Ex Parte Borden et al

Patent Trial and Appeal BoardMar 24, 2015

11783271 (P.T.A.B. Mar. 24, 2015)

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. 11/783,271 04/06/2007 Bruce Borden 3222.2080002 4286 26111 7590 03/24/2015 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER ARMOUCHE, HADI S ART UNIT PAPER NUMBER 2497 MAIL DATE DELIVERY MODE 03/24/2015 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 2012-012305 Application 11/783,271 Technology Center 2400 ____________ Before CARLA M. KRIVAK, JOHNNY A. KUMAR, and CHRISTA P. ZADO, Administrative Patent Judges. ZADO, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 9, 10, 31, 32, and 55–61. 2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify as the real party in interest Carmenso Data LLC. (App. Br. 3.) 2 No other claims are pending in the Application on Appeal. Appeal 2012-012305 Application 11/783,271 2 STATEMENT OF THE CASE 3 Claim 9 is illustrative of the subject matter on appeal (disputed limitation in italics): 9. A method for deleting files on one or more computing devices across an organization, comprising: receiving a request for a file to be deleted from respective ones of the one or more computing devices; generating a content signature for the requested file to be deleted; generating a set of the respective ones of the one or more computing devices within the organization that have files whose content signatures match the content signature of the file to be deleted; and transmitting a delete instruction to the set. THE REJECTIONS Claims 9, 10, 31, 32, and 55–58 stand rejected under 35 U.S.C. § 102(b) as anticipated by Vilcauskas (US 2001/0041989 A1; published Nov. 15, 2001). (Final Act. 3 and 4.) Claims 59–61 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Vilcauskas and Bereznyi (US 6,449,695 B1; published Sept. 10, 2002). (Final Act. 4.) 3 Rather than repeat the arguments here, we refer to the Briefs for the positions of Appellants and the Final Office Action and Answer for the positions of the Examiner. Only those arguments actually made by Appellants have been considered in this decision. Arguments that Appellants did not make in the Briefs have not been considered and are deemed to be waived. (See 37 C.F.R. § 41.37(c)(1)(iv) (2012).) Appeal 2012-012305 Application 11/783,271 3 ISSUES (1) Did the Examiner err by finding Vilcauskas discloses: (a) “generating a set of the respective ones of the one or more computing devices within the organization that have files whose content signatures match the content signature of the file to be deleted” and “transmitting a delete instruction to the set,” as recited in claim 9; and (b) “generating a content signature for the requested file to be deleted,” as recited in claim 9? (2) Does Vilcauskas fail to anticipate claims 9, 31, and 57 for failure to disclose elements in the order they are claimed? ANALYSIS First Issue With regard to “generating a set . . . of computing devices . . . that have files whose content match the content signature of the file to be deleted,” as recited in claim 9, the Examiner relies on paragraph 28 of Vilcauskas which discloses comparing checksums (content signatures) of protected files with checksums of potentially infringing files in order to compile an “infractors list” (set) of files containing potentially infringing content (files to be deleted). (Final Act. 3, citing Vilcauskas ¶¶ 26, 28.) Appellants do not address the Examiner’s finding that an “infractors list” is a set (Fin. Act. 3; Ans. 4), but instead assert the Examiner has relied on Usenet Appeal 2012-012305 Application 11/783,271 4 as being a “set” (App. Br. 8). 4 Accordingly, Appellants have not persuaded us of error. With regard to “transmitting a delete instruction to the set,” as recited in claim 9, the Examiner relies on, inter alia, paragraphs 29 and 30 of Vilcauskas. (Final Act. 3; Ans. 4.) Paragraphs 29 and 30 disclose the steps of positively identifying infractions, and automatically contacting the administrator of the infringing account, for example by e-mail, in an attempt to terminate (delete) the site or account. (Vilcauskas ¶¶ 29, 30.) Appellants contend the disclosure of paragraphs 29 and 30 does not amount to “any kind of ‘delete instruction,’ let alone at least ‘transmitting a delete instruction to