Ex Parte 6415280 et al

Patent Trial and Appeal Board

Aug 28, 2017

90013487 (P.T.A.B. Aug. 28, 2017)

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.
90/013,487 04/14/2015 6415280 0026064.00002.280 2088
23117 7590 08/29/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
RIMELL, SAMUEL G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/29/2017 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex parte PERSONAL WEB TECHNOLOGIES, LLC, and
LEVEL 3 COMMUNICATIONS, LLC
Patent Owner and Appellant
________________

Appeal 2016-006941
Reexamination Control 90/013,487
Patent 6,415,280 B1
Technology Center 3900
________________

Before KEVIN F. TURNER, BRADLEY W. BAUMEISTER, and
IRVIN E. BRANCH, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

SECOND DECISION ON APPEAL
This is the Board’s second decision on Patent Owner’s appeal under
35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 10, 15,
16, and 25. This Panel previously affirmed the Examiner’s rejection (see
Decision on Appeal, mailed Nov. 21, 2016) (“Decision”), but that Decision
subsequently was vacated (See Decision on Petition 10, mailed
Feb. 3, 2017).
We reverse. We issue a new ground of rejection under 35 U.S.C.
§ 103 for claims 10 and 25 pursuant to our discretionary authority under
37 C.F.R. § 41.50(b).
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BACKGROUND
The present appeal is taken from the ex parte reexamination of
Farber’s ’280 patent (US 6,415,280 B1; issued July 2, 2002) (“Farber” or
“the ’280 patent”). In the course of this appeal, the Board notified Patent
Owner that its request for oral hearing was non-compliant. See Notification
of Non-Compliant Request for Oral Hearing mailed Aug. 10, 2016. On
August 24, 2016, Patent Owner responded by filing a corrected Request for
Oral Hearing, as well as a Petition Under 37 C.F.R. § 41.3 (“first Petition”),
petitioning that the Board waive the requirements of 37 C.F.R. § 41.47(b)
for requesting an oral hearing.
The Board granted Patent Owner’s Petition of August 24, 2016, and
instructed the Board’s Hearings Clerk to schedule oral arguments in relation
to the present appeal. See Decision on Petition to Waive Board Rule
41.47(b), mailed Sept. 22, 2016. Due to administrative error, the Board
considered the appeal on brief and issued its initial Decision on
November 21, 2016, prior to the oral arguments being held. In that
Decision, the Board affirmed the appealed rejection of claims 10, 15, 16, and
25, which claims stood and remain rejected under 35 U.S.C. § 102(e) as
anticipated by Woodhill (US 5,649,196; issued July 15, 1997).
Upon issuance of the November 2016 Decision, Patent Owner filed,
inter alia, a second Petition Under 37 C.F.R. § 41.3 on December 5, 2016
(“second Petition”), requesting that the Board’s Decision be vacated, that an
Oral Hearing be scheduled in accordance with the Board’s Decision on
Petition dated September 22, 2016, and that a replacement Decision on
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Appeal be issued in due course after the Oral Hearing is conducted. Second
Petition at 1–2.
The Board granted Patent Owner’s second Petition, vacating the
November 21, 2016 Decision. See Decision on Petition 10, mailed
Feb. 3, 2017. An oral hearing was conducted on May 25, 2017. See Oral
Hearing Transcript mailed June 21, 2017 (“Transcript” or “Tr.”). We now
address the appeal anew.

THE APPEALED CLAIMS
Claim 10 is illustrative of the appealed claims:
10. A content delivery method, comprising:
distributing a set of data files across a network of servers;
determining a data identifier for a particular data file, the
data identifier being determined using a given function of the
data, wherein said data used by the given function to determine
the data identifier comprises the contents of the particular data
file; and
in response to a request for the particular data file, the
request including at least the data identifier of the particular data
file, providing the particular data file from a given one of the
servers of the network of servers, said providing being based on
the data identifier of the particular data file.

