Ex Parte Morris

Patent Trial and Appeal BoardSep 24, 2012

11046118 (P.T.A.B. Sep. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/046,118 01/28/2005 Robert P. Morris I293/US 3229 49278 7590 09/24/2012 SCENERA RESEARCH, LLC 5400 Trinity Road Suite 303 Raleigh, NC 27607 EXAMINER KHOSHNOODI, FARIBORZ ART UNIT PAPER NUMBER 2164 MAIL DATE DELIVERY MODE 09/24/2012 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 ROBERT P. MORRIS ____________ Appeal 2009-015309 Application 11/046,118 Technology Center 2100 ____________ Before DENISE M. POTHIER, ERIC B. CHEN, and ANDREW CALDWELL, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-015309 Application 11/046,118 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Invention Appellant’s invention relates to a method and system for associating specific files with different applications. See generally Spec. ¶¶ 001, 009. Claim 1 is reproduced below with the key disputed limitations emphasized: 1. A method for associating a specific file with different applications, the method comprising: receiving, by an associator application, a selection of at least one application; receiving, by the associator application, a selection of at least one specific file; and associating, by the associator application, the at least one selected specific file with the at least one selected application such that when the selected application is launched, a location associated with the selected specific file is automatically provided to the selected application for accessing the selected specific file based on the association. The Examiner relies on the following as evidence of unpatentability: Parulski US 6,629,104 B1 Sept. 30, 2003 Shoji US 2005/0120359 A1 June 2, 2005 (filed Feb. 27, 2003) Cover US 2006/0136389 A1 June 22, 2006 (filed Dec. 22, 2004) Appeal 2009-015309 Application 11/046,118 3 The Rejections 1. The Examiner rejected claims 1-10, 14, 16-22, 24, and 29 under 35 U.S.C. § 103(a) as unpatentable over Shoji and Cover. Ans. 3-22.1 2. The Examiner rejected claims 23 and 25-28 under 35 U.S.C. § 103(a) as unpatentable over Parulski and Cover. Ans. 22-28. 3. The Examiner rejected claims 11-13 and 15 under 35 U.S.C. § 103(a) as unpatentable over Shoji, Cover, and Parulski. Ans. 28-34. OBVIOUSNESS REJECTION OVER SHOJI AND COVER Claims 1, 14, 16, 17, 20-22, 24 and 29 Regarding representative claim 1, Appellant presents several arguments. Br. 22-25. Appellant argues: (1) Cover does not teach the streaming application receives a selection of at least one application (Br. 22- 23); (2) Shoji’s application interface is not an associator application (Br. 23); (3) Shoji does not teach or suggest (a) an application interface that can associate a selected application with a selected file (Br. 23) or, (b) the location associated with the selected file is automatically provided to the application, when a selected application is launched, because the application is already running in Shoji (Br. 23-24); (4) Cover does not cure the deficiency in Shoji (Br. 24); and (5) the Examiner has not identified a reason to combine Shoji and Cover (Br. 24-25). 1 Throughout this opinion, we refer to the Appeal Brief filed January 26, 2009, and the Examiner’s Answer mailed April 10, 2009. Appeal 2009-015309 Application 11/046,118 4 ISSUES Under § 103, has the Examiner erred in rejecting claim 1 by finding that Shoji and Cover collectively would have taught or suggested: (a) receiving, by the associator application, a selection of an application; and (b) associating, by the associator application, the selected file with the selected application, such that when the application is launched, a location associated with the file is automatically provided to the application? ANALYSIS Based on the record before us, we find no error in the Examiner’s rejection of claim 1 which calls for, in pertinent part, receiving, by the associator application, a selection of an application. Appellant argues that Cover does not teach the streaming application receives a selection of at least one application. Br. 22-23. We disagree. In particular, the Examiner finds that Cover teaches this feature by selecting and launching an application from a list. Ans. 35 (citing ¶¶ 0056, 0065). Cover specifically states that a user selects a data file (e.g., clicking on a data file icon in ¶ 0056) and then determines whether there is an application that can be associated with the selected file extension using a streaming application manager 116 (¶ 0063). If an associated application is not identified, Cover teaches running applet prompting a user to select an application from a list to open the data file. ¶ 0065. Appellant files no Reply Brief and has not rebutted these findings. Cover thus teaches receiving a selection of an application. Moreover, while the Examiner relies Appeal 2009-015309 Application 11/046,118 5 on Shoji to teach selecting the file (Ans. 4 (citing ¶ 0122)), as explained above, Cover also teaches receiving a selection of a specific file. Appellant further contends that Shoji’s application interface is not an associator application. Br. 23. The Examiner has admitted this point by relying on Cover for this teaching. See Ans. 4-5 (stating “Shoji et al. do no [sic] explicitly disclose for the associator application to receive at least one application” and also indicating Shoji