Ex Parte Mullis et al

Patent Trial and Appeal BoardMay 7, 2014

11838933 (P.T.A.B. May. 7, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 11/838,933 08/15/2007 Samuel L. Mullis II 2002-638 / PU07 0079US2 7579 54472 7590 05/08/2014 COATS & BENNETT/SONY ERICSSON 1400 CRESCENT GREEN SUITE 300 CARY, NC 27518 EXAMINER SNYDER, STEVEN G ART UNIT PAPER NUMBER 2184 MAIL DATE DELIVERY MODE 05/08/2014 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 SAMUEL L. MULLIS II and PHILIP ELCAN ____________________ Appeal 2011-006910 Application 11/838,933 Technology Center 2100 ____________________ Before FRANCISCO C. PRATS, JEREMY M. PLENZLER, and PATRICK M. BOUCHER, Administrative Patent Judges. BOUCHER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006910 Application 11/838,933 2 STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 3, 6–9, 11, 13, 15, 16, and 25. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Illustrative Claim The claimed subject matter relates to receipt of control commands at peripheral devices (Spec. ¶2). Claim 1 is illustrative and is reproduced below with the disputed limitation emphasized: 1. A method of passing commands to a modem in a peripheral device, the method comprising: detecting, by a peripheral device, a file access command having an embedded modem command, wherein the file access command is formatted to perform a file operation on a predetermined virtual file at the peripheral device; extracting the modem command from the file access command to control a modem function; and passing the modem command to the modem to perform the modem function. References The prior art relied upon by the Examiner in rejecting the claims on appeal is: Wright US 6,754,725 B1 June 22, 2004 Paley US 2004/0193744 A1 Sept. 30, 2004 Appeal 2011-006910 Application 11/838,933 3 Chen US 2004/0199721 A1 Oct. 7, 2004 Gibson US 7,412,544 B2 Aug. 12, 2008 Rejections The Examiner made the following rejections: Claims 1, 9, and 25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Paley and Wright. Ans. 3–8. Claims 3, 6–8, 11, and 13 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Paley, Wright, and Chen. Ans. 8–14. Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Paley, Wright, and Gibson. Ans. 14–17. Issue The dispositive issue is whether the combination of Paley and Wright reasonably teaches or suggests “wherein the file access command is formatted to perform a file operation on a predetermined virtual file at the peripheral device” (emphasis added), as recited in independent claim 1 and as similarly recited in independent claim 9. ANALYSIS We have reviewed Appellants’ arguments in the Appeal Brief and Reply Brief, and have reviewed the Examiner’s response to Appellants’ arguments. Paley relates to “a detachable USB storage device that can be accessed fully by a user of a host computer regardless of the user’s access privileges.” Paley ¶ 2. In particular, Paley recognizes that data stored on devices may be inaccessible to nonprivileged users. Id. ¶ 7. Paley draws a Appeal 2011-006910 Application 11/838,933 4 distinction between “access commands” available to both privileged and nonprivileged users and “private commands” available only to privileged users. Id. ¶¶ 43, 44. Execution of private commands by nonprivileged users is effected by packaging such commands within access commands. Id. ¶ 60. If an access command references a storage location specified as a private- command location, the data part of the command is processed by a microcontroller within the storage device to execute the embedded private command. Id. ¶ 62. Otherwise, the access command is treated as a normal data access so that data are transferred to or from the storage device. Id. The Examiner acknowledges that “Paley does not appear to explicitly disclose ‘the file access command is formatted to perform a file operation on a predetermined virtual file at the peripheral device.’” Ans. 5 (emphasis by Examiner). The Examiner relies on a combination of Wright with Paley to find the limitation obvious. Id. Wright discloses peripheral devices that store their own device drivers, including instructions to operate the peripheral device that may be copied to a host device. Wright, col. 2, ll. 28–34. When connected with the host device, the operating system of the host device attempts to locate a device driver for the peripheral device, and, if unsuccessful, prompts a user for a location of the driver. Id. at col. 4, ll. 13–17. Wright teaches that “the user may simply direct the operating system 118 to a file stored on the ‘virtual’ disk drive implemented within the device 100 by the mass storage interface 106.” Id. at col. 5, ll. 16–18. The Examiner relies on this disclosure of Wright, Ans. 5, and provides the following reasoning: Appeal 2011-006910 Application 11/838,933 5 The [E]xaminer maintains that using the broadest reasonable interpretation, the contents of the virtual disk and[/]or virtual drive of Wright . . . is considered equivalent to the claimed predetermined virtual file of the independent claims. [Appellants] continue[] to argue that Wright discloses files that are physically existing files, while the instant application describes virtual files that “do not really exist.” This distinction is not explicitly claimed. Ans. 20. We disagree with the Examiner’s reasoning. Instead, we agree with Appellants that those of skill in the art would understand from the context in which Wright refers to a “virtual disk” that it “is not the same thing as the claimed virtual file.” App. Br. 9. The “virtual disk” of Wright provides a mechanism for a user to specify the location of drivers, which are actual physical files resident on the mass storage device, to the host operating system. See Wright, col. 5, ll. 18–21 (“The operating system 118 may copy the driver files from the device 100 and load the device driver files (e.g., the block 216)). We, therefore, disagree that Wright’s reference to the mass storage device as a “virtual disk” seen by the host operating system is equivalent to the “predetermined virtual file” recited in the claims. Accordingly, we do not sustain the rejections of independent claims 1 and 9, nor do we sustain the rejections of claims 3, 6–8, 11, 13, 15, 16, and 25, which depend therefrom. DECISION The Examiner’s decision rejecting claims 1, 3, 6–9, 11, 13, 15, 16, and 25 is reversed. Appeal 2011-006910 Application 11/838,933 6 REVERSED ke