Ex Parte Hogstrom et al

Patent Trial and Appeal Board

Apr 29, 2016

13346412 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/346,412 01109/2012
77242 7590 05/03/2016
IBM Raleigh S/W Group
c/o Patent Law of Virginia, PLLC
PO Box 9319
Richmond, VA 23227
FIRST NAMED INVENTOR
Matt R. Hagstrom
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
RSW920110113US1 (IBM 5083
28)
EXAMINER
GEBRIL, MOHAMED M
ART UNIT PAPER NUMBER
2135
NOTIFICATION DATE DELIVERY MODE
05/03/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
brian@patentlawva.com
brianjteague@gmail.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATT R. HOGSTROM, TIIA SALO,
NIKOLA VOUK, and MEETA YADA V
Appeal2015-001214
Application 13/346,412 1
Technology Center 2100
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 7-18. Claims 1---6 are cancelled. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is International Business
Machines Corp. App. Br. 2.
Appeal2015-001214
Application 13/346,412
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention relates to data sharing.
Spec. if 1.
Exemplary Claim
Claims 7 and 13, reproduced below, are representative of the subject
matter on appeal (emphases added to contested limitations):
7. A system for sharing data, the system comprising,
a computer processor, a computer memory operatively coupled
to the computer processor, the computer memory having
disposed within it computer program instructions configured
for:
receiving a write command to modify shared data;
determining an amount of shared content between (i) the
shared data and (ii) the shared data if the write command were
to be implemented;
comparing the determined amount of shared content to a
predefined threshold;
if the determined amount of shared content is above the
predefined threshold, creating and storing a delta that
describes a difference between (i) the shared data and (ii) the
shared data if the write command were to be implemented,
wherein the write command is not implemented such that the
shared data is not modified; and
if the determined amount of shared content is not above
the predefined threshold, creating a copy of the shared data,
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
May 19, 2014); Examiner's Answer ("Ans.," mailed Aug. 28, 2014); Final
Office Action ("Final Act.," mailed Mar. 14, 2014); and the original
Specification ("Spec.," filed Jan. 9, 2012). We note Appellants have not
filed a Reply Brief to rebut the Examiner's findings and legal conclusions.
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modifying the copy of the shared data as indicated by the write
command, and storing the modified copy of the shared data.
13. A computer program product for sharing data, the
computer program product comprising a non-transitory
computer readable storage medium having computer readable
program code embodied therewith, the computer readable
program code comprising:
computer readable program code for receiving a write
command to modify shared data;
computer readable program code for determining an
amount of shared content between (i) the shared data and (ii)
the shared data if the write command were to be implemented;
computer readable program code for comparing the
determined amount of shared content to a predefined threshold;
computer readable program code for, if the determined
amount of shared content is above the predefined threshold,
creating and storing a delta that describes a difference between
(i) the shared data and (ii) the shared data if the write
command were to be implemented, wherein the write command
is not implemented such that the shared data is not modified;
and
computer readable program code for, if the determined
amount of shared content is not above the predefined threshold,
creating a copy of the shared data, modifying the copy of the
shared data as indicated by the write command, and storing the
modified copy of the shared data.
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Application 13/346,412
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Suzuki US 2008/0263299 Al Oct. 23, 2008
Gopal et al. ("Gopal") US 2010/0169401 Al July 1, 2010
Yang US 2010/0281208 Al Nov. 4, 2010
Bomtraeger et al. ("Bomtraeger") US 8,332,594 B2 Dec. 11, 2012
Vincent US 8,499,114 Bl July 30, 2013
Rejections on Appeal
RI. Claims 7-18 stand provisionally rejected under the judicially
created doctrine of obviousness-type double patenting (OTDP) as being
unpatentable over claims 1-6 of copending Application Ser. No. 13/860,650
(hereinafter "the '650 Application"). 3 Final Act. 8-9; Ans. 7.
R2. Claims 7, 8, 13 and 14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Bomtraeger, Suzuki, and
Vincent. Final Act. 9-15; Ans. 8-11.
R3. Claims 9-11 and 15-17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Bomtraeger, Suzuki, Vincent,
and Gopal. Final Act. 15-19; Ans. 11-14.
3 Regarding copending Application Ser. No. 13/860,650, a PTAB decision
on appeal (Appeal No. 2014-009646) was mailed on April 29, 2016
(Examiner Reversed).
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Application 13/346,412
R4. Claims 12 and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Bomtraeger, Suzuki, Vincent,
and Yang. Final Act. 19--24; Ans. 14--18.
