Ex Parte Lee

Patent Trial and Appeal BoardJun 16, 2016

12667340 (P.T.A.B. Jun. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/667,340 12/30/2009 23117 7590 06/20/2016 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR John C. Lee 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. RYM-36-2289 6640 EXAMINER GMAHL, NA VNEET K ART UNIT PAPER NUMBER 2166 NOTIFICATION DATE DELIVERY MODE 06/20/2016 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN C. LEE Appeal2014-009606 Application 12/667,340 Technology Center 2100 Before JEFFREYS. SMITH, JON M. JURGOV AN, and ADAM J. PYONIN, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-009606 Application 12/667,340 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from the rejection of claims 1-14, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. Representative Claim 1. A method for updating data maintained on a terminal to incorporate data that is generated whilst the terminal is out of communication with the source of the generated data, comprising: maintaining a master record of the generated data in a network-based server, generating a record of data that has been changed in the master record for which corresponding changes are required to the data stored on the terminal into conformity with the master record of the generated data, detecting when the terminal makes contact with the server, and transmitting the recorded changes to the terminal, wherein the record of data that has been changed is analysed for time- related content, and changed data having time-related content is prioritised for transmission, in a sequence in which changed data whose time-related content is most imminent in the future is transferred first. 2 Appeal2014-009606 Application 12/667,340 Glickstien Prior Art US 2008/0270547 Al Oct. 30, 2008 Beauchamp US 7,912,899 B2 Mar. 22, 2011 (filed Nov. 5, 2002) Bobo EP 1 109 121 A2 Dec. 06, 2000 Vanden Heuvel EP 1 808 802 Al Dec. 14, 2005 Examiner's Rejections Claims 1-14 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Glickstien and Beauchamp. 3 Appeal2014-009606 Application 12/667,340 ANALYSIS Independent claims 1 and 8 each recite "changed data whose time- related content is most imminent in the future is transferred first." Appellants contend G lickstien does not determine if an event is about to happen, and, therefore, does not teach "changed data whose time-related content is most imminent in the future is transferred first." Reply Br. 2-3. Appellants also contend the data in Beauchamp is data that happened in the past, not imminent in the future. Reply Br. 3--4. We agree with Appellants1 that neither Glickstien nor Beauchamp teach time-related content imminent in the future. An example of time- related content imminent in the future is disclosed on page 3, lines 7-10 of Appellants' Specification as a future meeting scheduled to occur on a calendar such as Microsoft Outlook. The data of Glickstien and Beauchamp are for messages received or events that occurred in the past, not for future meetings scheduled on a calendar. We do not sustain the rejection of claims 1 and 8, and corresponding dependent claims 2-7 and 9-14, under 35 U.S.C. Â§ 103. 1 However, we do not agree with Appellants that "changed data whose time- related content is most imminent in the future being transferred first" was unknown in the prior art. We highlight the European Patentability Report for the corresponding European Application, mailed May 23, 2014 (after the Final Rejection, which was mailed September 12, 2013), cites four prior art references D9-D12 that each teach this limitation, and finds this invention lacking inventive step over reference DI combined with any of D9-D12, as explained on pages 4 and 5. In the event of further prosecution, the Examiner should consider whether claims 1-14 are unpatentable over the combination of DI and any ofD9-D12 as explained in the European Patentability Report. Although the Board has discretion to enter a new ground of rejection for issues not before us (see 37 C.F.R. Â§ 41.50(b)), no inference should be drawn when we decline to exercise that discretion. 4 Appeal2014-009606 Application 12/667,340 DECISION The rejection of claims 1-14 is reversed. REVERSED 5