Ex Parte Berstis et al

Patent Trial and Appeal Board

Mar 26, 2013

10832036 (P.T.A.B. Mar. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VIKTORS BERSTIS, YEN-FU CHEN,
and JOHN W. DUNSMOIR
____________

Appeal 2010-011475
Application 10/832,036
Technology Center 2100
____________

Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
GREGG I. ANDERSON, Administrative Patent Judges.

ANDERSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

STATEMENT OF THE CASE
Appellants’ claims are directed to a method, a system and a product to
transfer data from different sources (“multi-source”) to different destinations
(“multi-destination”). In the context of a method, the invention identifies
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destination points having destination contexts in one or more destination
objects. The method first selects source content for transfer and ultimately
displays destination contexts for the destination points. The source content
is directed to at least one destination point in dependence upon the displayed
destination contexts. See generally Spec. 10; Fig. 5.
Claim 1 is illustrative:
1. A method for multi-source, multi-destination data transfers, the
method comprising:
identifying a plurality of destination points having destination
contexts in one or more destination objects;
selecting source content for transfer;
displaying destination contexts for the destination points; and
directing source content to at least one destination point in
dependence upon the displayed destination contexts.

THE REJECTIONS
1. The Examiner rejects claims 1, 10, and 19 under 35 U.S.C. §
102(b) as being anticipated by Rich et al. (US Patent No. 6,411,311 B1, Jun.
25, 2002) (“Rich”). Ans. 4-5.1
2. The Examiner rejects claims 2-9, 11-18, and 20-27 under 35
U.S.C. § 103(a) as being unpatentable over Rich in view of Yamada et al.
(US Patent No. 5,734,749, Mar. 31, 1998) (“Yamada”). Ans. 5-7.

ISSUES
1. Under § 102, has the Examiner erred in rejecting claim 1 by
finding that Rich discloses “multi-source, multi-destination data transfers”?

1 Throughout this opinion, we refer to (1) the Amended Appeal Brief filed
Jan. 27, 2010 (“Br.”); and (2) the Examiner’s Answer mailed April 29, 2010
(“Ans.”).
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2. Under § 102, has the Examiner erred in rejecting claim 1 by
finding that Rich discloses “identifying a plurality of destination points
having destination contexts in one or more destination objects”?
3. Under § 102, has the Examiner erred in rejecting claim 1 by
finding that Rich discloses “selecting source content for transfer”?
4. Under § 102, has the Examiner erred in rejecting claim 1 by
finding that Rich discloses “displaying destination contexts for the
destination points”?

ANALYSIS
Claims 1, 10, and 19
Claims 1, 10 and 19 are independent and directed to a “method,”
“system,” and “computer program” respectively. The Examiner uses the
same rationale for rejecting all three claims. Ans. 4-5. Likewise, Appellants
argue claims 1, 10, and 19 together. Br. 6-9. For purposes of our analysis
here, we will discuss claim 1 as representative of the group of claims 1, 10,
and 19.
The application of Rich in the rejection of claim 1 begins with the
question raised by Appellants: does Rich disclose data transfer at all? Br. 6.
The Examiner responds affirmatively and relies on that part of the Rich
disclosure which includes movement of any number of files to any one of a
plurality of folders, which means “data has to be transferred.” Ans. 4, 8
(citing Rich, col. 3, ll. 5-16; Fig. 2). Appellants contend Rich merely
discloses a method in which an icon in a single source, Rich’s first window,
can be replicated in a single destination, Rich’s second window and thus
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does not teach data transfer. Thus, Rich does not disclose “multi-source,
multi-destination data transfers.” Br. 7.
We note that verbiage in the preamble of a claim, such as the “multi-
source, multi-destination” recitation of claim 1, is not generally construed to
be a limitation of the claim. American Medical Systems, Inc v. Biolitec, Inc.,
618 F.3d 1354, 1358 (Fed. Cir. 2010). Though not stated as such,
Appellants’ argument assumes that the preamble is a claim limitation. “If
the claim preamble, when read in the context of the entire claim, recites
limitations of the claim, or, if the claim preamble is ‘necessary to give life,
meaning, and vitality’ to the claim, then the claim preamble should be
construed as if in the balance of the claim.” Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Regardless of whether
or not the preamble defines a further limitation to the steps of the claim, we
find no error in the Examiner finding that Rich discloses “multi-source,
multi-destination data transfers.”
The Examiner points to tree view window 102 and list view window
104 of Figure 2 of Rich. The list view window contains multiple files and
the tree view window contains multiple folders. Ans. 4, 8 (citing Rich, col.
3, ll. 5-16). Any one of the files can be added to any one of the folders by
executing the “Add To” functionality disclosed in Rich. Id. Any one of the
three files in the list view window of Rich can be selected. There is
therefore a teaching of “multi-source” of content. Correspondingly, any one
of three folders of the tree view window of Rich can have files “added to”
them by the process shown, teaching multiple-destination. The Examiner
also relies on Figure 5 of Rich to show the multiple-destination feature.
Ans. 4 (citing Rich, col. 3, ll. 30-35, 50-60).
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Appellants contention that Rich does not show data transfer relies on a
single disclosure from Rich. Br. 6. (citing Rich, col. 2, ll. 49-58).
Appellants argue that there is not a transfer of “data” in transferring an item
from one window to another window. Rather, Rich merely creates an icon
in the second window and associates the icon with a pointer to the actual
data source. Id. The Examiner finds Rich is not so limited in its teachings
and we agree. Immediately after the language Appellants rely on, Rich
discusses a pointer as one type of “data construct” for moving an item.
Rich, col. 2, l. 67–col. 3, l. 1. The language of Rich the Examiner
specifically relies on shows movement of the file, and not just an icon
representative of the file, into a folder. Ans. 4, 8 (citing Rich, col. 3, ll. 5-
16).
Ultimately, Appellants do not persuade us that a pointer to data is not
transfer2 of data within the meaning of claim 1. Indeed, “pointer” is
understood by one of ordinary skill to be a “data element that indicates the
address of (or points to) a piece of information.” Kent Porter, THE NEW
AMERICAN COMPUTER DICTIONARY (2d ed. 1985). Nor are we persuaded
that creation of an icon associated with a pointer and data is not transfer of
data given the breadth of what Appellants consider “source content” to be as
disclosed in the specification. Spec. 8.
We also agree with the Examiner’s finding that Rich shows
“identifying a plurality of destination points having destination contexts in
one or more destination objects.” The Examiner’s position has already been

