Ex Parte 5,978,791 et al

Patent Trial and Appeal Board

Mar 29, 2016

90012931 (P.T.A.B. Mar. 29, 2016)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/012,931 07/26/2013 5,978,791 47415.440 4110
23117 7590 03/30/2016
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
REICHLE, KARIN M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/30/2016 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 Personal Web Technologies, LLC
and LEVEL 3 COMMUNICATIONS, LLC
Appellants and Patent Owner
____________

Appeal 2015-004285
Reexamination Control 90/012,931
Patent 5,978,791
Technology Center 3900
____________

Before STEPHEN C. SIU, BRADLEY W. BAUMEISTER, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON REQUEST FOR RECONSIDERATION

Appellants request rehearing under 37 C.F.R. § 41.52 of our Decision
on Appeal entered September 29, 2015 (“Decision” or “Dec.”) wherein we
affirmed the Examiner’s rejection of claim 35 under 35 U.S.C. § 102(a) or
(e) as anticipated by US Patent No. 5,649,196 issued to Woodhill et al. on
July 15, 1997 (herein “Woodhill”). We have jurisdiction under 35 U.S.C.
§ 6(b).
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The Request for Rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board.
37 C.F.R. § 41.52(a)(1).
Contentions
Appellants contend that “the Board overlooked and misapprehended
that the claims of the expired ’791 patent should not be construed under the
broadest reasonable construction (‘BRC’ or ‘BRI’) standard.” Instead,
Appellants assert that “claim terms of the expired ’791 patent should be
construed under the Phillips standard applied by district courts.” Request
for Rehearing 2 (referring to Phillips v. AWH Corp., 415 F.3d 1303, 1313
(Fed. Cir. 2005) (en banc)).
According to Appellants, the ’791 patent expired on April 11, 2015,
after the Examiner’s Answer was mailed (October 24, 2014), but before the
Oral Hearing (August 18, 2015) and, of course, our Decision (September 29,
2015). Id. at 2–3. Appellants assert that
[a]ny document (e.g., decision, decision on rehearing,
certificate, etc.) authored or generated by the USPTO after the
’791 patent has expired cannot use the BRC/BRI standard, and
instead should use and must rely upon the same narrower claim
construction standard as the district court laid out in Phillips.
(POR 10.) See In re Rambus, Inc., 753 F.3d 1253, 1256 (Fed.
Cir. 2014).
Request for Rehearing 4.
Based on this assertion, Appellants argue that the proper claim
construction standard would change the outcome of the Examiner’s—and
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thus our—determination that claim 35 is anticipated by Woodhill. Id. 4–8.
But without regard to whether the proper claim construction standard would
change the outcome, Appellants argue that “the case should be remanded
back to the Examiner for consideration under the correct claim construction
standard” and that “any rejection by the PTAB under the correct standard
would be a new ground of rejection.” Id. 4.
We begin by reviewing Appellants’ assertion that the proper claim
construction standard would change the outcome of the determination that
Woodhill anticipates claim 35. Claim 35 reads as follows:
35. A method for determining whether a particular
data item is present in a data processing system, the method
comprising:
(A) for each data item of a plurality of data items present
in the system,
(i) determining a substantially unique identifier for
the data item, the identifier depending on and being determined
using all of the data in the data item and only the data in the
data item, whereby two identical data items in the system will
have the same identifier; and
(ii) making and maintaining a set of identifiers of
the plurality of data items; and
(B) for the particular data item,
(i) determining a particular substantially unique
identifier for the data item, the identifier depending on and
being determined using all of the data in the data item and only
the data in the data item, whereby two identical data items in
the system will have the same identifier; and
(ii) determining whether the particular identifier is
in the set of data items.

