Ex Parte van Ingen et al

Patent Trial and Appeal BoardOct 23, 2012

11090586 (P.T.A.B. Oct. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CATHARINE VAN INGEN, DAN TEODOSIU, BRIAN T. BERKOWITZ and NIKHIL R. JOSHI ____________ Appeal 2011-006338 Application 11/090,586 Technology Center 2100 ____________ Before JEAN R. HOMERE, CAROLYN D. THOMAS, and GREGORY J. GONSALVES, Administrative Patent Judges. GONSALVES, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006338 Application 11/090,586 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the rejection of claims 1, 2, 6, 21, 22, 25-27, 30, and 31 (App. Br. 2). Claims 3-5, 7-20, 23, 24, 28, and 29 were canceled (id.). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The Invention Exemplary claim 1 follows: 1. A method for identifying one or more files that are to be included in a protection copy, the method comprising: receiving an identification of how a temporal version of one or more files is to be created, the temporal version being identified as one of a total copy and a backup copy, and wherein, when identified as a backup copy, the backup copy is further identified as one of a full backup copy, an incremental backup copy, and a chunked incremental backup copy; identifying a file, the file having a file extension and a file location; determining if the file extension of the identified file indicates that the identified file can be recovered from sources independent of a protection copy; when the file extension of the identified file indicates that the identified file can be recovered from sources independent of a protection copy, excluding the identified file from the protection copy; when the file extension of the identified file does not indicate that the identified file be recovered from sources independent of a protection copy, determining if a heuristic rule Appeal 2011-006338 Application 11/090,586 3 indicates that the identified file can be recovered from sources independent of a protection copy; when the heuristic rule indicates that the identified file can be recovered from sources independent of a protection copy, excluding the identified file from the protection copy; when the heuristic rule does not indicate that the identified file can be recovered from sources independent of a protection copy, including the identified file in the protection copy; determining a media size for storing the protection copy; storing the protection copy on one or more tangible computer-readable media; storing a backup catalog of one or more tangible computer readable media, the backup catalog comprising an identification of the contents and location of one or more protection copies. Claims 1, 2, 21, 22, 25, 27, and 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bacastow (U.S. 2005/0228836 A1, claiming priority to the Bacastow Provisional (U.S. 60/560,840 A1) in view of McNeil (US 7,310,654 B2) (Ans. 4-9). Claims 6 and 30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bacastow in view of McNeil and Cane (U.S. 6,157,931) (Ans. 9-11). Claim 26 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Bacastow in view of McNeil and Whiting (U.S. 2002/0107877 A1) (Ans. 11-12). Appeal 2011-006338 Application 11/090,586 4 ISSUES Appellants’ responses to the Examiner’s positions present the following issue: Did the Examiner err in finding that the Bacastow Provisional teaches or suggests “determining if the file extension of the identified file indicates that the identified file can be recovered from sources independent of a protection copy; [and] when the file extension of the identified file indicates that the identified file can be recovered from sources independent of a protection copy, excluding the identified file from the protection copy,” as recited in independent claim 1 (emphasis added) and as similarly required by independent claim 21? ANALYSIS We disagree with Appellants’ assertions regarding the Examiner’s obviousness rejections of claims 1, 2, 6, 21, 22, 25-27, and 30-31. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Answer (Ans. 3-19) in response to arguments made in Appellants’ Appeal Brief. We concur with the conclusion reached by the Examiner. We highlight and address certain findings and arguments below. Appellants contend that the Examiner erred in rejecting claims 1, 21, and 25 as obvious because the Bacastow Provisional fails to provide the disclosure and enablement to teach or suggest the claim limitations emphasized above (App. Br. 6-8). In support of this contention, Appellants argue that “cautioning a user ‘against selecting or searching for backup swap Appeal 2011-006338 Application 11/090,586 5 files, system work files, temporary work files or internet files;’ see Bacastow Provisional p. 10; fails to teach or suggest – as is explicitly recited n the claim(s) – determining if a file extension indicates that the file can be recovered from a source independent of a protection copy” (App. Br. 7 (emphasis omitted)). Appellants also argue that “the Bacastow Provisional is completely silent and fails to provide any teaching as to excluding file from a protection copy (other than a possible ‘caution’ to a user against the user selecting particular files)” (id. at 8). More particularly, Appellants argue that “even assuming, arguendo, that a .exe or .sys file might be recoverable from an ‘operating system recovery CD,’ there is no teaching or suggestion within the Bacastow Provisional that such information is actually used to exclude such a file from a protection copy” (id. (emphasis omitted)). The Examiner found, however, that the Bacastow Provisional teaches the claim limitations in dispute because it discloses: that a user is provided with [an] option of excluding or including a file from the backup list. The system warns [the] user against selection of specify [sic] type such [as] system files or internet files. The user has the ability and option to determine based on the file type (system work files or user’s file with extension such as .com) if the particular file can be recovered from other sources such [as an] Operating System backup CD (Ans. 15 (emphasis and citations omitted)). We agree with the Examiner. The Bacastow Provisional teaches that files can be designated by the user to be copied and stored by the operations of the invention (p. 10). The Bacastow Provisional cautions the user “against selecting . . . for backup swap files, system work files, temporary work files, or internet files” (p. 10). Thus, with this caution and the ability to designate particular files for backup, a user of Bacatow’s system would choose to exclude from a Appeal 2011-006338 Application 11/090,586 6 protection copy certain files for copying that are already available from other sources such as operating system files having the .sys extension. In other words, it would have been obvious, in light of the disclosure of the Bacastow Provisional, to identify files that could be recovered from other sources by their file extension and to exclude the identified files from a protection system. Accordingly, we find no error in the Examiner’s obviousness rejections of independent claims 1, 21, and 25 as well as the claims dependent therefrom (i.e., claims 2, 6, 22, 26, 27, 30 and 31) because Appellants did not set forth any separate patentability arguments for them (see App. Br. 9). DECISION We affirm the Examiner’s decision rejecting claims 1, 2, 6, 21, 22, 25- 27, 30, and 31 as obvious. 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 peb