Ex Parte McGowan et al

Board of Patent Appeals and Interferences

Apr 28, 2010

10632072 (B.P.A.I. Apr. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PATRICK G. McGOWAN,
CHRISTOPHER J. PAUL, and RICHARD REDPATH
_____________

Appeal 2009-006634
Application 10/632,072
Technology Center 2400
____________

Decided: April 29, 2010
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Before KENNETH W. HAIRSTON, CARLA M. KRIVAK,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 to 40. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appellants’ invention is concerned with a method, system, and
program product for preserving hand-held mobile device user settings by
comparing time values of software applications and reconciling files based
on that comparison (Spec. ¶¶ [0001], [0004], and [0023]; Abstract).
Appellants disclose and claim a system, method, and program product for
preserving user preferences including (i) “comparing time values” and
reconciling “based on the comparison” in order “to determine whether the
client properties have been changed by a user” (claims 1, 15, and 28), and
(ii) “reconciling” including retaining “changes made to the client properties
file by a user” (claims 8, 22, and 35).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method for preserving hand-held mobile device user settings,
comprising:
initiating an enterprise application on a mobile device, and reading a
client properties file from a device memory of the mobile device into an
application memory;
receiving an updated properties file from a server in the device
memory;
comparing time values of the updated properties file to time values of
the client properties file in the application memory to determine whether the
client properties have been changed by a user;
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reconciling, based on the comparison, the client properties file and the
updated properties file to yield a reconciled properties file; and
writing the reconciled properties file to the device memory.
The Examiner relies upon the following as evidence of
unpatentability:
Hesse US 5,950,010 Sep. 7, 1999
Lenz US 6,029,196 Feb. 22, 2000
Parkman US 2003/0046375 A1 Mar. 6, 2003

The following rejections are before us for review:
Claims 1 to 5, 7 to 13, 15 to 18, 20 to 26, 28 to 31, and 33 to 39 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Lenz in view of
Official notice.
Claims 6, 19, and 32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lenz and Parkman.
Claims 14, 27, and 40 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lenz and Hesse.
The Examiner relies upon Lenz as describing all of the recited
features of independent claims 1, 8, 15, 22, 28, and 35 of a system, method,
and program product, except for the device being a hand-held mobile device
(Ans. 3-5). The Examiner states that mobile and hand-held devices such as
phones, laptops, and PDAs were well known at the time of Appellants’
invention, and that it would have been obvious to modify the method and
system of Lenz with such a feature “to improve mobility and flexibility”
(Ans. 5). The Examiner (Ans. 4, 5) then relies upon Lenz as disclosing the
recited features of (i) “comparing time values” and reconciling “based on the
comparison” in order “to determine whether the client properties have been
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changed by a user” (claims 1, 15, and 28), and (ii) “reconciling” including
retaining “changes made to the client properties file by a user” (claims 8, 22,
and 35). The Examiner (Ans. 8, 9) also rejects (i) dependent claims 6, 19,
and 32, and (ii) dependent claims 14, 27, and 40, applying secondary
references to Parkman and Hesse, respectively, while still relying upon Lenz
for the same comparing and reconciling features discussed with respect to
independent claims 1, 8, 15, 22, 28, and 35.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In the
instant case, the Examiner has not sufficiently established that any of the
applied references to Lenz, Parkman, or Hesse discloses or suggests (i)
comparing time values and reconciling based on the comparison to
determine whether client properties have been changed by a user as set forth
in claims 1, 15, and 28, and/or (ii) reconciling including retaining changes
made to the client properties file by a user as set forth in claims 8, 22, and
35.
Although Lenz discloses (i) updating files based on a comparison of
file version numbers to guarantee the most current version of a software
application has been loaded (see col. 2, ll. 12-22; col. 4, l. 59 to col. 5, l. 10),
and (ii) storing user configurations and preferences on a central server (see
col. 5, ll. 10-16), Lenz does not describe comparing time values for the
purpose of reconciling a client properties file with the updated properties file
while retaining user changes to the client properties file.
The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
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Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Examiner merely asserted
that Lenz’s column 2, lines 12 to 22, teaches comparing time values of
updated properties files to those of client properties files because times are
associated with versions. The Examiner has not provided any factual basis
or articulated reasoning as to how and why Lenz’s suggestion to compare
file version numbers (col. 2, ll. 12-21) meets the limitation recited in (i)
claims 1, 15, and 28 of comparing time values of, and reconciling, the
updated properties files with the client properties file based on the
comparison for determining whether the client properties have been changed
by a user, or (ii) claims 8, 22, and 35 of reconciling the updated properties
file with the client properties file including retaining changes made to the
client properties file by a user. Indeed, Appellants’ contention (Br. 7-8) that
the version of a software application may be completely independent of the
time it was created (e.g., hot fixes where changes are made within a specific
version and the file has changed even though the version is the same) is
convincing.
Appellants are correct (Br. 7, 8) that Lenz discloses comparing file
version numbers and not time values (see col. 2, ll. 12-22). The Examiner
(Ans. 4, 11-12) has not shown that Lenz’s column 2, lines 12 to 22, discloses
or suggests comparing time values as claimed, and has not otherwise
convincingly rebutted Appellants’ arguments.
Appellants are also correct (Br. 8) that Lenz discloses making sure the
latest version of software has been pushed down from the server without
determining whether changes in client properties have been made by the user
(i.e., user preferences). Appellants’ contention (Br. 8, 9) that Lenz does not
retain changes to client properties, and instead overwrites them, is
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persuasive. As Lenz discloses, “[t]he client replaces the existing files with
the new files sent by the server” (col. 2, ll. 14-16). This is not the same as
Appellants’ reconciliation which involves overwriting updated properties
files from the server with a reconciled properties file (¶ [0033]), nor is it the
same as comparing time values for reconciling the client properties file with
the updated properties file to allow user settings to be preserved (¶ [0035]).
Accordingly, we find that Lenz does not “reconcile” in the manner claimed
and described by Appellants in the Specification (see ¶¶ [0033], [0035]).
Appellants have demonstrated that the Examiner erred in determining
that Lenz taken in combination with Official notice discloses or suggests (i)
comparing time values of, and reconciling, the updated properties file and
the client properties file based on the comparison for determining whether
the client properties have been changed by a user as set forth in claims 1, 15,
and 28, and (ii) reconciling the updated properties file with the client
properties file including retaining changes made to the client properties file
by a user as set forth in claims 8, 22, and 35. See Kahn, 441 F.3d at 985-86.
Accordingly, we will not sustain the Examiner’s rejection of
independent claims 1, 8, 15, 22, 28, and 35, or dependent claims 2 to 5, 7 to
13, 16 to 18, 20, 21, 23 to 26, 29 to 31, 33, 34, and 36 to 39, which fall with
the respective independent claims from which they depend. For similar
reasons, and because Parkman fails to cure the deficiencies of Lenz, we will
not sustain the Examiner’s rejection of claims 6, 19, and 32, which depend
respectively from claims 1, 15, and 28. Likewise, because Hesse also fails
to cure the deficiencies of Lenz, we will not sustain the Examiner’s rejection
of claims 14, 27, and 40, which depend respectively from claims 8, 22, and
35.
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In summary, we will not sustain the obviousness rejections of claims 1
to 40 because (i) the Examiner has not established a factual basis to support
the legal conclusion of obviousness (see Fine, 837 F.2d at 1073), and (ii) the
Examiner’s articulated reasoning does not support a legal conclusion of
obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The decision of the Examiner to reject claims 1 to 40 is reversed.

REVERSED

KIS

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