Renato de Luna

Patent Trials and Appeals Board

Sep 15, 2021

2020004676 (P.T.A.B. Sep. 15, 2021)

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.
15/821,920 11/24/2017 Renato M. de Luna 17.N09.01-US 3623
110636 7590 09/15/2021
R.M. de Luna I.P. Law Office
34 Whitcomb Road
Bolton, MA 01740
EXAMINER
KHAN, HASSAN ABDUR-RAHMAN
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
09/15/2021 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):
renato@deluna-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RENATO M. DE LUNA
____________________

Appeal 2020-004676
Application 15/821,9201
Technology Center 2400
____________________

Before MARC S. HOFF, CARL L. SILVERMAN and
MICHAEL T. CYGAN, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1–8.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.
Appellant’s invention is an office infrastructure device (OID) that
includes data storage, a unique device identification code, and an index for
registering user data files available within a work group. User executable
code within the OID is accessed through a host personal computer to launch

1 Appellants identify Fortinet, Inc. as the real party in interest. Appeal Br. 3.
2 Claim 17 has been cancelled.
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thereon a user-definable work space. In an embodiment, a collaborative
electronic work group is defined comprising a plurality of OIDs. Abstract.

Claim 1 is reproduced below:
1. An office infrastructure device, suited for connection to
a host personal computer, comprising:
(a) user-accessible data storage for writing and reading work
files;
(b) system-support data storage distinct from said user-
accessible data storage;
(b) user-executable code stored in said system-support data
storage that launches a user-definable work space on said host
personal computer when the office infrastructure device is connected
to said host personal computer, the launched user-definable work
space providing access to said user-accessible data storage and to a
private internet site hosting work files from said user-accessible data
storage; and
(c) a work file index maintained within said system-support
data storage and used by the work space to track work files stored in
said user-accessible data storage.
Appeal Br. 21 (Claims App.).

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The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Keenan US 2008/0172555 A1 July 17, 2008
Hayter et al.
(“Hayter”)
US 8,407,773 B1 March 26, 2013

Claims 1–8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Keenan and Hayter. Final Act. 2.

Throughout this decision, we make reference to the Appeal Brief filed
Mar. 6, 2020 (“Appeal Br.”); the Reply Brief filed June 3, 2020 (“Reply
Br.”); and the Examiner’s Answer mailed April 3, 2020 (“Ans.”) for their
respective details.
ISSUES
1. Does the combination of Keenan and Hayter teach or suggest
user-accessible data storage, and system-support data storage distinct from
said user-accessible data storage?
2. Does Hayter teach away from combination with Keenan?
3. Does the combination of Keenan and Hayter teach or suggest a
unique identification code used for authentication by the work space to
effect communicative linkage of two or more work group nodes?
PRINCIPLES OF LAW
To teach away, prior art must “criticize, discredit, or otherwise
discourage the solution claimed.” Mere disclosure of alternative
embodiments is not a teaching away. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
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Our reviewing court has held that “[a] reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1085, 1090 (Fed. Cir. 1995).

