Ex Parte Bhogal et alDownload PDFPatent Trial and Appeal BoardMar 29, 201713249476 (P.T.A.B. Mar. 29, 2017) Copy Citation 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. 13/249,476 09/30/2011 KULVIRS. BHOGAL CAM920110035USl_8150-0097 3446 52021 7590 03/31/2017 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, EL 33498 EXAMINER GLASSER, DARA J ART UNIT PAPER NUMBER 2161 NOTIFICATION DATE DELIVERY MODE 03/31/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KULVIR S. BHOGAL, MICHAEL C. HOLLINGER, JENNIFER E. KING, CHRISTINA K. LAURIDSEN, and ROBERT R. PETERSON Appeal 2014-000184 Application 13/249,476 Technology Center 2100 Before: THU A. DANG, ELENI MANTIS MERCADER, and JOHN G. NEW, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2014-000184 Application 13/249,476 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1— 20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION The claimed invention is directed to automatic file version verification within electronic mail. Spec. para. 39. Claims 1 and 14, reproduced below, are illustrative of the claimed subject matter: 1. A method comprising: responsive to initiating an operation on a file stored within a client system, determining metadata for the file; determining a storage location within a file repository of a master version of the file from the metadata; and determining, from the storage location, whether the master version of the file is more recent than the file stored within the client system using a processor of the client system. 14. A computer program product comprising: a computer readable storage medium having computer readable program code embodied therewith, the computer readable program code comprising: computer readable program code configured to determine metadata for a file stored within a client system responsive to initiating an operation on the file; computer readable program code configured to determine a storage location within a file repository of a master version of the file from the metadata; and computer readable program code configured to determine, from the storage location, whether the master version of the file is more recent than the file stored within the client system. 2 Appeal 2014-000184 Application 13/249,476 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: The Examiner made the following rejections: Claims 14—20 stand rejected under 35 U.S.C. § 101 for being directed to non-statutory subject matter. Claims 1, 4—6, 8, 10-12, 14, and 17—19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chapweske in view of Kieselbach. Claims 2, 7, 9, 13, 15, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chapweske in view of Kieselbach, and further in view of Gregerson. Claims 3 and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chapweske in view of Kieselbach, and further in view of Demsky. The pivotal issues are whether the Examiner erred in finding: 1. claims 1—40 as being non-statutory under 35 U.S.C. § 101; 2. Kieselbach teaches the limitation of “responsive to initiating an operation on a file stored within a client system, determining metadata for the file” as recited in claim 1; and Gregerson Kieselbach Demsky US 5,758,342 May 26, 1998 US 2007/0143425 A1 June 21, 2007 US 2008/0208934 A1 Aug. 28, 2008 US 8,121,990 B1 Feb. 21,2012Chapweske REJECTIONS ISSUES 3 Appeal 2014-000184 Application 13/249,476 3. Chapweske teaches the limitation of “determining, from the storage location, whether the master version of the file is more recent than the file stored within the client system using a processor of the client system,” as recited in claim 1. ANALYSIS We adopt the Examiner’s findings in the Answer and Final Action and we add the following primarily for emphasis. We note that if Appellants failed to present arguments on a particular rejection, we will not unilaterally review those uncontested aspects of the rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential); Hyatt v. Dudas, 551 F.3d 1307, 1313—14 (Fed. Cir. 2008) (The Board may treat arguments Appellants failed to make for a given ground of rejection as waived). Claims 14—20 rejected under 35 U.S.C. § 101 Appellants argue that Claim 14 recites a “computer readable storage medium” wherein the terms “storage” and “storage medium” do not encompass a transitory, propagating signal per se (App. Br. 14). We do not agree. We direct Appellants’ attention to MPEP § 2106(1) (Nov. 2015) (“a claim to a computer readable medium that can be a compact disc or a carrier wave covers a non-statutory embodiment and therefore should be rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter”). See also Ex parte Mewherter, 107 USPQ2d 1857, 1859-62 (PTAB 2013) (precedential) (finding that a computer readable storage medium may still include transitory signals). The broadest reasonable interpretation of claims 14—20, when read in light of Appellants’ Specification (see paras. 10—11), is inclusive of transitory propagating signals. See Mewherter, 107 USPQ2d at 1859-1862. 