Ex Parte Baumann et al

Patent Trial and Appeal Board

Nov 29, 2017

14301926 (P.T.A.B. Nov. 29, 2017)

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.
14/301,926 06/11/2014 Warren J. Baumann AUS920070988US2 5147
86713 7590
Mitch Harris (END)
c/o Mitch Harris, Atty at Law
P.O. Box 1269
Athens, GA 30603-1269
11/29/2017 EXAMINER
CONYERS, DAWAUNE A
ART UNIT PAPER NUMBER
2152
MAIL DATE DELIVERY MODE
11/29/2017 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 WARREN J. BAUMANN, FIRAS BOUZ,
DOUGLAS S. BROWN, and WESLEY STEVENS
Appeal 2017-003596
Application 14/301,9261
Technology Center 2100
Before MAHSHID D. SAADAT, CATHERINE SHIANG, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—17, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 3.
Appeal 2017-003596
Application 14/301,926
THE INVENTION
The disclosed and claimed invention is “related to computer
management software, and more particularly to template-based file selection
techniques providing remote/local file selection for modular backup and
migration.” Spec. 12.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer-performed method for selecting files and/or
configuration entries for backup, migration, restoration or
synchronization comprising:
during a backup, migration or synchronization session,
first reading a first template specifying one or more applications,
wherein a corresponding at least one first collection of files is
specified for each of the one or more applications, wherein each
of the at least one first collection of files is specified for transfer
between a workstation and a storage location ;
during the backup, migration or synchronization session,
presenting a user interface to a user, wherein the user interface
accepts a sequence of commands from the user that modifies the
at least one first collection of files specified for the one or more
applications, wherein application of the commands are applied in
order to modify the first template read by the first reading to
produce a first local template specifying at least one first
modified collection of files;
storing the first local template specifying the at least one
first modified collection of files;
storing an ordered record of the sequence of commands
accepted by the user interface, whereby changes made by the
user to the first collection of files specified for the one or more
first applications can be recreated in the order in which the
changes were applied;
during the backup, migration or synchronization session
first transferring the at least one first modified collection of files
between the workstation and the storage location in conformity
with the stored first local template;
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Application 14/301,926
during a subsequent backup, migration or synchronization
session, second reading a second template specifying at least one
second collection of files for transfer, wherein the second
template differs from the first template and the second collection
of files differs from the at least one first collection of files;
during the subsequent backup, migration or
synchronization session, third reading the stored ordered record
of the sequence of commands;
during the subsequent backup, migration or
synchronization session, modifying the second template using
the sequence of commands retrieved by the third reading by
applying the sequence of commands in sequential order to the
second template to produce at least one second local template
specifying at least one third collection of files that differs from
the at least one first collection of files and the at least one second
collection of files; and
during the subsequent backup, migration or
synchronization session, second transferring the at least one third
collection of files specified by the at least one second local
template between the workstation and the storage location in
conformity with the second local template.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Moulton
Ballard
Singhal
Beck
US 2001/0034795 A1 Oct. 25, 2001
US 2005/0223277 A1 Oct. 6, 2005
US 2006/0117309 A1 June 1, 2006
US 2006/0173892 A1 Aug. 3, 2006
REJECTIONS
Claims 1—3, 7—9, 13, and 14 stand rejected under pre-AlA 35 U.S.C.
§ 103(a) as being unpatentable over Ballard and Beck. Final Act. 2—8.
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Application 14/301,926
Claims 4, 10, and 15 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Ballard, Beck, and Singhal. Final Act. 9-11.
Claims 5,11, and 16 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Ballard, Beck, and Moulton. Final Act. 11—12.
Claims 6, 12, and 17 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Ballard, Beck, Singhal, and Moulton. Final Act.
12-14.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We are not persuaded by Appellants’ arguments regarding claims 1—17, and
we incorporate herein and adopt as our own: (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken (Final
Act. 2—14), and (2) the reasons and rebuttals set forth in the Examiner’s
Answer in response to Appellants’ arguments (Ans. 2—7). We incorporate
such findings, reasons, and rebuttals herein by reference unless otherwise
noted. However, we highlight and address specific findings and arguments
for emphasis as follows.2
2 Rather than reiterate the entirety of the arguments of Appellants and the
positions of the Examiner, we refer to the Appeal Brief (filed June 8, 2016);
the Reply Brief (filed Jan. 11, 2017); the Final Office Action (mailed Jan.
14, 2016); and the Examiner’s Answer (mailed Nov. 16, 2016) for the
respective details.
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Application 14/301,926
Appellants argue the Examiner erred in finding the combination of
