Ex Parte Gusler et al

Board of Patent Appeals and Interferences

Feb 9, 2005

09316752 (B.P.A.I. Feb. 9, 2005)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CARL PHILLIP GUSLER and RICK A. HAMILTON, II
_____________
Appeal No. 2004-1465
Application No. 09/316,752
______________
ON BRIEF
_______________
Before JERRY SMITH, FLEMING, and LEVY, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-33, which constitute
all the claims in the application.
The disclosed invention pertains to a method and
apparatus for backing up data from a client computer in a
distributed data processing system.

Appeal No. 2004-1465
Application No. 09/316,752
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Representative claim 1 is reproduced as follows:
1. A method in a distributed data processing
system for backing up data from a client computer,
the method comprising the computer implemented steps of:
creating a backup image of the data in said
client computer, wherein the backup image is stored
in a location in said client computer; and
requesting, by a server, the backup image from
the location in said client computer for storage on said
server.

The examiner relies on the following references:
Carr et al. (Carr) 5,835,915 Nov. 10, 1998
Shannon 5,852,713 Dec. 22, 1998
Deshayes et al. (Deshayes) 6,047,294 Apr. 04, 2000
(filed Mar. 31, 1998)
Claims 1-4, 17-20 and 30 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by the disclosure of Shannon.
Claims 32 and 33 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by the disclosure of Carr. Claims 5-9, 12-14, 21-25,
28, 29 and 31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Shannon taken alone. Claims
10, 11, 15, 16, 26 and 27 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the teachings of Shannon in view of
Deshayes. The final rejection of some of the claims under the
first paragraph of 35 U.S.C. § 112 has not been repeated in the
answer, and is presumed to have been withdrawn by the examiner.
Appeal No. 2004-1465
Application No. 09/316,752
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Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of anticipation and obviousness relied upon by the examiner as
support for the rejections. We have, likewise, reviewed and
taken into consideration, in reaching our decision, the
appellants’ arguments set forth in the brief along with the
examiner’s rationale in support of the rejections and arguments
in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon does not support any of the
examiner’s rejections. Accordingly, we reverse.
We consider first the rejection of claims 1-4, 17-20 and
30 under 35 U.S.C. § 102(e) as being anticipated by the
disclosure of Shannon. Anticipation is established only when a
single prior art reference discloses, expressly or under the
principles of inherency, each and every element of a claimed
invention as well as disclosing structure which is capable of
performing the recited functional limitations. RCA Corp. v.
Appeal No. 2004-1465
Application No. 09/316,752
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Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir.), cert. dismissed, 468 U.S. 1228 (1984); W.L.
Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220
USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
The examiner has indicated how she finds the invention of
these claims to be anticipated by Shannon (action mailed March
27, 2003, pages 4-5, incorporated into answer at page 3). Since
appellants have grouped these claims together (brief, page 5), we
will consider independent claim 1 as the representative claim for
this group. With respect to representative claim 1, appellants
argue that Shannon fails to show the second step of claim 1, that
is, that the server requests the backup image from the client
computer. Appellants assert that the request for transfer of
files in Shannon comes from the client computer and not from the
server as claimed (brief, pages 7-11). The examiner disagrees
with appellants’ position and responds that Shannon does not
teach against the concept of a server requesting the backup image
(answer, pages 4-5).
We will not sustain the examiner’s anticipation rejection
of claims 1-4, 17-20 and 30 based on Shannon. Despite the
examiner’s attempts to find support for the proposition that
Appeal No. 2004-1465
Application No. 09/316,752
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Shannon teaches that the backup request could come from the
server, we agree with appellants that Shannon clearly discloses
that the backup request is made by the client computer. The
portions of Shannon specifically cited by the examiner make no
suggestion that the backup request comes from the server. The
mere fact that Shannon suggests that modifications can be made to
the disclosed invention does not lead to making the backup
request by the server when Shannon specifically discloses that
the backup request is to be made by the client computer. Whether
there is better prior art available which might support a
rejection of these claims we cannot say. All we can say is that
Shannon does not provide the evidentiary record necessary to
support the examiner’s rejection.
We now consider the rejection of claims 32 and 33 under
35 U.S.C. § 102(e) as being anticipated by the disclosure of
Carr. The examiner has indicated how she finds the invention of
these claims to be anticipated by Carr (action mailed March 27,
2003, pages 5-6, incorporated into answer at page 3). Since
appellants have grouped these claims together (brief, page 5), we
will consider independent claim 32 as the representative claim
for this group. With respect to representative claim 32,
appellants argue that Carr fails to disclose the step of
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Application No. 09/316,752
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identifying a client processing system or the step of requesting
a previously created backup image (brief, pages 11-13). The
examiner responds that Carr maintains a backup copy of the client
database by applying the same changes to a backup database on a
remotely located system (answer, pages 5-6).
We will not sustain the examiner’s anticipation rejection
of claims 32 and 33 based on Carr. We agree with appellants that
Carr teaches a data backup system in which the client computers
control the transfer of data to the server. Since the client
computers control the transfer of data in Carr, there is no need
to identify a client data processing system from which a backup
image is to be retrieved, or a need to request the previously
created backup image from the client computer. The requesting
step in claim 32 must originate from outside the client computer.
Therefore, we agree with appellants that Carr cannot meet the
limitations recited in claim 32. Once again, whether there is
better prior art available which might support a rejection of
these claims we cannot say. All we can say is that Carr does not
provide the evidentiary record necessary to support the
examiner’s rejection.
Appeal No. 2004-1465
Application No. 09/316,752
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We now consider the rejections of the claims under
35 U.S.C. § 103. In rejecting claims under 35 U.S.C. § 103, it
is incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
Appeal No. 2004-1465
Application No. 09/316,752
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(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicants to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039-40, 228
USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531
F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those
arguments actually made by appellants have been considered in
this decision. Arguments which appellants could have made
but chose not to make in the brief have not been considered
and are deemed to be waived by appellants (see 37 CFR
§ 41.37(c)(1)(vii)(2004)).
We will not sustain the examiner’s rejections of the
claims under 35 U.S.C. § 103 because the examiner has failed to
establish a prima facie case of obviousness. Each of these
rejections relies on the examiner’s findings discussed above with
respect to Shannon. Since these findings are incorrect for
reasons discussed above, the examiner’s rejection of the claims
based on Shannon is not properly supported on this record.
Appeal No. 2004-1465
Application No. 09/316,752
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In summary, we have not sustained any of the examiner’s
rejections of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 1-33 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
JS/hh
Appeal No. 2004-1465
Application No. 09/316,752
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DUKE W. YEE
CARSTENS, YEE & CAHOON, L.L.P.
P.O. BOX 802334
DALLAS, TX 75380