CONTENTIONS AND ANALYSIS
I.
Our original decision affirming the presently appealed rejection was
based heavily on the following facts: (1) in inter partes review
IPR2013-00083, a separate panel of the Board had already found
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substantially similar claims of Patent Owner’s ’280 patent were rendered
unpatentable by the same prior art, and (2) our reviewing court had already
affirmed that decision of the Board. See Decision 3 (citing EMC
Corporation and VMWARE, Inc. v. Personal Web Technologies, LLC and
Level 3 Communications, IPR2013-00083, 2014 WL 2090662 (PTAB
May 15, 2014) (“the ’083 IPR Decision”), aff’d per curiam Personal Web
Technologies, LLC, v. EMC Corporation, VMWARE, Inc., 612 F. App’x 611
(Fed. Cir. 2015) (mem)). More specifically, the Board had found
independent claims 36 and 38 of the ’280 patent were either anticipated or at
least rendered obvious by Woodhill. Id.
Furthermore, the present Panel was unable to ascertain any
limitations of the presently considered independent claims 10 and 25 that
would render them meaningfully narrower in scope than claims 36 and 38,
the claims considered in the ’083 IPR. See Tr. 15–16 (wherein, upon
questioning on this point, Patent Owner’s Counsel notes the difference in
claim construction standard that is to be applied in the present appeal
relative to the IPR,1 as well as evidentiary differences in the respective
records,2 but otherwise, only notes differences in claim scope for presently
appealed dependent claims 15 and 16 relative to the IPR claims).

1 As noted previously (e.g., Decision 5), the Board applied the broadest-
reasonable-interpretation claim construction standard in the ’083 IPR,
whereas we must apply the narrower Phillips standard in the present appeal.
2 At oral hearing, Patent Owner’s Counsel urges, for example, that the record
of the ’083 IPR contains the declaration testimony of two competing experts,
whereas the present record includes the declaration testimony of only Patent
Owner’s expert. Tr. 16.
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Patent Owner’s arguments at oral hearing convince us that the
previous Board Panel’s rationale for finding that Woodhill anticipates the
IPR’s claims differs from the Examiner’s rationale for finding that Woodhill
anticipates the presently appealed claims. Tr. 16–17. More specifically,
both the ’083 IPR Panel and the present Examiner interpret the binary object
as corresponding to the claims “data file.” ’083 IPR Decision 21;3 Final
Act. 3. But the Board in the ’083 IPR and the present reexamination
Examiner relied upon different teachings of Woodhill, as well as different
rationales for finding that Woodhill’s binary object identifier 74 is used to
identify and request a binary object.
The Board found in the ’083 IPR Decision that Woodhill’s self-
auditing procedure inherently uses the Binary Object Identifier 74 to identify
and request a binary object. ’083 IPR Decision 17–18. The Board reached
this conclusion, in part, because Woodhill’s Binary Object Identifier 74 is
part of the Binary Object Record 58 (see Woodhill Fig. 3), the overall
Binary Object Record 58 is used to identify and request binary objects
(’083 IPR Decision 17), and “it was old and well-known to identify and
request objects using their identifiers” (id.).
In contrast, the Examiner’s anticipation rejection of the present claims
does not rely upon the theory that Woodhill’s self-auditing procedure
inherently uses the Binary Object Identifier 74 to request binary objects.
The Examiner instead relies upon Woodhill’s concurrent onsite/offsite
backup operation routine (discussed at columns 9–10 of Woodhill) for

