Ex Parte Nardone et al

Board of Patent Appeals and Interferences

Jun 4, 2009

09985879 (B.P.A.I. Jun. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOSEPH NARDONE, JEFFREY PHELPS,
and MARK WALLACE
____________________

Appeal 2008-3437
Application 09/985,8791
Technology Center 2100
____________________

Decided:2 June 5, 2009
____________________

Before LANCE LEONARD BARRY, JEAN R. HOMERE, and
JAY P. LUCAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed November 6, 2001. Appellants claim the benefit under
35 U.S.C. § 119 of provisional applications 60/245,677, 60/245,678,
60/245,713, all filed November 6, 2000. The real party in interest is
Telecommunication Systems, Inc.

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 through 57 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 apparatus for creating
conduits for synchronizing the data in one device, such as a personal digital
assistant (PDA) with the data in another device, such as an enterprise server.
Conduits are the specialized programs that arrange the transition of the data
as it goes from one device to another, for example conduits arrange for the
“first name – last name” combined field on a PDA or a cell phone to wind
up, after synchronizing, in the proper “first name” and “last name” separate
fields in a server, and vice versa. (cite?) In the words of the Appellants:
A configurable conduit generator module is utilized to generate
customizable conduits. The configurable conduit may be configured
to provide the synchronization rules between client databases and
corresponding enterprise databases. The configurable conduit
generator module may be configured to provide a point-and-click
environment to create the configurable conduit. In particular, a
graphical user interface (GUI) may be presented to the user to select
the client database and to select the enterprise database. Another GUI
may be presented to provide the mapping of the fields (or columns)
from the client database to the enterprise database. The direction of
the synchronization may be also be specified. Once the mapping of
the fields is created, the mapping file is saved for execution by the
configurable conduit during a synchronization event.

(Spec. 31, Abstract).

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Claims 1 and 12 are exemplary:
1. A method of creating conduits for synchronizations,
comprising:
generating a first graphical user interface;
selecting a first database and a second database on said first
graphical user interface;
mapping at least one field of said first database to a
corresponding field of said second database in a map file;
programming a conduit with said map file; and
executing said conduit with said map file in response to a
synchronization request, wherein said conduit provides
synchronization rules from said map file for said first database and
said second database.

12. A method of synchronizing databases, comprising:
configuring a conduit with a graphical user interface to
synchronize a first database and a second database;
initiating a synchronization request; and
synchronizing said first database and said second database
according to said conduit in response to said synchronization request.

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PRIOR ART
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hawkins 6,000,000 Dec. 7, 1999
(filed May 4, 1998)
Robertson 2001/0047441 A1 Nov. 29, 2001
(filed Feb. 22, 2001)

Roderick Smith, The Multi-Boot Configuration Handbook (Que
Publishing, 2000) (hereinafter ‘Smith”).

REJECTION
The Examiner rejected the claims as follows:
R1: Claims 1 to 57 stand rejected under 35 U.S.C. § 103(a) for
being unpatentable over the combination of Hawkins, Robertson and Smith.

Groups of Claims:
Claims were argued together and will be discussed together. See 37
C.F.R. § 41.37 (c) (vii). See also In re McDaniel, 293 F.3d 1379, 1383 (Fed.
Cir. 2002).
Appellants contend that the claimed subject matter is not rendered
obvious by the references Hawkins, Robertson or Smith, for failure of the
references to teach key claimed limitations. The Examiner contends that
each of the claims is properly rejected.
We affirm the rejection.
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ISSUE
The threshold issue before us is whether Appellants have shown that
the Examiner erred in rejecting the claims under 35 U.S.C. § 103(a).
Particularly, the issue turns on whether the combination of Hawkins,
Robertson and Smith teaches the claimed method of creating conduits.
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a method for creating conduits used for
synchronizing data between two devices, such as a PDA and an
enterprise server. (Spec. 2, l. 10). This is performed using a configurable
conduit generator module, embodied in a graphical user interface (GUI),
which configures a conduit based on the mapping of fields of a database
on the PDA with similar fields on the server. (Spec. 6, l. 19 to 7, l. 7).
Once the conduit is properly configured for the two devices, they may be
synchronized with the proper data from a database on one device being
placed in the proper fields in the database of the other device. (Spec. 8, l.
16-22).
2. The Hawkins patent teaches synchronizing a PDA (e.g. Palm Pilot) with
a computer, popularly called “HotSyncing”. (Col. 1, l. 48). The software
used for this process includes the synchronization program itself, a sync
manager library, and various conduit libraries. (Col. 4, l. 49). The sync
manager library oversees the synchronization process using individual
conduit libraries to perform the synchronization of each database. (Col. 5,
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l. 38). Each conduit library is individually written to suit a particular
database residing on the handheld computer system. (Col. 7, l. 7).
3. The Robertson Patent Application Publication teaches a system for
transferring data from a USB format (common on laptops) to various
other data formats such as Firewire, Ethernet, etc. (Abstract) common on
many handheld devices, including Palm Pilots or a Newton. (¶ [0049]).
Knowledge of the different devices is embodied in device drivers.
“Conduit” in this document means “the data interface between a plurality
of user peripheral devices . . . and a processing device . . . which in turn
is coupled to external data nodes . . . through a communications network
. . . (e.g. the Internet).” (¶ [0028]). The various device drivers configure
the conduit for their individual devices. (¶ [0050]). A user interface is
shown to teach the selection of devices to be connected by the user. (Fig.
7).
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)).
“What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
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Teleflex, Inc., 550 U.S. 398, 419 (2007). To be nonobvious, an
improvement must be “more than the predictable use of prior art elements
according to their established functions.” Id. at 417.
“Common sense teaches . . . that familiar items may have obvious
uses beyond their primary purposes, and . . . a person of ordinary skill
[often] will be able to fit the teachings of multiple patents together like
pieces of a puzzle.” Id. at 420.
“[A] court must ask whether the improvement is more than the
predictable use of prior art elements according to their established
functions.” Id. at 417.
However, although elements must be arranged as required by the
claim, “this is not an ipsissimis verbis test,” i.e., identity of terminology is
not required. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Though understanding the claim language may be aided by
explanations contained in the written description, it is important not to
import into a claim limitations that are not part of the claim. For
example, a particular embodiment appearing in the written description
may not be read into a claim when the claim language is broader than
the embodiment.

SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (citation omitted).
Shortly after the creation of this court, Judge Rich wrote that
“[t]he descriptive part of the specification aids in ascertaining the
scope and meaning of the claims inasmuch as the words of the claims
must be based on the description. The specification is, thus, the
primary basis for construing the claims.” Standard Oil Co. v. Am.
Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985). On numerous
occasions since then, we have reaffirmed that point . . . .

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Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc).
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. § 103(a). The prima facie case is presented on pages 3 to
22 of the Examiner’s Answer . In opposition, Appellants present a number
of arguments.
Arguments with respect to the rejection
of claims 1 to 57
under 35 U.S.C. § 103(a) [R1]

Appellants contend that the Examiner erred in rejecting claims 1
through 57 because none of the references teaches how the conduits are
created. (App. Br. 5, middle, 6, bottom, 7, middle, 8, top). Appellants
contend that Hawkins teaches the use of conduit programs, but the conduit
programs are stored in a conduit library and are only used, not created or
configured. (id.).
Understanding of the rejection starts with a proper interpretation of
the claim language. The analysis begins with an interpretation of the claims.
“Both anticipation under § 102 and obviousness under § 103 are two-step
inquiries. The first step in both analyses is a proper construction of the
claims . . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” Medichem S.A. v. Rolabo S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted).
In the instant claims, a key limitation is “programming a conduit with
said map file;” (claim 1) or “configuring a conduit with a graphical user
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interface” (claim 12). Within these claims the term “conduit” becomes a
central issue. We must, thus, explore the meaning of a “conduit.”
In the references before us, we see that “conduit” can partake a
number of meanings in this art. In the Hawkins patent, the sync manager
library #410 uses individual conduit libraries to perform the synchronization
of the databases. (Col. 5, l. 35). In the Robertson patent application
publication, the conduit #10 is configured by the special knowledge
contained in individual device drivers from the processing devices #14.
(¶ [0050]). Though claims are interpreted in the light of the specification,
we are advised by our guiding court that “claims must be interpreted as
broadly as their terms reasonably allow.” In re Zletz, 893 F.2d 319, 321
(Fed. Cir. 1989). Thus, during prosecution at the USPTO, while claims are
still capable of accepting clarifying amendments, the claim terms may be
read broadly.
In the instant claims, the only limitations on the term “conduit” in the
claims comes from claim 1’s ultimate clause, “wherein said conduit provides
synchronization rules from said map file for said first database and said
second database.” This limitation is consistent with the listing of
responsibilities of a conduit in the Specification. (Spec. 2, bottom, ff). With
no further limitation of the term in the claims, and in view of the accepted
broader interpretation of “conduit” in other related art (see Robertson; FF 3),
the Examiner has broadly but fairly interpreted “conduit” to include the
entire structure that forms the communications link between the client PDA
and the host server or computer. When read in this light, we see, for
example in Hawkins’ Figure 7, that the combination of the Sync Manager
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Library and Conduit Library A is programmed with the files from databases
during a synchronization (claim 1). The claimed term “conduit” is read on
the combination of both libraries. In a similar light, a conduit is configured
(claim 12) in Robertson, Fig. 1, using choices garnered from a selection on a
graphical user interface (GUI), Fig. 7. Again, the term “conduit” is read on
the entire data converting device, labeled #10, and called “conduit” in the
Robertson application.
Appellants argue that the references fail to teach “HOW a conduit is
CREATED” (App. Br. 8, ll. 3-4) (bolding and underlining omitted). This
argument is not persuasive, as the actual steps in representative claims 1 and
12 both require only that a conduit be “programmed” or “configured,” which
is done in both of the references, as explained in the paragraph just above.
However the programming of the conduit does result in a fully configured
conduit, which in a sense “creates” one.
Appellants further argue that the Examiner has failed to show
motivation to combine the Hawkins and Robertson references. (App. Br. 8,
bottom). As both references address the same problem (connections of
disparate electronic devices) and are from the same field of endeavor, they
are properly combined. (See KSR Int’l Co. v. Teleflex, Inc., cited above).
CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 through 57 under 35 U.S.C. §
103 for being obvious over Hawkins, Robertson and Smith.

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DECISION
We affirm the Examiner's rejection of claims 1 through 57.
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

msc

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