Ex Parte Hansmann et al

Board of Patent Appeals and Interferences

Nov 22, 2010

10037700 (B.P.A.I. Nov. 22, 2010)

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.
10/037,700 01/02/2002 Uwe Hansmann DE920000104US1/2289P 7582
7590 11/22/2010
SAWYER LAW GROUP
P.O. Box 51418
Palo Alto, CA 94303
EXAMINER
AL HASHEMI, SANA A
ART UNIT PAPER NUMBER
2156
MAIL DATE DELIVERY MODE
11/22/2010 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 UWE HANSMANN, LOTHAR MERK, and
THOMAS STOBER
____________

Appeal 2009-014351
Application 10/037,700
Technology Center 2100
____________

Before JAMES D. THOMAS, JOSEPH L. DIXON, and
MAHSHID D. SAADAT, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL 1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-014351
Application 10/037,700

2
I. STATEMENT OF THE CASE
The Patent Examiner rejected claims 21-29. Claims 1-20 and 30-43
are cancelled. The Appellants appeal therefrom under 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

A. INVENTION
Appellants state that the invention relates to “the sharing of data
between a plurality of databases. More specifically, the invention relates to
the synchronization of such data. Still more specifically, the invention
pertains to the synchronization of data between a server system and a mobile
client.” (Spec. 1).
The present invention discloses a method and system for
minimizing code needed in a client to synchronize data records
in the client with data records in a server system. The method
and system of the present invention includes creating setup
information in the client and providing the same to the server,
wherein the setup information enables the server system to
identify the client and to provide appropriate commands for the
client.

(Spec. 6).

B. ILLUSTRATIVE CLAIM
Claim 21, which further illustrates the invention, follows.
21. A client computer system for synchronizing data
records stored on the client computer system with data records
stored on a server system, the client computer system
comprising:
a database for storing the data records; and
Appeal 2009-014351
Application 10/037,700

3
a processor coupled to the database for creating setup
information to the server system, wherein the setup information
enables the server system to identify the client, to identify
where to find information the server system needs for
synchronization and to provide appropriate commands for the
client.

C. REFERENCES
The Examiner relies on the following references as evidence:

Bauer US 5,870,759 Feb. 9, 1999
Alam US 6,324,544 B1 Nov. 27, 2001

D. REJECTIONS
Claims 22, 24, and 26 (claims 27-29 due to their dependency on claim
26 as containing all the same “means” limitations), stand rejected under 35
U.S.C. § 112, second paragraph as failing to particularly point out and
distinctly claim the subject matter which appellants regard as their invention.
(Supp. Ans. 4 2).
Claims 21-24 and 26-29 stand rejected under 35 U.S.C. § 102 as being
anticipated by Bauer. (Supp. Ans. 5-7).
Claim 25 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over Bauer in view of Alam. (Supp. Ans. 7).

2 We refer to the Examiner’s Answer, mailed May 14, 2009 (“Supplemental
Answer.”).
Appeal 2009-014351
Application 10/037,700

4
II. ISSUES
Has the Examiner set forth a showing of indefiniteness with respect to
the claimed “means plus function” limitations? Specifically, have
Appellants responded to the Examiner’s rejection?
Has the Examiner set forth a sufficient showing of anticipation of
independent claim 21?
Has the Examiner set forth a reasoned conclusion of obviousness with
respect to claim 25?

III. PRINCIPLES OF LAW
35 U.S.C. § 112, SECOND PARAGRAPH
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
“whether those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
With use of the word “means,” a presumption of a means-plus-
function clause arises and we “must look to the specification and interpret
that language in light of the corresponding structure, material, or acts
described therein, and equivalents thereof, to the extent that the specification
provides such disclosure.” In re Donaldson Co., 16 F.3d 1189, 1193 (Fed.
Cir. 1994).
35 U.S.C. § 102
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
Appeal 2009-014351
Application 10/037,700

5
631 (Fed. Cir. 1987) (citations omitted). Analysis of whether a claim is
patentable over the prior art under 35 U.S.C. § 102 begins with a
determination of the scope of the claim. We determine the scope of the
claims in patent applications not solely on the basis of the claim language,
but upon giving claims their 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). The
properly interpreted claim must then be compared with the prior art.
Only those arguments actually made by the Appellants have been
considered in this decision. Arguments which the Appellants could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37 (c)(1)(vii) (2008).
Just as “[i]t is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for nonobvious
distinctions over the prior art,” In re Baxter Travenol Labs., 952 F.2d 388,
391 (Fed. Cir. 1991), “it is not the function of this Board to examine claims
in greater detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.” Ex parte Post, No. 2005-2042, 2006 WL
1665399 at *4 (BPAI. Jan. 1, 2006).
NEW ARGUMENTS
“[I]t is inappropriate for appellants to discuss in their reply brief
matters not raised in . . . the principal brief[]. Reply briefs are to be used to
reply to matter[s] raised in the brief of the appellee.” Kaufman Co. v.
Lantech, Inc., 807 F.2d 970, 973 n.* (Fed. Cir. 1986). “Considering an
argument advanced for the first time in a reply brief . . . is not only unfair to
an appellee but also entails the risk of an improvident or ill-advised opinion
Appeal 2009-014351
Application 10/037,700

6
on the legal issues tendered.” McBride v. Merrell Dow and Pharms., Inc.,
800 F.2d 1208, 1211 (D.C. Cir. 1986) (internal citations omitted). “The
failure to raise all issues and arguments diligently, in a timely fashion, has
consequences.” Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010)
(informative decision).

