Ex Parte Lee

Patent Trial and Appeal Board

Jun 16, 2016

12667340 (P.T.A.B. Jun. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/667,340 12/30/2009
23117 7590 06/20/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
John C. Lee
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
RYM-36-2289 6640
EXAMINER
GMAHL, NA VNEET K
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
06/20/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN C. LEE
Appeal2014-009606
Application 12/667,340
Technology Center 2100
Before JEFFREYS. SMITH, JON M. JURGOV AN, and ADAM J.
PYONIN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-009606
Application 12/667,340
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-14, which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Representative Claim
1. A method for updating data maintained on a terminal to incorporate
data that is generated whilst the terminal is out of communication with the
source of the generated data, comprising:
maintaining a master record of the generated data in a network-based
server,
generating a record of data that has been changed in the master record
for which corresponding changes are required to the data stored on the
terminal into conformity with the master record of the generated data,
detecting when the terminal makes contact with the server, and
transmitting the recorded changes to the terminal,
wherein the record of data that has been changed is analysed for time-
related content, and changed data having time-related content is prioritised
for transmission, in a sequence in which changed data whose time-related
content is most imminent in the future is transferred first.
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Appeal2014-009606
Application 12/667,340
Glickstien
Prior Art
US 2008/0270547 Al Oct. 30, 2008
Beauchamp US 7,912,899 B2 Mar. 22, 2011
(filed Nov. 5, 2002)
Bobo EP 1 109 121 A2 Dec. 06, 2000
Vanden Heuvel EP 1 808 802 Al Dec. 14, 2005
Examiner's Rejections
Claims 1-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Glickstien and Beauchamp.
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Appeal2014-009606
Application 12/667,340
ANALYSIS
Independent claims 1 and 8 each recite "changed data whose time-
related content is most imminent in the future is transferred first."
Appellants contend G lickstien does not determine if an event is about to
happen, and, therefore, does not teach "changed data whose time-related
content is most imminent in the future is transferred first." Reply Br. 2-3.
Appellants also contend the data in Beauchamp is data that happened in the
past, not imminent in the future. Reply Br. 3--4.
We agree with Appellants1 that neither Glickstien nor Beauchamp
teach time-related content imminent in the future. An example of time-
related content imminent in the future is disclosed on page 3, lines 7-10 of
Appellants' Specification as a future meeting scheduled to occur on a
calendar such as Microsoft Outlook. The data of Glickstien and Beauchamp
are for messages received or events that occurred in the past, not for future
meetings scheduled on a calendar.
We do not sustain the rejection of claims 1 and 8, and corresponding
dependent claims 2-7 and 9-14, under 35 U.S.C. § 103.
1 However, we do not agree with Appellants that "changed data whose time-
related content is most imminent in the future being transferred first" was
unknown in the prior art. We highlight the European Patentability Report
for the corresponding European Application, mailed May 23, 2014 (after the
Final Rejection, which was mailed September 12, 2013), cites four prior art
references D9-D12 that each teach this limitation, and finds this invention
lacking inventive step over reference DI combined with any of D9-D12, as
explained on pages 4 and 5. In the event of further prosecution, the
Examiner should consider whether claims 1-14 are unpatentable over the
combination of DI and any ofD9-D12 as explained in the European
Patentability Report. Although the Board has discretion to enter a new
ground of rejection for issues not before us (see 37 C.F.R. § 41.50(b)), no
inference should be drawn when we decline to exercise that discretion.
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Appeal2014-009606
Application 12/667,340
DECISION
The rejection of claims 1-14 is reversed.
REVERSED
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