Ex Parte Colson et al

Board of Patent Appeals and Interferences

Jun 30, 2008

09737341 (B.P.A.I. Jun. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES C. COLSON and BRIAN LEE WHITE EAGLE
____________________

Appeal 2008-0374
Application 09/737,3411
Technology Center 2100
____________________

Decided: June 30, 2008
____________________

Before: JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
JAY P. LUCAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal from a final rejection of claims 43 to 59 under
authority of 35 U.S.C. § 134. The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

1 Application filed December 15, 2000. The real party in interest is
International Business Machines Corporation (IBM).

Appeal 2008-0374
Application 09/737,341

Appellants’ invention relates to system, method and computer
program (hereinafter, method) for synchronizing data. More specifically,
when a mobile device (for example) with a limited address memory is
synchronized with a larger computer, there is not room in the mobile device
to store all of the addresses, phone numbers or other data elements that are in
the larger computer. The user, with this invention, can specify the priority
of his or her contacts, so, for example, those people whom the user contacts
most often will have their data synchronized with higher priority. The
prioritization scheme also goes so far as to order the data within a single
contact, so, for example, the work number will have a higher priority than
the home number. In the words of the Appellants:
The present invention provides a method for prioritizing
data for use in synchronizing data at a client device 42, 44, 45,
or 46. One method according to the invention includes
receiving a synchronization session request 80, selecting a
prioritization scheme 20 associated with a user 72, 84, and
retrieving scheme effecting data 85 based on the prioritization
scheme 20. (p. 20, line 19 – p. 21, line 4; p. 23, lines 2-5; p. 23,
lines 8-14). In addition, this method includes producing a
prioritized data set 96 based on the prioritization scheme 20 and
the scheme effecting data. (p. 25, lines 6-10). The prioritized
data set has a number of entries with each respective entry
ordered with respect to each other entry according to the
prioritization scheme 20 and with data for each entry also
ordered according to the prioritization scheme 20. (p. 28, line
10 – p. 29, line 2; p. 30, line 20 – p. 31, line 5).

(App. Br. 2, 1st para.).

Claim 43 is exemplary:
43. A method for prioritizing data for use in synchronizing data at a
client device, the method including:
2
Appeal 2008-0374
Application 09/737,341

(a) receiving a synchronization session request;
(b) selecting a prioritization scheme associated with a user;
(c) retrieving scheme effecting data based on the prioritization
scheme; and
(d) producing a prioritized data set based on the prioritization scheme
and the scheme effecting data, the prioritized data set having a number of
entries therein with each respective entry ordered with respect to each other
entry according to the prioritization scheme and with data for each entry also
ordered according to the prioritization scheme.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Boothby US 6,212,529 B1 Apr. 3, 2001
Bodnar US 6,295,541 B1 Sep. 25, 2001
Rejections2:
R1: Claims 43, 44, 49, 50, and 55 stand rejected under 35 U.S.C. § 102(e)
for being anticipated by Boothby.
R2: Claims 45 to 48, 51 to 54, and 56 to 59 stand rejected under 35 U.S.C.
§ 103(a) for being obvious over Boothby in view of Bodnar.

Appellants contend that the claimed subject matter is not anticipated
by Boothby, or rendered obvious by Boothby alone, or in combination with
Bodnar, for failure of the references to teach a key limitation of the claims.
The Examiner contends that each of the claims is properly rejected.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.

2 The Examiner has indicated that a rejection under 35 U.S.C. § 101 and a
rejection under 35 U.S.C. 112(2) have been withdrawn. (Answer 5, bottom).
3
Appeal 2008-0374
Application 09/737,341

Only those arguments actually made by Appellants have been considered in
this opinion. Arguments which 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).3
We affirm the rejections.
ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. §§ 102(e) and 103(a). The issue
turns on whether Boothby teaches the reordering of the entries of the
prioritized data set, and the data for each entry, as claimed.

FINDINGS OF FACT

1. Appellants’ invention relates to a method to prioritize data in anticipation
of synchronizing that information between a client device and another
computer. (Spec. 2:18). As the client device may not have sufficient
storage for the whole database to be synchronized, the invention
establishes a prioritization scheme to prioritize the data so the most
important information is synchronized (sync’d) first. (Spec. 4, top). The
prioritization considers not only the data itself, for example, the phone
number, but the metadata attached to it, for example, the information that

3 Appellants have not presented any substantive arguments directed
separately to the patentability of the dependent claims or related claims in
each group, except as will be noted in this opinion. In the absence of a
separate argument with respect to those claims, they stand or fall with the
representative independent claim. See In re Young, 927 F.2d 588, 590 (Fed.
Cir. 1991).

