Ex Parte Zondervan et al

Patent Trial and Appeal Board

Jun 19, 2013

11612317 (P.T.A.B. Jun. 19, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/612,317 12/18/2006 Quinton Y. Zondervan CAM920060074US1 (149) 5931
46321 7590 06/19/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
ADAMS, CHARLES D
ART UNIT PAPER NUMBER
2164
MAIL DATE DELIVERY MODE
06/19/2013 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex parte QUINTON Y. ZONDERVAN, REVATHI
SUBRAMANIAN, CHUANG CHUN LIU, FENIL SHAH,
MARIA M. CORBETT, SESHA S. BARATHAM, and
STEPHEN T. AURIEMMA
________________

Appeal 2010-011039
Application 11/612,317
Technology Center 2100
________________

Before DENISE M. POTHIER, JEREMY J. CURCURI, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-23. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
Claims 14-23 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. Ans. 3-4.
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Claims 1-4 and 14-17 are rejected under 35 U.S.C. § 103(a) as
obvious over Ingraham (US 7,024,430 B1; issued Apr. 4, 2006) and Smith
(US 6,477,703 B1; issued Nov. 5, 2002). Ans. 4-6.
Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as obvious
over Ingraham and Carmel (US 2007/0271317 A1; published Nov. 22,
2007). Ans. 6-8.
Claims 6-9 and 19-22 are rejected under 35 U.S.C. § 103(a) as
obvious over Ingraham, Smith, and Carmel. Ans. 8-11.
Claims 5 and 18 are rejected under 35 U.S.C. § 103(a) as obvious over
Ingraham, Smith, and Kidd (US 2004/0139468 A1; published July 15,
2004). Ans. 11-12.
Claims 10 and 23 are rejected under 35 U.S.C. § 103(a) as obvious
over Ingraham, Smith, Carmel, and Kidd. Ans. 12-13.
Claim 13 is rejected under 35 U.S.C. § 103(a) as obvious over
Ingraham, Carmel, and Kidd. Ans. 13.
We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to “the field of data synchronization and
more particularly to the data store synchronization optimization.” Spec. ¶1.
Claim 1 is illustrative and reproduced below:
1. A data synchronization method comprising:
assembling a group of initial updates for synchronization;
consulting a synchronization log of updates excluded from past
synchronizations to determine updates already applied during past
synchronizations;
removing updates already applied during past synchronizations from a
filtered set of updates; and,
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synchronizing the filtered set of updates.

PRINCIPLES OF LAW
Two separate tests developed by our reviewing court for determining
whether a prior art reference is analogous are: (1) whether the art is from the
same field of endeavor, regardless of the problem addressed; and (2) if the
reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
(analogous art based on same field of endeavor test); In re ICON Health and
Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (analogous art based
on similarities in problems addressed test).
Discussing the question of obviousness of claimed subject matter
involving a combination of known elements, KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398 (2007), explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. Ag
Pro, Inc., 425 U.S. 273 (1976)] and Anderson’s-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 550 U.S. at 417.
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If the claimed subject matter cannot be fairly characterized as
involving the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement, a holding of obviousness can be based on a showing that
“there was an apparent reason to combine the known elements in the fashion
claimed.” Id. at 418. Such a showing requires
“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” . . . [H]owever,
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. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
THE 35 U.S.C. § 101 REJECTION OF CLAIMS 14-23
We agree with the Examiner’s position, with regard to claims 14-23,
that claims 14-23 are directed to non-statutory subject matter. Ans. 3-4
(citing Spec. ¶26).
Appellants argue the recited computer-readable medium is a machine
under 35 U.S.C. § 101. App. Br. 7.
In response, the Examiner explains the medium, as defined by the
Specification, can be a signal, and the claims remain rejected under 35
U.S.C. § 101. Ans. 15. We agree with the Examiner.
In the Reply Brief, Appellants argue “[t]o the extent, the ‘computer
usable medium’ of claim 14 is a ‘propagation medium’, so long as the
‘computer program product’ is present as is the case in claim 14, claims 14
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through 23 comport with In re Nuijten and are statutory in the eyes of the
Federal Circuit.” Reply Br. 3.
Appellants’ Specification (¶26 (emphases added)) states,
[f]or the purposes of this description, a computer-usable or
computer readable medium can be any apparatus that can
contain, store, communicate, propagate, or transport the
program for use by or in connection with the instruction
execution system, apparatus, or device. The medium can be an
electronic, magnetic, optical, electromagnetic, infrared, or
semiconductor system (or apparatus or device) or a
propagation medium.
A broad, but reasonable, construction of “computer-usable medium”
includes transient electromagnetic signals or propagation media, which are
signals per se. Where, as here, the broadest reasonable interpretation of the
claims in light of the disclosure covers a signal per se, the claims must be
rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. See
In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory
embodiments are not directed to statutory subject matter).
We, therefore, sustain the Examiner’s rejection of claims 14-23.

