Ex Parte Chopra et al

Board of Patent Appeals and Interferences

Jun 5, 2009

10867496 (B.P.A.I. Jun. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GAGAN CHOPRA, AHMAD M. EL HUSSEINI,
ARIF KURESHY, JAYADEV PILLAI, MISHA H. ST. LORANT,
DMITRY V. ZHIYANOV, and DEAN M. WIERMAN
____________________

Appeal 2008-005218
Application 10/867,4961
Technology Center 2100
____________________

Decided2: June 5, 2009
____________________

Before HOWARD B. BLANKENSHIP, JAY P. LUCAS, and
THU A. DANG, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Per the record, application filed June 14, 2004. Application is a
continuation-in-part of 10/760,099, filed on January 16, 2004. Appellants
claim the benefit under 35 U.S.C. § 119 of provisional application
60/555,248, filed March 22, 2004. The real party in interest is Microsoft
Corp.

2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail date (paper delivery) or Notification Date (electronic Delivery).
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STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 31 under
authority of 35 U.S.C. § 134. The Board of Patent Appeals and Interferences
(BPAI) has jurisdiction under 35 U.S.C. § 6(b).
Appellants’ invention relates to a method and software application for
selectively downloading a portion of a database to a mobile device that has
insufficient memory capacity to store the whole database. In the words of the
Appellants:
Unfortunately, limitations in the memory capacity of mobile
computing devices make it undesirable to perform full uploads of the
data contained in the central database.

(Spec. 1, ll. 26-29).

The present invention generally relates to a system and method
of providing subscription services for a software-implemented
business process or application that allows a user to easily filter the
data that is available in a central data storage system such that a subset
of the data can be loaded to a mobile computing device during a
synching operation.

(Spec. 3, l. 24 to 4, l. 1).

Claim 1 is exemplary:
1. A method of customizing a software-implemented business
process on a mobile computing device comprising steps of:
a) defining subscriptions to identify a plurality of business
solutions entities, wherein each entity is related to customer
relationships management, is defined by metadata and
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includes one or more fields, each field having corresponding
data; and
b) uploading, to the mobile computing device, the entities that
are identified by the subscriptions including their
corresponding data.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sadeghi 2002/0194305 A1 Dec. 19, 2002
Rajan 2004/0078464 A1 Apr. 22, 2004
Von Kaenel 2004/0117358 A1 Jun. 17, 2004

REJECTIONS
The Examiner rejects the claims as follows:
R1: Claims 1 to 3, 6 to 17, and 20 to 31 stand rejected under 35
U.S.C. § 102(b) for being anticipated by Sadeghi.
R2: Claims 4, 5, 18, and 19 stand rejected under 35 U.S.C. § 103(a)
for being obvious over Sadeghi in view of Von Kaenel and Rajan.

Groups of Claims:
Claims will be discussed in the order of the arguments.
Appellants contend that the claimed subject matter is not anticipated
by Sadeghi; nor are claims 4, 5, 18, or 19 rendered obvious by Sadeghi in
combination with Von Kaenel and Rajan. The Examiner contends that each
of the claims is properly rejected.
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Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this opinion. Arguments which Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.

We affirm the rejections.
ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the respective claims under 35 U.S.C. § 102(e) or 35 U.S.C.
§ 103(a). The issue turns on whether Sadeghi teaches subscriptions
itemizing the data to be downloaded to a mobile device, and other
limitations as recited in the claims.
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a method of conveniently selecting data from a
large central storage database to be downloaded to a mobile computing
device, such as a personal digital assistant (PDA) or a mobile phone, or
to update the database from such small device. (Spec 1, l. 15, et seq.). In
accordance with the invention, a user selects a customized subscription
that itemizes a subset of data to be accessed by the user’s mobile device.
(Spec 19, l. 25). The subscription lists the entities (e.g. accounts,
contacts, activities, notes, addresses, etc.) that would be of interest to the
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user of that subscription, including Customer Relationship Management
data. (Spec. 13, l. 14). The subscription customizes the metadata to
define which data fields will be transferred during synchronization (sync
process). (Spec. 15, l. 6).
2. Sadeghi teaches providing various types of data, such as financial data or
scientific data, to users of a PDA or other handheld device. (¶ [0009]).
The user selects or defines a subscription that itemizes the information to
be received by the PDA, its sources, and how to manipulate the data
according to aggregation rules. (¶ [0012]). That data is sent to the PDA
of the user. (Id.). The business data can relate to a Customer Relationship
Management (CRM) application. (¶ [0055]). As only the selected data is
sent to the PDA, the memory of that device is not overwhelmed.
(¶ [0073]). The fields of data that are sent are defined by information
identifiers, a type of metadata (¶ [0092]).
3. Von Kaenel teaches downloading postal zip data in a subscription
database system. (Fig. 3 and ¶ [0414]).
PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
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“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
When “non functional descriptive material” is recorded or stored in a
memory or other medium (i.e., substrate) it is treated as analogous to printed
matter cases where what is printed on a substrate bears no functional
relationship to the substrate and is given no patentable weight. See In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (“Where the printed matter is
not functionally related to the substrate, the printed matter will not
distinguish the invention from the prior art in terms of patentability.
Although the printed matter must be considered, in that situation it may not
be entitled to patentable weight.”). See also Ex parte Curry, 84 USPQ2d
1272 (BPAI 2005) (informative) aff’d, No. 06-1003 (Fed. Cir. 2006) (Rule
36). The Examiner need not give patentable weight to descriptive material
absent a new and unobvious functional relationship between the descriptive
material and the substrate. See In re Lowry, 32 F.3d 1579, 1582 (Fed. Cir.
1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). See also Ex parte
Nehls, 88 USPQ2d 1883 (BPAI 2008) (precedential); Manual of Patent
Examining Procedure (MPEP) § 2106.01 (Eighth ed., Rev. 7, Jul. 2008).
“[A] court must ask whether the improvement is more than the
predictable use of prior art elements according to their established
functions.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
References within the statutory terms of 35 U.S.C. § 103 qualify as
prior art for an obviousness determination only when analogous to the
claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two
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separate tests define the scope of analogous prior art: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed and,
(2) if the reference is not within the field of the inventor's endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved. In re Deminski, 796 F.2d 436, 442 (Fed. Cir.
1986); see also In re Wood, 599 F.2d 1032, 1036 (CCPA 1979) and In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Furthermore, “‘there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness’ . . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418
(quoting In re Kahn, 441 F.3d at 988).
ANALYSIS
From our review of the administrative record, we find that Examiner
has presented a prima facie case for the rejections of Appellants’ claims
under 35 U.S.C. §§ 102 and 103. The prima facie case is presented on pages
3 to 24 of the Examiner’s Answer. In opposition, Appellants present a
number of arguments.
Arguments with respect to the rejection
of claims 1 to 3, 6 to 17, and 20 to 31
under 35 U.S.C. § 102(b) [R1]

