Ex Parte Mistry et al

Patent Trial and Appeal BoardMar 28, 2019

14015940 (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/015,940 08/30/2013 Pranav Mistry 121588 7590 04/01/2019 Baker Botts L.L.P./Samsung 2001 Ross Avenue SUITE 900 Dallas, TX 75201 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. 082499.0109 1825 EXAMINER PATEL, HIRENP ART UNIT PAPER NUMBER 2196 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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): PTOmaill@bakerbotts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PRANA V MISTRY and SAJID SADI Appeal2018-004215 Application 14/015,940 Technology Center 2100 Before KAL YANK. DESHPANDE, CHARLES J. BOUDREAU, and SHARON PENICK, Administrative Patent Judges. BOUDREAU, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal from the Examiner's Final Rejection of claims 1-23, 25- 27, 29, and 30, which are all of the pending claims. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 2 1 Appellants identify Samsung Electronics Company, Ltd. as the real party in interest. App. Br. 3. 2 This Decision refers to the Examiner's Final Office Action mailed March 20, 2017 ("Final Act."), Appellants' Appeal Brief filed September 20, 2017 ("App. Br."), the Examiner's Answer mailed January 11, 2018 ("Ans."), Appellants' Reply Brief filed March 12, 2018 ("Reply Br."), and the original Specification filed August 30, 2013 ("Spec."). Appeal2018-004215 Application 14/015,940 STATEMENT OF THE CASE The Claimed Invention Appellants' invention relates generally to a wearable electronic device. Spec. ,r 2. The wearable electronic device may delegate portions of one or more processing tasks to nearby devices (e.g., phone or personal computer). Id. ,r 201. Claims 1, 10, and 19 are independent. Claims 1 and 30 are illustrative of the subject matter on appeal and are reproduced below with italicization added for emphasis: 1. An apparatus comprising: a wearable computing device comprising one or more processors and a memory; wherein the memory is coupled to the one or more processors and comprises instructions executable by the one or more processors, wherein the one or more processors are operable when executing the instructions to: analyze a task of an application, wherein the wearable computing device is capable of performing the task; analyze one or more past delegations made by a user of the wearable computing device, wherein the past delegations were made for previous tasks capable of being performed by the wearable computing device; determine to delegate the task based on: the analysis of the task; and a frequency with which the user has previously delegated the previous tasks; delegate the task to be processed by one or more computing devices separate from the wearable computing device; and receive from the one or more computing devices results from processing the delegated task. 2 Appeal2018-004215 Application 14/015,940 30. The apparatus of Claim 1, wherein the determination to delegate the task based on the frequency with which the user has previously delegated previous tasks comprises a determination to delegate the task based on a determination that the task is delegated by the user in a majority of instances. App. Br. 19, 26 (Claims App.). References and Rejections The Examiner relies on the following references as evidence of unpatentability: Chihara et al. ("Chihara") US 2002/0068600 Al June 6, 2002 Narayanaswami US 6,556,222 B 1 Apr. 29, 2003 F ellenstein et al. ("F ellenstein") US 2006/0149652 Al July 6, 2006 Brady et al. ("Brady") US 2006/0253010 Al Nov. 9, 2006 Frost US 2011/0289519 Al Nov. 24 2011 Claims 1-23, 25-27, 29, and 30 stand rejected under 35 U.S.C. Â§ 112(a) or pre-AIA 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. Final Act. 3-5. Claims 1, 3-10, 12-19, 21-23, 25-27, 29, and 30 stand rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Chihara in view of Fellenstein and Frost. Final Act. 5-18. Claims 2, 11, and 20 stand rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Chihara in view of Fellenstein, Frost, Narayanaswami, and Brady. Final Act. 18-22. 3 Appeal2018-004215 Application 14/015,940 ANALYSIS Rejections Under 35 U.S.C. Â§ 112 The Examiner finds that claims 1-23, 25-27, 29, and 30 lack written description support for the limitation of determining to delegate the task based on "a frequency with which the user has previously delegated the previous tasks," as recited in independent claims 1, 10, and 19 and similarly recited in dependent claims 29 and 30. Final Act. 3-5; see also Ans. 5. Appellants argue that the Examiner improperly requires in haec verba support for the "frequency" limitation, and that the limitation is supported by the Specification's disclosure of making a delegation determination based on whether "a user of the device typically (e.g. historically) delegates the playing of videos." App. Br. 16 ( citing Spec. ,r 201 ). Specifically, Appellants argue that the plain and ordinary meaning of "frequency" relates to "how often" something occurs (id. at 9; Reply Br. 1) and that "the Oxford dictionary defines 'typically' as 'in most cases' or 'usually"' (App. Br. 10). According to Appellants, "[T]ypically delegated" defines the frequency at which delegation occurs (specifically, that delegation has "in most cases" been performed in the past). Thus, the Specification plainly discloses that a delegation decision may be based on how often-i.e., the frequency-with which a user has previously delegated a task. Id. at 16; see also Reply Br. 7. The Examiner responds: The specification does not describe how the claimed ''frequency" is determined by analyzing the past delegations for the previous tasks (Note: past delegations of a plurality of previous tasks and not the past delegations of the same task.) and it clearly does not describe how the determination is made to delegate a task based on the frequency of past delegations for the previous tasks as claimed. Ans. 16. 