Ex Parte Mistry et al

Patent Trials and Appeals Board

Mar 28, 2019

14015940 - (D) (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. § 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.
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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. § 112(a) or
pre-AIA 35 U.S.C. § 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. § 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. § I03(a) as
being unpatentable over Chihara in view of Fellenstein, Frost, Narayanaswami, and
Brady. Final Act. 18-22.
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Appeal2018-004215
Application 14/015,940
ANALYSIS
Rejections Under 35 U.S.C. § 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.
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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
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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. § 112.
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Appeal2018-004215
Application 14/015,940
Rejections Under 35 U.S.C. § 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
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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.
§ 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. § 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.
§ 112 is reversed.
The Examiner's rejections of claims 1-23, 25-27, 29, and 30 under
35 U.S.C. § 103(a) are reversed.
REVERSED
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