Ex Parte Baumann et al

Patent Trial and Appeal Board

Apr 10, 2014

12044188 (P.T.A.B. Apr. 10, 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.
12/044,188 03/07/2008 Warren J. Baumann AUS920070988US1 6737
86713 7590 04/11/2014
Mitch Harris (END)
c/o Mitch Harris, Atty at Law
P.O. Box 7998
Athens, GA 30604-7998
EXAMINER
CONYERS, DAWAUNE A
ART UNIT PAPER NUMBER
2159
MAIL DATE DELIVERY MODE
04/11/2014 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 WARREN J. BAUMANN, FIRAS BOUZ,
DOUGLAS S. BROWN, and WESLEY STEVENS
____________________

Appeal 2011-012578
Application 12/044,188
Technology Center 2100
____________________

Before CARLA M. KRIVAK, HUNG H. BUI, and CATHERINE SHIANG,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-21. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.2

1 The real Party of Interest is International Business Machines Corp.
2 Our decision refers to Appellants’ Appeal Brief filed March 16, 2011
(“App. Br.”); Reply Brief filed August 4, 2011 (“Reply Br.”); Examiner’s
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STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention relates to file selection techniques for use
during backup, migration, synchronization, deployment, and other forms of
file transfer between systems, for example, work station and remote storage
based on application-associated templates. Spec. ¶ [0005].
Claims on Appeal
Claims 1, 7, 13, and 21 are the independent claims on appeal. Claim 1
is representative of Appellants’ invention, and is reproduced below with
disputed limitations emphasized:
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,
reading a template specifying one or more applications, wherein
a collection of files is specified for transfer between a
workstation and a storage location for each of the one or more
applications;
during the backup, migration or synchronization session,
accepting multiple user inputs from a single user that modify
the template read by the reading to produce a local template
specifying a modified collection of files;
storing the local template specifying the modified
collection of files;
storing a record of the multiple user inputs including
storing an order of entry of the multiple user inputs in the
record;

Answer mailed June 9, 2011 (“Ans.”); Final Office Action mailed December
20, 2010 (“Final Rej.”); and the original Specification filed March 7, 2008
(“Spec.”).
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transferring the files between the workstation and the
storage location in conformity with the stored local template;
and
modifying another template specifying files for transfer
using the stored record of the multiple user inputs by applying
them to the another template according to their stored order of
entry.

Evidence Considered
Bhansali US 6,006,239 Dec. 21, 1999
Ballard US 2005/0223277 A1 Oct. 6, 2005
Singhal US 2006/0117309 A1 Jun. 1, 2006

Examiner’s Rejections
(1) Claims 1-4, 6-10, 12-15, 17-19, and 21 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Ballard and Bhansali. Ans. 5-
19.
(2) Claims 5, 11, 16, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ballard, Bhansali, and Singhal. Ans.
20-22.
Issue on Appeal
Based on Appellants’ arguments, the dispositive issue on appeal is
whether the Examiner erred in rejecting claims 1-4, 6-10, 12-15, 17-19, and
21 under 35 U.S.C. § 103(a) as being unpatentable over Ballard and
Bhansali. In particular, the appeal turns on whether the Examiner’s
combination of Ballard and Bhansali teaches or suggests limitations of
Appellants’ independent claims 1, 7, 13, and 21 as well as dependent claims
5, 6, 11, 12, 16-18, and 20. App. Br. 12-18; Reply Br. 2-11.