ANALYSIS
Claim 1
Independent claim 1 recites, in pertinent part, “user-executable code
stored in said system-support data storage that launches a user-definable
work space on said host personal computer when the office infrastructure
device is connected.”
Appellant argues that the Keenan workspace does not originate from a
local peripheral device. Appellant contends that Keenan’s personal initiation
device (PID) (USB boot drive) launches “work space” functions from code
on remote network application servers. Appeal Br. 8–9. According to
Appellant, Keenan’s PID is “largely not conceptualized as or implemented
for user work file storage.” Appeal Br. 10.
Appellant’s argument is not persuasive. We agree with the Examiner’s
finding that Keenan teaches an office infrastructure device (thin client on
USB memory stick) that causes a personal computing device to display a
remote application running on the remote application server. Ans. 7–8.
Appellant further argues that Keenan does not teach the launching of a
“user-definable work space on said host personal computer when the office
infrastructure device is connected to said host personal computer” because
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Keenan’s work space functions are “launched thereafter onto the booted
network OS from code on remote network application servers.” Appeal Br.
9. This argument is unavailing because the user will view the remotely
running application on the personal computing device, and “may interact
with the remote application to perform” such tasks as “access data, input
data, access documents, create documents,” et cetera. Ans. 8.
Appellant next argues that the Examiner did not treat as separate the
“system support data storage” and “user-accessible data storage” limitations.
Appeal Br. 11. Appellant’s argument is not persuasive. The Examiner finds,
and we agree, that Keenan discloses an office infrastructure device with
local user-accessible data storage (the nonvolatile memory of the thin client
USB memory stick). Ans. 10 (citing Keenan ¶ 6). The Examiner further
finds that Keenan teaches remote storage, equated with the claimed system
support data storage, at the remote application server. Id.
Teaching Away
Appellant argues that Hayter teaches away from combination with
Keenan. Appeal Br. 12–14. Appellant contends that “nothing was suggested
in the server-focused technology of the Hayter reference that would lead
towards the peripheral device technology espoused by the applicant.”
Appeal Br. 13. “[B]y focusing on obtaining the overwhelming majority of
post-boot network services from the existing network’s core, Keenan
‘teaches away’ from applicant’s edge-facing approach.” Appeal Br. 14.
According to Appellant, Hayter “relied heavily upon the accommodation of
its ‘fit client’ to ‘existing network technologies’ to provide for its
virtualization services.” Nothing was suggested in Hayter “that would lead
towards the peripheral device technology espoused by the applicant.”
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Appeal Br. 13. Appellant asserts that because Keenan expresses a
“preference” for a “thin client,” and Hayter expresses a “preference” for a
“fit client,” the two “dissonant references” would not be combinable in the
manner “speculated” by the examiner. Appeal Br. 14.
We are not persuaded by Appellant’s argument. Rather than
criticizing, discouraging, or discrediting the solution claimed, we find that
Hayter in fact teaches an embodiment which provides a thin-client
component to support remote applications. Fulton, 391 F.3d at 1201; Hayter
col. 11:32–34. We further agree with the Examiner that Keenan and Hayter
“both involve connecting local users or host machines to the remote server,”
and that the ordinarily skilled artisan would have been led in the direction of
modifying Keenan to include the claimed work file index. Ans. 11; Final
Act. 4. We agree with the Examiner that it would have been obvious to
combine Keenan’s use of a local host machine to remotely connect to a
remote server, with Hayter’s tracking and synchronization capabilities, to
provide access to recent versions of data and applications based on
information provided by a mobile device. Final Act. 4.
Because we determine that the Examiner did not err in rejecting claim
1 over Keenan and Hayter, we will sustain the Examiner’s § 103 rejection of
claims 1–3.
Independent claim 4
Appellant argues that the Examiner did not properly treat independent
claim 4 as distinct from independent claim 1. Appeal Br. 7. In response, the
Examiner found, as with claim 1, that Hayter teaches the “work file index”
and the tracking/synchronizing of work files recited in claims 1 and 4, and
found to be missing from Keenan. Ans. 5 (citing Hayter col. 27:21–44).
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In response to the Answer, Appellant further argues that “the
examiner suggests that Hayter’s ‘data center’ reads upon appellant’s
‘another node.’” Reply Br. 2. We are not persuaded that the Examiner
suggested such an interpretation, or that the Examiner erred in rejecting
claim 4. As discussed supra with respect to claim 1, the Examiner found that
Hayter teaches the claim limitation of a work file index and tracking said
work files. Final Act. 4. Claim 4’s distinction from claim 1 consists largely
in the recitation of two or more work group nodes, rather than just one, each
such node including a respective office infrastructure device having a work
file index to track work files. We determine that the Examiner’s common
rejection of claim 1 and claim 4 in the Final Action is based on the
Examiner’s finding that Hayter teaches tracking / synchronizing work files,
whether it be with respect to a single OID (claim 1) or plural OIDs (claim 4).
See Ans. 5. We determine that the Examiner did not err in rejecting claim 4,
and we will sustain the Examiner’s 35 U.S.C. § 103 rejection.
Claims 5–7
Claim 5 recites, in pertinent part, “wherein the office infrastructure
device at each node further comprises . . . a unique identification code used
for authentication by said work space to effect said communicative linkage
of said two or more work group nodes.”
The Examiner finds that the entry of a username, password, and IP
address of the host machine corresponds to this limitation. Final Act. 6. We
determine that the Examiner erred in so finding. The ID and password
credentials cited by the Examiner are supplied by the user once the local host
machine is “connected up to the desktop with an Internet connection.”
Keenan ¶ 36. Appellant argues, and we agree, that the login disclosed here in
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Keenan is used on a virtual desktop launched from a remote server, not on
the PID of Keenan. The login disclosed in Keenan does not affect
communicative linkage between two or more PID-booted clients, i.e. “two or
more work group nodes.” Appeal Br. 16.
Because we find that the Examiner erred in finding an office
infrastructure device in Keenan comprising the claimed “unique
identification code,” we are constrained on this record not to sustain the 35
U.S.C. § 103 rejection of claim 5, as well as claims 6 and 7 dependent
therefrom.
Claim 8
Claim 8 recites, in pertinent part, “each of said two or more work
group nodes comprises an office infrastructure device . . . the office
infrastructure device at each node comprising . . . a unique device
identification code.” Appellant argues that Keenan fails to teach that each
work group node comprises a unique device identification code. Appeal Br.
17. The Examiner finds that Keenan teaches that “a unique IP address is the
unique device identification of the remote machine.” Ans. 13. The Examiner
finds that Keenan’s PID (USB memory stick) corresponds to the claimed
office infrastructure device. Final Act. 3. The Examiner thus erred in
referring to the IP address of the “remote machine” as the unique identifier
of the PID (the USB memory disclosed in Keenan) that connects to a local
computer. Id.; Keenan ¶ 6.
On this record, we are constrained to find that the combination of
Keenan and Hayter does not teach or suggest the claimed unique device
identification code. We do not sustain the Examiner’s 35 U.S.C. § 103
rejection of claim 8.
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CONCLUSIONS
1. The combination of Keenan and Hayter teaches user-accessible
data storage, and system-support data storage distinct from said user-
accessible data storage.
2. Hayter does not teach away from combination with Keenan.
3. The combination of Keenan and Hayter does not teach or suggest a
unique identification code used for authentication by the work space to
effect communicative linkage of two or more work group nodes.
The Examiner’s decision to reject claims 1–4 is affirmed. The
Examiner’s decision to reject claims 5–8 is reversed.

DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8 103 Keenan, Hayter 1–4 5–8

No time period for taking 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-IN-PART