Ex Parte Sadovsky et al

Patent Trial and Appeal BoardSep 17, 2012

11155433 (P.T.A.B. Sep. 17, 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. 11/155,433 06/17/2005 Vladimir Sadovsky MFCP.119136 4951 45809 7590 09/17/2012 SHOOK, HARDY & BACON L.L.P. (MICROSOFT CORPORATION) INTELLECTUAL PROPERTY DEPARTMENT 2555 GRAND BOULEVARD KANSAS CITY, MO 64108-2613 EXAMINER KUDDUS, DANIEL A ART UNIT PAPER NUMBER 2164 MAIL DATE DELIVERY MODE 09/17/2012 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 VLADIMIR SADOVSKY, STEPHEN R. HANDLEY, and OREN ROSENBLOOM ____________ Appeal 2010-004829 Application 11/155,433 Technology Center 2100 ____________ Before MAHSHID D. SAADAT, DAVID M. KOHUT, and JOHNNY A. KUMAR, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004829 Application 11/155,433 2 Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection of claims 1-14, 16-18, and 20. Claims 15 and 19 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Introduction Appellants’ invention relates to systems and methods for generating an index database for selecting objects (see Spec. ¶ [0018]). According to Appellants, the index database is generated using device parameters of a responder device, which makes the index database device specific for the responder device (id.). Exemplary Claim Claim 1 is illustrative of the invention and reads as follows: 1. A computer-storage medium storing computer- useable instructions that, when used by an initiator device, cause the initiator device to perform a method for generating an index database, the method comprising: receiving an indication of a selection of at least one object; accessing at least one device parameter of a responder device; generating an index database for the at least one object based on the at least one device parameter of the responder device; and transferring the index database to the responder device. The Rejections Claims 1-6, 8-14, and 16-18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tien (US 6,938,029 B1) and Lopke (US 2002/0133755 A1). Appeal 2010-004829 Application 11/155,433 3 Claims 7 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tien, Lopke, and Bi (US 6,963,783 B1). ANALYSIS In rejecting claim 1 and 16, the Examiner finds that Tien teaches the recited method of generating an index database, except for the limitation of at least one device parameter for which the Examiner applies Lopke (Ans. 3- 4). The Examiner further finds that Lopke discloses the “at least one device parameter” limitation which would have benefitted from Tien’s method of digitally recording information “for providing an error code indexing and interpretation apparatus” (Ans. 4). Appellants contend that indexing a recording in Tien “is unrelated to generating an index database, which facilitates browsing, management, and playback of content on a responder device” (App. Br. 8). Appellants further argue that Lopke relates to interpreting error codes for device errors and providing appropriate repair instructions and has nothing to do with using the parameters of a responder device for generating an index database (App. Br. 12). The Examiner responds by stating that, to the extent that claims do not recite facilitating browsing, management, and playback of content, Tien discloses generating an index database for the responder device (Ans. 15- 17). However, the Examiner does not identify any teachings in Tien that connects the generated index with the parameters of any device. As stated by Appellants (App. Br. 12-13), one of ordinary skill in the art having knowledge of the responder device parameters of Lopke would not have used such parameters for generating an index database for a selected object. Appeal 2010-004829 Application 11/155,433 4 Lopke’s indexing and interpretation of error codes is merely used for quickly providing the appropriate error correction procedure to a user of a device that malfunctions (see ¶¶ [0001], [0006], and [0025]). Therefore, we find that the Examiner’s assertion with respect to Lopke teaching the claimed “accessing at least one device parameter of a responder device” (Ans. 20) wherein generating an index database is based on the device parameter, as required in claim 1, is not supported by evidence of record. CONCLUSION On the record before us, we conclude that the Examiner erred in rejecting claim 1, as well as claims 16 and 20 which include similar limitations. Therefore, we do not sustain the 35 U.S.C. § 103 rejections of claims 1, 16, and 20, nor of claims 2-14, 17, and 18 dependent therefrom. DECISION The Examiner’s decision rejecting claims 1-14, 16-18, and 20 is reversed. REVERSED ELD