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ANALYSIS
With respect to independent claims 1, 7, and 13, the Examiner finds
Ballard discloses a method for selecting files and/or configuration entries for
backup, migration, restoration or synchronization over the Internet including
reading a template specifying one or more applications and files for transfer
between a workstation and a storage location, and generating a local
template with updated files for subsequent file transfer. The Examiner finds
Ballard does not disclose “storing a record of the multiple user inputs
including storing an order of entry of the multiple user inputs in the record”
and “[m]odifying another template specifying files for transfer using the
stored record of the multiple user inputs by applying them to the another
template according to their stored order of entry.” Ans. 8, 17-18 (citing
Ballard, ¶¶ [0031], [0045], [0051]-[0052]; and FIGS. 1-16). The Examiner
then relies upon Bhansali for disclosing the missing features, i.e., “storing a
record . . . including an order of entry of the multiple user inputs” and
“modifying another template specifying files for transfer . . . ” Id. at 8-9
(citing Bhansali, col. 3, ll. 5-10; col. 7, ll. 35-67; col. 8, ll. 1-67; col. 9, ll.
25-67; and FIG. 2) .
Based on these factual findings, the Examiner concludes that “[i]t
would have been obvious . . . to have modified the teachings of Ballard with
the teachings of Bhansali for storing user changes in a change log which
would result in the claimed invention.” Id. at 10.
Appellants do not dispute the Examiner’s specific findings regarding
Ballard and Bhansali. Rather, Appellants contend the Examiner’s
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combination of Ballard and Bhansali does not disclose what Appellants
characterize as:
“storing a record of multiple user inputs accepted from a
single user during a backup, migration or synchronization
session to modify a template specifying a collection of files for
transfer, including storing their order of entry and modifying
another template specifying files for transfer using the stored
record of the multiple user inputs and their stored order of
entry.”

App. Br. 12 (emphasis added).
In particular, Appellants characterize that: (1) Ballard does not
disclose storing a record of user inputs at all, and (2) Bhansali discloses only
a method and system for allowing multiple users to edit a spreadsheet. Id.
(citing Bhansali, col. 3, ll. 5-7l; Abstract). Appellants then assert Bhansali
does not disclose selecting files for backup, migration, or synchronization.
For example:
“First and foremost, Bhansali does not disclose recording
changes made to a template that specifies a collection of files.
Bhansali only discloses multi-user spreadsheet editing sessions
. . . Second, the changes recorded by Bhansali are from multiple
users, not a single user as recited in the Claims. Finally, the
changes recorded by Bhansali are from multiple spreadsheet
editing sessions and not the changes made by that single user
during a backup, migration or synchronization session.”

App. Br. 13 (citing Bhansali, col. 7, ll. 35-67; col. 8, ll. 1-67; and col. 9, ll.
25-67); Reply Br. 3-4.
We do not find Appellants’ arguments persuasive to justify a reversal
of the Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011) (explaining that even if the examiner had failed to make a prima facie
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case, the Board would not have erred in framing the issue as one of
reversible error because it has long been the Board’s practice to require an
appellant to identify the alleged error in the examiner’s rejections). At the
outset, we note the claim term “accepting multiple user inputs from a single
user” as recited in Appellants’ claims 1, 7, and 13 is an inherent
contradiction, and is neither supported nor described in Appellants’
Specification, including step 42 of FIG. 5 and ¶ [0023] as asserted by
Appellants. App. Br. 4. A single user would be able to enter data
representing multiple user inputs, but not “multiple user inputs.”
Nevertheless, acceptability of that claim term depends on whether one of
ordinary skill in the art would understand what is claimed in light of the
Specification. Seattle Box Co. v. Industrial Crating & Packing, Inc., 731
F.2d 818, 826 (Fed. Cir. 1984). See also Metabolite Labs., Inc. v. Lab.
Corp. of Am. Holdings, 370 F.3d 1354, 1366 (Fed. Cir. 2004):
The requirement to “distinctly” claim [under 35 U.S.C.
§ 112, second paragraph] means that the claim must have a
meaning discernible to one of ordinary skill in the art when
construed according to correct principles . . . . Only when a
claim remains insolubly ambiguous without a discernible
meaning after all reasonable attempts at construction must a
court declare it indefinite. (Citations omitted).

