Ex Parte WongDownload PDFPatent Trial and Appeal BoardDec 6, 201713892582 (P.T.A.B. Dec. 6, 2017) Copy Citation 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 2 Appeal 2017-007716 Application 13/892,582 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. 3 Appeal 2017-007716 Application 13/892,582 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 4 Appeal 2017-007716 Application 13/892,582 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 5 Appeal 2017-007716 Application 13/892,582 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 6 Appeal 2017-007716 Application 13/892,582 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 7 Appeal 2017-007716 Application 13/892,582 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. 8 Appeal 2017-007716 Application 13/892,582 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 9 Copy with citationCopy as parenthetical citation