Ex Parte Borden et al

Patent Trial and Appeal Board

Mar 24, 2017

13432869 (P.T.A.B. Mar. 24, 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.
3222.208000E 2404
EXAMINER
QAYYUM, ZESHAN
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
13/432,869 03/28/2012 Bruce BORDEN
26111 7590 03/24/2017
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
03/24/2017 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 BRUCE BORDEN and RUSSELL BRAND
Appeal 2014-0077171
Application 13/432,8692
Technology Center 3600
Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
February 21, 2014) and Reply Brief (“Reply Br.,” filed June 20, 2014), and
the Examiner’s Answer (“Ans.,” mailed April 23, 2014), Advisory Action
(“Adv. Act.,” mailed November 25, 2013), and Final Office Action (“Final
Act.,” mailed July 25, 2013).
2 Appellants identify Carmenso Data Limited Liability Company as the real
party in interest. App. Br. 4.
Appeal 2014-007717
Application 13/432,869
CLAIMED INVENTION
Appellants’ claimed invention “relates to distributed content storage
and management, and more particularly, to content signatures for back-up
and management of files located on electronic information sources”
(Spec. 13).
Claims 1, 9, and 17 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method comprising:
generating a content signature, by a computing device, for
a file received within a network;
comparing, by the computing device, the generated
content signature to content signatures associated with existing
files within the network;
determining, by the computing device, a content signature
match exists in response to the generated content signature
matching one or more of the content signatures of the existing
files;
comparing, by the computing device, metadata for the
received file with metadata for the one or more existing files in
response to the content signature match;
determining if the received file was independently
developed from the one or more existing files based on the
comparing the metadata; and
taking a control action, by the computing device, in
response to determining that the received file was independently
developed.
REJECTIONS
Claims 1—20 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 2, 4, 10, 12, and 18 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
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Claims 1—20 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter that Appellants regard as the invention.
Claims 1—3, 6—11, and 14—17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sutton (US 7,496,604 B2, iss. Feb. 24, 2009) and Eden
(US 2003/0145200 Al, pub. July 31, 2003).
Claims 4, 5, 12, 13, and 18—20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Sutton, Eden, and Rabin (US 6,697,948 Bl,
iss. Feb. 24, 2004).
ANALYSIS
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellants were in
possession of the claimed invention. See id.
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting claims 1—20 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement (App. Br. 11—14). The
Examiner maintains that “comparing, by the computing device, metadata for
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the received file with metadata for the one or more existing files in response
to the content signature match,” as recited in independent claim 1, and
similarly recited in independent claims 9 and 17, is not disclosed in the
Specification (Final Act. 4—5). However, we agree with Appellants that a
person of ordinary skill in the art would understand from the Specification,
particularly including paragraphs 209 and 210, that Appellants were in
possession of the claimed invention, including “comparing . . . metadata for
the received file with metadata for the one or more existing files in response
to the content signature match,” at the time the application was filed (App.
Br. 11—14).3
The Examiner asserts in the Advisory Action that Appellants’ “cited
paragraphs disclose [the] comparing step but... do not disclose that [the]
‘comparing step’ is done ‘in response to content signature match’” (Adv.
Act. 2). However, it is clear from a fair reading of paragraphs 209 and 210
that the claimed determination, i.e., whether the received file was
independently created, is made, i.e., the “comparing” metadata step is
performed, only if a content signature match exists, i.e., in response to a
content signature match.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1—20 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement.
3 Appellants refer to corresponding paragraphs 215 and 216 of the published
application, Borden et al. (US 2012/0185445 Al, pub. July 19, 2012).
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Enablement
The test for compliance with the enablement requirement is whether
the disclosure, as filed, is sufficiently complete to enable a person of
ordinary skill in the art to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Thus,
when rejecting a claim for lack of enablement, the Examiner bears the initial
burden of setting forth a reasonable explanation of why the scope of the
claim is not adequately enabled by the description provided in the
specification. In re Wright, 999 F.2d 1557, 1561—62 (Fed. Cir. 1993).
Factors that may be considered in determining whether a disclosure would
require undue experimentation include (1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention,
(5) the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
See Wands, 858 F.2d at 737.
The Examiner bases the enablement rejection on the alleged failure of
the Specification to describe “preventing a data management system from
receiving additional copies of the received file,” as recited in claims 2 and
10, or “generating an exception report, the exception report identifying the
metadata of the received file and metadata of the one or more existing files
whose content signatures match,” as recited in claims 4 and 12, and similarly
recited in claim 18 (Final Act. 5—6). However, the Examiner neither
addresses the Wands factors nor otherwise explains why a person of ordinary
skill in the art would have to engage in undue experimentation to practice
the claimed invention.
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The Examiner has failed to establish a prima facie case of non­
enablement. Therefore, we do not sustain the Examiner’s rejection of
claims 2, 4, 10, 12, and 18 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the enablement requirement.
Indefiniteness
In rejecting claims 1—20 under 35 U.S.C. § 112, second paragraph, the
Examiner maintains that “it is unclear to one of. . . ordinary skill in the
art. . . how [the] determining step [i.e., ‘determining if the received file was
independently developed from the one or more existing files based on the
comparing the metadata, ’ as recited in independent claim 1 and similarly
recited in independent claims 9 and 17] is implemented]” (Final Act. 6).
And the Examiner asserts, “[f]or example[,] how [can it be] determine[d]