4 Appeal 2014-000184 Application 13/249,476 “A transitory, propagating signal [however] ... is not a ‘process, machine, manufacture, or composition of matter. ’ [These] four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.” In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Specifically, signals are unpatentable “as failing a tangibility requirement to be ‘manufactures’” because they are not tangible media. Nuijten 500 F.3d at 1366 (emphasis added). Thus, the recitation of a “computer readable storage medium” does not preclude transitory signals. We affirm the Examiner’s rejection of claims 14—20 under 35 U.S.C. § 101. Claims 1—20 rejected under 35 U.S.C. §103(a) Appellants argue that Kieselbach does not teach the limitation of “responsive to initiating an operation on a file stored within a client system, determining metadata for the file” as recited in claim 1 (App. Br. 23—26). We do not agree with Appellants’ argument. The Examiner finds, and we agree, that Kieselbach teaches “the disclosed system determines whether the document attached to the message detected at step 40 has been previously stored in the user’s personal document library” (para. 26; Ans. 7). Kieselbach further teaches that “[t]he determination at step 40 may be based on the file name of the attached document, and/or other metadata associated with the attached document, together with the current contents of the personal document library” (para. 26; Ans. 7). We agree with the Examiner’s finding that Kieselbach’s message having an attached document is detected after the operation is performed (“[t]he message detected at step 40 may be detected as a result of a message operation” (para. 25)). Thus, after detection of the message, the system determines whether the attached document has been previously stored by 5 Appeal 2014-000184 Application 13/249,476 determining metadata of the attached document (FIG. 2 and para. 26; Ans. 7). Accordingly, the document metadata is determined in response to the operation being performed on the document (i.e., sending a message with the document attached thereto). Therefore, we agree, that Kieselbach teaches and suggests the limitation of “responsive to initiating an operation on a file stored within a client system, determining metadata for the file,” as recited in claim 1. We also, agree with the Examiner that this interpretation is consistent with Appellants’ Specification wherein the selected message being forwarded has a file attachment that triggers file verification (Spec. 39). Appellants further argue that although the file identifier described by Chapweske may be “metadata,” it is metadata of the master version of the file—not metadata for the file stored within the client system, as claimed (App. Br. 27). We are not persuaded by Appellants’ argument. Chapweske teaches that “[a client (which may be one or more of the Users A-F, FIGS. 1-3) communicates a file modification status request (‘FMSR') to a server (such as server 12, FIG. 1)” (col. 11,11. 15—20, Ans. 8). Chapweske teaches that “the FMSR includes at least a file identifier useful to identify a particular file and a file property” (col. 11,11. 20-25, Ans. 8). According to Chapweske, “[t]he file property can be any of a variety of properties for the file that change when the file is modified” and “[o]ne particular property that has been discovered to be useful in many invention embodiments is a file version number or identifier that can be used to identify a particular version of that file” (col. 11,11. 45—55, Ans. 8). Further, Chapweske teaches that “the server compares the current property [ ] to the property from the FMSR” (col. 12,11. 1—10; Ans. 8). The Examiner finds, and we agree, that 6 Appeal 2014-000184 Application 13/249,476 because the client communicates the FMSR file property to the server and the server compares the FMSR file property to the master file property, the FMSR file property is necessarily metadata of the client file (see also col. 16,11. 50—56, “[t]he FMSR includes ... a version number corresponding to the most recent version of the file that the client has” Ans. 8). Appellants further argue that whereas the claims require that this determination is performed by the client system, Chapweske teaches that the determination is performed by a server (App. Br. 28). We are not persuaded by Appellants’ argument. We agree with the Examiner that claim 1 does not recite a client system performing a determination of whether the master version of the file is more recent than the file stored within the client system (Ans. 9). Rather, claim 1 recites “determining, from the storage location, whether the master version of the file is more recent than the file stored within the client system using a processor of the client system” (Ans. 9). Thus, we agree with the Examiner that according to the broadest reasonable interpretation, the claim limitation encompasses performing the determination using both a processor of the client and a processor of a server (Ans. 9). We agree with the Examiner that in order to determine whether Chapweske’s master version of the file is more recent than the file stored within the client, the client must send the FMSR to the server (col. 11,11. 15— 20; Ans. 10). Accordingly, Chapweske discloses making the determination using a client processor because the client processor is being used to send the FMSR which triggers version comparison (see Ans. 10). Because the determining step is not limited to being performed solely by the client processor, Chapweske broadly but reasonably teaches and suggests “determining, from the storage location, whether the master version of the 7 Appeal 2014-000184 Application 13/249,476 file is more recent than the file stored within the client system using a processor of the client system,” as recited by claim 1 (Ans. 10). Accordingly, we affirm the Examiner’s rejection of claim 1 and for the same reasons the rejections of claims 9—20 which were not argued separately. CONCLUSIONS The Examiner did not err in finding: 4. claims 1—40 as being non-statutory under 35 U.S.C. § 101; 5. Kieselbach teaches the limitation of “responsive to initiating an operation on a file stored within a client system, determining metadata for the file” as recited in claim 1; and 6. Chapweske teaches the limitation of “determining, from the storage location, whether the master version of the file is more recent than the file stored within the client system using a processor of the client system,” as recited in claim 1. DECISION For the above reasons, the Examiner’s rejection of claims 1—20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation