Ex Parte Rosenbloom et al

Patent Trial and Appeal BoardDec 12, 2012

11167587 (P.T.A.B. Dec. 12, 2012)

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. 11/167,587 06/28/2005 Oren Rosenbloom MFCP.118806 7478 45809 7590 12/12/2012 SHOOK, HARDY & BACON L.L.P. (MICROSOFT CORPORATION) INTELLECTUAL PROPERTY DEPARTMENT 2555 GRAND BOULEVARD KANSAS CITY, MO 64108-2613 EXAMINER BATAILLE, PIERRE MICHE ART UNIT PAPER NUMBER 2186 MAIL DATE DELIVERY MODE 12/12/2012 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 OREN ROSENBLOOM, VLADIMIR SADOVSKY, BLAKE D. MANDERS, and JOSEPH D. TERNASKY ____________________ Appeal 2010-007391 Application 11/167,587 Technology Center 2100 ____________________ Before DAVID M. KOHUT, JOHNNY A. KUMAR, and JOHN G. NEW, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007391 Application 11/167,587 2 STATEMENT OF CASE Introduction Appellants file this appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-14 and 22. Claims 15-21 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Exemplary Claim Exemplary claim 1 under appeal reads as follows (emphasis added): 1. One or more computer-readable media storing instructions thereon, the instructions being executable to cause a computer to perform a method of serializing communication, the method comprising: obtaining at least a first segment from a device file stored on a removable storage medium, the device file describing one or more unique sessions between a terminal and a specified device using a unique identifier associated with the specified device, wherein the first segment of the device file describing the one or more unique sessions is included within the device file itself, and the first segment comprising at least one selected from the group consisting of a request between the terminal and the specified device and a response between the terminal and the specified device; and transmitting at least a second segment to be stored in the device file on the removable storage medium, the second segment comprising at least one selected from the group consisting of a request between the terminal and the specified device and a response between the terminal and the specified device. Br. 21. Appeal 2010-007391 Application 11/167,587 3 Rejection The Examiner rejected claims 1-14 and 22 under 35 U.S.C. § 102(e) as being anticipated by Ng (US 2006/0168351 A1, Jul. 27, 2006, filed Nov. 12, 2004). Ans. 3-8. Appellants Contentions1 Appellants argue that Ng does not support a finding of anticipation. (Br. 6-12). Appellants’ argument for each of the independent claims 1, 10, and 22, is essentially the same. 1. Appellants contend that Ng fails to disclose, teach, or suggest the limitation recited in each claim of “removable storage medium.” Id. at 9-10. 2. Appellants further contend that Ng fails to disclose, teach, or suggest the limitation recited in each claim of “unique sessions.” Id. at 10- 11. 3. Appellants also contend that Ng fails to disclose, teach, or suggest the limitation recited in each claim of “a request between the terminal and the specified device and a response between the terminal and the specified device.” Id. at 11-12. Issue on Appeal Has the Examiner erred in finding Ng anticipates the invention as recited in claims 1-14 and 22? 1 The same contentions or an analogous contention is separately presented for each of the other independent claims 10 and 22 on appeal. Br. 13-19. Separate patentability is not argued for dependent claims 2-9 or 11-14. Br. 7- 16. Appeal 2010-007391 Application 11/167,587 4 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions that the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur with the Examiner’s anticipation finding. We highlight the following arguments for emphasis. As to Appellant’s above contention 1, we specifically agree with the Examiner (Ans. 9) that the claimed “removable storage medium” “is anything in which data/information can be stored and it’s removable.” Appellants’ Specification discloses that a “removable storage medium… may be used to transfer information between a device and a terminal, such as a personal computer.” Spec. ¶ [0018] (emphasis added). Thus, according to Appellants’ Specification, the removable storage medium is used to transfer information. Although this disclosure is not limiting of the claimed invention, it provides context for which the phrase “removable storage medium” is interpreted. Based on our review of Ng (Fig 1, ¶[0033], Ans. 9), we find that the Examiner, giving the claim its broadest reasonable interpretation consistent with the Specification,2 has properly found that the claimed removable storage medium is met by Ng’s “media player 108” (Ans. 9) because the media player in Ng is a “portable computing device… such as a music player (e.g., MP3 player),” that would be used to transfer information. (See Ng, ¶[0033]). 2 See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2010-007391 Application 11/167,587 5 As to contention 2, Appellants’ Specification has not provided any definition giving special meaning and thereby limiting the scope of “unique sessions.” The Specification only states that “[t]he session information may include, for example, media content and header information.” Abstract (emphasis added). Therefore the phrase “unique sessions” is to be given its plain meaning unless inconsistent with the Specification. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372 (Fed. Cir. 2004). The Examiner finds that the phrase “unique sessions” encompasses digital pictures, music or video. Ans. 10. We find that this construction of the terms “unique sessions” to be both reasonable and consistent with the Specification.3 Id. Appellants have not presented sufficient evidence to convince us that the Examiner’s interpretation of “unique sessions” is in error. Given the above construction, the Examiner correctly points out (Ans. 10) that Ng explicitly discloses that the media content can be audio files (e.g., songs), images (e.g., photographs) or videos. Ans. 10 (citing to Ng, ¶[0038]). The Examiner finds that Ng’s media content equates to unique sessions. Id. We agree with the Examiner because Ng discloses the files “stored on the storage medium of the media player describes data such as digital pictures or music or video.” Ans. 3. 3 See In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969) and In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (during examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification). Appeal 2010-007391 Application 11/167,587 6 As to contention 3, we agree with the Examiner’s analysis (Ans. 10) in response to Appellants’ arguments (Br. 11-12). The Examiner correctly points out that in Ng “during such synchronization, it is determined which media item(s) (i.e. one or more of the digital pictures, music or videos) need to be copied from/to the media player to/from the host device” (Ans. 10 (emphasis ours) (citing Ng, Fig. 6)), and thus Appellants’ contention doess not persuade that the Examiner erred. CONCLUSIONS (1) The Examiner did not err in rejecting claims 1-14 and 22 under 35 U.S.C. § 102(e) as being anticipated by Ng. (2) Claims 1-14 and 22 are not patentable. DECISION The Examiner’s rejection of claims 1-14 and 22 is affirmed. 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 msc