Ex Parte Herne

Patent Trial and Appeal BoardJun 30, 2014

11971658 (P.T.A.B. Jun. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JASON JOSEPH HERNE ____________ Appeal 2012-002044 Application 11/971,658 Technology Center 2100 ____________ Before CARLA M. KRIVAK, JOHHNY A. KUMAR, and DANIEL N. FISHMAN, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-6 and 8-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2012-002044 Application 11/971,658 2 STATEMENT OF THE CASE Appellant’s claimed invention is directed to a computer implemented method, apparatus, and computer usable program code for backing up data (Spec. ¶ [0001]). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A computer implemented method for backing up data, the computer implemented method comprising: responsive to a request to backup the data from a data processing system, identifying a unique identifier for the data processing system, wherein identifying comprises executing a backup process on the data processing system, wherein the backup process queries a set of components in the data processing system, and identifying the unique identifier from information received in response to the queries, wherein the unique identifier comprises a combination of a media access control address and a processor identifier; responsive to the request, backing up the data to a storage system to form backup data; and associating the unique identifier for the data processing system with the backup data, wherein identifying, backing up, and associating are all performed automatically without receiving user input. REFERENCES and REJECTIONS The Examiner rejected claims 1, 4, 5, 10, 13, 14, 16, 19 and 20 under 35 U.S.C. § 103(a) based upon the teachings of Childs (US 2005/0010835 A1) and Pike (US 2004/0006688 A1). The Examiner rejected claims 2, 3, 11, 12, 17 and 18 under 35 U.S.C. § 103(a) based upon the teachings of Childs, Pike, and Ishii (US 2004/0098426 A1). Appeal 2012-002044 Application 11/971,658 3 The Examiner rejected claims 8 and 9 under 35 U.S.C. § 103(a) based upon the teachings Childs, Pike, and Huebsch (US 6,487,644 B1). The Examiner rejected claims 6 and 15 under 35 U.S.C. § 103(a) based upon the teachings of Childs, Pike, and Lyon (US 2007/0250671 A1). ANALYSIS Upon consideration of the evidence on this record and each of Appellant’s contentions, we find the preponderance of evidence on this record supports the Examiner’s conclusions that the subject matter of Appellant’s claims 1-6 and 8-20 are unpatentable over various combinations of Childs, Pike, Ishii, Huebsch, and Lyon. Accordingly, we sustain the Examiner’s rejections of each of these claims for the reasons set forth in the Answer (Ans. 18-28). For emphasis only, we provide the following. We agree with the Examiner that In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) addresses the “reasonably pertinent to the particular problem” test and not the “same field of endeavor” test (Ans. 18). We also agree with the Examiner that Appellant is making conclusions for the Court (see, e.g., Ans. 18; App. Br. 18). We decline to make conclusions for our supervising Court based on what the Court would have believed, as we have no idea what their “beliefs” would lead them to conclude. We also point out Childs and Pike are both classified in the same International Classification group (G06F) and similar U.S. classifications. Further, Childs is directed to an automatic backup storage system for a computer system, Pike is directed to setting up an automated computer system and Pike’s Figure 1 is very similar to Appellant’s Figure 1. Thus, we find baseless Appellant’s extensive arguments that Childs and Pike are non-analogous art. Appeal 2012-002044 Application 11/971,658 4 We also agree Childs teaches or suggests “associating the unique identifier for the data processing system with the backup data” as the term “associating” is broad and Childs paragraphs 0063 and 0064 disclose this feature. The Examiner is also correct in finding Pike discloses the “unique identifier comprises a combination of a media access control address and a processor identifier” (Ans.23). Appellant appears to be arguing the references separately rather than what the combination of references reasonably suggests to one of ordinary skill in the art (Ans. 23-24) (See In re Keller, 642 F.2d 413, 425 (CCPA 1981)). As to Appellant’s contention the combination does not disclose “identifying, backing up, and associating are all performed automatically without receiving user input,” we agree with the Examiner that Childs discloses this limitation (Ans. 24-26). On this record we find the weight of the evidence supports the Examiner’s position as articulated in the Answer (id.). We additionally note the claim is directed to a method comprising the recited steps of identifying, backing up data, and associating. The term “comprising” does not preclude other parameters as disclosed in Childs. Thus, in light of the broad terms recited in the claims and the arguments presented, Appellant has failed to clearly distinguish the claimed invention over the prior art relied on by the Examiner, we conclude claims 1, 10, and 16 are obvious over the cited references.1 We also conclude claims 1 In the event of further prosecution, the Examiner may also want to consider: 1) the non-functional descriptive language of claim 10 as the claim is directed to a data processing system including program code where the processor unit describes the code (see FN2); and 2) the fact that claim 16 does not include the language “non-transitory,” and thus fails under 35 Appeal 2012-002044 Application 11/971,658 5 2-6, 8, 9, 11-15, and 17-20, not argued with particularity (App. Br. 26-27), are also obvious over the cited references. DECISION The Examiner’s decision rejecting claims 1-6 and 8-20 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)(1)(iv). AFFIRMED tj U.S.C. § 101 (although the Specification was amended accordingly, claim 16 was not).