Ex Parte Kilian et alDownload PDFPatent Trial and Appeal BoardSep 26, 201410731790 (P.T.A.B. Sep. 26, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MICHAEL KILIAN, MARK AVERY, STEPHEN TODD, TOM TEUGELS, FRANCIS MARTENS, and JAN BRUYNDONCKX ____________________ Appeal 2012-001046 Application 10/731,790 Technology Center 2100 ____________________ Before CAROLYN D. THOMAS, HUNG H. BUI, and DANIEL N. FISHMAN, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants have filed a Request for Rehearing under 37 C.F.R. § 41.52 for reconsideration of our Decision on Appeal mailed May 14, 2014 (“Decision”). In that Decision, we affirmed the Examiner’s final rejection of claims 65–78 under 35 U.S.C. § 103(a) as being unpatentable over Stuart and McGovern. We have considered the arguments presented by Appellants in the Request for Rehearing, but we are not persuaded that any points were misapprehended or overlooked by the Board in issuing the Decision. As such, we decline to change our decision in view of Appellants’ arguments. Appeal 2012-001046 Application 10/731,790 2 ANALYSIS 37 C.F.R. § 41.52 states in relevant part: [t]he request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) [i.e., based upon a recent relevant decision of either the Board or a Federal Court] and (a)(3) [i.e., responding to a new ground of rejection made pursuant to § 41.50(b)] of this section. 37 C.F.R. § 41.52(a)(1) (emphasis added). The standard for rehearing is whether the Board has misapprehended or overlooked any points or arguments raised by Appellants. In this case, Appellants request a rehearing on the basis of our Decision stating “we agree with Appellants’ interpretation that the content address must be generated from content that includes, at least, the ‘previously-defined retention period’” and the Board’s adoption of the Examiner’s findings that McGovern discloses a content address of a file generated from content that “includes the previously-defined retention period.” Req. Reh’g 2–4 (citing Decision 8). Appellants allege the Board misapprehended the Examiner’s findings since the Examiner’s findings are based on an erroneous interpretation of the language of the claims. Specifically, Appellants contend that the Board agreeing with Appellants’ interpretation that the content address must be generated from content that includes, at least, the “previously defined retention period” requires at least two things: (1) That the previously-defined retention period be a portion of the content of the unit of content, and Appeal 2012-001046 Application 10/731,790 3 (2) That the content address of the unit of content be generated based on the portion of the content unit that includes previously-defined retention period such that the content address is based on the previously-defined retention period. Req. Reh’g 2 (emphasis added). Appellants further allege that the Board misapprehended and overlooked two arguments presented in their Briefs, including: (1) McGovern does not teach that the “previously-defined retention period” is part of the unit of content, and (2) McGovern does not teach that the retention period is used to create the content address. Req. Reh’g 3–4. We remain unpersuaded by Appellants’ arguments. Our Decision stated: Claims 65, 70, and 75 recite, in part, “a content address generated, at least in part, from at least a portion of the content of the unit of content” and that “portion of the content of the unit of content includes [A] the previously-defined retention period and [B] at least some other content in the unit of content.” Because the content address is generated from a portion of content and that same portion of content includes a previously-defined retention period, we agree with Appellants’ interpretation that the content address must be generated from content that includes, at least, the “‘previously-defined retention period.’” Decision 8 (emphasis added). We conclude the claims require “the content address generated” from content that “includes the previously-defined retention period” (emphasis added). Our Decision agreeing with the Appellants’ interpretation does not extend such that the content address is based on the previously-defined Appeal 2012-001046 Application 10/731,790 4 retention period (i.e., the retention period is used to create the content address) as Appellants argue. Req. Reh’g 4. Appellants have not provided any support from the Appellants’ own Specification where the retention period is described as being used to create the content address. App. Br. 8– 11; Reply Br. 5–8; Req. Reh’g 4. The only related passages that support the limitation is: (A) in claim 65 is in the “SUMMARY OF CLAIMED SUBJECT MATTER” in the Brief. App. Br. 4 (citing Spec. 8:23–30, 6:17 – 7:2, 18:23–25, and Figure 3). However, all these passages disclose a retention period as being part of a content descriptor file (CDF), and do not indicate that the retention period is used to create the content address. For example, Appellants disclose “the metadata [in the CDF 301] further includes information specifying a retention period related to the associated blob 303,” and “[i]n one embodiment, the storage system may find the retention period associated with a CDF in the content of the CDF itself.” Spec. 8:24–25, 18:23–24, and Figure 3. Even if Appellants’ Specification provides support for Appellants’ arguments, we are still unpersuaded. Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as understood by one of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). An inventor may rebut that presumption by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In this regard, however, we are careful not to read a particular embodiment appearing in the written description into the claim if the claim language is Appeal 2012-001046 Application 10/731,790 5 broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). As explained in our Decision, we adopted the Examiner’s findings that McGovern teaches a content address of a file generated from content that “includes the previously-defined pretention period.” Decision 8–9 (citing Ans. 14–16). Appellants continue to argue that McGovern does not disclose the retention date metadata associated with the file is stored as part of the content of the content of unit as claimed. Appellants argue that: McGovern ¶ 20 merely states that a retention date is provided within a data set. There is no indication that this retention date is stored in the data set to which the retention date refers. In fact, the same paragraph, McGovern ¶ 20, states that the retention date is stored in “the file’s ‘last access time’ property/attribute field or another metadata field (typically open protocol-based).” This field “remains permanently associated with the file” (emphasis added), but is not the content. Other portions of McGovern, which the Examiner did not consider because they did not matter under the Examiner’s erroneous claim interpretation, make clear that the metadata field is stored in a data set separate from the data set to which the retention date refers. See McGovern ¶ 5. The file system, which structures metadata and data on the storage device, stores the actual data in structures known as “data blocks” and stores metadata associated with the data in “inode” data structures. McGovern ¶ 5 and ¶ 54. Thus, the metadata fields that store the retention date are stored in a different data structure that is separate from that of the data itself. Accordingly, McGovern does not teach the previously-defined retention period being a portion of the content of the unit of content, as required by the proper interpretation of the independent claims. Req. Reh’g 3–4, see also App. Br. 9; Reply Br. 6. Appeal 2012-001046 Application 10/731,790 6 We disagree. Neither Appellants’ own Specification nor Appellants’ claims define what “unit of content” and “the content” are. Because neither Appellants’ Specification nor Appellants’ claims provide the definition for the term “the content” or “unit of content,” the Examiner’s interpretation of “a file” as a unit of content is within the standard of broadest reasonable interpretation. Further, McGovern discloses the file contains “data blocks” and “inode” (which includes the metadata associated retention date). McGovern ¶¶ 5, 54. And, the “data blocks” and “inode” are the content of the file that the content address generated from. McGovern ¶¶ 17, 20. McGovern also discloses that metadata information includes retention information, and a content address storage system (CAS) can be used with retention date/information. McGovern ¶¶ 18, 143. Therefore, McGovern discloses a content address generated is from content includes “the previously-defined retention period.” Further, we do not agree with Appellants’ narrow interpretation that the claims recite the retention period is used to create the content address. Req. Reh’g 4. Appellants have not provided any support for such limitation from their own Specification, and even if the Specification provides such a limitation, we cannot read such a limitation into the claims. In interpreting claims, care must be exercised, as there is a clear distinction between interpreting claims in light of the specification and reading limitations into the claims from the specification. Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). Although claims are interpreted in light of the specification, limitations from the specification must not be read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Appeal 2012-001046 Application 10/731,790 7 The plain language of the claims 65, 70, and 75 and interpreting the claims in light of the Specification, “a content address generated” is from content that includes, at least, “the previously defined retention period” does not require “the content address” is to be “based on the previously-defined retention period” (i.e., the retention period is used is used to create the content address).1 Appellants have not presented sufficient evidence or argument to persuade us of error in the Examiner’s findings. Absent such evidence or argument, we do not find error in the Examiner’s findings and conclusions, and, therefore, reaffirm the Examiner’s obviousness rejection of claims 65– 78. CONCLUSION We have considered the arguments raised by Appellants in the Request, but find none of these arguments persuasive that our original Decision was in error. It is our view that Appellants have not identified any points that the Board has misapprehended or overlooked. We have reconsidered our Decision but decline to grant the relief requested. This Decision on Appellants’ “Request for Rehearing” is deemed to incorporate our earlier Decision by reference. See 37 C.F.R. § 41.52(a). 1 Appellants have an opportunity to amend the claims to incorporate that the retention period is used to create the content address. Nevertheless, Appellants have not done so. Appeal 2012-001046 Application 10/731,790 8 DECISION We have granted Appellants’ request to the extent that we have reconsidered our Decision, but we deny the request with respect to making any changes therein. The Examiner’s decision rejecting claims 65–78 under 35 U.S.C. § 103(a) remains AFFIRMED. REHEARING DENIED bar Copy with citationCopy as parenthetical citation