4
Appeal 2008-0374
Application 09/737,341

phone number is a home phone number. The combination of data and
metadata is called the “scheme effecting data” in this application. (Spec.
4:11 to 14). The prioritization affects the order not only of the data
entries, for example, the people that the user contacts most often, but also
the data elements for each entry, for example the office number over the
home number. (Spec. 27:17 to 19).
2. The reference Boothby likewise is concerned with synchronizing the data
from multiple databases, such as a local computer and a handheld device.
(Col. 4, l. 64). The filtering scheme, embodied in a robust set of filtering
expressions (Col. 12, ll. 5 to 30), permits the synchronization program to
selectively share the data from two or more data sources. (Col. 3, top).

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)).
It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim. See In re
King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1458 (Fed. Cir. 1984).
5
Appeal 2008-0374
Application 09/737,341

Our reviewing court states in In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989) that “claims must be interpreted as broadly as their terms reasonably
allow.”
"[T]he words of a claim 'are generally given their ordinary and
customary meaning.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (internal citations omitted). "[T]he ordinary and
customary meaning of a claim term is the meaning that the term would have
to a person of ordinary skill in the art in question at the time of the invention,
i.e., as of the effective filing date of the patent application." Id. at 1313.

ANALYSIS
From our review of the administrative record, we find that the
Examiner has presented a prima facie case for the rejections of Appellants’
claims under 35 U.S.C. §§ 102 and 103. The prima facie case is presented
on pages 3 to 5 of the Examiner’s Answer.
In opposition, Appellants present two main arguments, applicable to
both rejections. The first argument contends that Boothby does not teach
changing the order of the entries with respect to each other, and the second
argument contends that even if Boothby does teach changing the order of the
entries, it does not teach changing the order of the data within an entry.
(App. Br. 10:2 to 4).
Concerning the first argument, the Appellants express their contention
as follows:
The Boothby patent does not teach or suggest the prioritization of data
as required by element (d) of claim 43. In contrast, Boothby discloses
applying a filter which results in some records in a source data set
being flagged as passing the filter and the remainder of the records
being flagged as not passing the filter.
6
Appeal 2008-0374
Application 09/737,341

(App. Br. 9:24 to 27).
The Examiner points to column 6, lines 20 to 24, where Boothby
describes his intelligent filter, which has the capability of filtering based on
the content of a data field, such as the priority field for a “to do” item.
(Answer 6, middle). In the cited example, only records with priority values
of 1, 2, or 3 will be synchronized, in accordance with a rule. The Examiner
reasons that in deleting from the synchronization those records with
priorities not in the accepted range, the entries are re-ordered with respect to
each other, as the original order of the records is changed after the
synchronization. Reading the claims in a broad but fair manner, we find that
the Examiner has not made an error with respect to that logic, as indeed the
order of the entries is changed when some of them are missing.
Appellants further contend that Boothby does not anticipate (nor
contribute to rendering obvious) the limitations in claim 43 and the other
independent claims because:
Even assuming for the sake of argument that the flagging of records
according to Boothby produces a prioritized data set, there is no
suggestion in Boothby that the filter operation orders records as
required by element (d) of claim 43. Furthermore, there is no
suggestion in Boothby that the filter operation orders data within each
record as required by element (d) of claim 43.

(App. Br. 10:4 to 8).
We accepted above the Examiner’s argument concerning the teaching
in Boothby of his synchronization potentially resulting in a change in the
order of records. But does Boothby teach changing the order of data within
each record? We find that Boothby does.
7
Appeal 2008-0374
Application 09/737,341

In Boothby, the synchronization program uses a field map “to
determine which field of the local database corresponds to a field of the
remote database used in the filter expression. Field mapping is described in
U.S. Pat. No. 5,392,390, incorporated by reference.” (Col. 13, l. 66 – col.
14, l. 2). That quoted U.S. patent, to Keith Crozier, explains how data
mapping can result in the re-ordering of the fields of a single record, as best
illustrated in Figure 11 of that patent. (See Col. 12, ll.16 to 31). We thus see
in the Boothby reference a teaching of using field mapping in the
synchronization program, and in the incorporated Crozier patent a teaching
that field mapping would result in “data for each entry also ordered
according to the prioritization scheme” as claimed.
Appellants have based their appeal for both rejections upon these two
arguments presented above. (App. Br. 12, middle; 13, middle). We do not
find error in either rejection.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 43, 44, 49, 50, and 55 under 35
U.S.C. § 102(e) for being anticipated by Boothby; nor in rejecting claims 45
to 48, 51 to 54, and 56 to 59 under 35 U.S.C. § 103(a) for being obvious
over Boothby in view of Bodnar.

DECISION
The Examiner's rejections of claims 43 to 59 are 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).
8
Appeal 2008-0374
Application 09/737,341

AFFIRMED

tdl/ce

IBM CORPORATION (SHC)
C/O THE CULBERTSON GROUP, P.C.
1114 LOST CREEK BOULEVARD, SUITE 420
AUSTIN TX 78746
9