Ex Parte Bucher et al

Patent Trial and Appeal Board

Sep 21, 2012

11627615 (P.T.A.B. Sep. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAUL GERARD BUCHER,
KATHLEEN ANDERSSON BURCHFIELD,
THOMAS A. GALLACHER,
MATTHEW ALOYISUIS MCCARTHY,
and JEFFREY R. SCUTT
____________________

Appeal 2010-005912
Application 11/627,615
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, DEBRA K. STEPHENS, and
JOHNNY A. KUMAR, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
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Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-7 and 21-27. We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 8-20 have been canceled.
We AFFIRM.
Introduction
According to Appellants, the invention relates to a system, method,
and program for monitoring use of a local file replica in a client computer.
(Abstract).

STATEMENT OF THE CASE
Exemplary Claim
Claim 1 is an exemplary claim and is reproduced below:
1. A computer program product for monitoring use in a
client computer of a local file replication program which
periodically replicates a local file in said client computer from a
remote file server, said computer program product comprising:

a computer readable storage media;

first program instructions to read a log in said client
computer which records a date and/or time of last replication by
said local file replication program of the local file in said client
computer from said remote file server;

second program instructions to compare the date and/or
time of last replication by said local file replication program of
said local file client computer to a predetermined time window
corresponding to the period of replication by said local file
replication program of said local file; and

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third program instructions, responsive to said date and/or
time of last replication by said local file replication program of
said local file in said client computer being within said
predetermined time window, to determine and report that said
local file replication program is currently in use in said client
computer, and responsive to said date and/or time of last
replication by said local file replication program of said local
file in said client computer being outside said predetermined
time window, to determine and report that said local file
replication program is not currently in use in said client
computer; and wherein

said first, second and third program instructions are
stored on said computer readable storage media.

References
Haff US 6,442,571 B1 Aug. 27, 2002
Christenson US 7,117,246 B2 Oct. 3, 2006

Rejections
(1) Claims 1-3, 6, 7, 21, 22, 24, 25, and 27 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Haff.
(2) Claims 4, 5, 23, and 26 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Haff and Christenson.

GROUPING OF CLAIMS
Based upon Appellants’ arguments, we select representative claims 1
and 2 to decide this appeal for the group consisting of claims 1-3, 6, 7, 21,
22, 24, 25, and 27. (See Br. 7-13 and 15-16).
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Based upon Appellants’ arguments, we select representative claim 4
to decide this appeal for the group consisting of claims 4, 5, 23, and 26. (See
Br. 13-17).
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2009).

ISSUE 1
35 U.S.C. § 102(b): claims 1-3, 6, 7, 21, 22, 24, 25, and 27
Appellants argue their invention is not anticipated by Haff (Br. 7-11).
Initially, Appellants argue the recitation that the local file replication
program is “currently in use” means that the local file replication program is
currently enabled to periodically replicate local files (Br. 7). Appellants
further argue Haff does not teach program instructions for determining if a
local file replication program, which periodically replicates a local file, is
currently in use (id.). Additionally, Appellants contend Haff does not teach
or suggest program instruction responsive to the date and/or time of last
replication of the local file being within or outside of the predetermined time
window, to determine and report that the local file replication program is in
or is not, respectively, currently in use (Br. 8).

Issue 1: Has the Examiner erred in Interpreting “is currently in use”
and in finding Haff discloses “program instructions responsive to said date
and/or time of last replication…to determine and report that said local file
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replication program is currently in use in said client computer” as recited in
claim 1?

ANALYSIS
We agree with the Examiner regarding the interpretation of “is
currently in use” (Ans. 24). Appellants point to steps in Figures 2A and 2B
as support for their proffered interpretation “the local file replication
program is currently enabled to periodically replicate local files” (Br. 7
(emphasis omitted)). However, we will not read limitations from the
Specification into the claims. Therefore, we find the Examiner has not
erred in interpreting “is currently in use.”
We further agree with the Examiner’s findings that Haff describes
“program instructions responsive to said date and/or time of last
replication…to determine and report that said local file replication program
is currently in use in said client computer” (Ans. 3-6).
We are not persuaded by the Appellants’ arguments. Appellants
argue Haff does not disclose periodic replication of files; however, the
claims do not recite replicating files (Br. 8). Instead, the claims are directed
toward reading a log; comparing date and/or time of last replication to a
predetermined time window; and determining and reporting whether the
local file replication program is currently in use – monitoring use of a
program.
Appellants further argue although Haff discloses the user can schedule
a file transfer, Haff does not disclose program instructions to determine if
the local file replication program is currently in use (Br. 9-10). We again are
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not persuaded. Taking a broad, but reasonable interpretation, in light of the
Specification, we agree with the Examiner’s findings (Ans. 5-6 and 24-25).
Further, Appellants have not presented sufficient evidence or argument to
persuade us of error in the Examiner’s findings.
With respect to Appellants’ arguments regarding claim 2, we again
are not persuaded by the evidence and arguments presented.
Accordingly, the Examiner did not err in finding Haff discloses the
invention as recited in independent claims 1, 2, 21, and 25 and dependent
claims 3, 6, 7, 22, 24, and 27, not separately argued. Therefore, the
Examiner did not err in rejecting claims 1-3, 6, 7, 21, 22, 24, 25, and 27
under 35 U.S.C. § 102(b) for anticipation by Haff.

ISSUE 2
35 U.S.C. § 103(a): claims 4, 5, 23, and 26
Appellants assert their invention is not obvious over Haff and
Christenson because (a) Christenson does not cure the deficiencies of Haff
and (b) Christenson cannot be properly combined with Haff because they are
nonanalogous art and no reason or motivation to combine them exists (Br.
13-17).

Issue 2a: Has the Examiner erred in finding the combination of Haff
and Christenson would have taught or suggested “wherein said local file is a
local mail file and said remote file server is a remote mail server” as recited
in claim 4?
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Issue 2b: Has the Examiner improperly combined Haff and
Christenson?

ANALYSIS
Appellants have not persuaded us the Examiner erred in finding Haff
discloses the invention as recited in independent claims 1, 2, 21, and 25 as
set forth above. Therefore, Appellants have not persuaded us the
combination of Haff and Christenson fails to teach or suggest the invention
as recited in claims 4, 5, 23, and 26.
Further, we are not persuaded Haff and Christenson are nonanalogous
art. We agree with the Examiner (Ans. 20) that both Haff and Christenson
are from the same field of endeavor - managing and transferring electronic
files. Thus, we find the references are analogous art.
Additionally, the Examiner has articulated reasoning with a rationale
underpinning as to why one of ordinary skill in the art would have combined
the technique of Christenson into the system of Haff (Ans. 20 and 28).
Appellants have not persuaded us of error in that finding. Indeed
Christenson is relied upon as teaching the local file is a local mail file and
the remote file server is a remote mail server (Ans. 20). “To justify
combining reference teachings in support of a rejection it is not necessary
that a device shown in one reference can be physically inserted into the
device shown in the other.” In re Keller, 642 F.2d 413, 425 (CCPA
1981)(citations omitted).
Accordingly, the Examiner did not err in finding the combination of
Haff and Christenson would have taught or suggested the invention as
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recited in claims 4, 5, 23, and 26. Therefore, the Examiner did not err in
rejecting claims 4, 5, 23, and 26 under 35 U.S.C. § 103(a) for obviousness
over Haff and Christenson.

DECISION
The Examiner’s rejection of claims 1-3, 6, 7, 21, 22, 24, 25, and 27
under 35 U.S.C. § 102(b) as being anticipated by Haff is affirmed.
The Examiner’s rejection of claims 4, 5, 23, and 26 under 35 U.S.C.
§ 103(a) as being obvious over Haff and Christenson 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) (2010).

AFFIRMED

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