4 Appeal2018-004215 Application 14/015,940 We agree with Appellants that the Specification's disclosure of delegating the task of playing a video "if a user of the device typically ( e.g. historically) delegates the playing of videos" provides sufficient written description support for the claim limitation of determining to delegate the task based on "a frequency with which the user has previously delegated the previous tasks." See App. Br. 16; Spec. ,r 201. In particular, we agree with Appellants that the "frequency" limitation encompasses determining to delegate the task based on "how often" the user has previously delegated the task. See App. Br. 9; Reply Br. 1, 7. The Specification's disclosure of "typically" delegating the task is consistent with this interpretation of "frequency" and reasonably conveys to a person skilled in the art that the inventors had possession of the claimed subject matter at the time the application was filed. As Appellants point out, the Examiner's response that the Specification does not describe how the frequency is determined, or how the delegation determination is made, is inapposite because it is directed to enablement, not written description. See Reply Br. 7-8. To the extent that the Examiner finds a lack of written description support for the claimed "previous tasks" being a different type of task than "the task" undergoing a delegation determination (see, e.g., Ans. 16 ("These limitations recite determining past delegations of previous tasks not the past delegations of the same task that is being considered to be delegated.")), we disagree with this claim interpretation and determine that, read in light of the Specification, the claimed "previous tasks" and "the task" undergoing a delegation determination may be the same type of task, such as playing a video. See Spec. ,r 201. The Examiner further finds that dependent claim 30 lacks written description support for "the determination to delegate the task based on the frequency with 5 Appeal2018-004215 Application 14/015,940 which the user has previously delegated previous tasks comprises a determination to delegate the task based on a determination that the task is delegated by the user in a majority of instances." Final Act. 4--5; see also Ans. 5. According to the Examiner, the Specification "does not disclose keeping track of number [ of] previous delegations of the same task to determine the frequency." Ans. 5. Appellants argue that "the Specification explicitly discloses determining to delegate a task when the task is typically delegated [see Spec. ,r 201], and one of ordinary skill would recognize that the plain meaning of 'typically' includes the 'majority of instances."' App. Br. 17. We agree with Appellants that the Specification's disclosure of "typically" provides sufficient written description support for "a majority of instances" as claimed. See id. As Appellants indicate, the Oxford Dictionary defines "typically" as "in most cases" or "usually." Typically, en.oxforddictionaries.com, https://en.oxforddictionaries.com/definition/typically (last visited March 22, 2019); see App. Br. 10. The Specification's disclosure of "typically," meaning "in most cases," is consistent with the claimed "majority of instances" and reasonably conveys to a person skilled in the art that the inventors had possession of the claimed subject matter at the time the application was filed. We also note that the Examiner has again improperly conflated enablement with written description. See Final Act. 5 ( concluding "this disclosure is not sufficiently detailed as to enable one skilled in the art to make and use the invention recited in the claim, therefore claim 30 is rejected due to lack of written description"). For the foregoing reasons, we do not sustain the Examiner's rejection of claims 1-23, 25-27, 29, and 30, for failing to comply with the written description requirement under 35 U.S.C. Â§ 112. 6 Appeal2018-004215 Application 14/015,940 Rejections Under 35 U.S.C. Â§ 103 The Examiner finds that Frost teaches "determin[ing] to delegate the task based on ... a frequency with which the user has previously delegated the previous tasks," as recited in independent claims 1, 10, and 19. Final Act. 10-11 (boldface and underlining omitted) ( citing Frost ,r,r 53, 84, 88). Specifically, the Examiner relies on Frost's disclosure of determining whether to "offload" tasks from one processor to another based on cached information about previously offloaded tasks, such as whether the tasks were offloaded successfully, or whether offloading resulted in more efficient execution of the tasks. Id. According to the Examiner, In view of the specification (para. [0201] "if user of the device typically (historically) delegates the playing of videos ... "), Examiner interprets that the determination to delegate the task is based on the historical delegations of the task. Thus, it is understood that the task that was delegated/offloaded in the past (historically) is the task that typically gets delegated. As discussed above, Frost clearly discloses determination unit determines to offload the task from one processor to another processor based on past (historical) offloads (see Frost; [0053]). Id. at 22. Appellants argue that "frequency" as claimed "do[es] not simply mean that a task has previously been delegated," but rather "relate[ s] to how often the task has been delegated." App. Br. 9; see also Reply Br. 1. Appellants further argue that Frost fails to teach the "frequency" limitation because it "merely looks at whether a delegation has successfully occurred" (id. at 12), but "does not at all consider how often offloading the tasks has previously occurred" (id. at 9). The Examiner responds: [A]ccording to the claim language (claim 1, line 8), the determination to delegate the task may be made based on one or more (single) past delegation(s). This means that the frequency of delegation may be determined based on a single past delegation and the task that was 7 Appeal2018-004215 Application 14/015,940 once delegated in the past may be considered as the task that gets delegated typically. Ans. 8. We agree with Appellants. In particular, we agree with Appellants that the claimed "frequency" relates to "how often" the task has been delegated (see App. Br. 9; Reply Br. 1) and that Frost fails to teach any consideration of how frequently or often a task has previously been delegated in determining whether to "offload" or delegate the task. The Examiner has erred in finding that Frost's mere disclosure of past offloading or delegation indicates "a frequency with which the user has previously delegated the previous tasks," as recited in claims 1, 10, and 19. Accordingly, we do not sustain the Examiner's rejection under 35 U.S.C. Â§ 103(a) of independent claims 1, 10, and 19 or claims 3-9, 12-18, 21-23, 25-27, 29, and 30 dependent therefrom. We also do not sustain the Examiner's rejection under 35 U.S.C. Â§ 103(a) of dependent claims 2, 11, and 20, for which the Examiner additionally cites N arayanaswami and Brady only for limitations other than the "frequency with which the user has previously delegated the previous tasks" limitation of the corresponding independent claims. DECISION The Examiner's rejection of claims 1-23, 25-27, 29, and 30 under 35 U.S.C. Â§ 112 is reversed. The Examiner's rejections of claims 1-23, 25-27, 29, and 30 under 35 U.S.C. Â§ 103(a) are reversed. REVERSED 8