Ex Parte BURRIS et al

Patent Trials and Appeals Board

Apr 11, 2019

12826335 - (D) (P.T.A.B. Apr. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/826,335 06/29/2010 THOMAS J. BURRIS
112978 7590 04/15/2019
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
IN920100040US1_8150-0660 3186
EXAMINER
GORTAYO, DANGELINO N
ART UNIT PAPER NUMBER
2168
NOTIFICATION DATE DELIVERY MODE
04/15/2019 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 THOMAS J. BURRIS, BHA VAN KUMAR KASIV AJJULA,
MANISH KATARIA, and ANURAG SRIVASTAVA 1
Appeal 2018-003 663
Application 12/826,335
Technology Center 2100
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
This is Appellants' second appeal of claims associated with
U.S. Application No. 12/826,335. In the present appeal, Appellants appeal
under 35 U.S.C. § 134(a) from the Examiner's obviousness rejection of
claims 24--43. 2 App. Br. 1.
We reverse.
1 Appellants list IBM Corporation as the real party in interest. Appeal Brief
filed Oct. 10, 2017 ("App. Br.") 1.
2 Appellants alternatively state that the appeal is of claims 1-20 (App. Br. 4),
but we understand that listing to constitute a clerical error. See Amendment
filed Aug. 29, 2016 (cancelling claims 1-23).
Appeal 2018-003663
Application 12/826,335
STATEMENT OF THE CASE
Appellants' invention creates storage-artifact collections, e.g.,
computer-file collections, using metadata. Spec. ,r 5. Among other
advantages, these collections allow the user to perform file-management
actions on several files that share a property. Id. Because collection
membership can be storage-location independent, these file-management
actions on collections provide an efficient way to maintain files in different
locations. Id. ,r 6.
Claim 24 illustrates the claims on appeal:
24. A computer-implemented method, comprising:
storing, into a node of a tree structured repository, a
storage artifact;
associating, using metadata within the storage artifact, the
storage artifact with a first collection of related heterogeneous
artifacts;
associating, using the metadata within the storage artifact,
the storage artifact with a second collection of related
heterogeneous artifacts;
receiving a request for a file management action;
identifying, based upon the request and using the
metadata, a set of a plurality of storage artifacts related to the
request; and
performing, for each storage artifact within the set of the
plurality of storage artifacts; the file management action.
Claims 24--43 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Hom (US 7,840,619 B2; issued Nov. 23, 2010), Thomsen
(US 2008/0270462 Al; published Oct. 30, 2008), and Bellotti
(US 7,975,239 B2; issued July 5, 2011). Final Act. 2-14.
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Appeal 2018-003663
Application 12/826,335
We have jurisdiction under 35 U.S.C. § 6(b ). We review the appealed
rejections for error based upon the issues identified by Appellants, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
THE REJECTION AND CONTENTIONS
The Examiner finds that Hom teaches most of the limitations of
independent claim 24, including the step of identifying, based upon a request
for a file management action and using metadata, a plurality of storage
artifacts related to a request. Final Act. 3--4. The Examiner relies on
Thomsen for teaching storing storage artifacts in tree-structured repositories.
Id. at 4.
The Examiner additionally finds that Hom in view of Thomsen does
not explicitly teach that the noted identification is undertaken with the use of
metadata that is contained within the storage artifact. Id. at 5. 3 The
Examiner relies on Bellotti for teaching an identification using metadata that
is stored within the storage artifact. Id. (citing Bellotti col. 5, 11. 6-18; col. 5,
1.59---col. 6, 1. 34; col. 7, 11.3 8--49). The Examiner sets forth motivation for
combining Bellotti's teachings with those of Hom and Thomsen. Id. (citing
Bellotti col. 2, 11. 18--43).
3 Hom, for example, extracts metadata from within files, stores the extracted
metadata in a separately located catalog, and later identifies collections of
files with the metadata that is contained in the separately located catalog-
not the metadata that is contained within the files. E.g., Hom, col. 13, 11. 11-
24.
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Appeal 2018-003663
Application 12/826,335
The Examiner further clarifies that in relying on Bellotti, the
Examiner is not mapping the claim term "storage artifact" to any of
Bellotti's individual task objects 129, but instead, is reading "storage
artifact" on Bellotti's task-oriented items 139, which are collections of the
individual task objects 129: 4
Bellotti is directed towards a system of providing metadata