CLAIM GROUPING
Based upon Appellants' arguments (App. Br. 7-12) and our claim
construction analysis, infra, we decide obviousness Rejection R2 of claims 7
and 8 on the basis of representative claim 7. We address obviousness
Rejection R2 of claims 13 and 14, infra.
Rejections RI, R3, and R4 of the remaining claims, not argued
separately, are addressed, infra.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs; and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
Except as otherwise noted herein, we incorporate herein and 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 and rebuttals set forth in
the Examiner's Answer in response to Appellants' arguments. We
incorporate such findings, reasons, and rebuttals herein by reference unless
otherwise noted. We highlight and address specific findings and arguments
regarding claims 7 and 13 for emphases as follows.
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Application 13/346,412
1. OTDP Rejection RI of Claims 7-18
Issue 1
Did the Examiner err in concluding claims 7-18 would have been
obvious under the doctrine of OTDP over claims 1-6 of the cited copending
'650 Application?
Analysis
We proforma sustain the provisional OTDP rejection of claims 7-18,
because Appellants present no arguments contesting the rejection. App.
Br. 7. See Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th
Ed., Mar. 2014) ("If a ground of rejection stated by the examiner is not
addressed in the appellant's brief, that ground of rejection will be summarily
sustained by the Board.") See also Hyatt v. Dudas, 551F.3d1307, 1314
(Fed. Cir. 2008) ("When the appellant fails to contest a ground of rejection
to the Board, section 1.192(c)(7) [(now section§ 41.37(c)(l)(iv)] imposes no
burden on the Board to consider the merits of that ground of rejection ...
[T]he Board may treat any argument with respect to that ground of rejection
as waived.").
2. § 103 Rejection R2 of Claims 7 and 8
Issue 2
Appellants argue (App. Br. 7-12) the Examiner's rejection R2 of
independent claim 7 under 35 U.S.C. § 103(a) as being obvious over the
combination of Bomtraeger, Suzuki, and Vincent is in error. These
contentions present us with the following issue:
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Did the Examiner err in finding the cited prior art combination teaches
or suggests a system that includes, inter alia, the conditional functional
limitation of "if the determined amount of shared content is above the
predefined threshold, creating and storing a delta that describes a difference
between (i) the shared data and (ii) the shared data if the write command
were to be implemented," as recited in claim 7?
Analysis
Regarding independent system claim 7, Appellants contend the
amount of shared content value:
[Is determined] before the write command is performed and
may result in the write command not being performed . . . .
While Bomtraeger may disclose determining shared content
(see Bomtraeger, Fig. 38, step 326), such a determination in
Bomtraeger occurs after a write command is implemented (see
Bomtraeger, Fig. 3A, step 308 or 310).
App. Br. 8.
Appellants further contend:
Further, there is no disclosure in Bomtraeger of handling
a write command differently depending on the amount of
shared content, as in Claims 7 and 13. Bomtraeger only
discloses handing a write command in different ways
depending on the reference count value (see Bomtraeger, col. 8,
lines 17-32; Fig. 3A, steps 306, 308, 310).
Yet further, Bomtraeger does not disclose comparing the
determined amount of shared content to a predefined threshold,
as recited in Claims 7 and 13. While Bomtraeger compares
change activity to a pre-defined threshold (Bomtraeger, col. 8,
lines 37-39), this change activity is not the same as the amount
of shared content.
App. Br. 9.
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We note claim 7 recites a processor and a memory containing
computer program instructions configured for conditionally carrying out
various functions. See claim 7.
\Vl1ile features of an apparatus rnay be recited either structurally or
functionally, claims directed to an apparatus rnust be distinguished from the
prior art in ten11s of structure rather than function. 4 Our reviewing court
guides that the patentability of an apparatus [system] claim "depends on the
claimed structure, not on the use or purpose of that structure." Catalina
Marketing Int'!, Inc. v. Coo/savings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002); see also Superior Industries v. Masab, Inc., 553 F. Appx. 986, 991
(Fed. Cir. 2014) (Rader, R., concurring) (" [A] system claim generally covers
what the system is, not what the system does."). Hewlett-Packard Co. v.
Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also
Roberts v. Ryer, 91 U.S. 150, 157 (187 5) ("The inventor of a machine is
entitled to the benefit of all the uses to which it can be put; no matter
whether he had conceived the idea of the use or not."). Thus, it is usually
improper to construe non-functional claim terms in system claims in a way
that makes infringement or validity tum on their function. Paragon
Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).
