Ex Parte Wong

Patent Trial and Appeal Board

Dec 6, 2017

13892582 (P.T.A.B. Dec. 6, 2017)

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.
13/892,582 05/13/2013 John P. WONG 1032885-000002 3815
21839 7590 12/08/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
DWIVEDI, MAHESH H
ART UNIT PAPER NUMBER
2168
NOTIFICATION DATE DELIVERY MODE
12/08/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN P. WONG
(Applicant: Twin Peaks Software, Inc.)
Appeal 2017-007716
Application 13/892,5821
Technology Center 2100
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-21, which constitute all of the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies itself, Twin Peaks Software, Inc., as the real party in
interest. App. Br. 2.
Appeal 2017-007716
Application 13/892,582
THE INVENTION
The disclosed and claimed invention is directed to “a mirror file
system (MFS) which is a virtual file system that links two or more folders or
directors to form a mirroring pair.” Spec. ^ 1.
Claim 1, reproduced below with the disputed limitations italicized, is
illustrative of the claimed subject matter:
1. A virtual file system which provides mirroring and linking
of folders across multiple computers, comprising:
means for selecting a pair of an Active folder and a Passive
folder, the Passive folder being mounted on a different mount
point than the Active folder;
means for linking the selected Active folder and the
selected Passive folder to form a mirroring pair;
means for, after receiving a user request in an executing
application on a first computer to update at least one file in the
Active folder, updating on behalf of the executing application the
at least one file in the Active folder using a first application
programming interface on a first of the multiple computers; and
means for automatically replicating the update to the at
least one file in the Active folder of the formed mirroring pair to
a corresponding file in the Passive folder using a second
application programming interface on another one of the multiple
computers such that the update to the at least one file in the
Active folder is automatically made to the corresponding file in
the Passive folder mounted on the different mount point than the
Active folder.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Wong US 2001/0051955 A1 Dec. 13, 2001
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Pudipeddi et al.
Asano et al.
Shi et al.
US 2004/0111389 Al
US 2004/0225697 Al
US 2008/0046400 Al
June 10, 2004
Nov. 11,2004
Feb. 21,2008
Vision Solutions, Mirroring and replication capabilities (Mar. 20,
2012) (“Vision”)
Burgess, Synchronize Folders Between Computers and Drives with
SyncToy 2.1 (Dec. 14, 2009) (“Burgess”)
REJECTIONS
Claims 1-5 and 19-21 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Burgess, Vision, and Wong. Final Act. 3.
Claims 6-10 and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Burgess, Vision, Wong, and Asano. Final Act. 11.
Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Burgess, Vision, Wong, Asano, and Shi. Final Act. 18-19.
Claims 13-16 and 18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Burgess, Vision, Wong, Asano, and Pudipeddi. Final Act.
19.
Claim 17 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Burgess, Vision, Wong, Asano, Pudipeddi, and Shi. Final Act. 25-26.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are not persuaded by Appellant’s arguments regarding claims 1-21.
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Claims 1, 2, and 4—21
Appellant argues the Examiner erred in finding the combination of
Burgess, Vision, and Wong teaches “receiving a user request in an executing
application on a first computer to update at least one file in the Active folder,
updating on behalf of the executing application the at least one file in the
Active folder,” and “automatically replicating the update to the at least one
file in the Active folder of the formed mirroring pair to a corresponding file
in the Passive folder,” as recited in claim 1. App. Br. 7-9. More
specifically, Appellant argues Burgess’s synchronizing folders “in response
to a user’s manual input or a predefined schedule” and “scheduling the
synchronization task to run at a later time” does not teach updating files on
behalf of the executing application or automatically replicating the updates
as claimed. App. Br. 7-8.
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad, of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations and quotations
omitted). There is a presumption that a claim term carries its ordinary and
customary meaning. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). An applicant may rebut this presumption, however, by acting as
his own lexicographer, providing a definition of the term in the specification
with “reasonable clarity, deliberateness, and precision.” See In re Paulsen,
30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition,
limitations are not to be read from the specification into the claims. In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). “[Although the
specification often describes very specific embodiments of the invention, we
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have repeatedly warned against confining the claims to those
embodiments. . . . [CJlaims may embrace ‘different subject matter than is
illustrated in the specific embodiments in the specification.’” Phillips v.
AWHCorp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (enbanc) (citations
omitted).
Claim 1 does not recite timing elements with regard to the claimed
“automatically replicating.” Rather, the claim recites “after receiving a user
request in an executing application on a first computer to update at least one
file in the Active folder, updating on behalf of the executing application the
at least one file in the Active folder,” which requires performing the update
of the file after receiving the user request to update the file; and separately
the claim recites “automatically replicating the update to the at least one file
in the Active folder of the formed mirroring pair to a corresponding file in