In view of Appellants’ own Specification, we find one skilled in the
art would consider the claim term “accepting multiple user inputs from a
single user” to mean a user input such that “a record of the multiple user
inputs” could be stored and files could be subsequently transferred between
a workstation and a storage location in the manner recited in Appellants’
claims 1, 7, and 13.
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Second, we note Appellants’ arguments are not commensurate with
the scope of claims 1, 7, and 13. For example, claim 1 simply recites
“storing a record of the multiple user inputs including storing an order of
entry of the multiple user inputs in the record” and not “a record of multiple
user inputs accepted from a single user during a backup, migration or
synchronization session,” as incorrectly characterized by Appellants.
Third, Appellants’ attacks on Bhansali are misplaced. One cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. In re Keller, 642 F.2d
413, 425 (CCPA 1981). The test of obviousness is what the combined
teachings would have suggested to those of ordinary skill in the art. Id. at
425. Contrary to Appellants’ characterization, Bhansali is simply cited for
disclosing storage of a record of multiple user inputs including an order of
entry of those user inputs, and modification of a template using the stored
record of multiple user inputs in the form of multiple users’ access to a
spreadsheet (i.e., template) for editing and updating, i.e., making additions,
deletions, or other desired changes among multiple users. Ans. 8-10. Thus,
the Examiner has provided a comprehensive response, supported by
sufficient evidence, to each of Appellants’ contentions. As such, we adopt
as our own the Examiner’s findings and the reasons set forth by the
Examiner in the Examiner’s Answer. Ans. 22-29.
Moreover, Ballard also teaches similar features disclosed by Bhansali.
For example, Ballard teaches the use of an operation log 72 to store an entry
for each operation (e.g., backup) and a file log 74 to store an entry for each
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file to be backed up, shown in FIG. 6 and FIG. 7 as reproduced below with
additional markings for illustration.

FIG. 6 FIG. 7

FIG. 6 of Ballard shows an operation log 72 to store an entry for each
operation (e.g., backup), while FIG. 7 shows a file log 74 to store an entry
for each file to be backed up.

As shown in FIG. 6, an entry for each backup operation is formed by
fields 81 including: a client computer address field (or other client
identifier), an indication field of the type of operation (e.g., system back-up,
programmed back-up, incremental back-up), and a time stamp field. See
Ballard, ¶ [0038]. Similarly, as shown in FIG. 7, an entry 82 includes fields
83 for identifying information for the file (e.g., filename, file type, file size
and/or file creation date), a field for a time stamp, and a field for a client
computer identifier (e.g., client computer address). Id. at ¶ [0039].
According to Ballard, different entries may correspond to different client
computers, i.e., multiple user inputs as recited in Appellants’ claims 1, 7,
and 13. Id. at ¶¶ [0038]-[0039].
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In addition, Ballard further teaches the use of a pre-existing template
for user selection of files for the system back-up operation, shown in FIG. 10
as reproduced below with additional markings for illustration.

FIG. 10 of Ballard shows a client computer user interface 90 including
commands for different types of backup operations, including a programmed
back-up in which a template is used to permit a user to select files and
update those files for backup operations.

Thus, based on Ballard’s disclosures, the Examiner need not rely on
Bhansali for the obviousness conclusion. Nevertheless, we agree with the
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Examiner that Ballard and Bhansali teach the disputed limitations of
Appellants’ claims 1, 7, and 13.
For the reasons set forth above, Appellants’ contentions have not
persuaded us of error in the Examiner’s position. Accordingly, we sustain
the Examiner’s obviousness rejection of independent claims 1, 7, and 13
based on Ballard and Bhansali.
With respect to independent claim 18, Appellants argue the
Examiner’s combination of Ballard and Bhansali does not disclose:
“receive a transfer of files from a workstation computer system
for storage in a storage location managed by a server computer
system, wherein the transfer of files is specified in part by one
or more templates and in part by a record of modifications
made by a single user during a backup, migration or
synchronization session at the workstation computer system and
according to a stored record of their entry.”

App. Br. 15.
We disagree. At the outset, we note Appellants’ independent claim 18
is significantly broader than independent claims 1, 7, and 13, and does not
require the features disclosed by Bhansali, i.e., storage of a record of
multiple user inputs including an order of entry of those user inputs, and
modification of a template using the stored record of multiple user inputs.
Consequently, we find Ballard discloses all Appellants’ claimed elements,
including the transfer of files between a workstation and a storage location
using one or more templates and in part a record of modifications (i.e.,
update of the template) by the user during a backup section according to a
record of files, as shown in FIG. 6, FIG. 7, and FIG. 10.
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Therefore, for the reasons set forth above, we conclude independent
claim 18 is rendered unpatentable over Ballard. As such, we sustain the
Examiner’s obviousness rejection of independent claim 18.
With respect to independent claim 21, Appellants further argue the
Examiner’s combination of Ballard and Bhansali does not disclose:
“receiving an object specifying an administrative override
whereby at least one file specified by the program instructions
that accept multiple user inputs is excluded from or included in
the modified collection of files.”