teaches receiving a file selection and associating the file with an application but does not state Shoji teaches an associator application). Thus, Appellant’s argument that Shoji alone does not teach the associator application (Br. 23) is not consistent with the Examiner’s rejection. Moreover, the combined teachings of Shoji and Cover teach or suggest using an associator application to receive a selection of an application file and associate the selected file with the selected application. Notably, Appellant has not defined the phrase, “associator application.” See generally Specification. We thus, give this phrase its broadest reasonable construction. As stated above, Cover teaches using a streaming application manager to associate an application with a file. ¶ 0063. Additionally, if the user selects the application to associate with the selected data file the user wishes to open (¶ 0065), Cover suggests that this same streaming application manager would make such an association by returning an identification of the application (¶ 0067). Thus, this streaming application manager of Cover contains some program or application that associates the selected application with the selected file in order to open the selected file (e.g., contains an associator application). And by returning this identification, the associator Appeal 2009-015309 Application 11/046,118 6 application of Cover both receives the selection of an application through receiving this identification and associates the file with the selected application in order to open the file using the selected application. See ¶¶ 0063, 0065, 0067. Appellant further contends that Shoji fails to teach an operation that results from launching an application or a location associated with the file being automatically provided to the application. Br. 24. We disagree. As we explained when addressing Cover, when the application associated with the selected file is launched to open the file, some association between the application and the file must be made to open the file. See Ans. 4, 35-36. This is also true in Shoji. Shoji, for example, teaches the application interface receiving an access result from a file request (¶ 0126) and sending this result to the application itself. This suggests the application has been launched and receives the access results from the file request. See id. Additionally, Shoji teaches that the file is stored as a location by showing its path. ¶ 0145. Collectively Shoji’s and Cover’s teachings suggest that when the application is launched, the path or location associated with the file to be open is provided to the application so that the file can be accessed by the application. Lastly, Appellant asserts that the Examiner has not identified a reason to combine Shoji and Cover. Br. 24-25. We disagree. In fact, Appellant quotes the Examiner’s reason to combine the references in the Appeal Brief. See Br. 24-25 (stating “‘it would have been obvious . . . to modify the system of Shoji to include the associator application to receive at least one application of Cover, since it is suggested by Cover such that, the streaming application manager would permit the valid user which are stored in the Appeal 2009-015309 Application 11/046,118 7 database by selecting identified application easily access and receive the application for execution’”). Moreover, one skilled in the art would have recognized that including Cover’s technique, which ensures the user has a valid subscription to the application, would have improved Shoji’s device in the same manner adding a level of security to Shoji’s system. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We therefore, find the Examiner has articulated a reason with some rational underpinning to combine the teachings of these references and to justify the Examiner’s conclusion of obviousness. For the foregoing reasons, Appellant has not persuaded us of error in the rejection of independent claim 1 and claims 14, 16, 17, 20-22, 24, and 29 not separately argued with particularity (Br. 22-28). Claim 2 Regarding claim 2, Appellant argues that there is nothing in Cover that teaches associating a file with an application identifier (ID). Br. 25. ISSUE Under § 103, has the Examiner erred in rejecting claim 2 by finding that Shoji and Cover collectively would have taught or suggested associating the file with the application by associating an application ID that identifies the application with the file? ANALYSIS Based on the record before us, we find no error in the Examiner’s Appeal 2009-015309 Application 11/046,118 8 rejection of representative claim 2. When discussing claim 1 above, we noted that the combined teachings of Shoji and Cover teach or suggest using an associator application to receive a selection of an application file and associate the selected file with the selected application. In particular, Cover suggests, if the user selects the application to associate with the selected data file the user wishes to open (¶ 0065), that the streaming application manager, which includes an associator application, would make such an association by returning an application identification (¶ 0067). This streaming application manager thus contains a program or application that associates the selected application with the selected file in order to open the selected file and