the Passive folder . . . such that the update to the at least one file in the
Active folder is automatically made to the corresponding file in the Passive
folder,” which requires automatically replicating the update from the Active
folder to the Passive folder without any specific timing requirement.
Accordingly, applying the broadest reasonable construction, we agree with
the Examiner’s interpretation that the “limitations of independent claim 1 do
not preclude automatically replicating updates via an automated schedule
because independent claim 1 is not claiming an instantaneous/real-time
replication from the active folder to the passive folder.” Ans. 5. Because
Appellant’s arguments are not commensurate with the scope of the claims,
they are unpersuasive. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
We also agree with the Examiner’s findings that Burgess teaches
“updates/modifications to files on behalf of an application (i.e. See the
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example of MS Excel) to the left folder (i.e. the claimed active folder) are
automatically echoed to the right folder (i.e. the claimed passive folder).”
Ans. 4; see also Final Act. 4-5. As cited by the Examiner (Final Act. 4-5),
Burgess teaches the echo function where “new and updated files are copied
left to right” and “renames and deletes on the left are repeated on the right.”
Burgess 3. Burgess also provides examples of files with updates to be
echoed, including Excel files. Burgess 5. Burgess describes scheduling the
synchronization utility “to run automatically.” Burgess 6. In other words,
Burgess describes automatically echoing files from the left folder to the right
folder, and the echoing of files includes copying new and updated files such
as new and updated Excel files. Appellant has not persuasively argued why
Burgess’s updating Excel files to be echoed from the left folder does not
teach the claimed “updating on behalf of the executing application the at
least one file in the Active folder,” or why Burgess’s echoing (copying the
updated file) from the left folder to the right folder does not teach the
claimed “automatically replicating the update to the at least one file in the
Active folder of the formed mirroring pair to a corresponding file in the
Passive folder.”
Appellant further argues, for the first time in the Reply Brief, that
Burgess does not teach updating on behalf of an executing application
because Burgess merely performs the update “for any executable
application” instead of “an executing application” as claimed. Reply Br. 3.
Appellant’s contention in the Reply Brief is untimely. 37 C.F.R.
§ 41.41(b)(2) (2012) (“Any argument raised in the reply brief which was not
raised in the appeal brief. . . will not be considered by the Board for
purposes of the present appeal, unless good cause is shown.”). Here, no
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good cause having been shown, Appellant has waived such untimely
argument.
However, even if we consider Appellant’s argument regarding
Burgess’s updating executable applications, we are still not persuaded of
Examiner error. Appellant has not directed us to any further limiting
definition in Appellants’ Specification with regard to an “executing
application.” Furthermore, Appellant has not directed us to any section of
the Specification that provides any further limiting definitions or examples
of how a file is updated “on behalf of’ an application. Accordingly,
Appellant’s argument in the Reply Brief, that an executing application is “an
application that is concurrently executing in addition to the claimed subject
matter,” is not commensurate with the scope of claim 1. We agree with the
Examiner’s findings that Burgess teaches “updates/modifications to files on
behalf of an application (i.e. See the example of MS Excel) to the left folder
(i.e. the claimed active folder).” Ans. 4 (citing Burgess 3, 5, 6); see also
Final Act. 4-5 (citing Burgess 3, 5, 6).
Accordingly, we sustain the Examiner’s rejection of claim 1, along
with the rejections of commensurate claim 19, for which Appellant relies on
the same arguments as discussed above for claim 1 (App. Br. 9), along with
dependent claims 2, 4-18, 20, and 21, which are not argued separately (id. at
4).
Dependent claim 3
Appellant contends that Burgess’s teachings of copying “whole files
from left and right, even if they have only been updated and not newly
created?' does not teach or suggest “the received request to update the at
least one file in the Active folder includes a request to modify an existing file
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in the Active folder” and “automatically replicating the update modifies the
corresponding file,” as recited in claim 3. App. Br. 9-10.
Appellant’s argument is not commensurate with the scope of claim 3.
Claim 3 recites requesting to modify an existing file and replicating the
update modifying the corresponding file. Neither the claim language nor
any section of the Specification Appellant pointed us to supports replicating
only the modified portion of the file. We agree with the Examiner’s
interpretation that claim 3 only requires “receiving a request to modify a file
in an active folder, and replicating such a modification to a corresponding
file in the passive folder.” Ans. 8. In other words, the claimed modifying
and replicating modifications does not preclude copying a whole modified
file.
Specifically we agree with the Examiner’s finding that “updated files
(i.e. the claimed modification to an existing file) in the left folder (i.e. the
claimed Active folder) are replicated to the corresponding files in the right
folder (i.e. the claimed Passive folder).” Ans. 8 (citing Burgess 3).
Accordingly, we sustain the Examiner’s rejection of claim 3.
DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1-21.
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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). See 37
C.F.R. § 41.50(f).
AFFIRMED
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