2 Again, the steps of claim 1 do not use “transfer,” which appears only in the
preamble. The actual step of the claim is “directing,” which falls into what a
pointer does.
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set out in the discussion above with respect to “multi-destination.” Ans. 4,
8. Appellants deny this step is shown in Rich. Br. 7. Further, they define
destination points as a location where source content is to be copied or
transferred. Id. A destination object is defined as “any data structure
administered by any application program or operating system component.”
Id. The argument is again made that Rich merely discloses an icon in a
second window that points to the same data source as an icon in a first
window. Further, Rich’s second window is just a graphical interface and not
a destination point, destination context, or destination object as claimed. Id.
Even assuming Rich is limited to showing an icon and a pointer to
data, we are not persuaded there is a difference between Rich and the
claimed step. Appellants’ definition of “destination point,” “a location
where source content is to be copied or transferred,” does not preclude
source content being accessible through a second window. Similarly,
Appellants assert a “destination object” can be any data structure. Br. 7.
The second window and associated folder are data structures within the
scope of the claim as argued. Appellants’ argument that the folder of Rich is
only a “graphical object” (Br. 7) acknowledges it is an object. As such, it is
not seen how this is different from the “destination object” of the claim,
which can include “word processing documents, spreadsheets, database
records, web pages, email documents, and so on, as will occur to those of
skill in the art.” Br. 7.
Appellants’ arguments concerning whether Rich discloses “selecting
source content for transfer” again emphasize transfer of data. Br. 8. The
Examiner points to the same section of Rich as showing the selection of the
file from the list view as shown in Figure 2 for transfer to the folder of the
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tree view. Ans. 4 (citing Rich, col. 2, l. 60–col. 4, l. 25). We refer to our
prior analysis on data transfer.
Appellants argue “source content” broadly, as disclosed in the
Specification, as “a word, sentence, or paragraph of a word processing
document, a two dimensional range of picture elements from a graphic
object such as JPEG file, or any other source content as will occur to those
of skill in the art.” Br. 8. Appellants conclude that “source content is not
simply a file.” Id. We disagree. A person of ordinary skill would recognize
a file can contain, among other things, data. With the broad definition of
“source content” described by Appellants, a file is not excluded form source
content. Appellants’ arguments are not persuasive as to the step at issue and
we agree with the Examiner’s findings.
We also agree with the Examiner that Rich discloses “displaying
destination contexts for the destination points.” The Examiner points to the
same section of Rich as showing “displaying destination contexts.” Ans. 4
(citing Rich, col. 2, l. 60–col. 4, l. 25). Appellants argue Rich’s folders are
not “destination points,” and Rich's GUI window is not a “destination
context.” Br. 9. A “destination context” is a portion of a “destination
object” that logically contains a “destination point.” Br. 8. As previously
discussed, the definition of “destination point” and “source content”
encompass the folder in the second window of Rich. Similarly, “destination
context,” as a portion of a “destination object,” is shown by the data
structures of Rich, including a folder in a second window. Further, the GUI
window is “simply a graphical tool that allows a user to perform certain file
management operations – not a portion of a destination object that logically
contains a destination point.” Id. As the Examiner found, Rich shows a
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folder in a window which receives data from a file. The GUI window is not
the relevant portion of Rich cited by the Examiner. Appellants have not
overcome the Examiner’s finding, which we find is rationally grounded on
the reference to Rich.
Appellants have not rebutted the Examiner’s prima facie case of
obviousness and we will sustain the rejection of claim 1, and claims 10 and
19 argued together with claim 1.
Claims 2-9, 11-18, and 20-27
Claims 2-9 depend on claim 1, claims 11-18 depend on claim 10, and
claims 20-27 depend on claim 19. The Examiner found all the claims
obvious over Rich in view of Yamada. Appellants’ argument for
patentability depends on the Board finding that claims 1, 10, and 19 are not
anticipated under § 102(b) by Rich. Br. 9. Inasmuch as the Board agreed
with the Examiner’s rejection of all independent claims, and Appellants
make no additional argument for patentability of those claims, the
Examiner’s prima facie showing of obviousness under § 103 has not been
overcome and we find no error in the Examiner’s rejection of them.

CONCLUSION
The Examiner did not err in rejecting claims 1, 10, and 19 under
§ 102(b) and claims 2-9, 11-18, and 20-27 under § 103(a).

ORDER
The Examiner’s decision rejecting claims 1-27 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).
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AFFIRMED

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