Ex Parte Igakura

Patent Trial and Appeal BoardNov 1, 2012

09960548 (P.T.A.B. Nov. 1, 2012)

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. 09/960,548 09/20/2001 Tomohiro Igakura H0030.0003 5904 32172 7590 11/02/2012 DICKSTEIN SHAPIRO LLP 1633 Broadway NEW YORK, NY 10019 EXAMINER CHEN, TE Y ART UNIT PAPER NUMBER 2168 MAIL DATE DELIVERY MODE 11/02/2012 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 TOMOHIRO IGAKURA ________________ Appeal 2011-013558 Application 09/960,548 Technology Center 2100 ________________ Before DENISE M. POTHIER, JEREMY J. CURCURI, and TRENTON A. WARD, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-013558 Application 09/960,548 2 SUMMARY1 Claims 1-17 have been rejected. See Rej. 2-12. Although the Notice of Appeal is silent regarding which claims are appealed, the Appeal Brief unambiguously states that only pending claims 2-6 and 8-17 are appealed, and the Claims Appendix only includes claims 2-6 and 8-17. See App. Br. 3, 23-30. Accord Ans. 4 (acknowledging this inconsistency). The Reply Brief again unambiguously states that only claims 2-6 and 8-17 are appealed. See Reply Br. 1. Accordingly, we confine our decision to those claims. See Ex parte Ghuman, 88 USPQ2d 1478 (BPAI 2008) (precedential). Following our decision, the Examiner should cancel the non-appealed claims. See id.; see also Manual of Patent Examining Procedure (MPEP) § 1215.03, Rev. 9, August 2012. As such, Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 2-6 and 8-17. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). Claims 2, 3, and 12 stand rejected under 35 U.S.C. § 102(e) as anticipated by Ishihara (US 6,560,631 B1; issued May 6, 2003; filed Mar. 12, 1999). Rej. 8-9. Claims 4-6, 8-11, and 13-17 stand rejected under 35 U.S.C. § 103(a) as obvious over Ishihara and Nitta (US 5,109,511; issued Apr. 28, 1992). Rej. 9-12. We affirm. 1 Rather than repeat the Examiner’s positions and Appellant’s arguments in their entirety, we refer to the following documents for their respective details: the Non-Final Rejection (Rej.) mailed January 19, 2011; the Appeal Brief (App. Br.) filed April 19, 2011; the Examiner’s Answer (Ans.) mailed July 11, 2011; and the Reply Brief (Reply Br.) filed September 9, 2011. Appeal 2011-013558 Application 09/960,548 3 STATEMENT OF CASE Appellant’s invention relates to a file managing system and method capable of managing files having the same title but different contents, and managing files registered by respective registering persons and having the same content as a single file. Spec. 6:10-15. Claim 2 is illustrative and reproduced below with the key disputed limitation emphasized: 2. A file managing system for managing files, comprising: a file input unit for sending, to a data processor, inputted files, file titles, and file IDs to be registered; a file request input unit for sending, to the data processor, a file title of a requested file and a file ID; a memory unit including a correspondence table and a file memory, the correspondence table including correspondence relationships of file titles, file IDs and managing IDs, the file memory for recording, managing IDs and files; the data processor including: a means for producing and recording, if no file has the same content as any of the files recorded in the file memory, a new managing ID for a new file to be registered in the file memory; a means for retrieving files from the file memory using managing IDs; a means for sending the retrieved file to a file outputting unit, a file content comparing means for comparing the content of the new file to be registered and the contents of files registered in the file memory, a means for registering, if a same content file has been registered in the file memory, the file title, the file ID, and the managing ID of the same content file in the correspondence table, and Appeal 2011-013558 Application 09/960,548 4 a means for retrieving the correspondence table; and the file output unit for sending, to the file request input unit, the file corresponding to the file title and the file ID requested from the file request input unit as delivered from the data processor. CONTENTIONS The Examiner finds that Ishihara teaches all recited limitations of claim 2, and maps the recited file memory in which managing IDs and files are recorded to Ishihara’s cache management table 173a shown in Figure 12. Rej. 8 (citing col. 10, ll. 42-49). The Examiner finds that Ishihara’s activation of the cache management server 173 containing the cache management table 173a (Fig. 8) teaches producing a new managing ID and registering, in the file memory, the new managing ID and a file to be registered. Rej. 8 (citing col. 12, ll. 1-16); see also Rej. 8-9, 12-13. Appellant argues that Ishihara fails to disclose producing and recording a new managing ID when no file has the same contents as the file to be registered as recited in claim 2. App. Br. 20-21; Reply Br. 4-5; see also App. Br. 17-21; Reply Br. 1-7. In response, the Examiner states “[A]ppellant failed to clearly define the metes and bounds of the claimed file managing ID, the type of the claimed file memory or any specific technique to register the claimed file. As such, these claims are widely open [to] reasonable art interpretation.” Ans. 15-16; see also Ans. 9-18. Appeal 2011-013558 Application 09/960,548 5 ISSUE Under 35 U.S.C. § 102(e), has the Examiner erred by finding that Ishihara teaches producing and recording a new managing ID when no file has the same contents as the file to be registered as recited in claim 2? ANALYSIS Regarding claim 2, we agree with the Examiner’s position that Ishihara teaches all claim limitations. Ans. 10-11, 15-18. The Examiner explains Ishihara discloses “‘(S3) [t]he process execution controller 174 then activates the cache management server 173. Note that there are no cached files at the initial stage. Each time a cached file is created in the warehouse servers 181 to 183, the cache management server 173 updates its cache management table 173a for further management.’” Ans. 17 (citing col. 12, ll. 12-16) (emphasis omitted). We see no reason why this step of updating the cache management table (173a, Fig. 12) when a cached file is created in a warehouse server, the cache management table having columns for name, creation date, and warehouse name (col. 10, ll. 46-49, Fig. 12), would not produce and record a new managing ID when no file has the same contents as the file to be registered as recited in claim 2. We reach this conclusion by emphasizing that the argued limitation does not require maintaining files on a single system or using a single file management system to maintain files as argued by Appellant (App. Br. 20). Weighing Appellant’s arguments against the Examiner’s findings, we conclude Appellant has not shown error in the Examiner’s anticipation rejection based on Ishihara regarding claim 2. We therefore sustain the Appeal 2011-013558 Application 09/960,548 6 Examiner’s rejection of claim 2, as well as independent claims 3 and 12 which are not separately argued. We note in passing that claims 2, 3, and 12 do not recite managing files having the same file title but different contents, and managing files having the same content but different titles as a single file2 as Appellant argues (App. Br. 18-20). Claims 2, 3, and 12 also do not recite handling multiple files as a single object as Appellant argues (App. Br. 19). We also note that claims 3 and 12 do not recite producing and recording a new managing ID when no file has the same contents as the file to be registered as Appellant argues (App. Br. 20-21). Appellant for the first time in the Reply Brief argues Ishihara fails to disclose a file content comparison as recited in claims 2, 3, 8, and 9. Reply Br. 2-7. Appellant’s arguments on these points are untimely and waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). The claims also do not recite how the file content comparison is performed as Appellant argues. Reply Br. 2-7. Nevertheless, the Examiner finds that Ishihara teaches file content comparison. Ans. 11 (citing col. 13, ll. 12-16). Ishihara discloses “[m]ore specifically, the warehouse server 183 first checks whether there are any source data files or processing engines that are missing in its local storage. If some files are missing, the warehouse server 183 requests other servers 181 and 182 to provide them (S106, FIG. 16).” Col. 13, ll. 12-16. We note 2 This language is found in claim 1, but as noted above, this claim is not on appeal. Appeal 2011-013558 Application 09/960,548 7 that checking whether any files are missing in local storage requires some form of file content comparison, including but not limited to comparing a file name, which is part of the file and thus part of its content. Accordingly, we are not persuaded of error in the Examiner’s rejections of claims 2, 3, 8, and 9. Regarding the rejection of claims 4-6, 8-11, and 13-17 under 35 U.S.C. § 103(a), we agree with the Examiner’s position that Ishihara and Nitta collectively teach the claim limitations. Ans. 11-14, 18. Appellant argues (App. Br. 21) that Nitta does not cure the deficiency of Ishihara. We need not address whether Nitta cures Ishihara’s purported deficiencies for the reasons discussed above when addressing claims 2, 3, and 12. Appellant further argues, without any further explanation, that dependent claims 4-6 and 13-17 include additional limitations that, in combination with the limitations incorporated by reference, are further allowable. Reply Br. 7. Mere arguments unsupported by factual evidence are entitled to little probative value. Cf., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). We therefore are not persuaded of error in the Examiner’s rejection of claims 4-6, 8-11, and 13-17 and sustain the Examiner’s rejection of these claims. DECISION The Examiner’s decision rejecting claims 2-6 and 8-17 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2010). Appeal 2011-013558 Application 09/960,548 8 AFFIRMED kis