Ex Parte Itoh et al

Patent Trial and Appeal Board

Mar 29, 2016

12357842 (P.T.A.B. Mar. 29, 2016)

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.
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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.
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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
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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
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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
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