Ex Parte Ogura

Board of Patent Appeals and Interferences

Aug 2, 2012

10105123 (B.P.A.I. Aug. 2, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/105,123 03/21/2002 Hiroyuki Ogura JP20000396US1 1778
7590 08/03/2012
David A. Mims, Jr.
IBM Corporation
Intellectual Property Law Department
11400 Burnet Road
Austin, TX 78758
EXAMINER
NICKERSON, JEFFREY L
ART UNIT PAPER NUMBER
2442
MAIL DATE DELIVERY MODE
08/03/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HIROYUKI OGURA
____________
Appeal 2010-002489
Application 10/105,123
Technology Center 2400
____________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002489
Application 10/105,123

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20. Br. 2.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellant’s Invention
Appellant invented an apparatus, method, and computer program for
exchanging data between a plurality of computers. Spec. 1: 9-11.
Illustrative Claims
1. A workstation system comprising:
a first computer and a second computer that are capable
of exchanging data via a network,
wherein said first computer includes
a clipboard for temporarily storing data;
a data extraction unit for extracting data from said
clipboard upon reception of a request from said second
computer, and
a data transmission unit for transmitting data
extracted from said clipboard on said first computer by
said data extraction unit to said second computer via said
network, said data transmission unit utilizing a protocol
format to directly transmits unchanged said data
extracted from said clipboard on said network; and
wherein said second computer includes
a data reception unit for receiving said data
extracted from said clipboard from said first computer
from said data transmission unit via said network, and
a data output/storage unit for outputting and/or
storing said data extracted from said clipboard from said
first computer received by said data reception unit.

1 All references to the Brief are to the Brief filed February 16, 2006.
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14. A method of transmitting data stored in a volatile
memory of a computer to a different computer via a network,
comprising the steps of:
extracting data to a clipboard from said volatile memory
if a predetermined command is received by said computer; and
transmitting said extracted data unchanged from said
clipboard, via said network, to said different computer using a
communication protocol acceptable for the network.

16. A method, executed on an application in a
computer, of editing data received from a different computer
via a network, comprising:
a data reception step of receiving data that is extracted
unchanged from a clipboard of said different computer, from
said different computer via said network;
a designation step of designating a position whereat said
data is to be displayed by said application, and
a display step of displaying said received data at said
designated position using said application.

Prior Art Relied Upon
Giokas US 5,313,581 May 17, 1994
Ahimovic US 6,209,021 B1 Mar. 27, 2001
(filed Oct. 10, 1995)
Osborn US 6,760,728 B1 July 6, 2004
(filed Sept. 27, 2000)

Rejections on Appeal
Claims 14 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ahimovic. Ans. 5-6.2
Claims 1, 4, and 6-10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Ahimovic and Giokas. Ans. 7-10.

