary content on the remote backup storage medium of the hosting service based on the indicator, while maintaining the temporary content on the local storage medium of the mobile device. Appeal Br. 40, Claims App. (emphasis added). Examiner’s Rejections (1) The Examiner rejected claims 1, 2, 4-7, 9-14, and 16-26 as being anticipated under 35 U.S.C. § 102(a)(1) by Weber et al. (US 2010/0146235 A1; published June 10, 2010) (hereinafter “Weber”). Final Act. 4-15. (2) The Examiner rejected claim 15 as being unpatentable under 35 U.S.C. § 103 over Weber and Ford et al. (US 2015/0310188 A1; published Oct. 29, 2015, and effectively filed April 23, 2014) (hereinafter “Ford”). Final Act. 15-18. Appeal 2020-006521 Application 14/296,940 4 ISSUE Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 11- 38), the following dispositive issue is presented on appeal:2 Has Appellant shown the Examiner erred in in rejecting (1) claims 1, 2, 4-7, 9-14, and 16-26 as being anticipated under 35 U.S.C. § 102(a)(1) by Weber; and (2) claim 15 as being unpatentable under 35 U.S.C. § 103 over the combination of Weber and Ford, because the Examiner has not sufficiently shown Weber discloses, teaches, or suggests preventing transfer and storage of temporary content on a remote backup storage medium of a hosting device during a synchronization operation, and while maintaining the temporary content on the local storage medium of the mobile device, as set forth in limitation ii of independent claim 1 (see claim 1, limitation ii), and as commensurately similarly recited in remaining independent claims 10 and 17? ANALYSIS Claim 1 requires “preventing transfer and storage of the temporary content on the remote backup storage medium of the hosting service based on the indicator, while maintaining the temporary content on the local storage medium of the mobile device” (claim 1, limitation ii). Remaining 2 We recognize that Appellant’s arguments present additional issues (such as Weber failing to teach temporary content, and as to claims 2, 5, 6, 9, 11, and 19 argued separately and with particularity). We were persuaded of error by the issue presented as to limitation ii, and as such we do not reach the additional issues as this issue is dispositive of the appeal. Appeal 2020-006521 Application 14/296,940 5 independent claims 10 and 17 recite commensurate limitations. The Examiner relies on Weber’s Figure 2 and paragraphs 23, 27, and 29 as anticipating limitation ii (see Final Act. 6-7; Ans. 4-6). We agree with Appellant’s contentions (see Appeal. Br. 12-15) that Weber has not been shown to disclose limitation ii recited in claim 1, and similarly recited in claims 10 and 17. Specifically, with regard to claims 1, 10, and 17, we agree with Appellant’s arguments (see Appeal Br. 12-15) that Weber fails to disclose preventing transfer and storage of temporary content “while maintaining the temporary content on the local storage medium of the mobile device” (claim 1, limitation ii) during a synchronization operation, as recited in limitation ii. Specifically, in the statement of the anticipation rejection in the Final Office Action, the Examiner maps limitation ii (see Final Act. 6-7, citing Weber, Fig. 2, ¶¶ 23, 27, 29) to portions of Weber, but omits any discussion of, or mapping of, which element in Weber corresponds to the recited “local storage medium” in claim 1 (claim 1, limitations i and ii). The Examiner does not specify whether Weber’s first memory area 204, and/or second memory area 206, is relied on as disclosing the recited “local storage medium” of a mobile device. The Examiner relies on Weber’s storage device 130 (see Fig. 2) as disclosing the “remote backup storage medium of the hosting service” recited in limitation ii of claim 1, and similarly recited in claims 10 and 17 (see Final Act. 5-6). Weber’s uses transfer criteria 210 to determine which content items 208 are to be either (i) automatically deleted from a first local memory area 204 after a predetermined time period 204, or (ii) automatically transferred to a second local memory area 206 (see Weber ¶ 23). Weber also designates Appeal 2020-006521 Application 14/296,940 6 content items 208 to be automatically “uploaded to a web site (e.g., stored by the second memory area 206 or by the storage device 130) upon unlocking of the mobile device” (Weber ¶ 27) (italicized emphasis added). Thus, although Weber’s automatic deletion of content items 208 from the first memory area 204 (see Weber ¶ 23) might disclose preventing transfer and storage of temporary content from a local storage device to a remote storage device, this prevention operation is performed after a predetermined time period, and not “while maintaining the temporary content on the local storage medium of the mobile device” as in limitation ii of claim 1. And, we agree with Appellant that Weber cannot meet limitation ii of claim 1 because Weber deletes content items 208 prior to transfer to the remote storage device 130, and therefore Weber has no access to temporary content to prevent transfer activity (see Appeal Br. 15). In other words, Weber is silent as to, and the Examiner leaves us speculate as to, how Weber prevents transfer and storage of “temporary content on the remote backup storage medium” (claim 1, limitation ii) (emphasis added) while at the same time “maintaining the temporary content on the local storage medium of the mobile device” (claim 1, limitation ii). In this light, the Examiner has not articulated a satisfactory or rational explanation as to how/why Weber discloses disputed limitation ii in claim 1, and/or the commensurate limitations in claims 10 and 17. At best, the Examiner leaves us to speculate as to how one of ordinary skill in the art might somehow modify Figure 2 and paragraphs 23 and 27 of Weber to meet limitation ii recited in claims 1, 10, and 17. We will not resort to speculation or assumptions to cure the deficiencies in the Examiner’s fact finding and reasoning. See Warner, 379 F.2d at 1017; Ex parte Braeken, Appeal 2020-006521 Application 14/296,940 7 54 USPQ2d 1110, 1112 (BPAI 1999) (unpublished) (“The review authorized by 35 U.S.C. [§] 134 is not a process whereby the examiner . . . invite[s] the [B]oard to examine the application and resolve patentability in the first instance.”). Therefore, Appellant’s contentions that the Examiner has not shown Weber discloses the method of performing a synchronization operation including preventing transfer and storage of temporary content on a remote backup storage medium of a hosting service, including limitation ii recited in claim 1, and commensurately recited in claims 10 and 17, are persuasive. In view of the foregoing, Appellant has established that the Examiner erred in determining that Weber anticipates independent claims 1, 10, and 17, as well as claims 2, 4-7, 9, 11-14, 16, and 18-26 (which depend respectively from claims 1, 10, and 17). Further, because the Examiner relies on Weber’s teachings in reaching the finding of anticipation for claims 10 and 14, and claim 15 depends from claims 10 and 14, Appellant has also established the Examiner erred in determining that claim 15 would have been obvious in view of the combination of Weber and Ford. Because Appellant has established that the Examiner erred in rejecting (1) claims 1, 2, 4-7, 9-14, and 16-26 as being anticipated under 35 U.S.C. § 102(a)(1) by Weber; and (2) claim 15 as being unpatentable under 35 U.S.C. § 103 over the combination of Weber and Ford, the anticipation rejection of claims 1, 3-11, 13-19, 22, and 23 and obviousness rejection of claim 15, both based on Weber, are reversed. Appeal 2020-006521 Application 14/296,940 8 CONCLUSION For all of the reasons above, we hold as follows: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4-7, 9-14, 16- 26 102(a)(1) Weber 1, 2, 4-7, 9-14, 16- 26 15 103 Weber, Ford 15 Overall Outcome 1, 2, 4-7, 9-26 REVERSED