Ex Parte Knowles et al

Patent Trial and Appeal Board

May 22, 2013

11490520 (P.T.A.B. May. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MICHAEL KNOWLES, DAVID TAPUSKA, and
TATIANA KALOUGINA
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Appeal 2010-008264
Application 11/490,520
Technology Center 2100
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Before KALYAN K. DESHPANDE, ERIC B. CHEN, and JOHN G. NEW,
Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE1
The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-12 and 14-16, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to 35
U.S.C. § 6(b).
We AFFIRM.

The Appellants invented a method for detecting state changes between
data stored in a first computing device and data retrieved from a second
computing device. Specification ¶ 0002.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added]:
1. A method for detecting state changes between data stored in
a first computing device and data retrieved from a second
computing device, comprising:
[1] generating a first hash value of said data stored in said
first computing device, wherein said first hash value represents
state information of said first computing device;
[2] generating a second hash value of said data retrieved
from said second computing device;
[3] transmitting said first hash value from said first
computing device to said second computing device;
[4] comparing said first hash value to said second hash value
at said second computing device and detecting a state change in
the event of a difference there between; and

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Oct. 23, 2009) and Reply Brief (“Reply Br.,” filed Mar. 23,
2010), and the Examiner’s Answer (“Ans.,” mailed Jan. 26, 2010), and Final
Rejection (“Final Rej.,” mailed May 28, 2009).
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[5] transmitting said data from said second computing device
to said first computing device only in the event said first hash
value and said second hash value are different.

REFERENCES
The Examiner relies on the following prior art:
Maimone US 5,864,837 Jan. 26, 1999
Major
Lee
US 2004/0073626 A1
US 2006/0056415 A1
Apr. 15, 2004
Mar. 16, 2006

REJECTION
Claims 1-12 and 14-16 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Major, Lee, and Maimone.

ISSUE
The issue of whether the Examiner erred in rejecting claims 1-12 and
14-16 under 35 U.S.C. § 103(a) as unpatentable over Major, Lee, and
Maimone turns on whether the combination of Major, Lee, and Maimone
teaches or suggests the limitations of claims 1 and 5.

ANALYSIS
The Appellants contend that the combination of Major, Lee, and
Maimone fails to teach or suggest “any ‘detecting’ of state changes of data
stored in a first computing device (cellular phone or the like) and data
retrieved from a second computing device (proxy server),” “generating a
first hash value of said data stored in said first computing device, wherein
said first hash value represents state information of said first computing
device,” “generating a second hash value of said data retrieved from said
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second computing device,” and “transmitting said first hash value from said
first computing device to said second computing device,” as per claims 1
and 14. App. Br. 11-17 and Reply Br. 5-11.
We disagree with the Appellants2. Maimone describes a system and
method for distributed computing that involves the transferring of data
objects. Maimone, Abstract. As found by the Examiner, Maimone
describes a client that uses a World Wide Web browser to request a page
from an HTTP server. Ans. 22-24 (citing Maimone 2:56 – 3:25 and Figs. 1-
2). The server compares the checksum of the browser’s copy of the page
with the checksum of the latest version of the page. Id. If the checksums do
not match, then the page is transmitted to the client. Id. The checksum is a
relatively unique number or signature, such as a hash code. Maimone 3:59 -
4:4.
That is, Maimone describes detecting whether the state of the data in a
first computing device (i.e. the client) based on the version or hash value
transmitted. The Appellants do not provide any rationale or evidence to
rebut the Examiner’s finding that Maimone describes these limitations.

2 The Appellants contend that the Examiner’s reliance on Maimone to
describe the disputed limitations should be designated as new ground of
rejection. Reply Br. 6-12. However, this relates to a petitionable matter and
not to an appealable matter. See In re Schneider, 481 F.2d 1350, 1356-57,
179 USPQ 46, 51 (CCPA 1973) and In re Mindick, 371 F.2d 892, 894, 152
USPQ 566, 568 (CCPA 1967). See also the MPEP § 1002.02(c), item 3(a)
and § 1201. Thus, the relief sought by the Appellants would have been
properly presented by a petition to the Commissioner under 37 C.F.R.
§ 1.181 instead of by appeal to this Board. Accordingly, we will not further
consider this issue.

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Absent any evidence or rationale to the contrary, we do not find error in the
Examiner’s rejection.
The Appellants further contend that the Examiner has failed to
provide some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness and the Examiner’s rationale
citation of an advantage set forth in Lee. App. Br. 18-19 and Reply Br. 12-
14. The Examiner has responded fully to this argument. Ans. 28-29. We
agree with, and accordingly adopt, the Examiner’s findings and conclusions
as our own. We note that the strongest rationale for combining references is
a recognition, expressed or implied in the prior art or drawn from a
convincing line of reasoning based on established scientific principles or
legal precedent, that some advantage or expected beneficial result would
have been produced by their combination. In re Sernaker, 702 F.2d 989,
994-95 (Fed. Cir. 1983). As such, the Examiner explicitly articulates a
rational underpinning to support the Examiner's finding of obviousness.
The Appellants additionally contend that claim 5 requires “generating
a first pair of hash values” and “generating a second pair of hash values”
(emphasis added) and the combination of Major, Lee, and Maimone fails to
teach or suggest generating a “pair” of hash values, as per claims 5 and 15.
App. Br. 20-21 and Reply Br. 15-17. We disagree with the Appellants. As
discussed supra, Maimone explicitly describes the generation of a checksum
or hash value in order to determine the status of data contained within a
document. Ans. 22-24 (citing Maimone 2:56 – 3:25 and Figs. 1-2). A
person with ordinary skill in the art would have gleaned from this teaching
that multiple checksums or hash values can be used to further ensure the
accuracy of the determining step. As such, we agree with the Examiner that
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the combination of Major, Lee, and Maimone suggests the use of a plurality
of checksum or hash values.

CONCLUSION
The Examiner did not err in rejecting claims 1-12 and 14-16 under 35
U.S.C. § 103(a) as unpatentable over Major, Lee, and Maimone.

DECISION
To summarize, our decision is as follows.
 The rejection of claims 1-12 and 14-16 under 35 U.S.C. § 103(a) as
unpatentable over Major, Lee, and Maimone is sustained.

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) (2010).

AFFIRMED

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