2 All references to the Examiner’s Answer are to the Answer mailed
September 29, 2009, which replaced the Answer mailed June 2, 2006.
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Claims 2, 3, 5, 11-13, 15, 17, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Ahimovic, Giokas,
and Osborn. Ans. 11-14.
Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Osborn and Ahimovic. Ans. 14-16.
Examiner’s Findings and Conclusions
1. The Examiner finds that based on the only occurrence of the
word “volatile” in the present Specification, the “volatile memory” recited in
independent claim 14 may be construed as any type of data storage unit or
memory. Ans. 16 (citing Spec. 13: 13-14). The Examiner finds that while
Ahimovic does not explicitly disclose “volatile memory,” an ordinarily
skilled artisan at the time of the claimed invention would have understood
that the data sent to the clipboard comes from an application program
running within data storage or memory. Ans. 16-17. The Examiner also
finds that Ahimovic inherently discloses that the documents and
spreadsheets are stored in some type of data storage or memory. Ans. 17
(citing to col. 5, ll. 42-56).
2. The Examiner finds that an ordinarily skilled artisan at the time
of the claimed invention would have understood that Ahimovic’s disclosure
of pasting data after a cut or copy command is given implicitly provides for
the visual display of the transferred data on the user’s screen. Ans. 17. The
Examiner also finds that it is well known in the art at the time of the claimed
invention that pasting data amounts to inserting data at a location designated
by the user using a cursor (for text data) or a pointer (for graphical data). Id.
As such, the Examiner finds that Ahimovic teaches or suggests “a display
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step of displaying said received data at said designated position using said
application[,]” as recited in independent claim 16. See id.
3. The Examiner finds that Ahimovic’s Figure 4 clearly illustrates
that application program (414) uses clipboard (470) while application
program (420) uses a different clipboard (480). Ans. 18. The Examiner
finds that these clipboards (470 and 480) are on different sides of the
network and only share data once application (414) issues a copy or cut
command and transfers the data over the network to clipboard (480). Id. As
such, the Examiner finds Ahimovic teaches or suggests the “clipboard”
recited in independent claim 1. See id.
Further, the Examiner finds that since Ahimovic is completely silent
with respect to changing the data from the initial copy/cut at the first
computer until the final paste at the second computer, no formatting change
occurs. Ans. 19. Moreover, based on the broadest reasonable interpretation
of “unchanged,” the Examiner finds that Ahimovic’s disclosure of producing
an identical copy of data on the remote side of the network teaches or
suggests the claimed “unchanged” data. Id.
Appellant’s Contentions
1. Appellant contends that neither Ahimovic’s Figure 4 nor the
corresponding text illustrates or discloses “volatile memory,” as recited in
independent claim 14. Br. 4. Appellant argues that since Ahimovic is silent
with respect to the source of the data for the clipboard, the data could reside
on disks or other media. Id.
2. Appellant contends that while Ahimovic’s Figure 4 illustrates
blocks designated as applications, shared clipboards, data sharing drivers,
and a network, Ahimovic’s Figure 4 and the corresponding text does not
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teach or suggest “a display step of displaying said received data at said
designated position using said application[,]” as recited in independent claim
16. Br. 5. Appellant argues that the data transmitted in Ahimovic may be
pasted to a location without displaying the information. Id.
3. Appellant contends that Ahimovic’s clipboard is a shared
entity—meaning the operating systems of the two connected computers are
sharing the same clipboard—whereas the “clipboard” recited in independent
claim 1 is on the first computer and does not require the operating systems to
share the clipboard. Br. 7. Further, Appellant argues that Giokas discloses
that the source device changes the format of the data. Id. Appellant alleges
that independent claim 1 does not require such format changes and,
therefore, transmits the data “unchanged,” as claimed. Br. 7.

II. ISSUES
1. Did the Examiner err in finding that Ahimovic teaches or
suggests “extracting data to a clipboard from said volatile memory [. . .][,]”
as recited in independent claim 14?
2. Did the Examiner err in finding that Ahimovic teaches or
suggests “a display step of displaying said received data at said designated
position using said application[,]” as recited in independent claim 16?
3. Did the Examiner err in finding that the combination of
Ahimovic and Giokas teaches or suggests a first computer that includes the
following claim limitations recited in independent claim 1:
(a) “a clipboard for temporarily storing data;”
(b) “a data extraction unit for extracting data from said clipboard
upon reception of a request from said second computer[;]” and
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(c) “a data transmission unit for transmitting data extracted from
said clipboard on said first computer by said data extraction unit to said
second computer via said network, said data transmission unit utili[z]ing a
protocol format to directly transmits unchanged said data extracted from said
clipboard on said network[.]”

