Ex Parte Rath et al

Board of Patent Appeals and Interferences

Jul 25, 2011

11388012 (B.P.A.I. Jul. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CALE T. RATH and MEGAN ERIN WILLIAMS

____________________

Appeal 2009-014872
Application 11/388,012
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, JONI Y. CHANG and
KALYAN K. DESHPANDE, Administrative Patent Judges.

CHANG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014872
Application 11/388,012

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-4 and 6-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Exemplary Claim
Appellants claim a method and a storage medium encoded with
executable instructions for updating local versions of files based on a
plurality of respective customized rules. (Spec. 1-2). Claims 1-4, 6-9 and
16-20 are directed to a method, and claims 10-15 are directed to a storage
medium encoded with executable instructions. Claim 1, reproduced below
with the numbering in brackets and emphases added, is representative of the
subject matter on appeal:
1. A method comprising:

[1] for each of a plurality of local versions of files and a plurality of
associated respective rules, periodically finding a respective remote
version of the respective file and [2] determining whether the
respective remote version meets the respective rule that is associated
with the respective file;

[3] if the respective remote version meets the respective rule that is
associated with the respective file, updating the respective local
version with the respective remote version;

[4] if the respective remote version does not meet the respective rule
that is associated with the respective file, presenting a respective
reason why the respective local version was not updated, [5] wherein
the respective reason comprises the respective rule of the plurality of
rules that was not met, [6] wherein the plurality of rules comprise
conditional criteria for updating the plurality of local versions,
[7] wherein a first rule of the plurality of rules that is associated with a
first file specifies to only update a first local version if a first remote
version has a first level of function that is more advanced than a
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threshold level specified in the first rule, [8] wherein a second rule of
the plurality of rules that is associated with a second file specifies to
only update a second local version if a second remote version has a
second level that is greater than a local level of the second local
version, [9] wherein a third rule of the plurality of rules that is
associated with a third file specifies to only update a third local
version if a third remote version is stored at a remote source location
that matches a source location specified in the third rule; and

[10] customizing the plurality of rules for the plurality of associated
respective files, wherein the customizing the plurality of rules
comprises storing the respective rule that was received via a user
interface, wherein at least some of the plurality of respective rules
associated with different respective files are different from each other.

Rejections on Appeal
The following rejections are before us for review:
1. Claims 1-4, 8-14, and 16-20 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Mighdoll (US Patent Number 6,073,168, issued on
June 6, 2000) (hereinafter “Mighdoll”). (Ans. 3-12).
2. Claims 6, 7, and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mighdoll. Claims 6 and 7 depend on claim 1, and claim
15 depends on claim 10.
Appellants’ Contentions
Appellants contend that the Examiner erred in rejecting claim 1
because limitations [4] through [10] are not described or suggested by
Mighdoll. (App. Br. 23-25). In particular, Appellants argue that Mighdoll’s
“change status” (see col. 12, ll. 6-9 and 29-30) is unrelated to a remote
version having more advanced function than a threshold level (see claim
limitation [7]); it is also unrelated to which a remote version has a greater
level (see claim limitation [8]); and it is unrelated to whether a remote
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version is stored at a location that matches a location specified in a rule (see
claim limitation [9]). (App. Br. 24-25). Regarding claim limitation [10],
Appellants argue that Mighdoll checks all of the documents with the same
rules and the rules are not customized for each document. (App. Br. 25).
For claims 2-4 and 6-20, Appellants simply repeat the same arguments made
for claim 1 because they recite similar claim limitations as argued for
claim 1. (App. Br. 25).
In response to Appellants’ arguments, the Examiner asserts that claim
limitations [7] through [9] are not afforded patentable weight because the
“if” clauses are required only when “the respective remote version does not
meet the respective rule.” (Ans. 15).
Issue on Appeal
Did the Examiner err in rejecting claims 1-4 and 6-20 as being
unpatentable over Mighdoll?
ANALYSIS
We agree with Appellants’ contentions. The Examiner erred by
concluding that the “wherein” clauses of limitations [7] through [9] are not
required unless the condition in the “if” clause in limitation [4] is satisfied
(i.e., “the respective remote version does not meet the respective rule”).
By analyzing the language of the claim, we find that the “wherein”
clauses do not set forth any process steps to be taken when the respective
remote version does not meet the respective rule, but rather the “wherein”
clauses define the claim terms “a plurality of associated respective rules,”
“the plurality of rules” and “the respective rule” that are recited in all the
limitations of claim 1. In particular, the “wherein” clause set forth in
limitation [6] specifies that “the plurality of rules” comprise conditional
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criteria for updating the local versions. The “wherein” clauses in limitations
[7] through [9] establish how “the plurality of rules” are associated with the
respective files, and define what a first rule, second rule and third rule of the
plurality of rules must be. Therefore, the prior art must teach or suggest
claim limitations [7] through [9]. See Hoffer v. Microsoft Corp., 405 F.3d
1326, 1329 (Fed. Cir. 2005) (when a “‘whereby’ clause states a condition
that is material to patentability, it cannot be ignored in order to change the
substance of the invention.”).
For the foregoing reasons, Appellants have shown error in the
rejection of claim 1. Claims 2-4 and 6-20 contain similar claim limitations
and the rejections of these claims are not sustained for the same reasons.

CONCLUSIONS
(1) We conclude that Appellants have shown that the Examiner erred
in rejecting claims 1-4, 8-14, and 16-20 under 35 U.S.C. § 102(b) as being
anticipated by Mighdoll.
(2) We conclude that Appellants have shown that the Examiner erred
in rejecting claims 6, 7, and 15 under 35 U.S.C. § 103(a) as being
unpatentable over Mighdoll.
Appeal 2009-014872
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DECISION
The Examiner’s rejections of claims 1-4, 6-20 are reversed.

REVERSED

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