Tuna Toksoz

Patent Trials and Appeals Board

Oct 9, 2019

14231627 - (D) (P.T.A.B. Oct. 9, 2019)

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.
14/231,627 03/31/2014 Tuna Toksoz 18-1389 3929
98929 7590 10/09/2019
McDonnell Boehnen Hulbert & Berghoff
LLP/Google LLC
300 South Wacker Drive, Suite 3100
Chicago, IL 60606
EXAMINER
BUKHARI, SIBTE H
ART UNIT PAPER NUMBER
2449
MAIL DATE DELIVERY MODE
10/09/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TUNA TOKSOZ
____________________

Appeal 2018-009135
Application 14/231,627
Technology Center 2400
____________________

Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

DIRBA, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 1–19. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

1 This Decision uses the following abbreviations: “Spec.” for the original
Specification, filed Mar. 31, 2014; “Final Act.” for the Final Office Action,
mailed Feb. 24, 2017; “Appeal Br.” for Appellant’s Appeal Brief, filed
Feb. 22, 2018; “Ans.” for Examiner’s Answer, mailed Aug. 10, 2018; and
“Reply Br.” for Appellant’s Reply Brief, filed Sept. 25, 2018.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Google LLC.
Appeal Br. 3.
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BACKGROUND
Appellant’s disclosed embodiments and claimed invention relate to
selectively synchronizing digital content based on context. Spec. ¶¶ 1–8.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of synchronizing data between a mobile device
and a second device, comprising:
receiving, at the mobile device, input data from a user, the
input data indicating a first label to assign to a first portion of
data stored on the mobile device, the first label indicating a first
context in which the first portion of data is to be synchronized,
and a second label to assign to a second portion of data stored
on the mobile device, the second label indicating a sub-context
of the first context in which the second portion of data is to be
synchronized;
receiving a request to synchronize the mobile device with
the second device;
determining a second context in which the request is
received based on an identification signal transmitted from the
second device to the mobile device, the identification signal
identifying the second context based on data stored in the second
device;
performing a synchronization operation to transfer the
first portion of data and the second portion of data from the
mobile device to the second device when the second context is
consistent with the first context; and
performing a synchronization operation to transfer the
second portion of data but not the first portion of data from the
mobile device to the second device when the second context is
consistent with the sub-context.
Appeal Br. 13 (Claims App.) (emphasis added).
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THE REJECTIONS
R1. Claims 1 and 3–13 stand rejected under 35 U.S.C. § 103 as
obvious over Van Gassel (US 2008/0109561 A1, published May 8, 2008)
and Smith (US 2015/0082024 A1, published Mar. 19, 2015). Final Act. 3–9.
R2. Claim 2 stands rejected under 35 U.S.C. § 103 as obvious over
Van Gassel, Smith, and Shahbazi (US 2006/0112427 A1, published May 25,
2006). Final Act. 9–10.
R3. Claims 14–19 stand rejected under 35 U.S.C. § 103 as obvious
over Van Gassel, Smith and Reedy (US 2013/0254897 A1, published
Sept. 26, 2013). Final Act. 10–15.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Obviousness Rejection R1 of Claims 1 and 3–13
Claim 1 recites, in pertinent part: “a second label to assign to a
second portion of data stored on the mobile device, the second label
indicating a sub-context of the first context in which the second portion of
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data is to be synchronized.” Appeal Br. 13 (Claims App.) (emphasis added)
(hereinafter the “second label limitation”).
The Examiner found Van Gassel teaches the second label limitation.
Final Act. 3 (citing Van Gassel ¶¶ 8, 11, 57). In particular, the Examiner
found Van Gassel synchronizes data items based on associations between
the data items and the context, and each data item “can be stored with
associated attributes (multiple labelling) on the data.” Id.
Appellant argues that the references fail to teach or suggest a second
label that “indicat[es] a sub-context of the first context.” Appeal Br. 7–8.
Specifically, Appellant contends that even if the Examiner’s interpretation of
Van Gassel is accurate, the Examiner “fails to show how the ‘associated
attributes’ of Van Gassel or multiple labels are in any hierarchical
relationship with each other.” Id. at 8.
In response, the Examiner states that “this limitation under BRI is
claiming a second label for second portion of that which needs to be
synchronized.” Ans. 3 (emphasis omitted). The Examiner further points to
Van Gassel’s Figure 2 and finds that the second label is taught by element
410, which is Van Gassel’s context information. Id. at 4–5.
In reply, Appellant contends that the Examiner fails to explain how
Van Gassel teaches or suggests the claim requirement that the second label
indicate a sub-context of the first context. Reply Br. 2. Appellant further
argues, “[E]ach instance of context information 410 depicted in Figure 2
appears to be completely independent and does not suggest or motivate any
hierarchical relationship with other contexts.” Id.
We are persuaded of error because the Examiner has not adequately
explained (and it is unclear from our review) how the relied-upon
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disclosures teach or suggest a “second label indicating a sub-context of the
first context,” as required by claim 1. Neither the Final Office Action nor
the Answer specifically address this portion of the claim limitation (see Final
Act. 3; Ans. 3–4), and we see nothing in the cited portions of Van Gassel or
Smith to teach or suggest it. In particular, Van Gassel selects data for