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Appellants present two arguments. Appellants first argue that
to be capable of “determining whether” a particular binary
object is present in the data processing system, the system must
be able to both (1) determine that the binary object is present in
the system when that is the case, and (2) determine that the
binary object is NOT present in the system when that is the
case.
Request 5. Here, Appellants are referring to the claim’s preamble: “A
method for determining whether a particular data item is present in a data
processing system.” Appellants’ argument is best summed up as follows:
Woodhill cannot determine “if it is so that” (or “if the case is
that”) a particular binary object is “present in the system”
because Woodhill only compares a newly created Binary Object
Identifier 74 for that particular binary object with a prior Binary
Object Identifier 74 for the most recently backed up version of
that binary object for one file.
Id. 6.
Appellants next present essentially the same argument with respect to
claim 35’s language, “determining whether the particular identifier is in the
set of data items.” Id. 7–8. It is essentially the same argument because, in
both cases, Appellants’ argument is based on a supposed inability of
Woodhill to determine that a particular data item or a particular identifier is
not in a system or set because Woodhill only looks in one place to determine
whether the item or identifier is there, rather than searching the entirety of
the system or set. Appellants conclude that Woodhill cannot meet claim
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35’s limitation (B)(ii), and thus, cannot anticipate claim 35 because
“Woodhill can only determine whether a particular binary object identifier
74 for a binary object is present for the most-recently backed up version of a
single binary object in a single file.” Id. 8.
Analysis
In analyzing essentially these same arguments, our Decision stated
Patent Owner concedes that “Woodhill only looks at
information relating to one binary object of one file when
backing up that binary object.” [Patent Owner Appeal Brief 10]
See Woodhill 9:16–22. That “one binary object of one file” is
in Woodhill’s File Database (i.e., a “system”). Id. Hence,
because Woodhill determines that a “Binary Object Identifier”
is present in that file, Woodhill has determined that the Binary
Object Identifier is present in the system.
Decision 4. We summarized our findings with respect to this issue
thusly:
we find that by Woodhill’s determining that a data item is
present in a file, Woodhill has “determined whether” the data
item is present. This is so without regard to Woodhill’s alleged
failure to explicitly disclose an ability to determine that the data
item is not present elsewhere in the File Database. Similar
reasoning applies with respect to Patent Owner’s argument
regarding determining whether an identifier is present in a set of
data items.
Decision 4–5 (referring to PO App. Br. 15–16).
In other words, we reasoned that, even if
to be capable of “determining whether” a particular binary
object is present in the data processing system, the system must
be able to both (1) determine that the binary object is present in
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the system when that is the case, and (2) determine that the
binary object is NOT present in the system when that is the case
(Request for Rehearing 5), Woodhill would nevertheless anticipate the
claim. Whether Woodhill anticipates does not depend on Woodhill’s
disclosing an ability to determine that the data item is not present elsewhere
in the File Database, because Woodhill anticipates, in those situations, by
disclosing that the item is present in one place.
We see no difference with how this claim would be construed under
either BRC/BRI or Phillips. Claim 35 is a method claim and not a system
claim. It is not relevant to the construction of a method claim whether a
system, in order to “determine whether” something is the case, must “be able
to both (1) determine that the binary object is present in the system when
that is the case, and (2) determine that the binary object is NOT present in
the system when that is the case.” Id.
Moreover, claim 35 is limited to a “method for determining whether a
particular data item is present in a data processing system” (i.e., a single
item) and “determining whether the particular identifier is in the set of data
items,” (i.e., a single identifier) at least with respect to the argued
limitations. This method requires a single iteration of the method steps.
Such would be the case, in our view, without regard to which standard is
used to construe the claims. In other words, there is no ambiguity to resolve
with reference to extrinsic evidence under Phillips. Under either BRC/BRI
or Phillips, claim 35 requires a single instance of the “determining,” without
regard to whether that determination results in identifying that something is
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the case or identifying that something is not the case. Although the claims
are interpreted in light of the specification, limitations from the specification
are not to be read into the claims. In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993).
Turning to the application of Woodhill to the construed claim, we find
that Woodhill anticipates the single instance of determining that something
is the case. Once it has been shown that Woodhill can “determine whether a
particular binary object identifier 74 for a binary object is present for the
most-recently backed up version of a single binary object in a single file,” as
Appellants admit (Id. 8), it has been shown that Woodhill satisfies a
“method for determining whether a particular data item is present in a data
processing system.” This is because, as we said in our Decision, “[t]hat ‘one
binary object of one file’ is in Woodhill’s File Database (i.e., a ‘system’),”
so “because Woodhill determines that a ‘Binary Object Identifier’ is present
in that file, Woodhill has determined that the Binary Object Identifier is
present in the system.” Decision 4. Hence, because it has been shown that
the one binary object is present in the system, there is no further reason to
search the remainder of the system for that “particular” “data item” or
“identifier.” The method has been concluded, at least as to that particular
item.
In view of the foregoing, we find that the same prior art anticipates the
claim for the same reasons without regard to whether BRC/BRI or Phillips is
used to construe the claim. We disagree that our analysis overlooked the
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appropriate standard for construing the claim. Instead, our Decision allowed
for the construction standard Appellants argue, but we nevertheless found
that Woodhill anticipates the method claim—the method of claim 35 was
shown by the Examiner to have been performed. Accordingly, we see no
cause to either remand the case to the Examiner or to designate our
affirmance a new ground of rejection.

SUMMARY
Appellants’ arguments do not persuade us that the Decision affirming
the Examiner’s final rejection of claim 35 as anticipated by Woodhill
misapprehended or overlooked any point of fact or law. We therefore deny
Appellants’ Request.
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).

REHEARING DENIED

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Patent Owner:
Nixon & Vanderhye, PC
901 North Glebe Road
11th Floor
Arlington, VA 22203

THIRD PARTY REQUESTER:

Haynes and Boone, LLP
Attn: IP Docketing
2323 Victory Avenue
Dallas, TX 75219