Ex Parte Swartz et al

Board of Patent Appeals and Interferences

Jul 29, 2010

10760099 (B.P.A.I. Jul. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/760,099 01/16/2004 Tanya L. Swartz M61.12-0571 7350
27366 7590 07/29/2010
WESTMAN CHAMPLIN (MICROSOFT CORPORATION)
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402
EXAMINER
ALAM, SHAHID AL
ART UNIT PAPER NUMBER
2162
MAIL DATE DELIVERY MODE
07/29/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TANYA L. SWARTZ, DMITRY V. ZHIYANOV,
GIRISH PREMCHANDRAN, GAGAN CHOPRA,
ARIF KURESHY, AHMAD MAHDI EL HUSSEINI,
JAYADEV PILLAI, and MISHA H. ST. LORANT
____________
Appeal 2009-002614
Application 10/760,0991
Technology Center 2100
____________

Before JEAN R. HOMERE, DEBRA K. STEPHENS, and
JAMES R. HUGHES, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL2

1 Filed on January 16, 2004. The real party in interest is Microsoft Corp.
(Br. 1.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1 through 25. (Br. 1.) We have
jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm-in-part.
Appellants’ Invention
Appellants invented a method and system for customizing a software-
implemented business process on a mobile computing device without
modifying the source code. (Spec. 1, ll. 5-10.)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. A method of customizing a software-implemented business
process comprising:
a) providing customized metadata defining entities;
b) storing the customized metadata and data corresponding to the
entities in a first data store;
c) providing a subscription list of the entities, the subscription list
being defined by subscription metadata stored in a subscription
data store of a mobile computing device;
d) sending the customized metadata corresponding to the entities
identified in the subscription list to the mobile computing
device; and
e) storing the sent customized metadata in a second data store of
the mobile computing device.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Von Kaenel 2004/0117358 A1 Jun. 17, 2004
(hereinafter “Kaenel”)

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Rejection on Appeal
The Examiner rejects claims 1 through 25 under 35 U.S.C. § 102(e) as
being anticipated by Kaenel.
Appellants’ Contentions
Appellants contend that Kaenel’s disclosure of utilizing metadata to
locate, retrieve, and render data for client software does not teach “providing
a subscription list of the entities, the subscription list being defined by
subscription metadata stored in a subscription data store of a mobile
computing device,” as recited in independent claim 1. (Br. 5-6.) Appellants
also argue that Kaenel’s disclosure of a distributing computing environment
and corresponding data stores does not teach the claimed “subscription data
store of a mobile computing device.” (Id. at 6.) Further, Appellants
generally allege that Kaenel’s disclosure fails to teach “sending the
customized metadata corresponding to the entities identified in the
subscription list to the mobile computing device,” and “storing the sent
customized metadata in a second data store of the mobile computing
device,” as recited in independent claim 1. (Id.)
Examiner’s Findings and Conclusions
The Examiner finds that Kaenel’s figure 15 depicts generating and
storing metadata in a loading system and corresponding data stores. (Ans.
9.) In particular, the Examiner finds that Kaenel’s figure 15 depicts a table
that contains entities (e.g., Acme Corp., ABC Corp., XYZ Inc., etc.) and
metadata (e.g., building, address, city, etc.) and, therefore, teaches storing
data describing other data. (Id. at 9-10.) Further, the Examiner finds that
Kaenel’s disclosure of creating and storing metadata utilizing Extensible
Markup Language (“XML”) or other formats teaches the claimed steps of
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“providing,” “sending,” and “storing” customized metadata in a mobile
computing device. (Id. at 10.)

II. ISSUE
Have Appellants shown that the Examiner erred in finding that Kaenel
anticipates independent claim 1? In particular, the issue turns on whether
Kaenel teaches:
(a) “providing a subscription list of the entities, the subscription list
being defined by subscription metadata stored in a subscription data store of
a mobile computing device,” as recited in independent claim 1;
(b) “sending the customized metadata corresponding to the entities
identified in the subscription list to the mobile computing device,” as recited
in independent claim 1; and
(c) “storing the sent customized metadata in a second data store of
the mobile computing device,” as recited in independent claim 1.

III. FINDINGS OF FACT
The following Findings of Fact (“FF”) are shown by a preponderance
of the evidence.
Kaenel
1. Kaenel generally relates to providing access to spatial data and,
in particular, to utilizing spatial or geospatial information to explore,
analyze, visualize, and communicate spatial relationships. (Abst.; 1: para.
[0006].) Kaenel’s spatial system provides access to enterprise data from
enterprise data stores and dynamically generates spatially referenced data
utilizing client software. (10: para. [0248].)
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2. Kaenel’s figure 15 depicts a distributing computing
environment (1500), whereby client software or personal computer (“PC”)
(1590) may send a request for data to a server system (1530). (18: para.
[0324].) Further, Kaenel discloses that the distributing computing
environment includes both a data store (1560) and a metadata store (1570).
(Id.)
3. Additionally, Kaenel’s figure 15 depicts the client software or
PC (1590) requesting to view data (1512) in the server system (1530),
whereby the server system (1530) utilizes metadata stored in the metadata
store (1570) to locate, retrieve, and render data for the client software or PC
(1590). (19: para. [0329].) Kaenel discloses that the requested data
contains metadata that includes information, such as the name of the data
layer as it will be presented in the client software or PC (1590). (Id.)
4. Kaenel’s figure 16A depicts data preparation. (19: para.
[0333].) In step (1620), Kaenel discloses uploading customer data (1613a)
and storing such data as business data (1613b) in spatial data store (1660).
(Id. at para. [0337].) Kaenel discloses utilizing the business data (1613b)
and coordinates (1645b) to create a spatially referenced data layer view
(1690). (Id.) Subsequently, Kaenel discloses creating metadata and storing
the metadata in a metadata store (1670). (Id.) Further, Kaenel discloses
transmitting the layer view over a network to client software (1600) and
displaying the view on the client software (1600). (Id.)
5. Kaenel discloses updating spatial data in real time utilizing the
following: a batch process, input from a user entering data into a software
user interface, software that generates data as part of its processing, and a
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sensor device (e.g., smoke detector) or location sensing device (e.g., GPS
enabled device) that generates data. (21: para. [0354].)

IV. ANALYSIS
Claim 1
Independent claim 1 recites, in relevant part:
1) providing a subscription list of the entities, the subscription list
being defined by subscription metadata stored in a subscription data
store of a mobile computing device;
2) sending the customized metadata corresponding to the entities
identified in the subscription list to the mobile computing device; and
3) storing the sent customized metadata in a second data store of the
mobile computing device.

