Ex Parte Peterson et al

Patent Trial and Appeal BoardMay 27, 2016

11565033 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111565,033 11130/2006 10949 7590 06/01/2016 Nokia Corporation and Alston & Bird LLP c/o Alston & Bird LLP Bank of America Plaza, 101 South Tryon Street Suite 4000 Charlotte, NC 28280-4000 FIRST NAMED INVENTOR Kevin Peterson 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. 042933/319030 3543 EXAMINER GMAHL, NA VNEET K ART UNIT PAPER NUMBER 2166 NOTIFICATION DATE DELIVERY MODE 06/0112016 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): usptomail@alston.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEVIN PETERSON, KEITH HENRY, TROY BARTLETT, JAY BREDENBERG, and DAVID DECKER Appeal2014-006760 Application 11/565,033 Technology Center 2100 Before JAMES R. HUGHES, JOHNNY A. KUMAR, and SCOTT E. BAIN, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's Final Decision rejecting claims 1, 4, 7-13, 16, 19-25, 28, 31-38, 40-43, and 50-58. Claims 2, 3, 5, 6, 14, 15, 17, 18, 26, 27, 29, 30, 39, and 44--49 have been canceled. (See App. Br. 11.)1 We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 We refer to Appellants' Specification ("Spec.") filed Nov. 30, 2006; Appeal Brief ("App. Br,") filed Oct. 24, 2013; and Reply Brief ("Reply Br.") filed May 27, 2014. We also refer to the Examiner's Answer ("Ans.") mailed March 27, 2014, and Final Office Action (Final Rejection) ("Final Act.") mailed April 3, 2013. Appeal2014-006760 Application 11/565,033 Appellarzts 'Irzverztiorz The invention at issue on appeal concerns apparatuses, computer program product comprising a computer-readable storage medium, and methods for providing intelligent synchronization between devices. A client device receives message indicating synchronization (data to be synchronized) is available. The client device determines if new data, which has not been sent to a network device (i.e., a server) resides on the client device and, when no such data is present, the client device may accept the message and synchronize the client device (make changes to the data on the device) without further communicating with the network (network device). (Spec. i-fi-f l, 4--12, 58; Abstract.) Illustrative Claim Independent claim 1, reproduced below with the key disputed limitations emphasized, further illustrates the invention: 1. A method comprising: receiving, at a client device, a message indicating that data for synchronization is available via a particular synchronization method, the message including at least a portion of the data for synchronization; determining, at the client device, whether the client device includes new data that has not been communicated to a network element; in an instance in which the client device includes new data that has not been communicated to the network element, not accepting the message and selecting, at the client device, an alternative synchronization method that provides for an exchange of data between the client device and the network element; and 2 Appeal2014-006760 Application 11/565,033 in an instance in which the client device does not include new data that has not been communicated to the network element, accepting the message and making corresponding changes at the client device without further communication of data to the network element. Rejection on Appeal The Examiner rejects claims 1, 4, 7-13, 16, 19-25, 28, 31-38, 40-43, and 50-58 under 35 U.S.C. Â§ 103(a) as being unpatentable over Chen et al. (US 2003/0055825 Al; pub. Mar. 20, 2003) (hereinafter "Chen") and Lahti et al. (US 2003/0101329 Al; pub. May 29, 2003) (hereinafter "Lahti"). ISSUE Based upon our review of the administrative record, Appellants' contentions, and the Examiner's findings and conclusions, the pivotal issue before us follows: Does the Examiner err in concluding that Chen and Lahti collectively would have taught or suggested "accepting the message and making corresponding changes at the client device without further communication of data to the network element" within the meaning of Appellants' claim 1 and the commensurate limitations of claims 13, 25, 38, 40, and 42? ANALYSIS The Examiner provides the same basis for rejecting independent claims 1, 13, 25, 38, 40, and 42 (Final Act. 4--5, 7-9, 12-13, 16-20; Ans. 3- 5), and rejects representative claim 1under35 U.S.C. Â§ 103(a) as being obvious over Chen and Lahti. (Final