Ex Parte Alperin

Board of Patent Appeals and Interferences

Feb 9, 2012

11399584 (B.P.A.I. Feb. 9, 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.
11/399,584 04/05/2006 Jordan Alperin 020366-099400US 9771
83809 7590 02/09/2012
Qwest Communications International Inc.
1801 California Street, # 900
Denver, CO 80202
EXAMINER
PADMANABHAN, KAVITA
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/09/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JORDAN ALPERIN

Appeal 2010-0001441
Application 11/399,584
Technology Center 2100
____________________

Before JEAN R. HOMERE, JAMES R. HUGHES, and
DEBRA K. STEPHENS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Qwest Communications International, Inc.
(App. Br. 3.)
Appeal 2010-000144
Application 11/399,584

2
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1- 20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part, and enter a new ground of rejection.
Appellant’s Invention
Appellant invented a method for synchronizing data between a
portable device and a data repository device. In particular, after comparing
data between the two devices, the device with the more recent version of the
data transfers its recent version to the other device with the less recent
version. (Spec. ¶¶ [0024].)
Illustrative Claims
Independent claims 1and 17 further illustrate the invention. They read
as follows:
1. A method for synchronizing an end device comprising:

storing data on an end device, wherein the data is
comprised of multimedia data and non-multimedia data;

connecting the end device with a data repository;

comparing at least a portion of the data on the end device
with at least a portion of the data on the data repository to
determine if at least a portion of the data is more recent on the
end device or the data repository; and

providing at least a portion of the data from the end
device to the data repository, or from the data repository to the
end device, based at least in part upon the comparison of
the data.
Appeal 2010-000144
Application 11/399,584

3
17. A method for synchronizing at least two end devices
comprising:
connecting a first end device with a data repository;

connecting a second end device with the data repository;

storing data on the first end device, wherein the data is
comprised of multimedia data and non-multimedia data;

providing at least a portion of the data from the first end
device to the data repository;

storing on the data repository at least a portion of the data
provided from the first end device;

providing at least a portion of the data from the data
repository to the second end device; and

storing on the second end device at least a portion of the
data provided from the data repository.

Prior Art Relied Upon
Gao US Patent Pub. No.: 2004/0075698 AI Apr. 22, 2004

Rejection on Appeal
The Examiner rejects claims 1-20 under 35 U.S.C. 102(b) as being
anticipated over Gao.
Appellant’s Contentions
Appellant argues that Gao does not anticipate claim 1 because it does
not describe comparing data on an end device with data on a repository
Appeal 2010-000144
Application 11/399,584

4
device to determine which data is more recent, and the device with the more
recent data providing the more recent data to the other device. In particular,
Appellant argues that while Gao discloses downloading data to update or
overwrite existing playlists, such operations are not necessarily performed as
a result of a comparison of the data between the devices to determine which
data is more recent. Rather, they are performed periodically, thereby
obviating the need to compare the data to determine which version is more
recent. Consequently, Gao’s overwriting of the data is not based upon the
comparison as recited in the claim. (App. Br. 6-14.)
Examiner’s Findings and Conclusions
In response, the Examiner finds that because Gao discloses
periodically downloading updated playlists to overwrite older versions of the
playlist, Gao must necessarily perform a comparison of the playlists before
performing the overwrite operation. (Ans. 10.)
Therefore, the pivotal issue before us is as follows:

II. ISSUE
Has Appellant shown that the Examiner erred in finding that
Gao’s disclosure describes comparing data on an end device with data on a
repository device to determine which data is more recent, and the device
with the more recent data providing the more recent data to the other device,
as recited in independent claim 1?

