Ex Parte Ezell et al

Board of Patent Appeals and Interferences

Jan 25, 2011

10696914 (B.P.A.I. Jan. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/696,914 10/29/2003 John Ezell 030366 8225
7590 01/26/2011
Philmore H. Colburn II
Cantor Colburn LLP
55 Griffin Road South
Bloomfield, CT 06002
EXAMINER
DARNO, PATRICK A
ART UNIT PAPER NUMBER
2158
MAIL DATE DELIVERY MODE
01/26/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN EZELL, NEIL GILMARTIN, and STEPHEN
FITZPATRICK
____________________

Appeal 2009-005292
Application 10/696,914
Technology Center 2100
____________________

Before: LANCE LEONARD BARRY, JEAN R. HOMERE, and DEBRA
K. STEPHENS, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005292
Application 10/696,914

2
STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-12. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

INVENTION
The Appellants describe the invention as "a system and method for
performing data synchronization in a networked system that reduces the
amount of information transmitted between the primary and secondary
computer servers." (Spec. 2.)

ILLUSTRATIVE CLAIM
1. A method for synchronizing data in first and second
computer servers, the first computer server including a first
plurality of data sets each having a first identifier and a first set
of attributes, and the second computer server including a second
plurality of data sets each having a second identifier and a
second set of attributes, the method comprising:
modifying an attribute of one of the first plurality of data
sets and setting a checksum associated with one of the first
plurality of data sets to a predetermined value;
accessing one of the first plurality of data sets having a
checksum set to the predetermined value and formatting at least
one attribute associated with the one of the first plurality of data
sets to a predetermined format type;
transmitting a second identifier and a second checksum
value both associated with one of the second plurality of data
sets to the first computer server;
Appeal 2009-005292
Application 10/696,914

3
accessing one of the first plurality of data sets having a
first identifier corresponding to the transmitted second identifier
to determine a first checksum value associated with the
accessed data set; and,
when the first checksum value is not equal to the
transmitted second checksum value, transmitting the one of the
first plurality of data sets from the first computer server to the
second computer server to replace a second set of attributes of
the one of the second plurality of data sets with the first set of
attributes of the one of the first plurality of data sets.

REJECTIONS
Claims 1-4, 6-10, and 12 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by U.S. Patent No. 5,974,563 ("Beeler").
Claims 5 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Beeler and U.S. Patent No. 5,999,937 ("Ellard").

ISSUE
The issue before us is whether the Examiner erred in finding that
Beeler discloses setting a checksum, which is associated with one of a
plurality of data sets, to a predetermined value as required by independent
claims 1 and 7.

FINDINGS OF FACT
Beeler describes its invention as "an apparatus and method providing
real-time back-up of data changes occurring in open or newly edited files."
(Col. 1, ll. 12-14.)

Appeal 2009-005292
Application 10/696,914

4
ANALYSIS
"Claims must be read in view of the specification, of which they are a
part." Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.
1995) (en banc) (citations omitted).
Here, the Examiner finds that "when reading the Appellant's claim
limitations in light of the specification, 'setting a checksum to a
predetermined value' can be reasonably interpreted as calculating a
checksum using attribute data." (Ans. 9.) The Appellants argue that
"[e]mbodiments of the invention detect when an attribute is modified and
identify that data element by setting a checksum to a predetermined value
such as zero (see paragraph [0024])." (Appeal Br. 4.)
Paragraph 24 of the Appellants' Specification explains that "at step 66,
computer server 12 sets a checksum value associated with the modified data
set equal to zero. For example, computer server 12 can set the (checksum1)
value of entity identifier (E1) of block 42 equal to zero." Reading
independent claims 1 and 7 in view of the specification, the limitations
require setting a checksum, which is associated with one of a plurality of
data sets, to a predetermined value.
"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, and that
anticipation is a fact question . . . ." In re King, 801 F.2d 1324, 1326 (Fed.
Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist &
Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)).
Here, we agree with the Examiner column 19, lines 14-15, of Beeler
teaches "specifically that the checksum values are calculated using the 'block
size.'" (Ans. 9.) We also agree with the Appellants, however, that "[t]here
Appeal 2009-005292
Application 10/696,914

5
is no setting a checksum to a predetermined value in Beeler." (Appeal Br.
5.) More specifically, the reference's calculating of a checksum using the
size of a block does not constitute setting the checksum to a predetermined
value.
The absence of setting a checksum to a predetermined value negates
anticipation. The Examiner does not allege, let alone show, that the addition
of Ellard cures the aforementioned deficiency of Beeler. Therefore, we
conclude that the Examiner erred in finding that Beeler discloses setting a
checksum, which is associated with one of a plurality of data sets, to a
predetermined value as required by independent claims 1 and 7.

DECISION
We reverse the rejection of claims 1 and 7 and those of claims 2-6 and
8-12, which depend therewith.

REVERSED

Tkl

Philmore H. Colburn II
Cantor Colburn LLP
55 Griffin Road South
Bloomfield CT 06002