Ex Parte 5,978,791 et alDownload PDFPatent Trial and Appeal BoardMar 29, 201690012931 (P.T.A.B. Mar. 29, 2016) Copy Citation 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). Appeal 2015-004285 Reexamination Control 90/012,931 Patent No. 5,978,791 2 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 Appeal 2015-004285 Reexamination Control 90/012,931 Patent No. 5,978,791 3 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. Appeal 2015-004285 Reexamination Control 90/012,931 Patent No. 5,978,791 4 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 Appeal 2015-004285 Reexamination Control 90/012,931 Patent No. 5,978,791 5 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 Appeal 2015-004285 Reexamination Control 90/012,931 Patent No. 5,978,791 6 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 Appeal 2015-004285 Reexamination Control 90/012,931 Patent No. 5,978,791 7 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 Appeal 2015-004285 Reexamination Control 90/012,931 Patent No. 5,978,791 8 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 Appeal 2015-004285 Reexamination Control 90/012,931 Patent No. 5,978,791 9 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 Copy with citationCopy as parenthetical citation