App. Br. 15.
The claim term “administrative override” is described in Appellants’
Specification as a process to force the inclusion or exclusion of specific files,
directories and/or file names. See Spec. ¶ [0016].
In response, the Examiner has broadly interpreted the claim term
“administrative override” as encompassing user saving changes in the
template, as disclosed by Ballard and also by Bhansali in the context of
multiple users’ access to a spreadsheet for editing purposes. Ans. 32-33
(citing Bhansali, col. 3, ll. 5-10; col. 7, ll. 35-67; col. 8, ll. 1-67; col. 9, ll.
25-67; and FIG. 2).
We find the Examiner’s interpretation is reasonable and consistent
with Appellants’ own Specification. Consequently, we conclude the
Examiner’s combination of Ballard and Bhansali discloses or suggests the
disputed limitation of independent claim 21.
For the reasons set forth above, Appellants’ contentions have not
persuaded us of any error in the Examiner’s position. Accordingly, we
sustain the Examiner’s obviousness rejection of independent claim 21.
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With respect to dependent claims 6, 12, and 17, Appellants further
argue the Examiner’s combination of Ballard and Bhansali does not
disclose:
“detecting a media type or location of the storage location, and
selectively including files or excluding files from the modified
collection of files used by the transferring in conformity with
the detected media type or location of the storage location.”

App. Br. 16.
We again disagree, and adopt as our own the Examiner’s findings and
reasons set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief. Ans. 34-35.
With respect to dependent claims 2-4, 8-10, 14-15, and 18-19,
Appellants present no separate patentability arguments. For the same
reasons discussed, we also sustain the Examiner’s obviousness rejection of
claims 2-4, 8-10, 14-15, and 18-19.
Lastly, with respect to dependent claims 5, 11, 16, and 20, Appellants
do not dispute the Examiner’s finding regarding Singhal. Instead,
Appellants argue the Examiner’s combination of Ballard, Bhansali and
Singhal does not disclose the same feature recited in claim 21, that is,
“receiving an object specifying an administrative override at the
workstation, whereby at least one file specified by the accepting multiple
user inputs is excluded from or included in the modified collection of files
. . .” App. Br. 18.
For the same reasons discussed in connection with claim 21, and the
Examiner’s findings and reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief (Ans. 35-36), we also
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sustain the Examiner’s obviousness rejection of dependent claims 5, 11, 16,
and 20 based on Ballard, Bhansali, and Singhal.

CONCLUSION
On the record before us, we conclude the Examiner has not erred in
rejecting: (1) claims 1-4, 6-10, 12-15, 17-19, and 21 under 35 U.S.C. §
103(a) as being unpatentable over Ballard and Bhansali; and (2) claims 5,
11, 16, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Ballard,
Bhansali, and Singhal.

DECISION
As such, we AFFIRM the Examiner’s final rejections of claims 1-21.3

3 In the event of further prosecution, we suggest the Examiner consider if
claims 13-21 include forms of non-transitory tangible media and transitory
propagating signals. If so, the Examiner may reject claims 13-21 under 35
U.S.C. § 101 as covering non-statutory subject matter. See In re Nuijten,
500 F.3d 1346, 1355 (Fed. Cir. 2007); and U.S. Patent and Trademark
Office, Interim Examination Instructions for Evaluating Subject Matter
Eligibility Under 35 U.S.C. § 101, at 2 (Aug. 2009), available at
http://www.uspto.gov/patents/law/comments/2009-08-
25_interim_101_instructions.pdf (emphases omitted); see also David J.
Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off.
Gaz. Pat. Office 212 (Feb. 23, 2010) (citation omitted).

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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

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