Ex Parte Deolalikar

Patent Trial and Appeal BoardJan 30, 2014

11879992 (P.T.A.B. Jan. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte VINAY DEOLALIKAR1 __________ Appeal 2011-009116 Application 11/879,992 Technology Center 2100 __________ Before ERIC GRIMES, JEFFREY N. FREDMAN, and ULRIKE W. JENKS, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a method of determining the documents from which a particular document was derived. The claims have been rejected for anticipation. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellant identifies the Real Party in Interest as Hewlett-Packard Development Company, L.P. (App. Br. 1). Appeal 2011-009116 Application 11/879,992 2 STATEMENT OF THE CASE Claims 1-20 are on appeal. Claim 1 is illustrative and reads as follows (emphasis added): 1. A method of determining a subset of documents from which a particular document was derived, the method comprising: receiving similarity measurements indicating similarities between contents of documents; and determining the subset of the documents that the particular document was derived from based on dates the documents were created and the similarity measurements without requiring document tracking information to be associated with the documents to determine the subset. Similarly, claims 8 and 15, the other independent claims, recite “using dates the documents were created and the similarity measurements to determine a subset of the documents that a particular document was derived from” (claim 8) or “using the similarity measurements to determine a subset of the documents that a particular document was derived from” (claim 15). The Examiner has rejected claims 1, 2, 8, 15, 16, and 20 under 35 U.S.C. § 102(b) as anticipated by Doerre2 (Ans. 3). The Examiner has also rejected the remaining claims under 35 U.S.C. § 103(a) as obvious: claims 3-6, 9, 10, 17, and 18 based on Doerre and Hill3 (id. at 6) and claims 7, 11-14, and 19 based on Doerre, Hill, and Farahat4 (id. at 12). The same issue is dispositive for all of the rejections. The Examiner finds that Doerre discloses a method meeting all of the limitations of claim 1. In particular, the Examiner finds that Doerre 2 Doerre et al., US 6,446,061 B1, issued Sept. 3, 2002. 3 Hill et al., US 5,808,615, issued Sept. 15, 1998. 4 Farahat et al., US 7,188,117 B2, issued Mar. 6, 2007. Appeal 2011-009116 Application 11/879,992 3 discloses determining the documents from which a particular document was derived in its description at columns 7 and 17 that “similarity measurements [are] computed based on the dates associated with a particular document” (Ans. 4). Appellant argues that “‘generating a content taxonomy of a multitude of documents (210) stored on a computer system,’ as disclosed by Doerre, is not analogous to, and thus does not anticipate, ‘determining the subset of the documents that the particular document was derived from . . . ,’ as claimed” (App. Br. 10-11). We agree with Appellant that the Examiner has not shown that Doerre discloses a method that includes a step of determining the documents that a particular document was derived from, as claimed. Doerre discloses a “method of generating a content taxonomy of a multitude of documents [ ] stored on a computer system” (Doerre, col. 4, ll. 31-34). The method includes selecting a subset of the documents and generating a taxonomy for the subset of documents (id. at col. 4, ll. 35-38). Doerre discloses that the subset of documents can be determined by random selection (id. at col. 7, ll. 10-11), and that advantageously “the range of the document dates is divided in equally sized sub-ranges and said random selection is performed separately for documents with document dates from said sub-ranges” (id. at col. 7, ll. 17-20). Specifically, this approach “guarantees that changes of the terms used within the documents (‘evolution of terminology’), which occur over time, are fully reflected in the generated taxonomy” (id. at col. 7, ll. 21-24). Column 17 of Doerre likewise describes selecting a subset of documents by random selection, Appeal 2011-009116 Application 11/879,992 4 which can be “performed based on documents [of] similar size or similar date” (id. at col. 17, ll. 20-21). Thus, although the Examiner correctly found that Doerre discloses receiving similarity measurements indicating similarity of documents, he has not identified any disclosure in Doerre of determining the documents from which a particular document was derived, as required by the claims on appeal. Because Doerre does not identically disclose the claimed invention, we are constrained to reverse the rejection of claims 1, 2, 8, 15, 16, and 20 as anticipated by Doerre. The rejections based on 35 U.S.C. § 103(a) each relies on the Examiner’s finding that Doerre identically discloses the invention of independent claims 1, 8, and 15 (Ans. 6-18). Because that finding is not supported by the evidence, we must also reverse the rejection of claims 3-6, 9, 10, 17, and 18 as obvious based on Doerre and Hill, and the rejection of claims 7, 11-14, and 19 as obvious based on Doerre, Hill, and Farahat. SUMMARY We reverse all of the rejections on appeal. REVERSED cdc