Ex Parte Cannon et al

Board of Patent Appeals and Interferences

Jul 30, 2012

11091790 (B.P.A.I. Jul. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LINCOLN C. CANNON and PAUL J. CONOVER
____________

Appeal 2010-003380
Application 11/091,790
Technology Center 2100
____________

Before LANCE LEONARD BARRY, JEAN R. HOMERE, and ST. JOHN
COURTENAY III, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-40. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

Appeal 2010-003380
Application 11/091,790
2
INVENTION
The following claims illustrate the invention on appeal:
1. A method for generating a first identifier having a
plurality of characters and identifying an object, the method
comprising;
receiving first seed characters from an object generator,
the first seed characters relating to an object;
processing the first seed characters to generate a
human-readable component and a non-readable component
based on rules;
applying the rules to determine a syntax of the first
identifier;
applying the rules to determine placement of the
human-readable component relative to the non-readable
component; and
inserting the human-readable and non-readable
components within the first identifier to thereby provide an
identifier unique to the object, wherein processing the seed
characters, applying the rules, and inserting the human-readable
and non-readable components are performed by an identifier
module, the identifier module being programmed to reproduce
an additional identifier that is identical to the first identifier
each time the identifier module uses the rules on additional seed
characters that are identical to the first seed characters.

40. A method for generating an identifier, the method
comprising:
receiving seed characters associated with a first object to
be included in a first build of an installation package;
processing the seed characters to generate a human-
readable component;
applying rules to determine a syntax of the identifier;
inserting the human-readable component within the first
identifier, wherein processing the seed characters, applying the
rules, and inserting the human-readable component are
performed by an identifier module, the identifier module
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Application 11/091,790
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being configured to generate, during a second build of the
installation package, a second identifier for the first object, the
second identifier being identical to the first identifier.

REJECTIONS
Claims 1, 6-11, 13, 14, 19-24, 26, 27, 32-37, and 39 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent No.
6,804,700 B1 ("Terek") and U.S. Patent Application Pub. No. 2006/0020578
Al ("Hood").
Claims 2-5, 15-18, and 28-31 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Terek, Hood, and U.S. Patent No. US 6,532,481
Bl ("Fassett").
Claims 12, 25, and 38 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Terek, Hood, and U.S. Patent No. 6,857,053 B2
("Bolik").
Claim 40 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Terek and U.S. Patent No. US 6,675,382 B1 ("Foster").