the set,’” (App. Br. 13) arguing “cease-and-desist module 120 [does not have] any authority to demand the deletion of the identified content at any location” and does not cause content to be deleted. (Reply Br. 3.) Appellants’ arguments are not commensurate with the scope of claim 9. In particular, in arguing a “delete instruction” must have authority to delete content and cause the content to be deleted, Appellants construe the term “delete instruction” too narrowly. The language of claim 9 does not require deletion to actually occur in response to the “delete instruction” as argued by Appellants. (See Reply Br. 3.) Vilcauskas discloses cease-and- desist module 120 sending a cease-and-desist warning via e-mail (transmission) to the administrator of a site containing an infringing file in 4 The Examiner also relies on paragraph 37 of Vilcauskas, relating to Usenet module 130. However, because paragraphs 29 and 30 of Vilcauskas disclose the disputed claim limitations, we need not address the Examiner’s rejection based on paragraph 37 of Vilcauskas. (See, e.g., In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009).) Appeal 2012-012305 Application 11/783,271 5 an attempt to terminate the site. (Vilcauskas ¶ 30.) The cease-and-desist warning is properly construed as falling within the scope of a “delete instruction.” Further, Vilcaukas’ Abstract and paragraph 37 describe items to be “automatically removed.” Thus, we are unpersuaded that the Examiner incorrectly determined Vilcauskas discloses the disputed limitations of claim 9. Second Issue The Examiner finds Vilcauskas discloses “generating a content signature for the requested file to be deleted,” as recited in claim 9. The Examiner relies on Infringement-identification module 200 of data processing system 100 comparing checksums (content signatures). (Ans. 5.) The Examiner finds that in order for checksums to be compared, they must first be generated. (Id.) Appellants argue Vilcauskas does not satisfy the disputed claim limitation because claim 9 requires the data processing system 100 generate the content signature, which Vilcauskas does not explicitly disclose (“Nowhere does Vilcauskas disclose that the data processing system 100 generates the checksums for comparison”). (App. Br. 16.) We are unpersuaded by Appellants’ argument because claim 9 does not limit what generates the content signature. (Claim 9, “A method for deleting files on one or more computing devices across an organization, comprising: . . . generating a content signature for the requested file to be deleted.”) As a result, we are unpersuaded that the Examiner incorrectly determined Vilcauskas discloses the disputed limitation of claim 9. Appeal 2012-012305 Application 11/783,271 6 Third Issue Appellants contend Vilcauskas’ method is not performed in the same order as the method of claim 9 based on the incorrect premise that the Examiner relies on cease-and-desist module 120’s attempt to contact infringers as satisfying the first recited step in claim 9 (“receiving a request for a file to be deleted from respective ones of the one or more computing devices.”). (App. Br. 14.) However, the Examiner relies on an earlier step in Vilcauskas (identifying media files to be protected) as disclosing the first step of claim 9. (Fin. Act. 3.) Moreover, the language of claim 9 does not impose a specific order in which the method must be performed, and it is not proper to construe the claim to require a specific order. (Altiris v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003)) CONCLUSION We, therefore, sustain the Examiner’s rejection under § 102 of independent claim 9; independent claims 31 and 57, which recite similar limitations and are not argued separately (App. Br. 8–16); and dependent claims 10, 32, 55, 56, and 58 which are not argued separately (App. Br. 17.) We also sustain the Examiner’s rejection under § 103 of dependent claims 59–61, for which Appellants find Bereznyi does not cure the deficiencies of Vilcauskas (App. Br. 17). However, as we agree there are no deficiencies in Vilcauskas, these arguments are not persuasive. DECISION The Examiner’s decision rejecting claims 9, 10, 31, 32, and 55–61 is AFFIRMED. Appeal 2012-012305 Application 11/783,271 7 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 mls