THE OBVIOUSNESS REJECTION OF CLAIMS 1-4 AND 14-17 OVER INGRAHAM
AND SMITH
We agree with the Examiner’s position, with regard to independent
claim 1, that Ingraham and Smith collectively teach all claim limitations.
Ans. 4-5. The Examiner reasons (Ans. 5) it would have been obvious to one
of ordinary skill in the art at the time of the invention to modify Ingraham by
the teachings of Smith, because Smith (col. 1, ll. 53-58) teaches “a patching
tool that solves the problem of irrelevant patches, employs extensive
knowledge, and is a true product-based patching tool by having the tool’s
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user select from a list of products which are backed by sets of patches that
have been researched for relevance to the product being patched.” The
Examiner further reasons Smith would provide Ingraham the benefit of
avoiding irrelevant and redundant updates, and giving users a tool that
allows them to select from a list of updates. Ans. 5.
Notable arguments by Appellants include the following:
(i) “Smith . . . does not pertain to updates to data records . . . but to
software patching.” App. Br. 11.
(ii) “Smith provides no such teaching beyond the patching of
software which is an application--not data.” App. Br. 12.
(iii) Smith does not teach that a patch is an update to data. App.
Br. 12-13.
(iv) “‘[S]oftware patching’ applies changes to a program object in
order to change a computer program, while synchronizing data updates as
claimed by Appellants is the harmonization of like data in two different
repositories.” Reply Br. 3-4.
(v) “Ingraham pertains to updating tabular data and Smith pertains
to patching a computer program--totally different concepts--apples and
stainless steel.” Reply Br. 5.
(vi) The “Examiner has failed to provide any articulated reasoning
and certainly no rational underpinning to support [the] Examiner’s
conclusion of obviousness.” App. Br. 13.
In response, the Examiner explains “both Ingraham et al. and Smith et
al. are directed towards technologies that ensure updates to data are
delivered.” Ans. 17; see also Ans. 18 (“[I]t is noted that both Ingraham et al.
and Smith et al. are directed towards technologies that determine how to
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synchronize data between systems.”). The Examiner further explains “the
references are combined for the ways in which they synchronize data, not
the type of data being synchronized.” Ans. 17. We agree with the
Examiner.
The Examiner explains “modification to an application that is
different from a previous version of the program is an ‘update’ of the
application.” Ans. 16. We agree with the Examiner.
The Examiner explains “[a]n application is a software program
composed of instructions to a computer. By the standard definitions that are
used in the art, applications are clearly data.” Ans. 19. See also Ans. 20 (“It
is clear that one of ordinary skill in the art would recognize that a patch is an
update to data.”). We agree with the Examiner.
Appellants’ arguments (App. Br. 8-13; Reply Br. 1-5) raise the
following issues:
(1) Is Smith analogous prior art?
(2) Is the Examiner’s reason to combine the teachings of Ingraham
and Smith supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?
Appellants’ invention relates to “the field of data synchronization and
more particularly to the data store synchronization optimization.” Spec. ¶1.
Smith relates to “selecting software patches on a computer operating
system.” Smith, col. 1, ll. 7-8. Appellants’ invention and Smith both are
directed to the same field of endeavor—delivering data updates. Compare
Appellants’ claim 1 (reciting “assembling a group of initial updates for
synchronization”; and “synchronizing the filtered set of updates”)with
Smith, col. 2, ll. 3-4 (reciting “identifying software patches for installation
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on a computer system”). Because Appellants’ invention and Smith are
directed to the same field of endeavor, delivering data updates, Smith is
analogous art. See Bigio, 381 F.3d at 1325.
Further, we see no reason why Ingraham’s data synchronization
system would not benefit from a technique for determining updates already
applied during past synchronizations and removing them from the set of
updates to be synchronized, such as taught by Smith’s software patch
selection tool. See Smith, Abstract. Smith’s technique is readily applicable to
Ingraham because Ingraham is directed to a data synchronization system,
and Smith would provide Ingraham the benefits of avoiding irrelevant or
redundant updates.
In short, modifying Ingraham to determine updates already applied
during past synchronizations and remove them from the set of updates to be
synchronized, in light Ingraham’s and Smith’s collective teachings, is a
predictable use of prior art elements according to their established
functions—an obvious improvement. See KSR, at 417.
Regarding Appellants’ argument (i) that Smith does not pertain to
updates to data records, argument (ii) that Smith provides no such teaching
beyond the patching of software, argument (iii) that Smith does not teach
that a patch is an update to data, argument (iv) that software patching is
different than synchronizing data updates, and argument (v) that Ingraham
pertains to updating tabular data and Smith pertains to patching a computer
program, we find all of these arguments unpersuasive.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
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references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Here, the combined teachings of Ingraham and Smith would have
suggested the addition to Ingraham of Smith’s determining updates already
applied during past synchronizations and removing them from the set of
updates to be synchronized for the above-discussed reasons.
Finally, regarding Appellants’ argument (vi) that the Examiner has
failed to provide any articulated reasoning, we find this argument
unavailing. Weighing Appellants’ arguments against the Examiner’s
findings, we find that Ingraham and Smith collectively teach the limitations
of claim 1, and the Examiner’s reason to combine these teachings is
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion.
We, therefore, sustain the Examiner’s rejection of claim 1, and of
claims 2-4 and 14-17, which are not argued separately with particularity.

