Ex Parte Panayotov

Board of Patent Appeals and Interferences

Sep 7, 2007

09705578 (B.P.A.I. Sep. 7, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte VALENTIN PANAYOTOV
____________________

Appeal 2007-1663
Application 09/705,5781
Technology Center 2100
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Decided: September 7, 2007
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Before JOHN C. MARTIN, HOWARD B. BLANKENSHIP, and SCOTT R.
BOALICK, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-10, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

1 Application filed November 3, 2000. The real party in interest is Agere
Systems Inc.

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Application 09/705,578

STATEMENT OF THE CASE
Appellant's invention relates to a communication protocol for data
exchange between two computer applications using shared files. In the
words of the Appellant:
The present invention concerns a system and
associated method for exchanging data between
computer applications via shared file structures
and a pre-defined flow sequence. The applications
utilize basic input/output functionality. For each
communication link, one data file and two
notification files are used.
A computer application data file receives
data from the first computer application. A
computer application send file receives notification
when the computer application data file has
received data from the first computer application.
A computer application read file receives
notification when data has been read from the
computer application data file by the second
computer application. The first computer
application monitors the computer application read
file for notification from the second computer
application to initiate further writing to the
computer application data file.

(Specification 4:24 to 5:6.)

Claim 1 is exemplary:
1. A computing system for exchanging data
between a first computer application of the system
and a second computer application of the system,
comprising:

a computer application data file for
receiving data from the first computer application;
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a computer application send file for
receiving notification when the computer
application data file has received data from the
first computer application;

a computer application read file for
receiving notification when data has been read
from the computer application data file by the
second computer application, the first computer
application monitoring the computer application
read file for notification from the second computer
application to initiate further writing to the
computer application data file.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wu US 6,633,924 B1 Oct. 14, 2003
(filed Oct. 2, 1997)

Creemer US 6,671,700 B1 Dec. 30, 2003
(filed May 23, 2000)

Claims 1-10 stand rejected under 35 U.S.C. § 103(a) as being obvious
over Creemer and Wu.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Brief and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to
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make in the Brief have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2004).2

ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a). That is, given the teachings
of the prior art, has Appellant shown that the differences between the claims
and the prior art are sufficient to render the claimed subject matter
unobvious to a person skilled in the art at the time the invention was made?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

1. Creemer describes a system for sharing information between a host
computer system and a peripheral computer system (such as a
"palmtop" computer system) using conduit programs running
simultaneously on the host system to synchronize information
between the two computer systems. (Col. 2, l. 65 to col. 3, l. 2.)
Creemer teaches that a user may wish to synchronize applications
such as an appointment book, an address book, and an electronic
notepad application. (Col. 1, l. 66 to col. 2, l. 2.) The conduits taught

2 Except as will be noted in this opinion, Appellant has not presented any
substantive arguments directed separately to the patentability of the
dependent claims or related claims in each group. In the absence of a
separate argument with respect to those claims, they stand or fall with the
representative independent claim. See 37 C.F.R. § 41.37(c)(1)(vii).

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by Creemer use interleaved requests to transfer information across a
single communications link between the two computer systems -- i.e.,
the conduits use time multiplex transfers. (Col. 3, ll. 2-6.) When one
conduit is performing a transfer task over the communication link, the
other conduits can perform non-transfer tasks. (Col. 3, ll. 6-9.) If
more than one conduit requests use of the communication link at the
same time, an arbitration process is used to determine the order of
access. (Col. 3, ll. 9-12.) In particular, Creemer teaches that an
ordering program 412 is used to establish the order of conduit access
to the communication link 55, and the ordering program 412 may be
an arbitrator or other method for ordering access to the
communication link. (Col. 8, ll. 1-7; Fig. 9; see also col. 8, l. 60 to
col. 9, l. 9.) The conduits may synchronize records between databases
on the two computer systems, or may load software or synchronize e-
mail between the two computer systems. (Col. 3, ll. 12-17.)