CLAIMS 1-39
Based on the dependencies of the claims, we will decide the appeal of
claims 1-39 on the basis of independent claims 1, 14, and 27. The issue
before us follows. Did the Examiner err in finding that the combined
teachings of Terek and Hood would have suggested "processing the first
seed characters to generate a human-readable component and a non-readable
component" and "inserting the human-readable and non-readable
components within the first identifier to thereby provide an identifier unique
to the object," required by independent claims 1, 14, and 27?
Appeal 2010-003380
Application 11/091,790
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The Examiner finds that "Terek clearly discloses in Column.2,
lines 30-55 the processing of a descriptive property related to an object
(analogous to the seed character from an object . . . relating to an object)."
(Ans. 27.) The Examiner further finds that "[t]he unique identifier . . . is a
hash value or an incremented value that is appended to the human-readable
portion such as 'http://hello-1.html' that is clearly analogous to the non-
readable component." (Id.)
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001)
(citations omitted).
Here, we agree with the Appellants that "Terek does not teach that the
hash values are part of Terek's identifiers." (Reply Br. 7.) Instead, Terek
teaches that "[a] hashing index may be used to more efficiently search for
existing URLs [i.e., uniform resource locators] in order to detect and prevent
the creation of non-unique URL names." (Col. 2, ll. 11-15.) In other words,
Terek uses hashes to determine whether a new identifier is identical to a
previous identifier.
"A rejection based on section 103 clearly must rest on a factual
basis . . . ." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). "The Patent
Office has the initial duty of supplying the factual basis for its rejection. It
may not . . . resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in its factual basis." Id.
For our part, we understand the Examiner's finding about the
Appeal 2010-003380
Application 11/091,790
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non-readable component to refer to the "the postfix associated with the hash
value for human-readable property 212, [which] is appended to human-
readable property 212." (Terek, col. 9, ll. 35-37.) More specifically, "each
hash value in hash index 250 has an associated postfix." (Terek, col. 9, ll.
33-34.) The postfix is incremented as needed. (E.g., Terek, col. 10, ll.
13-14.)
The Examiner does not show, however, that Terek generates the
postfix by processing its descriptive property related to an object. We will
not resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply this deficiency.
Furthermore the examiner introduced the Hood reference
which clearly discloses in Paragraph.10, the steps of packaging
objects with a random/pseudorandom number to create a unique
identifier (the random/pseudorandom is clearly a non-readable
value), wherein the unique identifier as described in
Paragrpah.12, can utilize identifying indicia (analogous to claim
language wherein processing first seed character to generate a
nonreadable component).
(Ans. 27-28.)
We agree with the Appellants, however, that "neither of the cited
references shows, teaches, or suggests using the same seed characters to
generate readable and non-readable components of an identifier." (Reply Br.
10.) For its part, Hood teaches using inter alia "random data provided by
the randomizer 106 to generate a unique identifier and associate it with an
object 108." (¶ [0033].) We find that Terek's descriptive property related to
an object and Hood's random data do not constitute the same seed
characters.
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Therefore, we conclude that the Examiner erred in finding that the
combined teachings of Terek and Hood would have suggested "processing
the first seed characters to generate a human-readable component and a non-
readable component" and "inserting the human-readable and non-readable
components within the first identifier to thereby provide an identifier unique
to the object," required by independent claims 1, 14, and 27.

CLAIM 40
The issue before us follows. Did the Examiner err in finding that the
combined teachings of Terek and Foster would have suggested
"generat[ing], during a second build of the installation package, a second
identifier for the first object, the second identifier being identical to the first
identifier," as required by independent claim 40?
The Examiner makes the following findings.
Terek discloses in Column.9, lines 64-67 and Column.10,
lines 1-12, creating an identical URL or Identifier
''http://hello.html'' when provided with the same subject value
of an email (analogous to seed character), hence every time the
same seed character is provided to the identifier generating
system (which is analogous to a second identifier due to a
second access) an identical tentative URL or Identifier is
created.
(Ans. 29.)
The Examiner's explanation of Terek, however, is incomplete. When
Terek identifies a "tentative" URL as duplicative, "[t]o distinguish the
tentative URL, a second set of rules is then followed to create the URL so as
to guarantee uniqueness of the resulting URL." (Col. 10, ll. 4-6.) In fact,
the purpose of Terek is to "generat[e] unique and human-readable
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URLs for objects included in a network system." (Abstract (emphasis
added).)
For its part, it is uncontested that "Foster teaches providing an
identifier for a package, not for objects included in a package." (App. Br.
11.) The Examiner admits that the same reference's "fields . . . are used to
provide a unique identifier for each package instantiated by the system."
(Ans. 30.) "For example, the NAME field is used to provide a unique
identifier for each package instantiated by the system." (Foster, col. 8,
ll. 12-13.)
When these teachings from the two references were combined, we
find that the result may have created unique identifiers for objects and for
packages, but not identical identifiers for objects. Therefore, we conclude
that the Examiner erred in finding that the combined teachings of Terek and
Foster would have suggested "generat[ing], during a second build of the
installation package, a second identifier for the first object, the second
identifier being identical to the first identifier," as required by independent
claim 40.
DECISION
We reverse the rejections of claims 1, 14, 27, and 40 and those of
claims 2-13, 15-26, and 28-39, which depend therefrom.

REVERSED

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