Ballard and Beck teaches “storing an ordered record of the sequence of
commands accepted by the user interface, whereby changes made by the
user to the first collection of files specified for the one or more first
applications can be recreated in the order in which the changes were
applied,” “second reading a second template specifying at least one second
collection of files for transfer, wherein the second template differs from the
first template and the second collection of files differs from the at least one
first collection of files,” and “modifying the second template using the
sequence of commands retrieved by the third reading by applying the
sequence of commands in sequential order to the second template to produce
at least one second local template specifying at least one third collection of
files that differs from the at least one first collection of files and the at least
one second collection of files,” as recited in claim 1. App. Br. 11—16; Reply
Br. 2—8. More specifically, Appellants argue “Ballard is silent on storing an
ordered record of a sequence of commands accepted by a user interface
whereby changes made by a user to a collection of files can be recreated.”
App. Br. 13. Appellants further argue “Beck only discloses techniques for
recording events and data objects communicated between a client and an
application program” and it neither teaches nor suggests “that stored
commands could or should be used to modify a second template that differs
from the first template and that specifies a second collection of files for
transfer.” Id. at 13—14. Appellants also argue that “Beck does not disclose
backups, migration or synchronization sessions at all, and the templates
referred to in Beck are stored records of user interaction and input data and
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Application 14/301,926
not templates that specify a collection of files as required by independent
Claims 1, 7 and 13.” Reply Br. 5
Appellants further argue that the combination of the two disclosures
“does not yield the claimed invention without further modification.” App.
Br. 14. More specifically, Appellants argue that “the modification described
in Beck would select a different template (i.e., the second template) in
addition to repeating the user input represented by data objects and nothing
in Ballard and Beck combined suggests such action.” Id.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981).
Furthermore, “[t]he test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into the structure of the
primary reference.” Keller, 642 F.2d at 425. Instead, the relevant issue is
“what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” Id. “Combining the teachings of
references does not involve an ability to combine their specific structures.”
In re Nievelt, 482 F.2d 965, 968 (CCPA 1973); see also In re Mouttet, 686
F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination
of obviousness based on teachings from multiple references does not require
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an actual, physical substitution of elements.” (citing In re Etter, 756 F.2d
852, 859 (Fed. Cir. 1985) (enbanc))).
Also, our reviewing court guides that “the question under 35 USC
§ 103 is not merely what the references expressly teach but what they would
have suggested to one of ordinary skill in the art at the time the invention
was made.” Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807-
OS (Fed. Cir. 1989) (citation omitted). Moreover, “[e]very patent application
and reference relies to some extent upon knowledge of persons skilled in the
art to complement that [which is] disclosed. . . .” In re Bode, 550 F.2d 656,
660 (CCPA 1977) (quoting In re Wiggins, 488 F.2d 538, 543 (CCPA 1973)).
Those persons “must be presumed to know something” about the art “apart
from what the references disclose.” In re Jacoby, 309 F.2d 513, 516 (CCPA
1962). Additionally, the skilled artisan is “a person of ordinary creativity,
not an automaton.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Furthermore, there is no requirement in an obviousness analysis for the prior
art to “contain a description of the subject matter of the appealed claim in
ipsissimis verbis.” In re May, 574 F.2d 1082, 1090 (CCPA 1978).
Having reviewed Appellants’ arguments, we are not persuaded by
those arguments that the Examiner erred. Contrary to the standards set forth
above, Appellants’ arguments focus on the references individually,
improperly argue that an bodily incorporation does not teach the claimed
invention, and do not focus on the modifications that the Examiner finds that
a person of ordinary skill in the art would have made. For example,
Appellants argue that Ballard does not teach storing; however, the Examiner
relies on Beck for that feature. Compare Final Act. 6, with App. Br. 13.
Similarly, Appellants focus on the results of bodily incorporating Beck into
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Ballard but do not address the Examiner’s findings on how one of ordinary
skill in the art would have combined the relevant teachings from Beck
(storing ordered commands) into the broad teachings of the references.
Compare App. Br. 13—15, and Reply Br. 5—8, with Ans. 4—7.
Accordingly, we sustain the rejection of independent claim 1, along
with the rejections of independent 7 and 13, which are argued on the some
grounds, and dependent claims 2, 3, 8, 9, and 14, which are not argued
separately. We also affirm the rejection of dependent claim 4—6, 10-12, and
15—17, which are not argued separately.
DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1—17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. §41.50(f).
AFFIRMED
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