2. Wu describes a method for synchronizing objects between a first and
a second object store, such as synchronizing databases used in
personal information managers (PIMs) used on two different
computers (e.g., a desktop computer and handheld computer (H/PC)).
(Abstract; col. 1, ll. 7-10.) Wu uses a synchronization manager to
maintain a reference store with identifying data segments
corresponding to objects that have previously been synchronized.
(Abstract; col. 7, ll. 27-31.) Interfaces to an application program that
maintains the first and second data store allow the synchronization
manager to compare objects. (Abstract; col. 6, ll. 57-61.) Wu teaches
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that an interface determines if an object has been changed in the first
data store (e.g., on the desktop computer) since the last
synchronization, and if so the synchronization manager takes steps to
update the corresponding object in the second data store (e.g., on the
handheld computer). (Abstract; col. 9, ll. 47-64; col. 10, ll. 60-63.) If
the object has changed in the second data store since the last
synchronization, then the synchronization manager updates the
corresponding object in the first data store. (Abstract; col. 10, ll. 9-21,
54-60.)

3. Wu teaches that the synchronization manager 82 can reference a
particular object by using a "handle," which is an identifier that
enables uniquely identifying and accessing the object. (Col. 8, ll.
9-13.) The "synchronization manager 82 needs to obtain a list of
handles corresponding to the objects stored in desktop object store 18
before it can perform any significant synchronization tasks." (Col. 8,
ll. 21-24.) "After obtaining handles, synchronization manager 82
determines a correspondence between the provided handles and object
identifiers used by H/PC PIM 22, with reference to reference store
84." (Col. 8, ll. 26-29.)

4. Wu teaches that, "[i]n some cases, an object will have changed in both
object stores. If so, the user is prompted to resolve the conflict by
deciding which modification should be retained." (Col. 10, ll. 64-66.)

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PRINCIPLES OF LAW
All timely filed evidence and properly presented arguments are to be
considered by the Board in resolving an obviousness issue on appeal. See In
re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
In the examination of a patent application, the Examiner bears the
initial burden of showing a prima facie case of unpatentability. Id. at 1472,
223 USPQ at 788. When that burden is met, the burden then shifts to the
applicant to rebut. Id.; see also In re Harris, 409 F.3d 1339, 1343-44, 74
USPQ2d 1951, 1954-55 (Fed. Cir. 2005) (finding rebuttal evidence
unpersuasive). If the applicant produces rebuttal evidence of adequate
weight, the prima facie case of unpatentability is dissipated. In re Piasecki,
745 F.2d at 1472, 223 USPQ at 788. Thereafter, patentability is determined
in view of the entire record. Id. However, on appeal to the Board it is an
appellant's burden to establish that the Examiner did not sustain the
necessary burden and to show that the Examiner erred -- on appeal we will
not start with a presumption that the Examiner is wrong. See In re Rouffet,
149 F.3d 1350, 1355 47 USPQ2d 1453, 1455 (Fed. Cir. 1998) (“On appeal
to the Board, an applicant can overcome a rejection [for obviousness] by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”).
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734, 82 USPQ2d 1385, 1391 (2007). The question of obviousness is
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resolved on the basis of underlying factual determinations including (1) the
scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, and (3) the level of skill in the art. Graham
v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See also
KSR, 127 S. Ct. at 1734, 82 USPQ2d at 1391 ("While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls."). The Court in Graham further
noted that evidence of secondary considerations, such as commercial
success, long felt but unsolved needs, failure of others, etc., "might be
utilized to give light to the circumstances surrounding the origin of the
subject matter sought to be patented." 383 U.S. at 18, 148 USPQ at 467.
In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art," id. at 1739, 82 USPQ2d at 1395, and discussed circumstances in which
a patent might be determined to be obvious. In particular, the Supreme
Court emphasized that "the principles laid down in Graham reaffirmed the
'functional approach' of Hotchkiss, 11 How. 248 [(1850)]," KSR, 127 S. Ct.
at 1739, 82 USPQ2d at 1395 (citing Graham, 383 U.S. at 12, 148 USPQ at
464), and explained how its precedent illustrates the doctrine that "[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." Id. The
operative question in this "functional approach" is thus "whether the
improvement is more than the predictable use of prior art elements according
to their established functions." Id. at 1740, 82 USPQ2d at 1396.
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The Supreme Court explained that:
[o]ften, it will be necessary . . . to look to
interrelated teachings of multiple patents; the
effects of demands known to the design
community or present in the marketplace; and the
background knowledge possessed by a person
having ordinary skill in the art, all in order to
determine whether there was an apparent reason to
combine the known elements in the fashion
claimed by the patent at issue.