synchronization based on information associated with the data (e.g., data 410
and association 460) and the context in which the synchronization is
performed. Van Gassel ¶¶ 8, 11–14, 26, 57; Fig. 2. But—even if we were to
agree with the Examiner that Van Gassel teaches or suggests: (1) assigning a
first label to a first portion of data, where the first label indicates a first
context in which the first portion of data will be synchronized, and
(2) assigning a second label to a second portion of data that indicates a
different context in which the second portion is synchronized (id. ¶ 57;
Fig. 2)—we perceive no teaching or suggestion in Van Gassel that this
different context is “a sub-context of the first context,” as specifically
required by the claim.
It appears the Examiner’s error stems from an erroneous claim
construction. In the Answer, the Examiner concluded that the broadest
reasonable interpretation of the second label limitation is “a second label for
second portion of that which needs to be synchronized.” Ans. 3 (emphasis
omitted). However, this construction fails to provide a meaning for the
disputed claim phrase—i.e., “the second label indicat[es] a sub-context of
the first context”—and this is not a reasonable interpretation of the disputed
claim language. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed.
Cir. 2016) (“While the broadest reasonable interpretation standard is broad,
it does not give the Board an unfettered license to interpret the words in a
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claim without regard for the full claim language and the written
description.”); see also Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d
1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all
the terms of the claim is preferred over one that does not do so.”); Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“[W]e
look to the words of the claims themselves . . . to define the scope of the
patented invention.”).
Therefore, on this record, we are persuaded of error in the Examiner’s
reliance on the cited prior art combination to teach or suggest the disputed
limitation of claim 1. Accordingly, we do not sustain the Examiner’s
obviousness rejection of independent claim 1 and its dependent claims (i.e.,
claims 3–13).
Obviousness Rejection R2 of Claim 2
The Examiner rejects claims 2 over a combination of Van Gassel,
Smith, and Shahbazi. Final Act. 9–10. Claim 2 depends from independent
claim 1.
In light of our reversal of the rejection of claim 1, supra, we also
reverse obviousness rejection R2. On this record, the Examiner has not
shown how the additionally cited reference, Shahbazi, overcomes the
aforementioned deficiencies with the combination of Van Gassel and Smith,
as discussed above.
Obviousness Rejection R3 of Claims 14–19
Claim 14 recites: “a second identifier attached to a second portion of
data[,] . . . the second identifier being associated with a second label that is a
sub-context of the context.” Appeal Br. 16 (Claims App.) (emphasis added)
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(hereinafter the “second identifier limitation”).3 The Examiner found Reedy
teaches the second identifier limitation because Reedy’s content provider
adds tags to facilitate classification and indexing of content. Final Act. 12
(citing Reedy ¶¶ 39, 102, 194–195, 203).
Appellant argues that the proposed combination fails to teach or
suggest the second identifier limitation. Appeal Br. 10–11. Similar to the
argument made with respect to claim 1, Appellant contends that, even if the
Examiner’s interpretation of Reedy is accurate, the Examiner “fails to show
how one tag of Reedy is a sub-context of another tag of Reedy.” Id. at 11.
In response, the Examiner states “this limitation under BRI is
claiming the second identifier is associated with second label which will be
synchronized at a later stage.” Ans. 7 (emphasis omitted). The Examiner
further points to paragraphs 39 and 40 of Reedy, and the Examiner finds that
Reedy discloses “tagging and classification of content . . . for
synchronization purpose[s].” Id. Appellant replies that, as with claim 1, the
Examiner fails to explain how Reedy teaches or suggests that the second
label is a sub-context of the context, as required by the claim. Reply Br. 5.
We are persuaded of error because, as with claim 1, the Examiner has
not adequately explained (and it is unclear from our review) how the relied-
upon disclosures teach or suggest “a second label that is a sub-context of the
context,” as required by claim 14. Neither the Final Office Action nor the
Answer specifically address the second identifier claim limitation. See Final

3 The second identifier limitation is commensurate with the second label
limitation of claim 1. Compare Appeal Br. 13 (Claims App.) (claim 1: “the
second label indicating a sub-context of the first context”), with id. at 16
(claim 14: “a second label that is a sub-context of the context”).
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Act. 12; Ans. 7. Rather, the Examiner’s rejection is premised on a
construction of this limitation that provides no meaning to the phrase “a
second label that is a sub-context of the context,” and this construction is
erroneous for the reasons explained with respect to claim 1, supra. Finally,
we see nothing in the cited portions of the references to teach or suggest a
“second label that is a sub-context of the context.”
Therefore, on this record, we are persuaded of error in the Examiner’s
reliance on the cited prior art combination to teach or suggest the disputed
limitation of claim 14. Accordingly, we do not sustain the Examiner’s
obviousness rejection of independent claim 14 and its dependent claims (i.e.,
claims 15–19).
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3–13 103 Van Gassel, Smith 1, 3–13
2 103 Van Gassel, Smith,
Shahbazi
2
14–19 103 Van Gassel, Smith,
Reedy
14–19
Overall
Outcome
1–19

REVERSED