3 Citations are to the slip opinion, available at https://e-
foia.uspto.gov/Foia/RetrievePdf?system=PRPS&flNm=IPR2013-00083_80.
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teaching that Woodhill requests most the recent backup version of a file, and
the Examiner relies on Woodhill’s self-auditing routine (discussed at column
18) for teaching that binary objects to be restored are identified by binary
object identification records, and these records include the binary object
identifier 74. Ans. 12–13.
Upon further consideration, we now are of the opinion that due to the
evidentiary differences between the record of the IPR ’083 proceeding and
the present reexamination proceeding, as well as the differences in the
theories of the respective anticipation rejections, the Board’s ’083 IPR
Decision is not dispositive of all of the issues we consider presently. We do
not base our current decision, then, on the findings and rationales that were
set forth in the ’083 IPR Decision. The factual findings and legal theories
set forth therein were not raised by the Examiner and were not argued in
Patent Owner’s briefs.
To be sure, the Board does have the statutory authority to issue new
grounds of rejection based upon facts and reasoning not previously relied
upon by the Examiner. See 37 C.F.R. § 41.50(b). However, this authority is
discretionary, as opposed to mandatory. Id. In the present situation, the
length and complexity of each of the ’083 IPR record, the present
reexamination record, and Woodhill’s file-wrapper record compels us to
exercise restraint. We therefore leave to the Examiner, upon any further
prosecution, to consider the record of the ’083 IPR and to determine to what
extent, if any, the doctrines of estoppel (see, e.g., 37 C.F.R. § 42.73(d)(3))
and issue preclusion may be relevant. Today, we review the appealed
rejections for error based primarily upon the issues identified by Patent
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Owner, and only in light of the arguments and evidence in the present
record, without explicit reference to the record of the ’083 IPR. Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
II.
Patent Owner offers constructions for the claim terms “file” and “data
file” (App. Br. 9–15), which terms appear in independent claims 10 and 25.
According to Patent Owner, Farber unambiguously differentiates between a
file and a segment of a larger file. Id. at 10–11 (citing Farber, Fig. 2; col. 5,
ll. 25–35). Patent Owner contends that Woodhill’s binary objects are
segments of larger files and not “files” themselves. Id. at 12; see also id. at
33–35. According to Patent Owner, then, “because Woodhill’s binary
objects are not ‘files,’ Woodhill’s binary object identifiers 74 are NOT
identifiers for ‘files’ and do not identify ‘files.’” Id. at 12.
This argument is unpersuasive. Woodhill expressly states that a data
file may be comprised of one or more binary objects. Woodhill col. 2, l. 3.
As such, at least in those situations where a data file consists of exactly one
binary object, a data identifier for a binary object effectively is, in fact, a
data identifier for the entire data file.
III.
Patent Owner offers constructions for the claim term, “data identifier”
(App. Br. 15), which also appears in the independent claims. According to
Patent Owner, “[a] ‘data identifier’ should be construed as ‘an identity for a
data item generated by processing all of the data in the data item, and only
the data in the data item, through an algorithm that makes the identifier
substantially unique.’”
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We are unpersuaded that the term data identifier must be interpreted
so narrowly. Patent Owner’s claim 1, as originally filed, set forth that “said
identifier depending on all of the data in the data item and only on the data
in the data item.” Application 09/283,160, claim 1, filed April 1, 1999.
Claim 10, first entered as claim 56 by the amendment filed
January 11, 2001, alternatively recites (with emphasis added) “the data
identifier being determined using a given function of the data comprising the
particular data item.” Patent Owner’s Counsel acknowledged during oral
hearing that independent claims 10 and 25 use the word comprising in the
open-ended manner, customary to patent-claim drafting, because Patent
Owner additionally wants to encompass embodiments where the data item is
calculated from addition information, such as tags. Tr. 19; see Genentech,
Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (explaining that the
term comprising “means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the
claim”).
IV.
Contentions
Patent Owner argues that “[i]ndependent claims 10 and 25 each
require a ‘request’ for a data file, which request includes the data identifier
that identifies the particular data file. These claims further require that, in
response to the request, the requested file is provided/delivered to the
requesting computer or client.” App. Br. 17.
Patent Owner argues that the Examiner primarily relies upon
Woodhill’s “self-audit” routine for teaching this limitation and, more
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specifically, that the Examiner is interpreting Woodhill’s binary object
identifiers (see Woodhill Fig. 3, element 74) as corresponding to the claimed
data identifier that is used to request the binary objects being audited. App.
Br. 17 (citing Woodhill col. 18, ll. 10–38). According to Patent Owner, the
basis of the anticipation rejection is improper because, inter alia, Woodhill
is silent as to what information is used for requesting or accessing binary
objects within the self-audit routine. Id. at 17–18. Patent Owner argues that
