Ex Parte Savilampi et al

Patent Trial and Appeal Board

Nov 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

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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
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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

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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:
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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
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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.
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AFFIRMED

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