Ex Parte Itoh et alDownload PDFPatent Trial and Appeal BoardMar 29, 201612357842 (P.T.A.B. Mar. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/357,842 01122/2009 58127 7590 03/30/2016 FERENCE & ASSOCIATES LLC 409 BROAD STREET PITTSBURGH, PA 15143 FIRST NAMED INVENTOR Kishiko Itoh 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 ATTORNEY DOCKET NO. CONFIRMATION NO. JP920072034US 1 (710.097) 1429 EXAMINER UNELUS, ERNEST ART UNIT PAPER NUMBER 2181 MAILDATE DELIVERY MODE 03/30/2016 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 KISHIKO ITOH, SEIICHI KAW ANO, SUSUMU SHIMOTONO, JUN SUGIYAMA, and HIDENORI KINOSHITA Appeal2014-003330 Application 12/357,842 Technology Center 2100 Before ROBERT E. NAPPI, CARLA M. KRIVAK, and JEFFREY A. STEPHENS, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal2014-003330 Application 12/357,842 STATEMENT OF THE CASE Appellants' invention is directed to "accessing wirelessly connected external storage devices" and "controlling the state of a computer while the computer is away from an external storage device" (Spec. 1:8-10; Title (emphasis omitted)). Independent claim 1 and dependent claim 7, reproduced below, are exemplary of the subject matter on appeal. 1. A method comprising: configuring wireless communication between one or more external storage devices and a computer; accessing the one or more external storage devices from the computer; producing removal information at the computer indicating a potential loss of wireless communication between the computer and the one or more external storage devices; and preventing a surprise removal based on the removal information through notifying a user with an alert and saving data being edited to the one or more external storage devices. 7. The method according to claim 1, further comprising the steps of: producing a sleep event; ejecting the one or more external storage devices in response to the sleep event; and executing the sleep event in response to completion of the ejection. REFERENCES and REJECTIONS The Examiner rejected claims 19 and 20 under 35 U.S.C. § 101 as directed to non-statutory subject matter. 2 Appeal2014-003330 Application 12/357,842 The Examiner rejected claims 1, 5, 6, 11, 15, 16, and 19 under 35 U.S.C. § 103(a) based upon the teachings of Meade (US 2003/0073432 Al; pub. Apr. 17, 2003) and Comp (US 7 ,203,487 B2; iss. Apr. 10, 2007). The Examiner rejected claims 2, 4, 12, and 14 under 35 U.S.C. § 103(a) based upon the teachings of Meade, Comp, and Rofougaran (US 2008/0233871 Al; pub. Sept. 25, 2008). The Examiner rejected claims 3, 7-10, 13, 17, 18, and 20 under 35 U.S.C. § 103(a) based upon the teachings of Meade, Comp, and Lee (US 2010/0035598 Al; pub. Feb. 11, 2010). ANALYSIS Re} ection under 3 5 US. C. § 101 Appellants contend the Examiner erred in finding a "program storage device" as recited in claim 19 is directed to non-statutory subject matter (App. Br. 10). The Examiner, however, finds the claimed program storage device may be construed to include a transitory signal and as such, is directed to non-statutory subject matter (Final Act. 3; Ans. 4). We do not agree. Claim 19 explicitly recites a device. A device is not a signal, but a machine, which is one of the enumerated statutory classes under 35 U.S.C. § 101. Accordingly, we do not sustain the Examiner's rejection of claims 19 and 20 under 35 U.S.C. § 101. 3 Appeal2014-003330 Application 12/357,842 Rejections under 35 USC§ 103(a) Claims 1-6, 11-16, and 19 The Examiner finds Meade discloses all the limitations of claim 1 except for "expressly preventing a surprise removal based on the removal information through notifying a user with an alert and saving data being edited to the one or more external storage devices," and relies on Comp for disclosing this limitation (Final Act. 5). We agree with and adopt the Examiner's findings as our own and provide the following for emphasis (Ans. 5-7). The Examiner finds the mobile computing device in Meade's Figure 4 teaches a computer, and the video and audio devices teach external storage devices wirelessly communicating with the computer (Ans. 5; Final Act. 4--5 (citing Meade i-fi-133, 40, 42, 46, 49, Fig. 4, mobile computing device 12, video and audio devices 13)). Meade's distance/location identifier determines positional information detecting external storage devices in the computer's wireless communication range (Ans. 6; Final Act. 2, 4--5 (citing Meade i-fi-146-47, Fig. 4)). The Examiner finds the limitation "producing removal information ... indicating a potential loss of wireless communication" is not explained (Final Act. 2). We note Appellants' Specification states: "[T]he removal information can be produced by detecting an acceleration generated in the portable computer, or by directly detecting the distance by the strength of the wireless signal" (Abstract) and when "the distance between the notebook PC 10 and the wireless extension device 100 has changed" (Spec. 37:17-19). Thus, Meade's wireless data transmission between a nearby storage device and the computer teaches producing removal information indicating a 4 Appeal2014-003330 Application 12/357,842 potential loss of wireless communication as the distance between the computer and storage device increases (Final Act. 2, 5). Additionally, Comp discloses determining "a potential loss of network connection before the loss of connection occurs" also suggesting "producing removal information" (Comp 3 :64---67, 6: 16-18). We also agree with the Examiner's finding, contrary to Appellants' arguments Comp saves data to a cache of unspecified location or local storage and not to external storage (App. Br. 13-14), Comp teaches "a notification that causes a user to take appropriate action before a disconnection; see col. 3, lines 64-67 of Comp" (Ans. 7). Thus, we sustain the Examiner's rejections of independent claims 1, 11, and 19, argued together (App. Br. 12, 14) and dependent claims 2-6 and 12-16, for which no arguments were provided. Claims 7-10, 17, 18, and 20 With respect to claim 7, The Examiner finds Lee's call drop for a mobile wireless device experiencing reduced quality of service in a wireless network teaches a sleep event which is also an ejection (Ans. 7-8; Final Act. 12 (citing Lee i-fi-137-38)). Appellants contend Lee merely warns of an imminent call drop (App. Br. 14--15; Reply Br. 16-17). We agree with Appellants Lee does not teach or suggest a sleep event and device ejection in response to the sleep event as required in claim 7. The Examiner does not rely on Meade and Comp to remedy the deficiencies discussed with respect to Lee. Therefore, absent findings that the cited art teaches ejecting an external storage device in response to a sleep event, we are constrained by the record before us to reverse the Examiner's rejection of claim 7. Claims 17 and 20 each recite the aforementioned 5 Appeal2014-003330 Application 12/357,842 contested "sleep event" and "ejecting" limitations using commensurate language. Therefore, we also do not sustain the Examiner's rejection of claims 1 7 and 20 for the same reasons discussed above regarding claim 7. Because we have reversed the Examiner's rejection of claims 7 and 17, we also reverse the obviousness rejection of claims 8-10 and 18, dependent therefrom. DECISION The Examiner's decision rejecting claims 19 and 20 under 35 U.S.C. § 101 is reversed. The Examiner's decision rejecting claims 1-6, 11-16, and 19 under 35 U.S.C. § 103(a) is affirmed. The Examiner's decision rejecting claims 7-10, 17, 18, and 20 under 35 U.S.C. § 103(a) is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 6 Copy with citationCopy as parenthetical citation