the passage of Woodhill that the Examiner relies upon for teaching the use
of binary object identifiers relates to a different routine—the “Concurrent
Onsite/Offsite Backup” routine—which is unrelated to, and functions
separately from, the self-audit routine. Id. at 19–21 (citing Final Act. 3;
Woodhill col. 10, l. 29).
Patent Owner additionally argues,
Woodhill elsewhere indicates that, in a message, portions of the
[Binary Object Identifier] Record 58 other than the binary object
identifier 74 are used to identify a binary object. (Woodhill,
col. 11:65 to col. 12:5; and Dewar Decl. at ¶ 49 [Ex. 2012].)
Woodhill indicates that portions (62 and 72) of the Record 58
other than the binary object identifier 74 are used to identify a
given binary object in a message. (Woodhill, col. 11:65 to
col. 12:5.) Woodhill indicates in this respect that binary object
identifiers 74 are not used in any alleged “request” for a binary
object. (Woodhill, col. 11:65 to col. 12:5.) Woodhill indicates
that binary object identifiers 74 are not used for accessing binary
objects. Id.
App. Br. 18.
According to Patent Owner, Woodhill alternatively identifies and
accesses binary objects using the binary object identifier record 58’s binary
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object stream type 62 and binary object offset 72. App. Br. 18–19 (citing
Woodhill col. 11, l. 65– col. 12, l. 5); Reply Br. 3; Tr. 5, 7.
In summary, Patent Owner argues that the Examiner is improperly
picking and choosing different features from different routines/procedures in
order to anticipate a given claim limitation or claim. App. Br. 23. Patent
Owner urges that “[t]he Examiner cannot, in an anticipation rejection,
somehow modify Woodhill’s self-audit procedure by selecting random
quotes from different portions of Woodhill that relate to different procedures
for different purposes.” Id.
The Examiner does not dispute that the rejection is based upon
teachings of multiple routines or functions of Woodhill. See Ans. 13–14.
The Examiner reasons, though, that all six of Woodhill’s disclosed routines
are part of a single embodiment (id. at 14), and relying on multiple functions
of one embodiment does not necessarily preclude an anticipation rejection
under 35 U.S.C. § 102 or necessarily involve an issue of obviousness under
35 U.S.C. § 103 (id. at 13). The Examiner further reasons that even if
Woodhill’s distinct routines are interpreted as constituting separate
embodiments, a finding of anticipation is not precluded because “patents
may be relied on for all they contain.” Id. at 14.
Analysis
The Examiner is correct that Woodhill may be relied upon for all of
its teachings and that relying on multiple routines does not necessarily
preclude an anticipation rejection per se. But those general principles do not
address the dispositive question of whether the Examiner has established
that the cited portions of Woodhill disclose—either expressly or
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inherently—using Woodhill’s binary object identifiers—or names (see
Woodhill col. 8, ll. 33–34) specifically for requesting binary objects, as
claimed.
The rejection’s rationales and citations to Woodhill simply do not
establish that Woodhill uses the binary object identifiers to request binary
objects within the self-audit routine. That is, the Examiner has not
established that Woodhill anticipates the independent claims. Moreover, the
Examiner has not issued any obviousness rejections for us to consider.
Accordingly, we do not sustain the anticipation rejections of
independent claims 10 and 25 or of claims 15 and 16, which depend from
claim 10.
V.
This conclusion is not the end of our inquiry. Even though the
Examiner has not demonstrated sufficiently that the independent claims are
anticipated by Woodhill’s self-audit routine, we nonetheless conclude that
Woodhill’s self-audit routine—in conjunction with Woodhill’s additional
teachings—at least renders obvious independent claims 10 and 25.
In addition to the passages cited by the Examiner, Woodhill also
discloses in the claims that the binary object identifiers function as the
binary object’s name. Woodhill’s claim 1, for example, recites the
following (emphasis added):
1. A system for distributed management of the storage space
and data on a networked computer system wherein the networked
computer system includes at least two storage devices for storing
data files, said distributed storage management system
comprising:
. . . .
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means for calculating a current value for a binary object identifier
for each binary object within a file, said calculation of said binary
object identifier being based upon the actual data contents of the
associated binary object, said calculated binary object identifier
being saved as the name of the associated binary object . . . .
Given that Woodhill’s self-audit routine retrieves a binary object to
perform the audit,4 it at least would have been obvious—if not inherent—
that some sort of binary object name would be used to retrieve the binary
object. Further, given that Woodhill expressly discloses that the binary
object identifier can serve as the binary object’s name, it would have been
obvious to one of ordinary skill to have used Woodhill’s binary object
identifier in the self-audit routine to retrieve the binary object being audited.
Patent Owner, anticipating that the Board might raise sua sponte the
question of whether Woodhill at least renders the claims obvious, argues
there would not have been any reason to use the binary object identifier 74
to retrieve a binary object. Tr. 7–8. In Patent Owner’s view, because
Woodhill discloses, in other contexts, that binary objects can be retrieved