Act. 4--5.) Claim 1 recites "in an instance in which the client device does not include new data that has not been communicated to the network element, accepting the message and 3 Appeal2014-006760 Application 11/565,033 making corresponding changes at the client device without.further communication of data to the network element" (emphasis added). The Examiner finds this limitation is disclosed by Chen - "Chen discloses ... accepting the message and making corresponding changes at the client device without further communication of data to the network element (figures 3, 5, 6, paragraphs 19, 24, 26-28, 30, 32, 33-34, 39--41, 44--45 and 54--56, Chen)" (Final Act. 4; see Ans. 3-5). Appellants contend Chen and Lahti, singly or in combination, would not have rendered obvious the disputed limitation (App. Br. 14) and "[i]n contrast, Chen's synchronizing process requires communication to a network element" (id.). (See Reply Br. 1-3.) Appellants persuade us of error in the obviousness rejection of claim 1. 2 We have reviewed the sections of Chen cited by the Examiner. While 2 We note that the process (method) of claim 1 recites a conditional limitation, namely "in an instance in which the client device includes new data that has not been communicated to the network element" (claim 1) that was not addressed by either the Examiner or Appellants. Claim 1 also includes an additional recited condition in the last clause which is the focus of dispute. If the recited condition in the last clause is satisfied - "in an instance in which the client device does not include new data that has not been communicated to the network element" (claim 1) - then the message is accepted by the client device and corresponding changes at the client device are made without further communication of data to the network element. In the event of further prosecution, we leave it to the Examiner to determine if this acceptance (synchronization) step is merely optional. Under our broadest reasonable interpretation of the claim limitation, the synchronization is only performed if the conditions precedent are met. Therefore, this step need not occur. See Cybersettle, Inc. v. Nat 'l Arbitration Forum, Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007) (unpublished) ("It is of course true that method steps may be contingent. If the condition for 4 Appeal2014-006760 Application 11/565,033 Chen generally describes synchronization of a mobile device with a network device (see Chen i-fi-f 19, 24, 26-28, 30, 32, 33-34, 39--41, 44--45 and 54--56; Figs. 3, 5, 6- cited by the Examiner (supra)), we agree with Appellants that the Examiner does not establish these sections disclose, teach, or suggest synchronization without communication to a network device. Consequently, we are constrained by the record before us to find that the Examiner erred in finding Chen and Lahti teach the disputed limitations of Appellants' claim 1. Independent claims 13, 25, 38, 40, and 42 include limitations of commensurate scope. Claims 4, 7-12, 16, 19-24, 28, 31-37, 41, 43, and 50-58 depend on claims 1, 13, 25, 38, 40, and 42, respectively. Accordingly, we reverse the Examiner's obviousness rejection of claims 1, 4, 7-13, 16, 19-25, 28, 31-38, 40--43, and 50-58. CONCLUSION Appellants have shown that the Examiner erred in rejecting claims 1, 4, 7-13, 16, 19-25, 28, 31-38, 40-43, and 50-58 under 35 U.S.C. Â§ 103(a). performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed."); see also Applera Corp. v. Illumina, Inc., 375 Fed. Appx. 12, 21 (Fed. Cir. 2010) (unpublished) (affirming a district court's interpretation of a method claim as including a step that need not be practiced if the condition for practicing the step is not met); In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006) ("optional elements do not narrow the claim because they can always be omitted"). Thus, if the last limitation is determined to be optional, Appellants' arguments regarding Chen's failure to teach this conditional limitation (App. Br. 14--16; Reply Br. 1-3) would not be commensurate with the scope of the claim, which may not require performing the action recited in the conditional step, in that its conditions need not be satisfied to render claim 1 obvious. 5 Appeal2014-006760 Application 11/565,033 DECISION We reverse the Examiner's rejections of claims 1, 4, 7-13, 16, 19-25, 28, 31-38, 40-43, and 50-58. REVERSED 6