III. ANALYSIS
35 U.S.C. § 103(a) Rejection—Ahimovic
Claim 14
Based on the record before us, we do not discern any error in the
Examiner’s obviousness rejection of independent claim 14, which recites,
inter alia, “extracting data to a clipboard from said volatile memory [. . .][.]”
We begin our analysis by noting that Ahimovic’s Figure 4 illustrates
data sharing in a video conferencing system. Col. 5, ll. 42-45. Ahimovic
discloses that each application program (414 and 420), which may be either
spreadsheets or documents, runs its own respective shared clipboard (470
and 480). Col. 5, ll. 54-59. In particular, Ahimovic discloses that
application program (414) applies data to shared clipboard (470) by way of
line (468) using a cut or copy command. Col. 5, ll. 59-61.
Based on these textual portions in Ahimovic, we agree with the
Examiner that an ordinarily skilled artisan at the time of the claimed
invention would have understood that the data sent to shared clipboard (470)
comes from an application program running within data storage or memory.
See Ans. 16-17. That is, we find that the since Ahimovic’s application
program (414) may be either spreadsheets or documents, we find that an
ordinarily skilled artisan would have recognized that these spreadsheets and
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documents reside on data storage or memory, such as volatile memory, prior
to being cut or copied to shared clipboard (470). Thus, we find that
Ahimovic teaches or suggests “extracting data to a clipboard from said
volatile memory [. . .][,]” as recited in independent claim 14.
Alternatively, the Examiner relies upon the theory of inherency in
finding that the Ahimovic’s documents and spreadsheets are stored in some
type of data storage or memory. See Ans. 17. Inherency is a question of fact
that arises both in the context of anticipation and obviousness rejections.
See In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (affirming a 35 U.S.C.
§ 103(a) rejection based in part on the inherent disclosure in one of the
applied prior art references); see also In re Grasselli, 713 F.2d 731, 739
(Fed. Cir. 1983). “In relying upon the theory of inherency, the [E]xaminer
must provide a basis in fact and/or technical reasoning to reasonably support
the determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990) (emphasis in original). “[A]fter the PTO
establishes a prima facie case of [obviousness] based on inherency, the
burden shifts to [A]ppellant to ‘prove that the subject matter shown to be in
the prior art does not possess the characteristic relied on.”’ In re King, 801
F.2d 1324, 1327 (Fed. Cir. 1986) (quoting In re Swinehart, 439 F.2d 210,
212-13 (CCPA 1971)). See also Manual of Patent Examining Procedure §§
2112 (IV)-(V) (Rev. 8, July 2010).
This reasoning is applicable here. We find that the Examiner has
provided a technical reasoning in the Answer that reasonably supports the
finding of inherency in the context of this obviousness rejection. In
particular, the Examiner finds that data storage or memory necessarily flows
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from Ahimovic’s disclosure of data sharing—namely cutting and copying
documents and spreadsheets to shared clipboard (470). See Ans. 17.
Appellant did not file a Reply Brief that specifically addresses the
Examiner’s finding. Consequently, we find that Appellant has not met the
burden of proving that the subject matter shown to be in Ahimovic does not
possess the characteristic relied on by the Examiner. As a result, we agree
with the Examiner that an inherent characteristic of cutting and copying
documents and spreadsheets to shared clipboard (470) teaches or suggests
the claimed “volatile memory.” See Ans. 17. It follows that the Examiner
has not erred in concluding that Ahimovic renders independent claim 14
unpatentable.
Claim 16
We do not discern any error in the Examiner’s obviousness rejection
of independent claim 16, which recites, inter alia, “a display step of
displaying said received data at said designated position using said
application.”
Ahimovic’s Figure 4 further illustrates transmitting the data cut or
copied on shared clipboard (470) to shared clipboard (480) via data sharing
driver (450), video conferencing network (424), and data sharing driver
(460). Col. 5, ll. 61-65. When the data appears at shared clipboard (480),
Ahimovic discloses that the user of application program (420) may issue a
paste command. Col. 5, l. 67-col. 6, l. 1.
Based on these textual portions in Ahimovic, we agree with the
Examiner that an ordinarily skilled artisan at the time of the claimed
invention would have understood that Ahimovic’s disclosure of pasting data
provides for the visual display of such data on a user’s screen. See Ans. 17.
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That is, we find that an ordinarily skilled artisan would have recognized that
the process of pasting data to a designated location necessarily encompasses
displaying the data at such location. Thus, we find that Ahimovic teaches or
suggests “a display step of displaying said received data at said designated
position using said application[,]” as recited in independent claim 16.
Alternatively, similar to our analysis with respect to independent
claim 14, we find that displaying data at a designated position on a user’s
screen necessarily flows from Ahimovic’s disclosure of pasting data. See
Levy, 17 USPQ2d at 1464. It follows that the Examiner has not erred in
concluding that Ahimovic renders independent claim 16 unpatentable.
35 U.S.C. § 103(a) Rejection—Combination of Ahimovic and Giokas
Claim 1
We do not discern any error in the Examiner’s obviousness rejection
of independent claim 1, which recites, inter alia:
[1)] a clipboard for temporarily storing data; [2)] a data
extraction unit for extracting data from said clipboard upon
reception of a request from said second computer[;] and [3)] a
data transmission unit for transmitting data extracted from said
clipboard on said first computer by said data extraction unit to
said second computer via said network, said data transmission
unit utilizing a protocol format to directly transmits unchanged
said data extracted from said clipboard on said network[.]