4 Patent Owner does not dispute that Woodhill’s self-audit routine requests
binary objects:
JUDGE BAUMEISTER: [So you have a binary object] stored
somewhere and you pull it up?
MR. RHOA: Woodhill doesn’t say you pull it, but I’m assuming
there’s a pull. Where it goes, again, unclear. But there’s one
binary object. Let’s say for the sake of argument, it gets pulled.
You then calculate a binary object identifier on that, then
compare that newly calculated binary object identifier to a
previous binary object identifier for that one binary object to see
if they match.
Tr. 13:17–25.
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using the binary stream type 62 and binary object offset 72, one looking for
a way to access or retrieve binary objects specifically for the self-audit
routine instead would have used the stream type and offset. Id. at 8. Patent
Owner argues that the binary object identifier is only used to see if there has
been a change to the binary object—not for retrieval or access purposes. Id.
This argument is unpersuasive. Given that Woodhill does not
expressly state what data is used to access or retrieve binary objects for
performing the self-audit routine, one of ordinary skill would have been
motivated to look for possible ways to access or retrieve these objects.
Woodhill expressly states the binary object identifier is used as a name of
the binary object (e.g., claim 1), which renders the identifier as a reasonably
foreseeable piece of data for performing this task. The fact that Woodhill
further discloses that additional data fields alternatively may be used to
request binary objects does not negate the fact that the binary object
identifier is one of the data fields one of ordinary skill would consider using.
Because we rely upon a theory that differs from that of the Examiner,
we designate this obviousness rejection of claim 10 under 35 U.S.C. § 103
as constituting a new ground of rejection pursuant to 37 C.F.R. § 41.50(b).
VI.
Dependent claim 15 recites “[t]he method as in claim 10 further
comprising: resolving the request for the particular data file based on a
measure of availability of at least one of the servers.” Due to the fact that
we newly reject independent claim 10 as obvious over Woodhill, as opposed
to anticipated by Woodhill (see Sections III and IV, supra), we do not
sustain the anticipation rejection of claim 15, which depends from claim 10.
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For the purpose of compact prosecution, though, we will address the
question of whether claim 15 is obvious over Woodhill by virtue of
Woodhill additionally teaching all of the limitations of claim 15, as found by
the Examiner. See Final Act. 16–17.
As a threshold matter, we note that claim 15 sets forth that resolving
the request is based, more particularly, “on a measure of availability of at
least one of the servers” (claim 15) (emphasis added)–not merely based on
the server’s availability, itself. However, Patent Owner conflates any
distinction that potentially exists between resolving the request based on a
measure of the availability and resolving the request based upon the
availability itself. See, e.g., App. Br. 28 (“Thus, according to claim 15, the
same request at issue in claim 10 must be resolved based at least upon server
availability”); id. (“Indeed, Woodhill’s self-audit procedure at col. 18:10–35
does NOT base anything on server availability”).
We therefore do not address whether any distinction may exist
between resolving a request based upon (1) an availability of a server vs.
(2) a measure of an availability of a server. See Hyatt v. Dudas, 551, F.3d
1307, 1313–14 (Fed. Cir. 2008) (the Board may treat arguments appellant
failed to make for a given ground of rejection as waived). See also Frye,
94 USPQ2d at 107 5 (“If an appellant fails to present arguments on a
particular issue—or, more broadly, on a particular rejection—the Board will
not, as a general matter, unilaterally review those uncontested aspects of the
rejection.”).
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We now turn to the merits of Patent Owner's arguments. In our initial
Decision, we described Patent Owner’s arguments regarding claim 15 as
follows:
In section VII.F of its principle brief (App. Br. 28–30),
Patent Owner argues in relation to claim 15 that “no alleged
Request in Woodhill’s self-audit procedure is resolved based on
a measure of server availability.” App. Br. 28. More specifically,
Patent Owner argues that to meet this claim language, the
rejection relies upon portions other than Woodhill’s self-audit
procedure—portions such as those relating to Woodhill’s
