Ex Parte Lim et al

Patent Trial and Appeal Board

Feb 5, 2016

13115914 (P.T.A.B. Feb. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/115,914 05/25/2011
22879 7590 02/09/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Ruth Ann Lim
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.
82678583 4402
EXAMINER
ROSARIO, NELSON M
ART UNIT PAPER NUMBER
2624
NOTIFICATION DATE DELIVERY MODE
02/09/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUTH ANN LIM and MOLLY JOY
Appeal2014-003414
Application 13/115,914
Technology Center 2600
Before JASON V. MORGAN, JESSICA C. KAISER, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-19, the only claims pending in the
application on appeal. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Hewlett-Packard
Development Company, L.P. App. Br. 1.
Appeal2014-003414
Application 13/115,914
STATEMENT OF THE CASE
Appellants' Invention
Appellants' invention generally relates to an automated system that
allows a user to establish a communication link for data exchange between
an electronic device (e.g., a desktop or laptop computer) and a mobile
phone. Spec. i-f 10. The communication link may be used to sync files
between the electronic device and the mobile phone. Spec. i-f 9. Claim 1,
which is representative, reads as follows:
1. A method, comprising by a computer:
displaying a user interface to capture a mobile phone
number of a mobile phone designated to receive a Short Message
Service message comprising an Internet Protocol address of the
computer to synchronize data between the computer and the
mobile phone;
determining an email address based on the mobile phone
number, wherein the email address is associated with a service
for forwarding the email contents as a Short Message Service
message to the mobile phone;
creating an email message comprising the Internet
Protocol address of the computer;
transmitting the email message to the determined email
address;
responsive to receipt of a communication from the mobile
phone in connection with the Internet Protocol address of the
computer, establishing a network connection with the mobile
phone; and
synchronizing data between the computer and the mobile
phone over the network connection.
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Application 13/115,914
Rejections
Claims 1-11 and 13-19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kramarz-Von-Kohout et al. (US 2010/0293237 Al;
Nov. 18, 2010) (hereinafter "Kramarz"), Lazaridis et al. (US 2011/01498864
Al; June 23, 2011) (hereinafter "Lazaridis"), Schwartz (US 8,359,031 B2;
Jan. 22, 2013), Pantalone et al. (US 2008/0002698 Al; Jan. 3, 2008)
(hereinafter "Pantalone"), and Brezak et al. (US 2006/0242206 Al; Oct. 26,
2006) (hereinafter "Brezak").2 Final Act. 3-15.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kramarz, Lazaridis, Schwartz, Pantalone, Brezak, and
Shin et al. (US 2011/0228699 Al; Sept. 22, 2011) ("hereinafter Shin").3
Final Act. 15-16.
Issue on Appeal
Did the Examiner err in finding the combination of Kramarz,
Lazaridis, Schwartz, Pantalone, and Brezak teaches or suggests
displaying a user interface to capture a mobile phone number of
a mobile phone designated to receive a Short Message Service
message comprising an Internet Protocol address of the computer
2 The Examiner lists claims 1-15 in the heading of the rejection. Final
Act. 3. However, only claims 1-11 and 13-19 are addressed in the body of
the rejection. See Final Act. 3-15. We find the inclusion of claim 12 and
exclusion of 16-19 in the heading to be a harmless, typographical error and
treat the rejection according.
3 The heading of the rejection states claim 12 is rejected only based on
Kramarz, Lazaridis, and Shin. Final Act. 15. Claim 12 depends from
independent claim 7, which is rejected based on Kramarz, Lazaridis,
Schwartz, Pantalone, and Brezak. See Final Act. 3-9. We find the omission
of Schwartz, Pantalone, and Brezak to be a harmless, typographical error
and treat the rejection according.
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Application 13/115,914
to synchronize data between the computer and the mobile phone;
[and]
synchronizing data between the computer and the mobile
phone over the network connection,
as recited in claim 1?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We disagree with Appellants'
conclusions. We adopt as our own the findings and reasons set forth by the
Examiner in the Final Office Action from which this appeal is taken and the
reasons set forth in the Examiner's Answer in response to Appellants'
Appeal Brief. Final Act. 3-16; Ans. 4--20. We highlight and address
specific findings and arguments for emphasis as follows.
Appellants contend the applied references do not teach or suggest the
claimed "displaying" and "synchronizing." App. Br. 6. Regarding the
claimed "displaying," Appellants contend
the Examiner has acknowledged that neither Schwartz nor
Pantalone discloses or suggests displaying a user interface to
capture a mobile phone number of a mobile phone "designated
to receive a Short Message Service message comprising an
Internet Protocol address of the computer to synchronize data
between the computer and the mobile phone" and "synchronizing
data between the computer and the mobile phone over the
network connection"
and, therefore, neither Schwartz nor Pantalone teaches or suggests the
disputed limitation. App. Br. 7. Appellants further contend Schwartz fails
to teach or suggest the claimed "displaying" because Schwartz's teaching of
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Application 13/115,914
a web site that allows a user to browse listings of mobile content, select
