Ex Parte East

Patent Trial and Appeal Board

Mar 5, 2014

11627416 (P.T.A.B. Mar. 5, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SIMON JEREMY EAST
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Appeal 2011-008183
Application 11/627,416
Technology Center 2100
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Before ST. JOHN COURTENAY III, THU A. DANG,
and LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008183
Application 11/627,416

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The claims are directed to “a method of replicating data between
computing devices, particularly data from resource constrained wireless
devices (i.e. devices with limited processing power and limited battery life)
such as mobile telephones and personal organisers that are synchronising to
and from a server over a wireless network.” (Spec. ¶[0002]; note: Brit. sp.).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A method of replicating data from computing devices, in
which a first computing device is given responsibility for determining
whether data received from a wireless, portable computing device
over a wireless network is replicated or not; wherein the method
comprises the steps of the wireless, portable computing device:

(a) generating a change log, the change log including data only
for records that have changed;

(b) sending those change logs to the first computing device in
order to replicate data in the change log in a master copy database
running on the first computing device; and

(c) registering one or more new metadata definitions with the
first computing device, said new metadata definition defining how
change logs relating to a new application will be presented by the
wireless computing device, said new metadata definition comprising a
description of a new property type used by said new application, not
previously defined on the first computing device, whereby the
wireless, portable computing device is configured to automatically
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extend the data replication capability of the first computing device to
the new application.

REJECTIONS
Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sakakura (U.S. Patent No. 6,389,423 B1; issued May 14,
2002) in view of Wu (U.S. Patent No. 6,633,924 B1; issued Oct. 14, 2003).
GROUPING OF CLAIMS
Based on Appellant’s arguments, we decide the appeal of the § 103
rejection of claims 1-12 on the basis of claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2004).1
ANALYSIS
Issue: Is the Examiner’s claim interpretation of the contested claim
limitation “(c) registering one or more new metadata definitions with the
first computing device . . .” overly broad or unreasonable, within the
meaning of representative claim 1?
We find no deficiencies with the Examiner’s § 103 rejection of
representative claim 1 over the combined teachings and suggestions of
Sakakura and Wu. Although Appellant recites the entire (c) registering step
of claim 1 and asserts it is not taught or suggested by Wu (App. Br. 6), as
relied on by the Examiner (Ans. 4-5), we note that “[a] statement which
merely points out what a claim recites will not be considered an argument

1 Appellant filed a Notice of Appeal on August 24, 2010. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex parte
appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the
2004 version of the Board Rules last published in the 2011 edition of Title
37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to
the appeal. See also Manual of Patent Examining Procedure (MPEP) Rev. 8,
July 2010.
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for separate patentability of the claim.” See 37 C.F.R. § 41.37(c)(vii). Here,
we limit our discussion to arguments advanced by Appellant which address
why the cited portions of Sakakura and Wu purportedly fail to teach or
suggest specific elements in limitation (c). (Claim 1).
Appellant points to Wu at columns 5 and 6, and avers “[t]here is no
disclosure of the H/PC creating databases on the desktop computer,
automatically or otherwise. Therefore Wu does not disclose or suggest the
step of the wireless, portable computing device registering one or more new
metadata definitions with the first computing device, as is claimed herein.”
(App. Br. 7, emphasis added).
We note Wu expressly teaches “a system 10 for synchronizing objects
between first and second object stores” where the system includes “a
primary computer 12 and a portable computer or information device 20.”
(Col. 2, ll. 64-67). We broadly but reasonably construe the contested
“portable computing device [that] is configured to automatically extend the
data replication capability of the first computing device to the new
application” as a statement of intended use for the portable computing
device, this being equivalent to a statement of intended result within method
registering step (c). (Claim 1, emphasis added). Regarding the “whereby”
clause recited as part of contested method step (c), our reviewing court
guides that “[a] whereby clause in a method claim is not given weight when
it simply expresses the intended result of a process step positively recited.”
Minton v. Nat'l Ass'n of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed.
Cir. 2003).
Moreover, it is well settled that where, as here, merely providing a
mechanical or automatic means to replace manual activity to accomplish the
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same result (i.e., automatically creating databases on a desktop computer) is
an obvious improvement. See In re Venner, 262 F.2d 91, 95 (CCPA 1958).
Nor has Appellant shown that automatically creating databases on a desktop
computer would have been uniquely challenging or otherwise beyond the
level of ordinarily skilled artisans. See Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
However, Appellant attempts to distinguish the claimed metadata
definitions over Wu, as follows:
The claimed metadata definitions (as defined in the
specification) are not like this. Instead, they just describe the
CLASS or TYPE of object (i.e., the number of properties and
the data type of each of those properties). Crucially, a particular
object cannot be identified from the claimed metadata
definitions; in Wu, however, they can (see [c]ol 7 line[s] 13-15
of Wu).
(App. Br. 8).

We observe that Appellant’s representative claim 1 is silent regarding
the argued terms “CLASS or TYPE of object (i.e., the number of properties
and the data type of each of those properties).” (Id.). “Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Following the guidance of
our reviewing court, we decline to read limitations from the Specification
into the claims.
We broadly but reasonably construe the contested “metadata
definitions” as data about data. (Claim 1). Regarding the claimed
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registering feature, we agree with the Examiner’s underlying factual
findings and ultimate legal conclusion of obviousness:
The Wu reference teaches registering identifying data
segments such as object identifiers, which is interpreted as
metadata definitions as they are data about the changed data,
with the first computing device (Wu: Column 2 lines 22-35 "A
mapping is maintained by the synchronization manager so
that when an object is changed in one store, the
corresponding object in another store can be located and
the same change can be applied to the object"; Column 6,
lines 6-10 "an application might use a single database for all
object types, with the first property for each object defining
the type of the object. Objects are uniquely identified within
the HIPC 20 by object identifiers"; Column 10 lines 35-43;
Figure 6.

(Ans. 12).

We additionally observe that Appellant has not filed a Reply Brief to
further rebut the Examiner’s detailed responsive arguments. (Ans. 9-26).
Therefore, on this record, we are not persuaded the Examiner’s reading of
the contested step (c) limitations on the combined teachings of Sakakura and
Wu is overly broad or unreasonable. (Claim 1). Because “applicants may
amend claims to narrow their scope, a broad construction during prosecution
creates no unfairness to the applicant or patentee.” In re ICON Health and
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
For essentially the same reasons articulated by the Examiner in the
Answer (9-26), as discussed above, we sustain the § 103 rejection of
representative claim 1 over the combined teachings and suggestions of
Sakakura and Wu . Claims 2-12 (not argued separately) fall therewith. See
37 C.F.R. § 41.37(c)(1)(vii) (2004)
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DECISION
We affirm the Examiner’s decision rejecting claims 1-12 under § 103.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED

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