Resource Allocation Routine and Woodhill’s Backup/Restore,
Compression, and Local Storage routines. Id. at 28–29 (citing
Woodhill, col. 10, ll. 60–62, col. 12, l. 54–col. 14, l. 51;
Figs. 5c–5t).
Decision 9.
In our initial Decision, we found that Woodhill taught the language of
claim 15 based on the following rationale:
Reading Woodhill’s explanations of its various routines
and processes as a whole, we understand Woodhill to disclose
that the auditing and reporting routine entails, as explained above
in relation to claim [10], initiating a restore operation of
randomly selected backed up binary objects, calculating a binary
object identifier of that restored binary object, and comparing the
calculated identifier to the originally stored binary object
identifier. Id. at col. 18, ll. 10–38. We understand Woodhill to
disclose that this backed up binary object used in the audit
procedure may be stored either locally or remotely. Id. at col.
10, ll. 27–32. And we understand that whether a given binary
object is stored locally or remotely can be determined based upon
the availability of the local computers of a local network. Id. at
col. 10, ll. 54–62.
Decision 11.
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In light of Patent Owner’s arguments at oral hearing, we now
reconsider our prior reasoning. Our prior reasoning presumed that the self-
audit routine would entail choosing a random binary object for audit by
randomly selecting a name of the object (e.g., selecting a binary object
identifier) from some table, or the like, and then pull one of the copies of the
backed-up binary object associated with the identifier from either a local or
remote storage. We further presumed that the particular copy of the binary
object selected for audit would be based upon the availability of the local
storage.
Upon further consideration, we find that our prior analysis read too
much into the Examiner’s stated explanation of the Final Action as to how
Woodhill teaches the limitations of claim 15 in conjunction with those of
claim 10. We now find the Examiner’s explanation of the rejection (Final
Act. 16–17) merely to be proposing the combining of disjointed teachings of
Woodhill, which rationale Patent Owner rightfully argues is improper in an
anticipation rejection (see, e.g., App. Br. 17–18).
Furthermore, and regardless of whether we previously interpreted
properly the Examiner’s reasoning for combining elements of Woodhill’s
distinct routines, we now are of the opinion that our prior reasoning is too
speculative for one to reasonably conclude that Woodhill actually teaches
such a protocol for retrieving binary objects. The rejection points to
insufficient evidence to support the conclusion that the presumed protocol
actually is the protocol that Woodhill uses to retrieve a binary object.
Furthermore, we do not find this presumed protocol to be necessarily
inherent. It also seems possible that Woodhill’s system alternatively could
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randomly select a stored binary object from some particular drive and then
perform the audit on that object according to the disclosed audit procedure.
Such an alternative protocol could be said to be requesting a binary object
based upon the availability of the servers. But it would be unreasonable to
interpret such a protocol as resolving a request based upon the availability of
the servers. Restated, randomly selecting an object for audit from a
preselected server is distinguishable from randomly selecting an object and
then determining which copy of the object should be audited based upon a
server availability.
For these additional reasons, we do not sustain the anticipation
rejection of dependent claim 15. We likewise do not sustain the anticipation
rejection of claim 16, which, in turn, depends from claim 15. In reaching
this conclusion, we limit ourselves to deciding whether Woodhill describes
all of the limitations of claim 15. We do not consider the more general
question of whether the claimed protocol of claim 15 may be rendered
obvious by at least Woodhill, as the Examiner did not base the appealed
rejection on that alternative legal theory.
VII.
In Section VII.E of the principal brief (App. Br. 24–28), Patent Owner
argues in relation to claim 25 that “there is no delivery of a requested file to
a requesting client that sent a binary object identifier 74 in Woodhill’s self-
audit procedure” (App. Br. 24). According to Patent Owner, “Woodhill’s
self-audit procedure . . . does NOT deliver/send any file (or even a binary
object) to a specific client that sent a request including a data identifier for