Id. at 1740-41, 82 USPQ2d at 1396. The Court noted that "[t]o facilitate
review, this analysis should be made explicit." Id. at 1741, 82 USPQ2d at
1396 (citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed.
Cir. 2006) ("[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness")). However, "the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." Id.
The Court noted that "[i]n many fields it may be that there is little
discussion of obvious techniques or combinations, and it often may be the
case that market demand, rather than scientific literature, will drive design
trends." KSR, 127 S. Ct. at 1741, 82 USPQ2d at 1396. "Under the correct
analysis, any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed." Id. at 1741, 82 USPQ2d at 1397. The
Court also noted that "[c]ommon sense teaches . . . that familiar items may
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have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle." Id. at 1742, 82 USPQ2d at 1397. "A
person of ordinary skill is also a person of ordinary creativity, not an
automaton." Id.
During examination of a patent application, a claim is given its
broadest reasonable construction consistent with the specification. In re
Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969).
"[T]he words of a claim 'are generally given their ordinary and customary
meaning.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312, 75 USPQ2d 1321,
1326 (Fed. Cir. 2005) (en banc) (internal citations omitted). The "ordinary
and customary meaning of a claim term is the meaning that the term would
have to a person of ordinary skill in the art in question at the time of the
invention, i.e., as of the effective filing date of the patent application." Id. at
1313, 75 USPQ2d at 1326.

ANALYSIS
Appellant contends that Examiner erred in rejecting claims 1-10 as
being obvious over Creemer and Wu. Reviewing the findings of facts cited
above, we agree. In particular, we find that the Appellant has shown that the
Examiner failed to make a prima facie showing of obviousness with respect
to claims 1-10 because Creemer and Wu do not teach or suggest each and
every limitation of the claims.
Regarding independent claims 1 and 2, Appellant argues that the
Examiner has failed to establish a prima facie case of obviousness because
Creemer and Wu fail to teach or suggest application programs reading from
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or writing to a computer application data file, a computer application send
file, and a computer application read file, as claimed. (Br. 3-5.)
The Examiner found that Creemer discloses a computer application
data file because it refers to synchronization of appointment books. (Answer
3, 6; FF 1.) The Examiner also found that Wu discloses a computer
application send file because the synchronization manager on the handheld
computer sets a status bit when an object has been changed in the data store
on the handheld computer since the last synchronization. (Answer 7; FF 2.)
In addition, apparently finding an equivalence between the claimed
"computer application read file" and a desktop computer, the Examiner
found that Wu discloses a computer application read file and "teaches
synchronization manager 82 monitor [sic] the notification/handles from
another application H/PC before synchronization to initiate writing."
(Answer 7.)
While we agree with the Examiner that Creemer teaches a computer
application data file and Wu teaches a computer application send file, we
agree with Appellant that neither Creemer nor Wu teach or suggest the
limitation of a computer application read file, as claimed. We do not find
the Examiner's position that the desktop computer of Wu meets the recited
computer application read file limitation to be reasonable. If the Examiner
meant to refer to a particular file on the desktop computer of Wu rather than
the desktop computer itself, we find no such file disclosed in Wu that would
meet the recited computer application read file limitation. Although Wu
teaches a status bit being reset when notification is received that an object
has been synchronized, Wu does not teach or suggest that this status bit is
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monitored by the desktop computer in order to initiate further writing of
data. (FF 2.)
Also, contrary to the Examiner's finding, Wu does not teach that the
synchronization manager 82 monitors a notification from another application
before synchronizing. (See FF 3.) The cited portion of Wu teaches that the
synchronization manager 82 must first obtain a list of objects stored in the
desktop object store 18 before performing any significant synchronization
tasks. (FF 3.) However, Wu does not teach that the list of objects is
monitored by the synchronization manager for notification from another
application to initiate further writing to a computer application data file.
Moreover, the Examiner has made no showing that the recited
computer read file limitation is a predictable variation of the prior art. Nor
has the Examiner made any showing that the recited computer read file
limitation would be common sense or a creative step that a person of
ordinary skill in the art would employ.
Therefore, we conclude that the Examiner erred in rejecting claims
1-2.
Appellant makes essentially the same arguments for claims 3-10, and
we find that the Examiner erred in rejecting claims 3-10 for the same reasons
as discussed with respect to claims 1-2.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner erred in rejecting claims 1-10 for obviousness under 35 U.S.C.
§ 103.

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DECISION
The rejection of claims 1-10 for obviousness under 35 U.S.C. § 103 is
reversed.
REVERSED

rwk

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