Ex Parte Bhogal et al

Patent Trial and Appeal Board

Mar 29, 2017

13249476 (P.T.A.B. Mar. 29, 2017)

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