Ex Parte Wan et al

Patent Trial and Appeal Board

Feb 12, 2014

10906513 (P.T.A.B. Feb. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUEN LING WAN and KWONG HUNG YU
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Appeal 2011-008090
Application 10/906,513
Technology Center 2100
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Before ST. JOHN COURTENAY III, THU A. DANG,
and LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008090
Application 10/906,513

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STATEMENT OF THE CASE
The Examiner finally rejected claims 9, 21-27, and 29-37. Claims
1-8, 10-20, and 28 were cancelled during prosecution. Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
INVENTION
This invention relates to policy-based store catalog synchronization.
(Spec. 1; Title). Claim 9, reproduced below, is representative of the claimed
subject matter:
9. A computer hardware system for policy-based store catalog
synchronization comprising:
[a] a processor;
[b] a master catalog communicatively coupled to a plurality of
store catalogs;
[c] a global navigational catalog disposed between said store
catalogs and said master catalog;
[d] a set of inclusion rules and a node filter for each of said
store catalogs; and
[e] catalog re-synchronization logic, running on the processor,
coupled to each of said store catalogs and configured to
[e1] apply a node filter governed by said inclusion rules
when synchronizing with said master catalog,
[e2] retrieve a plurality of log entries for updates to said
global navigational catalog, and
[e3] read, for each log entry, store-level product and
category inclusion flags to determine whether to include
one of a product update and a category update to said
store catalog.
(Contested elements lettering added).
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REJECTIONS1
R1. Claims 9, 21, 22, 24-27, 29-32, and 34-37 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combined teachings and
suggestions of Fisher (US 2003/0225778 A1; Dec. 4, 2003) and Hazi (US
2005/0125310 A1; June 9, 2005 (filed Aug. 4, 2004)).
R2. Claims 23 and 33 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings and suggestions of Fisher,
Hazi, and Christenson (US 2005/0138078 A1; June 23, 2005 (filed July 9,
2004)).

1 In the event of further prosecution, we direct the Examiner’s attention to a
recent precedential Board decision to ensure that “computer-readable storage
medium” claims 31-37 are directed to statutory subject matter under § 101.
Under our jurisprudence, the scope of the recited “computer-readable
storage medium” appears to encompass transitory media such as signals or
carrier waves. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013)
(precedential) (holding recited machine-readable storage medium ineligible
under § 101 since it encompasses transitory media). Here, the recited
“computer-readable storage medium” (claims 31-37) is not claimed as non-
transitory, and the originally-filed Specification does not expressly and
unambiguously disclaim transitory forms, such as signals, via a definition.
Therefore, the “computer-readable storage medium” of claims 31-37 is not
limited to non-transitory forms and appears ineligible under § 101.
Appeal 2011-008090
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ANALYSIS2
We disagree with Appellants’ contentions regarding the Examiner’s
obviousness rejections of the claims. 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 Answer in
response to arguments made in Appellants’ Appeal Brief. (Ans. 8-11). We
highlight and address specific findings and arguments below:
R1.
A.
Regarding the claim 9 limitations [b] “a master catalog
communicatively coupled to a plurality of store catalogs;” and [c] “a global
navigational catalog disposed between said store catalogs and said master
catalog;” Appellants contend: (1) “proper claim construction recognizes that
these three different types of catalogs are distinct elements with the claims,”
and (2) Fisher’s base catalog does not teach both the claimed global
navigational catalog and the master catalog because Fisher’s base catalog is
one catalog. (App. Br. 10).
Appellants’ contentions are not persuasive. We agree with the
Examiner that Fisher’s base catalog that comprises the claimed global
navigational catalog and master catalog would have taught or suggested the
broadest reasonable interpretation of claimed “global navigational catalog”

2 Appellants filed a Notice of Appeal on November 3, 2010. The date of
filing of the notice of appeal determines which set of rules applies to an Ex
Parte appeal. If a notice of appeal is filed prior to January 23, 2012, then the
2004 version of the Board Rules last published in the 2011 edition of Title
37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to
the appeal. See also MPEP Rev. 8, July 2010.
Appeal 2011-008090
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and “master catalog.” (Ans. 9). Appellants fail to cite a more narrow
definition of “global navigational catalog” and “master catalog” which
would preclude the “global navigational catalog” and “master catalog” from
being in a base catalog, such as Fisher’s base catalog.3
We also agree with the Examiner that the modification of Fisher’s
base catalog into two catalogs as described by Hazi’s product catalog
(“master catalog”) and metadata catalog (“global navigational catalog”)
would have taught or suggested the claimed “global navigational catalog”
and “master catalog.” (Ans. 10). Appellants fail to address and rebut the
Examiner’s specific findings.
B.
Regarding the claim 9 limitations [e2] “retrieve a plurality of log
entries . . . ,” and [e3] “read, for each log entry, store-level product and
category inclusion flags to determine whether to include one of a product
update and a category update to said store catalog,” and the commensurate
language of claims 22 and 33, Appellants contend:
“Although [Hazi paragraph [0119]] refers to “a mechanism for
data modifications performed in the layout program to be
tracked and propagated back into the master catalog,” the
Examiner’s cited teachings are entirely silent as to how this

3 Any special meaning assigned to a term “must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention.” Multiform
Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) (“A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.”).
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mechanism operates. Therefore, the Examiner cannot properly
assert Hazi teaches retrieving a plurality of log entries for
updates to a catalog.”
(App. Br. 13).
Appellants’ contentions are not persuasive. Appellants address only
Hazi and fail to address the Examiner’s finding that the combination of Hazi
and Fisher would have taught or suggested the limitations at issue. (Ans. 9-
11). Specifically, the Examiner finds Fisher would have taught or suggested
limitation [e3]. (Ans. 9-10; Fisher ¶¶ [0044]-[0046], Fig. 4). The Examiner
finds Fisher combined with Hazi’s teaching of tracking updates (“log
entries”) and propagating the tracked updates back ( [e2] “retrieve a plurality
of log entries . . . ,”) into the master catalog or other catalogs would have
taught or suggested limitation [e3]. (Ans. 10; Hazi ¶ [0119]). Appellants
fail to address and rebut the Examiner’s specific findings. For these reasons,
and on this record, we are not persuaded the Examiner erred.
Accordingly, we sustain the rejection of claim 9, and of claims 22 and
32, which recite commensurate language as discussed in section B. For the
same reasons, we also sustain the rejection of claims 21, 24-27, 29-31, and
34-37, which are not separately argued. See 37 C.F.R. § 41.37(c)(1)(vii)
(2004).
R2.
Regarding the rejection R2 of claims 23 and 33, Appellants contend
the additionally cited Christenson reference does not cure the deficiencies of
rejection R1. (Ans. 14). However, we find no deficiencies regarding
rejection R1 for the reasons discussed above. Accordingly, we sustain the
rejection R2 of claims 23 and 33.

Appeal 2011-008090
Application 10/906,513

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DECISION
We affirm the Examiner’s rejection R1 of claims 9, 21, 22, 24-27,
29-32, and 34-37 under § 103.
We affirm the Examiner’s rejection R2 of claims 23 and 33 under
§ 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).

AFFIRMED

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