As detailed in the Findings of Fact section, Kaenel discloses providing
access to enterprise or business data in order to generate spatially referenced
data utilizing client software. (FF 1.) In particular, Kaenel discloses a client
PC and associated software that, upon requesting data from a computing
environment, may retrieve data and metadata stored in a data store and
metadata store, respectively. (FF 2-3.) Further, Kaenel discloses that the
computing environment prepares data by uploading business data (e.g., a list
of businesses) to the data store, and utilizing the uploaded business data and
corresponding coordinates to create a reference data layer view. (FF 4.)
Subsequently, Kaenel discloses creating and storing metadata in the
metadata store. (Id.) Additionally, based on a request from a client PC,
Kaenel discloses that the server system utilizes metadata stored in the
metadata store to locate, retrieve, and render metadata that includes
information pertaining to the data layer view. (FF 3.)
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We find that Kaenel’s disclosure teaches a computer system that
employs a server and both a data store and a metadata store to process
database query operations. We also find that Kaenel’s computer system
uploads a list of entities to the data store, creates a customized data view that
references a subset of metadata, sends the customized data view and subset
of metadata to the metadata store, and stores the customized data view and
subset of metadata therein. Further, based on a request from a client
computer, Kaenel’s disclosure teaches that the server works in conjunction
with the metadata store to locate, retrieve, and send the customized data
view and corresponding metadata to the client computer.
However, since independent claim 1 only recites “a mobile computing
device,” we find that the claim does not explicitly preclude performing the
method steps within a single computing device. Consequently, we find that
“a mobile computing device” may be broadly, but reasonably construed as
any computer because the type and/or size of the computer does not affect
the functionality of the claim limitations. Therefore, we find that Kaenel’s
disclosure of a subset of metadata that identifies a list of entities
corresponding to a subset of metadata stored in the metadata store of
Kaenel’s computer system, amounts to “providing a subscription list of the
entities, the subscription list being defined by subscription metadata stored
in a subscription data store of a mobile computing device,” as recited in
independent claim 1.
Further, we find that Kaenel’s disclosure of the computer system
sending the customized data view that corresponds to a list of entities
identified in the subset of metadata to the metadata store teaches “sending
the customized metadata corresponding to the entities identified in the
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subscription list to the mobile computing device,” as recited in independent
claim 1. Additionally, we find that Kaenel’s disclosure of storing the
customized data view in the metadata store teaches “storing the sent
customized metadata in a second data store of the mobile computing
device,” as recited in independent claim 1. It follows that Appellants have
not shown that the Examiner erred in finding that Kaenel anticipates
independent claim 1.
Claim 2
Appellants contend that Kaenel’s disclosure of printing multiple data
layers is completely unrelated to the software-implemented business process
of dependent claim 2. (Br. 7.) In particular, Appellants argue that there is
no connection between Kaenel’s disclosure of printing multiple data layers
and the data stores depicted in figure 15. (Id.) Therefore, Appellants allege
that Kaenel does not teach “sending the data corresponding to the entities
identified in the subscription list to the mobile computing device,” and
“storing the sent data in the second data store,” as recited in dependent claim
2. (Id.) We do not agree.
As set forth above, we find that Kaenel teaches sending the
customized data view that corresponds to a list of entities identified in the
subset of metadata to the metadata store and, further, storing the customized
data view therein. Consequently, we find that Kaenel’s computer system
teaches sending any data corresponding to entities identified in the subset of
metadata to the metadata store and, further, storing such data therein. Thus,
we find that Kaenel teaches the disputed limitation. It follows that
Appellants have not shown that the Examiner erred in finding that Kaenel
anticipates dependent claim 2.
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Claims 3, 4, 6 through 10, 12 through 15, and 17 through 25
Appellants do not set forth any substantive arguments, but rather
make general allegations that Kaenel’s cited disclosure does not teach the
limitations of independent claims 9, 15, and 19, and dependent claims 3, 4, 6
through 8, 10, 12 through 14, 17, 18, and 20 through 25. (Br. 7-14.)
Appellants are reminded that a statement that merely points out what the
claim recites will not be considered as an argument for separate patentability
of a claim. See 37 C.F.R. § 41.37(c)(1)(vii). Therefore, Appellants’
arguments are unpersuasive. It follows that Appellants have not shown that
the Examiner erred in finding that Kaenel anticipates independent claims 9,
15, and 19, and dependent claims 3, 4, 6 through 8, 10, 12 through 14, 17,
18, and 20 through 25.
Claims 5, 11, and 16
Appellants contend that Kaenel’s disclosure of utilizing a device that
generates spatial data does not teach “the mobile computing device is
selected from a group consisting of a mobile phone and a personal digital
assistant (PDA),” as recited in dependent claim 5. (Br. 8.) Further,
Appellants argue that Kaenel’s device that generates spatial data does not
include the claimed “subscription list” or “subscription data store.” (Id.)
Additionally, Appellants allege that Kaenel’s device that generates spatial
data does not receive or store customized metadata corresponding to entities
identified in the subscription list. (Id.) We agree.
As detailed in the Findings of Fact section above, Kaenel discloses
updating spatial data utilizing a sensor device (e.g., smoke detector) or
location sensing device (e.g., GPS enabled device) that is capable of
generating data. (FF 5.) We find that Kaenel’s disclosure teaches a GPS
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enabled device that generates data. However, we agree with Appellants that
Kaenel’s disclosure falls short of teaching or suggesting a mobile phone or
PDA. Although Kaenel discloses a GPS enabled device, an ordinarily
skilled artisan would view Kaenel’s disclosure as a mere suggestion that the
GPS enabled device may be a mobile phone or PDA. While such a
suggestion might be adequate to show obviousness, it is insufficient to show
anticipation. Absent a showing that Kaenel expressly or inherently describes
a mobile phone or PDA, we find that the Examiner has improperly relied
upon Kaenel’s disclosure to teach the disputed limitation.
Since Appellants have shown at least one error in the Examiner’s
rejection of dependent claim 5, we need not reach the merits of Appellants’
other arguments. It follows that Appellants have shown that the Examiner
erred in finding that Kaenel anticipates dependent claim 5.
Because dependent claims 11 and 16 also recite the limitation
discussed above, we find that Appellants have also shown error in the
Examiner’s rejection of these claims for the reasons set forth in our
discussion of dependent claim 5.

V. CONCLUSIONS OF LAW
1. Appellants have not shown that the Examiner erred in rejecting
claims 1 through 4, 6 through 10, 12 through 15, and 17 through 25 as being
anticipated under 35 U.S.C. § 102(e).
2. Appellants have shown that the Examiner erred in rejecting
claims 5, 11, and 16 as being anticipated under 35 U.S.C. § 102(e).

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VI. DECISION
1. We affirm the Examiner’s decision to reject claims 1 through 4,
6 through 10, 12 through 15, and 17 through 25 as being anticipated under
35 U.S.C. § 102(e).
2. However, we reverse the Examiner’s decision to reject claims
5, 11, and 16 as being anticipated under 35 U.S.C. § 102(e).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

Vsh

WESTMAN CHAMPLIN (MICROSOFT CORPORATION)
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402