Accordingly, as a matter of claim construction, we find the recited
"determining," "comparing," "creating," "modifying," and "storing" step
limitations in system (apparatus) claim 7 merely recite function, and not
structure. On this record, we find no error with the Examiner's finding the
4 We note system claim 7, recited in terms of functions performed, does not
appear to be drafted in "means-plus-function" style, which would require
claim construction under pre-AIA 35 U.S.C. § 112, sixth paragraph.
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cited prior art combination teaches or at least suggests the claimed structure.
Therefore, we sustain Rejection RI of independent claim 7, and claim 8,
grouped therewith. See Claim Grouping, supra.
§ 103 Rejections R3 and R4 of Claims 9--12
As for Rejection R3 of dependent claims 9-11, and Rejection R4 of
dependent claim 12, all of which depend from independent claim 7, we note
Appellants did not separately or substantively argue any of these claims.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Therefore, we sustain these rejections.
3. § 103 Rejection R3 of Claims 13 and 14
Issue 3
Appellants argue (App. Br. 7-12) the Examiner's Rejection R3 of
independent claim 13 under 35 U.S.C. § 103(a) as being obvious over the
combination of Bomtraeger; Suzuki; and Vincent is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a computer program product comprising computer readable code
that includes "computer readable program code for, if the determined
amount of shared content is above the predefined threshold, creating and
storing a delta that describes a difference between (i) the shared data and
(ii) the shared data if the write command were to be implemented," as
recited in claim 13?
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Analysis
The Examiner finds Bomtraeger's number and/or frequency of
changes and change history of a given page teaches or suggests independent
claim 13's limitation "amount of shared content." Final Act. 11-12 (citing
Bomtraeger, col. 6, 11. 48-55). The Examiner then shifts his findings in the
Answer, providing new citations and concluding his stated interpretation
would be obvious to one of ordinary skill in the art. Ans. 18-19 (citing
Bomtraeger, col. 2, 11. 15-30, col. 4, 11. 1-30, col. 5, 11. 48---63, and col. 6,
11. 40---62).
We disagree with the Examiner, and are persuaded by Appellants'
arguments, because claim 13 recites "computer readable program code for, if
the determined amount of shared content is above the predefined threshold."
On this record, the Examiner has not persuaded us that the claimed "amount
of shared content" reads on Bomtraeger's data changes, because we find the
ordinary meaning of these terms are different and distinct from one another,
particularly in light of the Specification. App. Br. 8-9.
The Examiner further finds Suzuki discloses the disputed limitation
"if the determined amount of shared content is above the predefined
threshold, creating and storing a delta that describes a difference between (i)
the shared data and (ii) the shared data if the write command were to be
implemented," as recited in claim 13. Final Act. 13; Ans. 19. However, we
disagree because, on this record, the Examiner has not persuaded us that
Suzuki's data match table T5 teaches or suggests the claim term "delta."
Although Suzuki teaches or suggests the use of shared data, we find a
preponderance of the evidence supports Appellants' arguments cited above
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that Suzuki's data in the Original and Pool volumes, and data match different
table T5, do not teach or suggest determining if the "amount of shared
content is above a predefined threshold," as recited in claim 13. Although
Suzuki teaches shared memory, it does not teach or suggest comparing
shared content to a threshold and creating a delta representing the
"difference between (i) shared data and (ii) the shared data if the write
command were to be implemented," as recited in claim 13.
Therefore, based on Appellants' arguments, on this record, we are
persuaded the Examiner erred in finding the combined teachings and
suggestions of the cited prior art would have taught or suggested the
contested "determining," "comparing," and conditional limitations of
claim 13.
Because Appellants have persuaded us of at least one reversible error
in the Examiner's factual findings and ultimate legal conclusion of
obviousness, we cannot sustain the Examiner's obviousness rejection of
independent claim 13 for essentially the same reasons argued by Appellants,
such that we reverse the Examiner's rejection R2 of independent claim 13,
and associated dependent claim 14, which stands therewith.
Because the Examiner has not shown the additionally cited secondary
references overcome the aforementioned deficiencies regarding the base
combination of Bomtraeger, Suzuki, and Vincent, as relied on by the
Examiner in the rejection of claim 13, we also reverse§ 103 Rejections R3
and R4 of dependent claims 15-18 that depend directly or indirectly from
claim 13.
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CONCLUSION
The Examiner did not err with respect to the provisional OTDP
Rejection RI of claims 7-18, and we proforma sustain the rejection.
The Examiner did not err with respect to obviousness Rejections R2
through R4 of claims 7-12 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the§ 103 rejections of these claims.
The Examiner erred with respect to obviousness Rejections R2
through R4 of claims 13-18 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we reverse the § 103 rejections of these claims.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision. See 37
C.F.R. § 41.50(a)(l).
DECISION
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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