Appellants contend that Examiner erred in rejecting 1 to 3, 6 to 17,
and 20 to 31 under 35 U.S.C. § 102(b) for failure of the Sadeghi reference to
teach the claimed elements. With regard to representative claim 1,
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Appellants argue that Sadeghi “does not disclose, either expressly or
inherently, ‘defining subscriptions to identify a plurality of business
solutions entities, wherein each entity is related to customer relationships
management,’ as provided in claim 1.” (App. Br. 9, bottom).
As Examiner has pointed out (Answer 24-27), Sadeghi teaches the use
of subscriptions to select the information from a large database to be
downloaded to a mobile device. (¶¶ [0015], [0052]). The subscription
information identifies the business solution entities, as described by the
Appellants, to be downloaded. (¶ [0055]). These solutions are related to
customer relationship management. (Id.). In view of the full disclosure of
this limitation, and the Examiner’s careful recitation of the location of the
teachings in Sadeghi, there is no support for the Appellants’ position, and
certainly the Appellants have not shown error in the Examiner’s rejection.
The Appellants further argue that Sadeghi does not teach the
“uploading to the mobile computing device, the entities that are identified by
the subscriptions including their corresponding data.” (App. Br. 12, top).
Appellants state that the stock information presented by Sadeghi is unrelated
to the claimed entities. (Id.) We find that Sadeghi clearly teaches the
uploading. (¶ [0073], FF2). We further find there is no definition in the
Specification of “business solution entities” that would preclude the stock
data, or the temperature data, or the business product data, from being
considered a business solution entity. (See Fig. 8, 9 and ¶ [0073]). We thus
find no support at all for Appellants’ contention that the Examiner has erred
in this rejection; indeed we find the rejection well supported.
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We further find that the meaning of the data element, in business
terms, is a non-functional recitation. See Ex parte Nehls, 88 USPQ2d 1883.
Appellants’ arguments that the data elements in Sadeghi relate to different
business elements or entities than those intended by the claims are not
legally distinguishing qualities, for the purposes of 35 U.S.C. § 102.
With regard to claims 2, 3, 6 to 17, and 20 to 31, we have carefully
reviewed each and every argument presented by the Appellants in their
Brief, in conjunction with the Examiner’s explanation of the rejection in the
Answer, pages 24 to 39. We hereby adopt the Examiner’s detailed
explanation of the rejection, and in affirming the Examiner’s position,
commend it.

Arguments with respect to the rejection
of claims 4, 5, 18, and 19
under 35 U.S.C. § 103(a) [R2]

Appellants’ recitation that neither “of the cited references disclose the
claimed business solutions entities having a postal/zip code field, as
provided in claims 4 and 18” is inexplicable in view of Von Kaenel’s front
page figure clearly disclosing a City, a State, and a Zip field, with
appropriate data. (App. Br. 21, middle; Von Kaenel, front page).
Appellants further argue that the motivation to combine references is
lacking. (App. Br. 21, middle). As selecting data from one database or
another is clearly analogous, by the teachings of In re Clay, 966 F.2d 656
and KSR, 550 U.S. 398, we find the Examiner’s combination of references
totally proper.
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The similar arguments of Appellants concerning claims 5 and 19 were
answered in a competent manner by the Examiner. (Answer 39, bottom).
In short, the Appellants have not achieved the standard for
demonstrating error in the Examiner’s rejection under 35 U.S.C. § 103.
CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 31 under 35 U.S.C. §§ 102
[R1] or 103 [R2].
DECISION
The Examiner's rejections R1 and R2 of claims 1 to 31 are 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).

AFFIRMED

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