Appeal 2010-000144
Application 11/399,584

5
III. ANALYSIS
Claims 1-13
We do not find error in the Examiner’s rejection of independent claim
1, which recites, inter alia, comparing data on an end device with data on a
repository device to determine which data is more recent, and the device
with the more recent data providing the more recent data to the other device.
Gao discloses “[t]he synchronization manager receives the
periodically updated playlists [from a computer] and overwrites older
versions of the playlist.” (Gao, ¶ [0135] (emphasis added).) We find the
cited disclosure of Gao implies that the existing playlist versions on the
portable device must be older than the updated versions downloaded from
the computer before the synchronization manager can overwrite them. We
agree with the Examiner that the synchronization manager must necessarily
compare the updated playlist versions downloaded from the computer with
all playlist versions on the portable device to identify thereon only those
versions that are older than the downloaded ones to thereby overwrite the
identified older versions (Ans. 10-11). Therefore, Gao describes that upon
determining that certain playlist versions on the portable device are older
than updated playlist versions downloaded from the computer, the
synchronization manager replaces the older versions with the updated ones.
Consequently, we find Gao’s disclosure that the synchronization manager
provides the updated playlist data to the portable computer based upon a
version comparison indicating that updated playlists versions of the
computer are more recent those of the portable computer describes the
Appeal 2010-000144
Application 11/399,584

6
disputed limitations. It follows that Appellant has not shown the Examiner
erred in rejecting claim 1 as being anticipated by Gao.
Because Appellant argues claims 1-13 as a single group, claims 2-13,
fall together with claim 1 for the same reasons set forth above. See 37
C.F.R. § 41.37(c)(1)(vii).
Claims 14-16
Regarding the rejection of claims 14-16, Appellant reiterates in great
substance similar arguments as those previously submitted for patentability
of claims 1. (App. Br. 14.) As discussed above, we find those arguments
unavailing.
Further, Appellant argues that Gao does not describe connecting the
end device with at least two data repositories such that at least a portion of
the data on the end device can be compared with at least a portion of data on
the at least two data repositories. (Id. at 14-16.) Appellant’s argument is not
persuasive. In particular, we find that Gao’s disclosure of the portable device
(100) being connected to a plurality of data repositories (158-164) in the
computer (140) whereby at least some data media storage (108) in the
portable device is compared with at least data in the media storage (158) in
the computer (140) describes the disputed limitations. It follows that
Appellant has not shown that the Examiner erred in rejecting claims 14-16
as being anticipated by Gao.
Claims 17-20
We find error in the Examiner’s rejection of independent claim 17,
which recites, inter alia, two end devices, each being connected to a data
Appeal 2010-000144
Application 11/399,584

7
repository in order to allow data in the repository to be compared with data
in the end devices. As per our discussion above, Gao’s disclosure describes
a single end device that is connected to a plurality of data repositories in a
computer to thereby allow the end device to compare its data with data in at
least one of the repositories. We do not agree with the Examiner’s finding
that the computer can be considered as an end device that exchanges data
with itself. (Ans. 14.) Gao simply does not disclose a second end device that
connects to the data repository. Therefore, we cannot sustain the Examiner’s
rejection.
IV. NEW GROUND OF REJECTION
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
35 U.S.C. § 103(a) Rejection
We find that connecting a second end device to the repository to be
synchronized therewith similarly to the first end device would only require
routine skill in the art. Connecting the second end device requires no
interaction with the connection of the first end device. Indeed, it is
performing the same functions with a second end device as it had with the
first end device. It has been held that “if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”. KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007.) Thus, we find that Gao’s
Appeal 2010-000144
Application 11/399,584

8
disclosure teaches or fairly suggests the disputed limitations recited in
independent claim 17.
V. OTHER ISSUES
The Board of Patent Appeals and Interferences is a review body rather
than a place of initial examination. We have made the rejection regarding
independent claim 17 under 37 C.F.R. § 41.50(b). However, we have not
reviewed the remaining claims 18-20 to the extent necessary to determine
whether these claims are unpatentable over Gao and/or other prior art. We
leave it to the Examiner to determine the appropriateness of any further
rejections based on these or other references. Our decision not to enter a
new ground of rejection for all claims should not be considered as an
indication regarding the appropriateness of further rejection or allowance of
the non-rejected claims.
VI. DECISION
1. We affirm the Examiner’s rejection of claims 1-16.
2. We reverse the rejection of claims 17-20.
3. We reject claim 17 as being unpatentable under 35 U.S.C.
§ 103(a) over Gao.
This decision contains a new ground of rejection pursuant to 37 CFR
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
Appeal 2010-000144
Application 11/399,584

9
rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to
the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record. . . .

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).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

Vsh