Ex Parte Ching et alDownload PDFBoard of Patent Appeals and InterferencesJun 17, 200809784865 (B.P.A.I. Jun. 17, 2008) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JENNIE CHING and ERIC HSIAO ____________ Appeal 2007-3732 Application 09/784,8651 Technology Center 2100 ____________ Decided: June 17, 2008 ____________ Before JAMES D. THOMAS, JAY P. LUCAS, and CAROLYN D. THOMAS, Administrative Patent Judges. THOMAS, C., Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 1-15 mailed January 26, 2005. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Application filed February 15, 2001. The real party in interest is International Business Machines Corp. (IBM). Appeal 2007-3732 Application 09/784,865 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 A. INVENTION Appellants invented a system, method, and a computer readable medium for synchronizing files between a central site and a plurality of remote sites. (Spec., 3.) B. ILLUSTRATIVE CLAIMS The appeal contains claims 1-152. Claims 1, 7 and 10 are independent claims. Claims 1 and 7 are illustrative: 1. A method of synchronizing files between a central site and a plurality of remote sites comprising the steps of: (a) providing a list of files to the plurality of remote sites by the central site, prior to a callback time of the remote sites; (b) reporting which of the files are missing by each of the plurality of remote sites to the central site; and (c) determining within the central site which of the files needs to be sent to each of the plurality of remote sites. 7. A system for synchronizing files comprising: a central site, the central site including a file system synchronization (FSS) helper application and an automated central site operations (ACSO) mechanism for transmitting a list of files; and at least one remote site, the at least one remote site including a file system synchronization remote operating mechanism (FSS RSO), wherein the FSS RSO mechanism creates a group of files it will need based upon the transmitted list of files. 2 The dependency of claim 14 shall be treated as dependent upon claim 10 for appeal purposes. 2 Appeal 2007-3732 Application 09/784,865 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 C. REFERENCES The references relied upon by the Examiner in rejecting the claims on appeal are as follows: Bell US 5,758,150 May 26, 1998 Gayman US 6,256,673 B1 Jul. 3, 2001 (Filed Dec. 17, 1998) D. REJECTION The Examiner entered the following rejection which is before us for review: Claims 1-15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bell in view of Gayman. II. PROSECUTION HISTORY Appellants appealed from the Final Rejection and filed a substitute Appeal Brief (App. Br.) on September 6, 2006. The Examiner mailed an Examiner’s Answer (Ans.) on January 3, 2007. Appellants filed a Reply Brief (Reply Br.) on October 10, 2006. III. ISSUE Whether Appellants have shown that the Examiner erred in rejecting the claims as being obvious over the combination of Bell and Gayman. IV. FINDINGS OF FACT The following findings of fact (FF) are supported by a preponderance of the evidence. 3 Appeal 2007-3732 Application 09/784,865 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Claim Construction 1. The Specification discloses that “[e]ach of the remote sites 14 are configured to report back to the central site 10 at a pre-defined time, based on a callback scheduling algorithm.” (Spec., 10:9-10). Bell 2. Bell discloses a system and method for database synchronization wherein the data and information in a database of change are converted into series of flat files that are transferred from each remote computer to the central computer. (Abstract.) 3. In Bell, the database of change is a record of all the updates, additions, or deletions made to the databases on the data storage devices. (Col. 4, ll. 21-25.) Gayman 4. Gayman discloses a client/server network system for cyclic multicasting of an image file from a central data provider to one or more client machines. (Abstract.) 5. Gayman discloses that an image file “consists of a single file containing the contents of an entire disk or an entire hard drive.” (Col. 3, ll. 15-19.) 6. Gayman discloses that: [i]f the client machine has not requested for an image file . . ., the central data provider (server) 410 determines whether the image file is in a transmission queue for a current cycle at step 514. . . . if the image file is in the transmission queue for the current cycle at step 516, the central data provider (server) 410 continues transmission of the image file for the current cycle . . . 4 Appeal 2007-3732 Application 09/784,865 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 (Col. 8, ll. 19-28; Fig. 5) V. PRINCIPLES OF LAW Appellants have the burden on appeal to the Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection [under § 103] by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). “Section 103 forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”) 5 Appeal 2007-3732 Application 09/784,865 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 VI. ANALYSIS Grouping of Claims 1-15 In the Brief, Appellants argue claims 1-6 and 10-15 as a group (App. Br. 4-10). Thus, the Board selects representative claim 1 to decide the appeal for this group. Accordingly, the remaining claims in this group stand or fall with claim 1. Appellants argue claims 7-9 as a group (App. Br. 10-11). The Board selects representative claim 7 to decide the appeal for this group. Accordingly, the remaining claims in this group stand or fall with claim 7. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991). The Board's Claim Construction "Our analysis begins with construing the claim limitations at issue." Ex Parte Filatov, No. 2006-1160, 2007 WL 1317144, at *2 (BPAI 2007). Claims are given their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). From our review of the Specification, we note that Appellants have identified a “callback time” as a pre-defined time that the remote sites report back to the central site (FF 1). Therefore, we find that a “callback time” includes any time when a communication is received from the remote site to the central site. 6 Appeal 2007-3732 Application 09/784,865 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 The Obviousness Rejection We now consider the Examiner’s rejection of claims 1-15 under 35 U.S.C. § 103(a) as being obvious over the combination of Bell and Gayman. Claims 1-6 and 10-15 Appellants contend that “Bell fails to teach or suggest ‘(b) reporting which of the files are missing