THE OBVIOUSNESS REJECTION OF CLAIMS 11 AND 12 OVER INGRAHAM AND
CARMEL
We agree with the Examiner’s position, with regard to claims 11 and
12, that Ingraham and Carmel collectively teach all claim limitations.
Ans. 6-8.
Appellants argue claims 11 and 12 are patentable for similar reasons
as argued for claim 1. App. Br. 13.
Weighing Appellants’ arguments against the Examiner’s findings, and
in light of our findings and conclusions above regarding claim 1, we
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conclude Appellants have not shown error in the Examiner’s rejection of
claims 11 and 12.

THE OBVIOUSNESS REJECTION OF CLAIMS 6-9 AND 19-22 OVER INGRAHAM,
SMITH, AND CARMEL
We agree with the Examiner’s position, with regard to claims 6-9 and
19-22, that Ingraham, Smith, and Carmel collectively teach all claim
limitations. Ans. 8-11.
Appellants argue claims 6-9 and 19-22 are patentable for similar
reasons as argued for claims 1 and 14. App. Br. 14.
Weighing Appellants’ arguments against the Examiner’s findings, and
in light of our findings and conclusions above regarding claims 1 and 14, we
conclude Appellants have not shown error in the Examiner’s rejection of
claims 6-9 and 19-22.

THE OBVIOUSNESS REJECTION OF CLAIMS 5 AND 18 OVER INGRAHAM, SMITH,
AND KIDD
We agree with the Examiner’s position, with regard to claims 5 and
18, that Ingraham, Smith, and Kidd collectively teach all claim limitations.
Ans. 11-12.
Appellants argue claims 5 and 18 are patentable for similar reasons as
argued for claims 1 and 14. App. Br. 14.
Weighing Appellants’ arguments against the Examiner’s findings, and
in light of our findings and conclusions above regarding claims 1 and 14, we
conclude Appellants have not shown error in the Examiner’s rejection of
claims 5 and 18.
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THE OBVIOUSNESS REJECTION OF CLAIMS 10 AND 23 OVER INGRAHAM,
SMITH, CARMEL, AND KIDD
We agree with the Examiner’s position, with regard to claims 10 and
23, that Ingraham, Smith, Carmel, and Kidd collectively teach all claim
limitations. Ans. 12-13.
Appellants argue claims 10 and 23 are patentable for similar reasons
as argued for claims 1 and 14. App. Br. 14.
Weighing Appellants’ arguments against the Examiner’s findings, and
in light of our findings and conclusions above regarding claims 1 and 14, we
conclude Appellants have not shown error in the Examiner’s rejection of
claims 10 and 23.

THE OBVIOUSNESS REJECTION OF CLAIM 13 OVER INGRAHAM, CARMEL, AND
KIDD
We agree with the Examiner’s position, with regard to claim 13, that
Ingraham, Carmel, and Kidd collectively teach all claim limitations.
Ans. 13.
Appellants argue claim 13 is patentable for similar reasons as argued
for claims 1 and 11. App. Br. 15.
Weighing Appellants’ arguments against the Examiner’s findings, and
in light of our findings and conclusions above regarding claim 11, we
conclude Appellants have not shown error in the Examiner’s rejection of
claim 13.

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ORDER
The Examiner’s decision rejecting claims 1-23 is affirmed.
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).

AFFIRMED

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