interactions with task-related objects .... [A] task-oriented item
is a storage component that can include task objects and files, the
task-oriented item interpreted by the Examiner to perform the
same functions as a storage artifact, and column 7 lines 38--49
of Bellotti[] further shows that task-oriented items specifically
include[] the data objects as well as metadata."
Ans. 3 ( emphasis added); see also Final Act. 15 ("Bellotti does teach
metadata separate from task objects, but it is the disclosed task items [139]
that [ the Examiner interprets] to teach the storage artifact, a task item being
a container that can comprise task objects and metadata together").
4 Bellotti uses terminology inconsistently. Of relevance, Bellotti generally
uses "task object" to mean an individual object 129, as depicted in Bellotti,
Figure 2, and the reference uses "task-oriented item" to mean a
collection 139 of objects 129: "[a] task-oriented item 139 is a storage
component relating to the planning, execution or completion of a task and
can include task objects 129, [such as] email 130, activities 131, events 132,
and contacts 133." Bellotti, col. 5, 11. 35-38; see also id., FIG. 2 (labeling
the individual objects 129 as "Task Objects"). But Bellotti also conversely
refers to the collection 139 as "a task object" and an individual object 129 as
"an item": "Task objects are collections of items, which include email,
activities, events, contacts, and other data, as well as other task objects" (id.,
col. 5, 11. 8-11 ); "The task viewer 122 deduces, stores and attaches
metadata 140 to task objects 139" (id., col. 5, 11. 59---60). Bellotti also refers
to the collection of objects as a "task-oriented object 139." Id. col. 13, 1. 43.
For consistency, this Decision uses "task object" to mean an individual
object 129, and it uses "task-oriented item" to mean the collection 139.
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Appeal 2018-003663
Application 12/826,335
Appellants argue, inter alia, that the Examiner cites no teaching to
support the determination that the claim term "storage artifact" reasonably
can be interpreted as reading on Bellotti's collection of task objects-task-
oriented item 139. App. Br. 10. Appellants argue that "[a] storage artifact is
a file, and as claimed it is [ a file] stored 'into a node of a tree structures
repository."' Id.
ANALYSIS
We disagree with Appellants that a storage artifact necessarily is
limited solely to files. Appellants alternatively describe storage artifacts as
follows: "One aspect of the disclosure can include a method ... for
establishing collections of storage artifacts ( e.g., files)." Spec. 2.
Appellants' use of "e.g.," instead of "i.e.," reasonably indicates that a file
merely is a non-limiting example of a storage artifact. See Interval
Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373 (Fed. Cir. 2014) ("Had [a
certain] phrase been cast as a definition instead of as an example-if the
phrase had been preceded by "i.e." instead of "e.g."-then it would help
provide the clarity that the specification lacks.") ( emphasis added).
Still, determining that a storage artifact is not limited to files does not
answer the question of what other types of data reasonably do fall within the
meaning of "storage artifact." For the purpose of this appeal, it is sufficient
that we agree with Appellants (App. Br. 10) that the Examiner cites to no
teaching or evidence to support the determination that one skilled in the art
reasonably would interpret the recited "storage artifact," in the singular, to
read on not only an individual task object, such as a file, email, activity,
event, or contact, but also read on a collection of task objects.
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Appeal 2018-003663
Application 12/826,335
To be sure, the use of the word "a" in a claim generally can be
construed to mean "one or more." See KCJ Corp. v. Kinetic Concepts, Inc.,
223 F.3d 1351, 1356 (Fed. Cir. 2000). However, "[ w ]hen the claim
language and specification indicate that 'a' means one and only one, it is
appropriate to construe it as such even in the context of an open-ended
'comprising' claim." Harari v. Lee, 656 F.3d 1331, 1341 (Fed. Cir. 2011).
As such, the present rejection lacks the requisite preponderance of the
evidence to support the Examiner's findings. See Ethicon v. Quigg, 849
F.2d 1422, 1427 (Fed. Cir. 1988).
We therefore do not sustain the obviousness rejection under 35 U.S.C.
§ 103(a) of independent claim 24 or of claims 25--43, which either depend
from claim 24 or otherwise include similar claim language.
DECISION
The Examiner's decision rejecting claims 24--43 is reversed.
REVERSED
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