particular mobile content (e.g., a ringtone ), and enter the user's mobile
phone number to cause the web site to transmit to the user's mobile phone
an SMS message that includes a link for downloading the selected mobile
content does not teach or suggest displaying a user interface to capture a
mobile phone number of a mobile phone "designated to receive a Short
Message Service message comprising an Internet Protocol address of the
computer to synchronize data between the computer and the mobile
phone .... " Reply Br. 4 (citing Schwartz Fig. 4; col. 4, 11. 17--40).
Appellants contend Pantalone fails to teach or suggest the claimed
"displaying" because Pantalone's method of establishing a peer-to-peer
(P2P) connection between two devices based on the devices exchanging
messages that include their respective IP addresses does not disclose or
suggest displaying a user interface to capture a mobile phone number of a
mobile phone "designated to receive a Short Message Service message
comprising an Internet Protocol address of the computer to synchronize data
between the computer and the mobile phone." Reply Br. 4 (citing Pantalone,
Abstract, i-fi-15, 20-24).
Regarding the claimed "synchronizing," Appellants contend the
applied references do not teach or suggest the disputed limitation because
Brezak does not teach or suggest
"synchronizing data between the computer and the mobile phone
over the network connection," where the network connection
between the computer and the mobile phone is established
responsive to receipt of a communication from the mobile phone
in connection with the Internet Protocol address of the computer
that is transmitted in an email message to an email address that
is associated with a service for forwarding the email contents as
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Application 13/115,914
a Short Message Service message to the mobile phone as recited
in claim 1.
App. Br. 8; Reply Br. 5. Appellants contend Brezak fails to teach or suggest
the claimed "synchronizing" because "the wireless connections between the
computing machines described in Brezak do not in any way involve user
entry of a phone number." Reply Br. 4. Appellants contend Brezak, instead,
teaches "the wireless connections are made automatically, without user
participation, in accordance with standard wireless network protocols, such
as the Blue Tooth protocol or the WiFi protocol." Reply Br. 4 (citing Brezak
iTiT 11, 22-24 ).
We do not find Appellants' contentions persuasive. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Regarding the
claimed "displaying," the Examiner finds, and we agree, Schwartz teaches
displaying a user interface to capture a mobile phone number of a mobile
phone designated to receive a short message service message. Final Act. 6-
7 (citing Schwartz Fig. 4; col. 4, 11. 22-38); Ans. 17. The Examiner further
finds, and we agree, Pantalone teaches a mobile phone designated to receive
a short message service message comprising an Internet Protocol address of
a computer to transfer data between the computer and the mobile phone.
Final Act. 7-8 (citing Pantalone iTiT 18, 24, 26); Ans. 17-18. As such, the
Examiner finds the combination of Schwartz and Pantalone teaches or
suggests "displaying a user interface to capture a mobile phone number of a
mobile phone designated to receive a Short Message Service message
comprising an Internet Protocol address of the computer to synchronize data
between the computer and the mobile phone," as recited in claim 1.
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Appellants contentions fail to address the combined teachings of the applied
references and, therefore, are unpersuasive of error.
Regarding the claimed "synchronizing," the Examiner finds, and we
agree, Brezak teaches synchronizing data between a computer and a mobile
phone. Final Act. 8 (citing Brezak Fig. 3, i-fi-f 11, 12); Ans. 18-19. As
discussed supra, the Examiner finds Pantalone teaches a mobile phone
designated to receive a short message service message comprising an
Internet Protocol address of a computer to transfer data between the
computer and the mobile phone. Final Act. 7-8 (citing Pantalone i-fi-f 18, 24,
26); Ans. 17-18. As such, the Examiner finds the combination of Brezak
and Pantalone teaches or suggests "synchronizing data between the
computer and the mobile phone over the network connection," as recited in
claim 1. Final Act. 8-9; Ans. 19-20. Appellants' contentions fail to address
the combined teachings of the applied references and, therefore, are
unpersuasive of error.
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting claim 1 and claims 2-6 and 16-19, which depend from claim 1 and
are not argued separately with particularity. See App. Br. 8.
Regarding independent claims 7 and 13, Appellants rely on the
contentions presented in connection with independent claim 1. App. Br. 9.
Accordingly, we are not persuaded the Examiner erred in rejecting claims 7
and 13, and claims 8-11, 14, and 15, which depend from claims 7 and 13
and are not argued separately with particularity, for the reasons discussed
supra. See App. Br. 9.
Regarding claim 12, Appellants contend the teachings of Shin does
not cure the alleged deficiencies discussed supra with respect to claim 1.
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App. Br. 9-10. Accordingly, we are not persuaded the Examiner erred in
rejecting claim 12 for the reasons discussed supra.
DECISION
We affirm the Examiner's decision to reject claims 1-19 under 35
U.S.C. § 103(a).
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
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