that file.” Id. at 24.
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Patent Owner acknowledges that Woodhill “explains that in the self-
audit procedure ‘the selected binary object is restored from either a
compressed storage file 32 residing on one of the disk drives 19 of one of the
local computers 20 or from the remote backup file server 12.’” Id. at 25
(citing Woodhill, col. 18, ll. 21–24) (emphasis added). But Patent Owner
contends that “[w]hen the binary object is restored in such a manner, there is
absolutely no description or indication of the binary object then being
delivered or transmitted to another location in Woodhill’s self-audit
procedure.” Id.
This argument is unpersuasive. We understand the Examiner’s
position to be as follows: in those situations where the binary object is
restored from the remote backup file server 12—as opposed to being
restored from local storage—the restored object is being delivered from the
remote server 12 to the local computer 20 (or “client”) that issued the
request. See Ans. 15.
VIII.
Also in relation to claim 25, Patent Owner notes that claim 25 recites
“the network of servers being organized into a set of regions.” App. Br. 7.
Patent Owner contends that Farber’s Specification “unambiguously defines
‘region’ as a unit of file system management and control having a given
directory and identified by a pathname (user defined) of the directory”—not
simply any “local area.” Id. at 7–8 (citing Farber, col. 5, ll. 62–65; col. 8,
ll. 16–19). According to Patent Owner, “[Farber] differentiates between,
and makes clear that, a ‘local’ processor is not necessarily a region.” Id. at 8
(citing Farber, col. 5, l. 60–col. 6, l. 6; col. 5, ll. 29–30; col. 8, ll. 15–23).
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In contrast, the Examiner finds that the term “region” simply denotes
“a ‘unit of management and control’ with the directory and pathname being
data constructs contained within the region.” Ans. 4.
We find Patent Owner’s proffered definition of “region” to be unduly
narrow, even under the Phillips standard.5 Figure 2 of Farber indicates that a
“region” is not expressly defined as—or necessarily limited to—consisting
of only a single directory identified by a pathname, as alleged by Patent
Owner. App. Br. 8. Farber’s Figure 2 unambiguously depicts one of the
regions 117 as containing multiple directories. As such, Patent Owner has
not established that the Examiner’s interpretation of “region” is inconsistent
with Farber’s Specification.
IX.
Patent Owner further argues in relation to claim 25 that “Woodhill
does not disclose servers organized into a ‘set of regions.’” App. Br. 32.
More specifically, Patent Owner acknowledges that Woodhill discloses
various local area networks and computers. Id. at 33. But Patent Owner
argues that “these [local areas] are not necessarily respective ‘regions.’” Id.
(emphasis added).
This argument is unpersuasive for two reasons. First, because Patent
Owner is only arguing that local area network are not necessarily regions,
Patent Owner is not alleging that even under the narrow interpretation, local
area networks do not constitute regions in at least some circumstances.
More importantly, though, as was explained in the preceding section, Patent
Owner’s proffered definition of region is unduly restrictive. Patent Owner

5 Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
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does not argue persuasively why the Examiner’s interpretation of region is
improper when interpreting that term more broadly in accordance with
Phillips.

DECISION
The Examiner’s decision rejecting claims 10, 15, 16, and 25 as
anticipated is reversed.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
reject claims 10 and 25 under 35 U.S.C. § 103(a) as obvious over Woodhill.

Rule 41.50(b) provides that “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Rule
41.50(b) also provides the following:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the prosecution will be
remanded to the examiner. The new ground of
rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the
Board pursuant to this subpart.
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(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure (MPEP) § 1214.01
(9th Ed., Rev. 9, Nov. 2015).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)

msc

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22
Patent Owner:

NIXON & VANDERHYE, PC
901 North Glebe Road, 11th Floor
Arlington, VA 22203

Third Party Requester:

ARNOLD & PORTER LLP
ATTN: IP Docketing Dept.
555 Twelfth Street, NW
Washington DC 20004-1206