V. ANALYSIS
NOTICE
In the Order Remanding to the Examiner, mailed November 29, 2006,
(Order), the panel was specific in questioning both the rejections under 35
U.S.C. § 112, second paragraph, and under 35 U.S.C. § 103 as to
discrepancies therein. (Order 2-3). Therefore, we find that Appellants were
on notice to carefully check for changes in the Examiner’s rejections in any
subsequent actions. Appellants then had a fair opportunity to carefully
check the Supplemental Examiner’s Answer for the noted changes indicated
in the Order.
35 U.S.C. § 112, SECOND PARAGRAPH
We pro forma affirm the Examiner’s rejection under 35 U.S.C. § 112,
second paragraph, since Appellants have not responded to the modified
rejection under 35 U.S.C. § 112, second paragraph. The Examiner’s prior
rejection under 35 U.S.C. § 112, second paragraph, which Appellants had
addressed in the principal Brief is with respect to different issues.
Therefore, Appellants have not responded to this present ground of rejection.
35 U.S.C. § 102
We note that Appellants elected to group claims 21-24 and 26-29
together as a single group in the principal Brief (Reply Br. 6, 13), and
Appeal 2009-014351
Application 10/037,700

7
Appellants only provided separate arguments for patentability of dependent
claim 25 under 35 U.S.C. § 103 (id. at 13).
We find the Examiner has further clarified the statement of the
grounds of the rejection in the Supplemental Answer with respect to
“creating setup information” with further reliance upon the teachings of
Bauer at column 9. (Supp. Ans. 5). Since Appellants have not responded to
the Examiner’s Supplemental Answer, Appellants have not shown error in
the Examiner’s showing of anticipation, and we will affirm the Examiner’s
rejection of independent claim 21.
Since Appellants elected to group independent claim 26 with
independent claim 21 in the principal Brief, independent claim 26 and
dependent claims 27-29 fall with representative claim 21 (see 37 C.F.R.
§ 41.37 (c)(1)(vii) (2008)3). We note Appellants’ Reply Brief argues
different groupings than initially set forth in the principal Brief, but the
Examiner’s rejection and grouping of claims did not change from the final
rejection. Therefore, the further modification is inappropriate. We selected

3 “For each ground of rejection applying to two or more claims, the claims
may be argued separately or as a group. When multiple claims subject to the
same ground of rejection are argued as a group by appellant, the Board may
select a single claim from the group of claims that are argued together to
decide the appeal with respect to the group of claims as to the ground of
rejection on the basis of the selected claim alone. Notwithstanding any
other provision of this paragraph, the failure of appellant to separately
argue claims which appellant has grouped together shall constitute a
waiver of any argument that the Board must consider the patentability of
any grouped claim separately. Any claim argued separately should be
placed under a subheading identifying the claim by number. Claims argued
as a group should be placed under a subheading identifying the claims by
number.”
Appeal 2009-014351
Application 10/037,700

8
independent claim 21 as the representative claim and all claims except claim
25 fall with that claim.
We further requested in the Fifth item of the Order (Order 3) for the
Examiner to set forth a claim interpretation as to how the “‘setup
information’ limits the client system of independent claim 21,” but we find
no response to this item in the Supplemental Answer. We find that the
“creating setup information” does positively limit the claimed processor, but
the “wherein” is nonfunctional descriptive material which does not
positively limit the structure of the processor or client computer system. We
find that the information performs no function in the system and is similar to
an “intended use” limitation. The “wherein” clause further states that this
information can be used to find further information to achieve the feature in
the preamble of the claim related to “synchronization.” Yet, the claim never
positively states or achieves the preamble’s synchronization or
“synchronizing data records.” In response to Appellants' arguments that the
server node in Bauer creates and maintains the table and not the client node
(Reply Br. 7), the Examiner at pages 8-9 of the Supplemental Answer
discusses the interaction of the client and server with the user to create the
table. We find that the Examiner’s discussion shows that the client
participates and thereby “creates” the setup information. The claim
language does not further limit the “creating . . . .”
We sustain the rejection as set forth by the Examiner over the Bauer
reference which anticipates the claimed invention.

Appeal 2009-014351
Application 10/037,700

9
35 U.S.C. § 103
With respect to dependent claim 25, Appellants rely upon the
arguments presented above relating to claim 21. Appellants merely repeat
the language of claims 21 and maintain that the Alam reference does not
remedy the noted deficiency, but does not address the Examiner’s rejection.
Therefore, Appellants’ argument is essentially the same as that set forth for
anticipation. Since we did not find that argument persuasive, we similarly
do not find that same argument persuasive with respect to claim 25.

VI. CONCLUSION
For the aforementioned reasons, Appellants have not shown error in
the Examiner’s showing of indefiniteness of independent claim 26 and
dependent claims 22, 24, and 27-29; Appellants have not shown error in the
Examiner’s showing of anticipation of independent claim 21; and Appellants
have not shown error in the Examiner’s showing of obviousness of
dependent claim 25.

VII. ORDER
We affirm the indefiniteness rejection of claims 22, 24, and 26-29.
We affirm the anticipation rejection of claims 21-24 and 26-29 and the
obviousness rejections of claim 25.

AFFIRMED

Appeal 2009-014351
Application 10/037,700

10

llw

SAWYER LAW GROUP
P.O. Box 51418
Palo Alto, CA 94303