We are not convinced by Appellant’s argument that Ahimovic’s
shared clipboards amount to a shared entity and, therefore, the operating
systems of the two connected computers are merely sharing the same
clipboard. See Br. 7. As discussed with respect to independent claim 14,
Ahimovic’s Figure 4 clearly illustrates that each application program (414
and 420) runs its own shared clipboard (470 and 480). Col. 5, ll. 57-59.
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Consequently, we agree with the Examiner that Ahimovic teaches or
suggests two separate and distinct clipboards (470 and 480) that share data
via a network. See Ans. 18. Moreover, we find that Ahimovic’s clipboard
(470) and associated application (414) are included on a first computer,
while clipboard (480) and associated application program (420) are included
on a second computer. Thus, we find that Ahimovic’s first computer, which
includes clipboard (470), teaches or suggests a first computer that includes
“a clipboard for temporarily storing data,” as recited in independent claim 1.
Next, we are not convinced by Appellant’s argument that Giokas’
source device changes the format of the data, whereas the claimed invention
requires no such format change and, therefore, transmits the data
“unchanged.” See Br. 7. The Examiner does not rely on Giokas to teach or
suggest transmitting the claimed “unchanged” data, but rather the Examiner
relies upon Ahimovic’s Figure 4 and the corresponding text. In particular,
since Ahimovic discloses that formatting does not occur during the process
of copying or cutting data at a first computer and pasting the same data at a
second computer (see col. 5, l. 56-col. 6, l. 4), the data transferred via the
network is “unchanged,” as claimed. As such, we are not persuaded that the
Examiner erred in finding that the combination of Ahimovic and Giokas
teaches or suggests a first computer that includes “a data extraction unit,”
and “a data transmission unit” that transmits “unchanged” data, as recited in
independent claim 1. It follows that the Examiner has not erred in
concluding that the combination of Ahimovic and Giokas renders
independent claim 1 unpatentable.
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Claim 4
Appellant offers the same argument set forth in response to the
obviousness rejections of independent claims 1 and 14 to rebut the
obviousness rejection of independent claim 4. See Br. 4. We have already
addressed these arguments in our discussion of independent claims 1 and 14,
and we found them unpersuasive. It follows that the Examiner has not erred
in concluding that the combination of Ahimovic and Giokas renders
independent claim 4 unpatentable.
Claims 6 and 7
Appellant generally alleges that the cited prior art does not teach or
suggest the claim limitations recited in dependent claim 6 and independent
claim 7. See Br. 7-8. Merely pointing out what a claim recites and nakedly
asserting that the cited prior art does not teach or suggest the corresponding
claim limitation does not amount to a separate patentability argument. See
37 C.F.R. § 41.37(c)(vii) (“A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(“[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388,
391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.”). It follows that the Examiner has not erred
in concluding that the combination of Ahimovic and Giokas renders claims 6
and 7 unpatentable.
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Claims 8-10
Appellant contends that the combination of Ahimovic and Giokas
fails to teach or suggest transmitting data unchanged via said network. Br.
8. As discussed with respect to independent claim 1, we find that Ahimovic
teaches or suggests transmitting “unchanged” data via a network, as claimed.
It follows that the Examiner has not erred in concluding that the combination
of Ahimovic and Giokas renders claims 8-10 unpatentable.
35 U.S.C. § 103(a) Rejection—Combination of Ahimovic and Osborn
Claims 19 and 20
Appellant offers the same argument set forth in response to the
obviousness rejections of independent claims 1 and 14 to rebut the
obviousness rejection of independent claims 19 and 20. See Br. 8-10. We
have already addressed these arguments in our discussion of independent
claims 1 and 14, and we found them unpersuasive. It follows that the
Examiner has not erred in concluding that the combination of Ahimovic and
Osborn renders independent claims 19 and 20 unpatentable.
35 U.S.C. § 103(a) Rejection—Combination of Ahimovic, Giokas, and
Osborn

Claims 2, 3, and 18
Appellant does not present separate and distinct arguments for
patentability with respect to dependent claims 2, 3, and 18. See Br. 10-12.
Therefore, we group these dependent claims with their underlying base
claims. See 37 C.F.R. § 41.37(c)(1)(vii). Consequently, dependent claims 2,
3, and 18 fall with independent claims 1 and 16 respectively.
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Claims 5, 11-13, 15, and 17
Appellant reiterates what dependent claims 5, 11-13, 15, and 17 recite
and generally alleges that the cited prior art does not teach or suggest each
additional claim limitation. See Br. 11-12. Merely pointing out what each
dependent claim recites and nakedly asserting that the cited prior art does
not teach or suggest the corresponding claim limitations does not amount to
a separate patentability argument. See 37 C.F.R. § 41.37(c)(vii). See also
Lovin, 652 F.3d at 1357; cf. Baxter Travenol Labs., 952 F.2d at 391. It
follows that the Examiner has not erred in concluding that the combination
of Ahimovic, Giokas, and Osborn renders claims 5, 11-13, 15, and 17
unpatentable.

IV. CONCLUSION
The Examiner has not erred in rejecting claims 1-20 as being
unpatentable under 35 U.S.C. § 103(a).

V. DECISION
We affirm the Examiner’s decision to reject claims 1-20.
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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