Ex Parte Staczek

Patent Trial and Appeal Board

Sep 16, 2013

11408644 (P.T.A.B. Sep. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JASON STACZEK
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Appeal 2011-004591
Application 11/408,644
Technology Center 2100
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Before JEAN R. HOMERE, KALYAN K. DESHPANDE, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004591
Application 11/408,644

2
STATEMENT OF CASE
1

The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-11, 13-23 and 32-49,
2
the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to 35
U.S.C. § 6(b). Claims 24-31 have been cancelled.
We AFFIRM-IN-PART.

The Appellants invented the declarative synchronization of shared
data. Specification ¶ 0001.
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 machine-readable device, tangibly embodying a computer
program product configured to cause data processing apparatus
to perform operations comprising:
receiving one or more changes to a copy of data
maintained by a computer program being one of a plurality of
computer programs having respective local copies of the data;
identifying an event characterizing synchronization of the
copy maintained by the computer program with one or more of
the plurality of computer programs, the event characterized by
an annotation associated with the data; and
initiating synchronization of the changes with one or
more of the plurality of computer programs having the
respective local copies in response to the event occurring.

1
Our decision will refer to the Appellants’ Appeal Brief (“App. Br.,” filed
Aug. 12, 2010) and Reply Brief (“Reply Br.,” filed Dec. 29, 2010), and the
Examiner’s Answer (“Ans.,” mailed Oct. 29, 2010), and Final Rejection
(“Final Rej.,” mailed Mar. 8, 2010).
2
Claim 12 has been objected to for being dependent upon a rejected
independent claim. Ans. 2.
Appeal 2011-004591
Application 11/408,644

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REFERENCES
The Examiner relies on the following prior art:
Dice U.S. 6,141,794 Oct. 31, 2000
Kobayashi
Bingham
Varadarajan
U.S. 2006/0089974 A1
U.S. 2007/0032253 A1
U.S. 2007/0277056 A1
Apr. 27, 2006
Feb. 8, 2007
Nov. 29, 2007

REJECTIONS
Claims 1, 2, 4, 7-10, 13-22, 33-42, and 45-49 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Kobayashi.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kobayashi and Dice.
Claims 5, 6, 32, and 44 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kobayashi and Bingham.
Claims 11, 23, and 43 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kobayashi and Varadarajan.

ISSUE
The dispositive issue before us of whether the Examiner erred in
rejecting claims 1-23 and 32-49 turns on whether Kobayashi describes
“annotations” and “compiling annotations” as recited in claims 1 and 4.

Appeal 2011-004591
Application 11/408,644

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ANALYSIS
Claims 1, 2, 4, 7-10, 13-22, 33-42, and 45-49 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Kobayashi
We have reviewed the Examiner’s rejections in light of the
Appellants’ contentions that the Examiner has erred.
For claims 1, 2, 7-10, 13-22, 33-42, and 45-49, we disagree with the
Appellants’ conclusions. We adopt as our own (1) the findings and reasons
set forth by the Examiner in the action from which this appeal is taken and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to the Appellants’ Appeal Brief. We concur with the conclusion
reached by the Examiner. For claim 4, we agree with the Appellants. We
highlight the following arguments for emphasis.
The Appellants contend that Kobayashi fails to describe “(1) the
claimed annotation associated with the data to be copied, the annotation
characterizing an event, and (2) initiating synchronization of the changes in
response to the event characterized by the annotation occurring.” App. 7-10
and Reply Br. 1-2. We disagree with the Appellants.
The Appellants direct us to the context of an “annotation” as used in
the Specification that includes “annotations…specify events upon which the
developer desires to have synchronization initiated.” Specification 15:13-
22. As a non-limiting example, the Specification further provides that “an
annotation …specifies synchronization of the data in the text field should
only be initiated when focus of the text field has been lost.” Id.
Kobayashi describes a system and method for a plurality of terminals
to share databases and update commands to these databases. Kobayashi ¶¶
0057 and 0065. The update mode includes three modes: wait, immediate,
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and delay. Kobayashi ¶¶ 0065-0068. In the wait mode, execution of a
manipulation command, such as the movement of an object or data
(Kobayashi ¶ 0005), is made after waiting for distribution of an event from
the server. Kobayashi ¶ 0070. That is, the wait mode specifies the time of
updating or synchronizing data is after a specified event. While the
Appellants argue that an “event” is not the same as an annotation (Reply Br.
2), we agree with the Examiner that the specification of executing a
command upon the occurrence of an event is the same as an annotation. As
such, we do not find this argument to be persuasive.
The Appellants further contend that Kobayashi fails to describe that
“the property of the data object that identifies the event at which
synchronization of the data object is to be initiated is a result of compiling
the annotation [of] the data,” as per claim 4. App. Br. 11 and Reply Br. 2-3.
Here, we agree with the Appellants. The Examiner construed this limitation
to encompass “as a compilation of the manipulation content associated with
the event data.” Ans. 22. However, we do not agree with the Examiner that
Kobayashi describes any compilation step and accordingly we do not agree
with the Examiner that Kobayashi describes that the property of the data
object that identifies the event is a result of compiling the annotation data.
While the Specification does not provide a definition for “compilation” and
the claims do not limit “compilation,” we do not agree with the Examiner
that Kobayashi explicitly or implicitly describes compiling the annotation of
data. As such, we do not sustain the Examiner’s rejection of claim 4.
Accordingly, we sustain the Examiner’s rejection of claims 1, 2, 7-10,
13-22, 33-42, and 45-49 and we do not sustain the Examiner’s rejection of
claim 4.
Appeal 2011-004591
Application 11/408,644

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Claim 3 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kobayashi and Dice
The Appellants contend that the Examiner erred in rejecting claim 3
for the same reasons asserted in support of claim 1. App. Br. 11. We
disagree with the Appellants. The Appellants contentions in support of
claim 1 were not found to be persuasive supra and are not persuasive here
for the same reasons.

Claims 5, 6, 32, and 44 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kobayashi and Bingham
The Appellants contend that Bingham is silent with respect to
annotations and as such fails to teach or suggest that “annotations of a node
apply to nodes in the tree nested within the annotated node,” as per claim 6.
App. Br. 12. We disagree with the Appellants. As discussed supra, we
agree with the Examiner that Kobayashi describes annotations. As such, the
Appellants’ contention that Bingham fails to describe annotations is
tantamount to an attack on the references separately. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

Claims 11, 23, and 43 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kobayashi and Varadarajan
The Appellants contend that the Examiner erred in rejecting claims 11,
23, and 43 for the same reasons asserted in support of claim 1. App. Br. 13.
We disagree with the Appellants. The Appellants contentions in support of
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claim 1 were not found to be persuasive supra and are not persuasive here
for the same reasons.

CONCLUSIONS
The Examiner did not err in rejecting claims 1-3, 5-23 and 32-49.
The Examiner erred in rejecting claim 4.

DECISION
To summarize, our decision is as follows.
 The rejection of claims 1-3, 5-23 and 32-49 is sustained.
 The rejection of claim 4 is not 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) (2011).

AFFIRMED-IN-PART

ELD