that [the] file is independently developed by just determining the metadata?
Specification does not disclose how this determining step is implemented”
{id. at 6—7). We disagree.
In our view, a person of ordinary skill in the art would understand
what is claimed when the claims are read in light of the Specification,
including the plain claim language, namely, that the claimed determination,
i.e., whether or not the received file was independently developed, is made
by “comparing . . . metadata for the received file with metadata for the one
or more existing files in response to the content signature match.” See
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986) (The test for definiteness under 35 U.S.C. § 112, second
paragraph, is whether “those skilled in the art would understand what is
claimed when the claim is read in light of the specification.”).
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We also do not agree with the Examiner that the term “independently”
in claims 1, 9, and 17 is a relative term that renders the claims indefinite
because “it is unclear to one of. . . ordinary skill... to what exten[t] the
metadata have to match or which item of the metadata have to match, or
what quantity of metadata item[s] have to match for a received file to be
considered] independently developed” (Ans. 18; see also Final Act. 7).
Claims 1, 9, and 17 admittedly are broad in that the claims recite that the
determination is “based on the comparing of the metadata”; but “breadth is
not to be equated with indefmiteness.” In re Miller, 441 F.2d 689, 693
(CCPA 1971).
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1—20 under 35 U.S.C. § 112, second paragraph.
Obviousness
Independent Claim 1 and Dependent Claims 2, 3, and 6—8
In rejecting independent claim 1 under 35 U.S.C. § 103(a), the
Examiner cites Sutton as disclosing substantially all of the limitations of the
claim except that the Examiner acknowledges that Sutton does not disclose
“determining if the received file was independently developed from the one
or more existing files based on the comparing the metadata,” as recited in
claim 1, and the Examiner cites Eden to cure the deficiency of Sutton (Final
Act. 8). More particularly, the Examiner finds that Eden discloses
“determining origin and dat[e]/time of the file” (id. (citing Eden 146)). And
the Examiner reasons that because the Specification discloses examining
metadata about a received file to determine its origin and date/time of
creation (see Spec. 1210) and does not provide any criteria for determining
whether the received file was independently developed, claim 1 can be
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properly interpreted for purposes of examination to recite “determining
origin and date/time of the file and taking a control action by the computing
device in response to determining metadata” (Ans. 18—20). The Examiner
further notes that because claim 1 includes conditional language, i.e.,
“determining if the received file was independently developed from the one
or more existing files based on the comparing the metadata,” the step of
“taking a control action” need not be found in the prior art because the step
is not performed if the received file was not independently developed (Final
Act. 8—9; see also Ans. 20-21 (emphasis added)).
We are persuaded by Appellants’ arguments that the Examiner erred
in relying on Eden to cure the acknowledged deficiency of Sutton, and that
the Examiner, therefore, erred in rejecting claim 1 under 35 U.S.C. § 103(a)
(App. Br. 20-25).
Eden is directed to a system and method for authenticating a data
transmission between a network-connected digital scanner and a terminal
(Eden, Abstract), and discloses in paragraph 46, on which the Examiner
relies, that the integrity of a transmitted document (i.e., that the scanned
document has not been modified during transmission) is verified by
determining the origin of the document and reading a time stamp. Yet, as
Appellants correctly observe, there is nothing in the cited portion of Eden
that discloses or suggests determining whether a received file, e.g., a
scanned document, was independently created (App. Br. 22). “By
definition, a scanned copy of a document cannot have been independently
developed, but rather is a copy of a document already in existence” (id.).
In rewriting the claim language, the Examiner ostensibly interprets
“determining if the received file was independently developed” to mean
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determining the “origin and date/time” of the received file. But there is
nothing in the cited portion of the Specification to support that
interpretation. Instead, the best that the Specification discloses is that the
origin and date/time of creation of a received file, for example, may be
employed (e.g., as an input to the claimed “comparing” metadata step) in
determining whether the received file was independently created. In other
words, we find nothing in the cited portion of the Specification that discloses
or suggests that determining the origin and date/time of a file is tantamount
to determining whether the file was independently developed, and therefore,
nothing to support the Examiner’s claim interpretation.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner’s rejection of dependent claims 2, 3, and 6—
8. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims
are nonobvious if the independent claims from which they depend are
nonob vious”).
Independent Claims 9 and 17 and Dependent Claims 10, 11, and 14—16
Independent claims 9 and 17 include language substantially similar to
the language of independent claim 1, and stand rejected based on the same
rationale applied with respect to claim 1 (Final Act. 8—9). Therefore, we do
not sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of
independent claims 9 and 17, and claims 10, 11, and 14—16, which depend
from claim 9, for the same reasons set forth above with respect to claim 1.
Dependent Claims 4, 5, 12, 13, and 18—20
Each of claims 4, 5, 12, 13, and 18—20 depends, directly or indirectly,
from one of independent claims 1, 9, and 17. The rejection of these
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dependent claims based on Rabin, in combination with Sutton and Eden,
does not cure the deficiency in the Examiner’s rejection of independent
claims 1, 9, and 17. Therefore, we do not sustain the Examiner’s rejection
of claims 4, 5, 12, 13, and 18—20 under 35 U.S.C. § 103(a) for the same
reasons set forth above with respect to the independent claims.
DECISION
The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
reversed.
The Examiner’s rejection of claims 2, 4, 10, 12, and 18 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement is reversed.
The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 112,
second paragraph, as indefinite is reversed.
The Examiner’s rejections of claims 1—20 under 35 U.S.C. § 103(a)
are reversed.
REVERSED
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