by each of the plurality of remote sites to the central site; and (c) determining within the central site which of the files needs to be sent to each of the plurality of remote sites,’ as recited in claims 1 and 10.” (App. Br. 6; Reply Br. 4.) We agree-in-part. While we find that Bell discloses transferring data, e.g., a series of flat files, from each remote computer to a central computer (FF 2), we do not readily find and the Examiner has not adequately shown where Bell discloses sending information from the central site to the remote sites. In Bell, it is the remote computer that creates a “database of change” that includes a record of all changes in the data, including deletions (i.e., missing files) (FF 3), and transmits this information to the central site as flat files (FF 2). Thus, we find that Bell reports to the central site which files are missing/deleted by each of the plurality of remote sites, but does not show the central site determining which files needs to be sent. However, Gayman (as discussed below) discloses a central site determining which files needs to be sent. The claims measure the invention. See SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). Our reviewing court has repeatedly warned against confining the claims to specific embodiments 7 Appeal 2007-3732 Application 09/784,865 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 described in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). During prosecution before the USPTO, claims are to be given their broadest reasonable interpretation, and the scope of a claim cannot be narrowed by reading disclosed limitations into the claim. See In re Morris, 127 F.3d 1048, 1053-54 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). “An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.” In re Zletz, 893 F.2d at 322. What is significant here is that the step of “providing a list of files” does not positively recite any relationship to the remaining steps of “reporting which of the files are missing by each of the plurality of remote sites” and “determining within the central site which of the files needs to be sent” recited in claim 1. All that is recited is which of the files are missing and which of the files needs to be sent. We find that the recited “files” can include any files on the respective devices, not merely the files provided on the list. Thus, we find a disconnect between the providing a list of files and the additional features recited in claim 1. As such, we find that claim 1 does not require that the “report of which files are missing” be files specifically from the provided list. As noted above, Bell discloses reporting files missing/deleted from the remote sites. Gayman discloses transmitting information from a central device to one or more client machines (FF 4). Thus, we find that the claimed determining within the central site step reads on Gayman’s transmitting of information from the central device to the client machine. Here again, we 8 Appeal 2007-3732 Application 09/784,865 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 find that the claimed determining step does not positively recite any relationship to the reporting step. Hence, the determination is not reliant upon the report from the remote sites. Thus, there is again a disconnect between features in claim 1. All that Gayman is required to show is a central site determining which files needs to be sent to the remote sites. The act itself of sending files reads on determining a need. Regarding Gayman, Appellants “fail[] to see how a single file containing the entire contents of a disk or hard drive teaches or suggests a list of files.” (App. Br. 9; Reply Br. 4.) We disagree. Gayman discloses transmitting an image file which contains the content of an entire hard drive (FF 4-5). We find that the content of the entire hard drive would inherently include “a list of all files and directories” on the hard drive, among other things. The fact that Gayman may also transmit the files themselves does not negate that a listing of the files would also be inherently included. Appellants “fail[] to see how this [Bell and Gayman] teaches or suggests providing a list of files to the plurality of remote sites by the central site prior to a callback time of the remote sites.” (App. Br. 10.) We disagree. Gayman discloses that if the client machine has not requested an image, i.e., has not made a callback/request, the central site may make a determination to transmit an image file (FF 6). Thus, we find that Gayman discloses providing an image file, e.g., a list, to the remote sites prior to a request (i.e., a callback time) of the remote sites. Therefore, we do not find that Appellants have shown that the combination of Bell and Gayman lacks the above-noted disputed features of 9 Appeal 2007-3732 Application 09/784,865 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 claim 1. Therefore, we affirm the rejection of independent claim 1 and of claims 2-6 and 10-15, which fall therewith. Claims 7-9 Appellants “fail[] to see how Bell teaches or suggests the recited central site that includes a mechanism for transmitting the list of files, as the Examiner has admitted that that [sic] Bell does not disclose providing a list of files by a central site prior to a callback time of the remote sites.” (App. Br. 10.) We agree. However, as noted supra Gayman is being relied upon to disclose such features. Thus, we find that the combination of Bell and Gayman discloses the aforementioned disputed features. Therefore, we do not find that Appellants have shown error in the Examiner’s rejection of illustrative claim 7. Instead, we find the Examiner has set forth a sufficient initial showing of obviousness. Therefore, we affirm the rejection of independent claim 7 and of claims 8 and 9, which fall therewith. No combinability arguments We note that Appellants have presented no arguments directed to the combinability of the references Bell and Gayman. Accordingly, Appellants have waived any such arguments, and the combinability of such references will not be addressed here. VII. CONCLUSIONS We conclude that Appellants have not shown that the Examiner erred in rejecting claims 1-15. 10 Appeal 2007-3732 Application 09/784,865 1 2 3 4 5 6 7 8 VIII. DECISION In view of the foregoing discussion, we affirm the Examiner’s rejection of claims 1-15. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2007). 9 10 11 12 13 14 15 16 17 18 19 20 21 AFFIRMED tdl/ce SAWYER LAW GROUP P.O. 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