Ex Parte Ching et al

Board of Patent Appeals and Interferences

Jun 17, 2008

09784865 (B.P.A.I. Jun. 17, 2008)

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JENNIE CHING and ERIC HSIAO
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Appeal 2007-3732
Application 09/784,8651
Technology Center 2100
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Decided: June 17, 2008
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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

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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.
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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.
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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 . . .
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(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.”)

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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.

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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
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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
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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
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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.
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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).

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AFFIRMED

tdl/ce

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