does this by associating the identification (e.g., an application ID) that identifies the application with the file in order to open the file. See ¶¶ 0063, 0065, 0067. For the foregoing reasons, we will sustain the rejection of claim 2. Claims 3 and 5-9 Regarding representative claim 3, Appellant argues that there is nothing in the cited section (i.e., ¶ 0145) of Shoji that teaches storing the file in a file location that is associated with an application. Br. 26. ISSUE Under § 103, has the Examiner erred in rejecting claim 3 by finding that Shoji and Cover collectively would have taught or suggested storing the file in a file location that is associated with an application? ANALYSIS Based on the record before us, we find no error in the Examiner’s Appeal 2009-015309 Application 11/046,118 9 rejection of claim 3. When discussing claim 1 above, we noted that the cited passage of Shoji (Ans. 7, 36) teaches that the file has been stored in a location by showing the path (¶ 0145) and that files are retrieved from a hard disk (¶ 0112) at some location. Additionally, we noted that Shoji and Cover collectively suggest that when the application is launched, the path indicating a location where the file to be open has been stored will be provided to the application so that the file can be accessed by the application (Shoji ¶¶ 0063, 0065, 0067; Cover ¶¶ 0126, 0145). For the foregoing reasons, Appellant has not persuaded us of error in the rejection of claim 3 and dependent claims 5-9 not separately argued with particularity (Br. 25- 28). Claim 4 We reach the opposite conclusion for claim 4. Claim 4 recites that the file location is an application queue. The Examiner finds that Shoji teaches this limitation in paragraphs 0033, 0058, 0112, and 0170 (Ans. 7-8, 37) and Cover teaches this limitation in paragraphs 0011 and 0072 (Ans. 37). Specifically, the Examiner finds that Shoji teaches a system that has an I/O manager and that the I/O function is manipulated and processes data through a queue. See Ans. 37. Even if such a proposition is true, the Examiner has provided inadequate evidence that the recited file location that is associated with an application would be an application queue. Also, a review of the cited passages teaches nothing more than retrieving data from storage and constructing its context by a suitable method for the application. See Shoji ¶ 0033, 0112. While as discussed above, these passages suggest the files are stored in a location and retrieved Appeal 2009-015309 Application 11/046,118 10 from a location, there is no teaching or suggestion that the file location is an application queue. For the foregoing reasons, Appellant has persuaded us of error in the rejection of claim 4. Claim 10 Claim 10 recites launching the application associated with the one location and displaying the specific file. Appellant argues that the cited sections in Shoji (i.e., ¶¶ 0026, 0043, 0098, 0100) (see Ans. 12-13, 37) do not teach or suggest launching (Br. 26) or displaying (Br. 27) as recited. ISSUES Under § 103, has the Examiner erred in rejecting claim 10 by finding that Shoji and Cover collectively would have taught or suggested: (a) launching the application associated with the file location; and (b) displaying the specific file? ANALYSIS We find no error in the Examiner’s rejection of claim 10 and refer back to our discussion in the context of claim 1. As discussed, Shoji and Cover collectively teach and suggest the user wants to open a file and creating an association between the file and an application is made. Additionally, the application has to be launched to open the file, as Shoji and Cover suggest, and the file must be displayed in some fashion when opened. Otherwise, the selected file will be inaccessible to the user. Moreover, Shoji Appeal 2009-015309 Application 11/046,118 11 teaches displaying images on a screen (¶ 0026), suggesting that the selected data and file will also be displayed to the user. For the foregoing reasons, Appellant has not persuaded us of error in the rejection of claim 10. Claims 18 and 19 Claim 18 recites automatically associating the specific file with a default application, if the specific file has not already been associated with an application. The Examiner construes this claim, such that the cited art need not perform associating step, when the “if” condition is not met. See Ans. 38. That is, if the prior art teaches the specific file has already been associated with an application, then the prior art does not need to perform the recited associating step in claim 18. See id. Appellant argues that the cited section in Shoji (¶ 0166) does not disclose or suggest associating the file with a default application. Br. 27. ISSUE Under § 103, has the Examiner erred by finding that the phrase, “automatically associating the at least one specific file with a default application, if the at least one specific file has not already been associated with an application,” in claim 18 is a conditional limitation that does not need to be performed when the specific file has already been associated with an application? ANALYSIS We find no error in the Examiner’s rejection of claim 18. The Appeal 2009-015309 Application 11/046,118 12 Examiner construes its claim’s limitation as conditional such that the cited art need not perform associating step when the specific file has already been associated with an application. See Ans. 38. We agree. Under the broadest reasonable construction, claim 18 is only required to be performed if the specific file has not already been associated with an application. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations omitted). Thus, if the references teach or suggest that the specific file has already been associated with an application, then the Examiner need not demonstrate the “automatically associating” step in claim 18. As previously stated, Shoji and Cover collectively teach already associating the specific file with an application. Thus, neither Shoji nor Cover needs to teach the recited conditional limitation in claim 18. For the foregoing reasons, Appellant has not persuaded us of error in the rejection of claim 18 and dependent claim 19 not separately argued with particularity. OBVIOUSNESS REJECTION OVER SHOJI, COVER, AND PARULSKI Appellant relies on the arguments presented for claim 1 when addressing the rejection of claims 11-13 and 15. See Br. 29. We are also not persuaded by Appellant’s argument for the reasons disclosed above in connection with claim 1 and need not address whether Parulski cures any deficiency. This argument also fails to persuasively rebut the Examiner’s prima facie case of obviousness (Ans. 28-30) – a position we find reasonable. Appeal 2009-015309 Application 11/046,118 13 OBVIOUSNESS REJECTION OVER PARULSKI AND COVER Regarding representative claim 23, Appellant argues that Parulski only discusses a single application. Br. 28. Additionally, Appellant asserts that Parulski and Cover fail to teach (a) associating the selected file with the application based on the selection (Br. 28) and (b) the “uploading the file” step that makes the image or file available to the application (Br. 28-29). ISSUES Under § 103, has the Examiner erred in rejecting claim 23 by finding that Parulski and Cover collectively would have taught or suggested: (a) associating the specific file with the application based on the first and second selections; and (b) uploading the file, wherein the file is uniquely associated with the application such that when the application is launched, the file is automatically made available to the application? ANALYSIS Based on the record before us, we find no error in the Examiner’s rejection of claim 23. Appellant argues that Parulski only discusses a single application. Yet, claim 23 only requires receiving a selection of at least one application. Even so, the Examiner has relied upon Cover’s teaching of selecting an application from among several applications and thus suggests the combination with Parulski would include more than one application from which to select. See Ans. 23-24. Additionally, as discussed above in connection with claim 1, the Examiner cites Cover’s teaching of selecting an Appeal 2009-015309 Application 11/046,118 14 application from a list. See Ans. 35 (citing Cover ¶ 0065). We therefore, disagree that Cover fails to cure the deficiencies in Parulski. See Br. 28. We also disagree that Parulski does not teach associating an image (e.g., a file) with an application. Br. 28. Parulski teaches displaying thumbnail images and permits the user to add labels to the images. Col. 3, ll. 8-13. Parulski shows and explains in more detail that a menu for selecting labels is providing to the user. See col. 7, ll. 30-48; col. 8, ll. 10-26; Figs. 1, 3, 4. Some type of application must be used in Parulski to display these thumbnails (see Fig. 3) and permit the user to add labels. Furthermore, Parulski teaches and suggests by displaying these images (e.g., files), as shown in Figure 3, that there is an association between this application and the files. Also, contrary to Appellant’s position (Br. 28), the combination predictably yields no more than associating the selected file with the selected application. See KSR, 550 U.S. at 417. That is, both Parulski and Cover teach associating a selected file with an application (Parulski, col. 3, ll. 8-13, col. 7, ll. 30-48, col. 8, ll. 10-26; Figs. 1, 3; Cover ¶¶ 0063, 0065, 0067 ) and Cover teaches receiving an application selection (¶ 0065). Thus, when combining Parulski with Cover, the collective teachings associate a selected file with a selected application. Finally, Appellant disputes the combination teaches the recited uploading step in claim 23. Br. 28-29. In particular, Appellant admits that Parulski teaches uploading images (Br. 29) but argues, because the Parulski does not make the image available to its software, the specific uploading step, which includes the phrase, “the specific file is automatically made available to the application,” is not taught or suggested. We disagree for the Appeal 2009-015309 Application 11/046,118 15 previously-stated reasons related to how both Parulski and Cover teach and suggest making the specific file available to the application. For the foregoing reasons, Appellant has not persuaded us of error in the rejection of claim 23 and claims 25-28 not separately argued with particularity (Br. 28-29). CONCLUSION Under § 103, the Examiner did not err in rejecting claims 1-3 and 5-29 but erred in rejecting claim 4. DECISION The Examiner’s decision rejecting claims 1-29 is affirmed-in-part. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART babc