Ex Parte Savilampi et al

Patent Trial and Appeal BoardNov 13, 2012

11293887 (P.T.A.B. Nov. 13, 2012)

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. 11/293,887 12/02/2005 Erkki Savilampi 944-003.318 3207 10945 7590 11/13/2012 NOKIA CORPORATION c/o Ware, Fressola, Van Der Sluys & Adolphson LLP Building Five, Bradford Green 755 Main Street, PO Box 224 Monroe, CT 06468 EXAMINER HOTELLING, HAROLD A ART UNIT PAPER NUMBER 2164 MAIL DATE DELIVERY MODE 11/13/2012 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 ERKKI SAVILAMPI, JUKKA-PEKKA HYVARINEN, and KIM SIMELIUS Appeal 2010-002041 Application 11/293,887 Technology Center 2100 ____________ Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 4-7, 9-13, 15-18, 20, and 27-31. Claims 2, 3, 8, 14, 19, and 21-26 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2010-002041 Application 11/293,887 2 STATEMENT OF THE CASE Appellants describe the present invention as follows: A method for synchronizing an event in a first datastore and a second datastore. The method comprises the steps of selecting a first datastore comprising a plurality of events, selecting a second datastore, and providing a synchronization setting for an event in the plurality of events so as to indicate how synchronization between the first datastore and the second datastore is to be performed with respect to the event. Abstract. Claim 1 is illustrative, with a key disputed limitation emphasized: 1. A method, comprising: selecting a first datastore comprising a plurality of events; selecting a second datastore; selecting a synchronization setting for an event in the plurality of events so as to indicate how to synchronize the event in the first datastore with a corresponding event in the secondary datastore; and synchronizing the event with the corresponding event according to the selected synchronization setting, wherein the synchronization setting comprises one of the following: synchronizing the event with the corresponding event so that a later modified version replaces an earlier modified version in either the event or the corresponding event, synchronizing the event with the corresponding event so that an earlier modified version replaces a later Appeal 2010-002041 Application 11/293,887 3 modified version in either the event or the corresponding event, synchronizing the event with the corresponding event so that contents of the corresponding event is replaced by contents of the event, synchronizing the corresponding event with the event so that contents of the event is replaced by contents of the corresponding event, and appending the contents of the corresponding event to the contents of the event to form an appended event and replacing the contents of the event and the contents of the corresponding event with contents of the appended event. The Examiner relies on the following as evidence of unpatentability: Watanabe Hugh US 7,139,932 B2 US 7,076,736 B2 Nov. 21, 2006 (filed Mar. 11, 2003) Jul. 11, 2006 Kim US 2004/0179488 Al (filed Nov. 30, 2001) Sep. 16, 2004 THE REJECTIONS The Examiner rejected claims 1, 4-7, 9-13, 15-18, 20, 28, and 30 under 35 U.S.C. § 103 as unpatentable over Hugh and Watanabe. Ans. 3- 18.1 1 Throughout this opinion, we refer to the Appeal Brief filed April 17, 2009 (“App. Br.”); the Examiner’s Answer mailed July 23, 2009 (“Ans.”); and, the Reply Brief filed September 23, 2009 (“Reply Br.”). Appeal 2010-002041 Application 11/293,887 4 The Examiner rejected claims 27, 29, and 31 under § 103 as unpatentable over Hugh, Watanabe, and Kim. Ans. 18-20. ISSUE Based upon our review of the record, the arguments proffered by Appellants, and the findings of the Examiner, we find the following issue to be dispositive of the claims on appeal: Does claim 1 require a “synchronization setting” that “synchroniz[es] the event with the corresponding event so that a later modified version replaces an earlier modified version in either the event or the corresponding event,” as recited? ANALYSIS Appellants acquiesce to all claims standing or falling with claim 1. App. Br. 8-9. Because Appellants have not shown a reversible error with respect to claim 1, the outstanding rejections are sustained. Claim 1 requires performance of four steps (three “selecting” steps and one “synchronizing” step) recited before a wherein clause. The third step requires “selecting a synchronization setting,” and the wherein clause thereafter requires the synchronization setting to comprise “one of” five features (four “synchronizing” features and one “appending” feature). Appellants dispute only whether the prior art discloses the second synchronization setting feature of “synchronizing the event with the corresponding event so that an earlier modified version replaces a later modified version in either the event or the corresponding event.” Appellants particularly argue: Appeal 2010-002041 Application 11/293,887 5 The Office compared every feature of claim 1 with Hugh, except that on page 5, lines 15-19 of the Office Action, one of the synchronization settings, “synchronizing the event with the corresponding event so that an earlier modified version replaces a later modified version in either the event or the corresponding event,” was compared with Watanabe. App. Br. 5. Appellants further argue: Watanabe is cited by the Office as teaching such a “roll back” scheme. Applicant respectfully submits that the so-called “roll back” operation of Watanabe is distinctly different from the “roll back” setting of the present invention. App. Br. 6. Thus, as reflected above, Appellants argue only that Watanabe does not disclose the second synchronization setting feature of claim 1. Appellants’ argument cannot demonstrate a reversible error of the Examiner particularly because there is no dispute that the prior art teaches or suggests four of the five synchronization setting features recited by claim 1. Consequently, even if the prior art fails to teach or suggest the disputed second synchronization setting feature, the Examiner has nonetheless presented an undisputed teaching or suggestion for “one of” (and, in fact, four of) the synchronization setting features, as required. Assuming Appellants interpret the claimed invention as presenting all five synchronization setting features for selection (i.e., as requiring a capability to select from amongst the five features), we note claims before the Board are construed de novo, see In re Donaldson Co., Inc., 16 F.3d 1189, 1192 (Fed. Cir. 1994), and given a broadest reasonable interpretation consistent with the Specification, see In re American Academy of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). The present claim language conveys that the selected synchronization setting comprises “one Appeal 2010-002041 Application 11/293,887 6 of” the five recited synchronization setting features, not that all five features are available for selection, as implicitly contended by Appellants. Our claim interpretation is consistent with the Specification, which clarifies that only “one embodiment” of the invention presents each of the recited synchronization setting features for selection. Spec. p. 6, l. 17 – p. 7, l. 14. Appellants’ argument improperly seeks to read this optional embodiment into the claim. An optional embodiment cannot be read into a claim when, as here, the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (citation omitted). CONCLUSION Appellants have not shown a reversible error with respect to claim 1. Accordingly, we sustain the outstanding rejections of claims 1, 4-7, 9-13, 15-18, 20, 28, and 30 as obvious over Hugh and Watanabe2 and claims 27, 29, and 31 as obvious over Hugh, Watanabe, and Kim. ORDER The Examiner’s decision rejecting claims 1, 4-7, 9-13, 15-18, 20, and 27-31 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). 2 Claims 12, 13, 15, and 16 are directed to a “computer program product, comprising a computer readable storage structure storing computer program code thereon for execution by a processor in a device.” We leave it to the Examiner to reevaluate these claims in view of MPEP § 2106, which was revised after mailing of the Answer and provides new guidelines for assessing whether a computer readable medium satisfies 35 U.S.C. § 101. Appeal 2010-002041 Application 11/293,887 7 AFFIRMED peb