Ex Parte Forman et al

Patent Trial and Appeal Board

Jan 29, 2015

12242998 (P.T.A.B. Jan. 29, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GEORGE FORMAN and KAVE ESHGHI
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Appeal 2012-0066791
Application 12/242,9982
Technology Center 3600
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Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
JAMES A. WORTH, Administrative Patent Judges.

WORTH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 38, 13, 15–18, and 21–30, all pending claims in the
subject application. We have jurisdiction under 35 U.S.C. §§ 134 and 6(b).
We REVERSE.

1 Our decision refers to the Appellants’ Appeal Brief (“App. Br.,” filed Nov.
29, 2011) and Reply Brief (“Reply Br.,” filed Mar. 16, 2012), and the
Examiner’s Answer (“Ans.,” mailed Jan. 23, 2012).
2 According to Appellants, the real party in interest is Hewlett-Packard
Development Company, LP (App. Br. 1).
Appeal 2012-006679
Application 12/242,998

2
Introduction
Appellants’ disclosure relates to a method, processing facility, and
computer-readable storage medium “for scanning information across
different devices and is useful, e.g., in scanning enterprise personal
computers for designated sensitive data” (Spec. ¶ 1).
Claims 1, 24, and 28 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A method of scanning information across a plurality of
devices, comprising:
obtaining a set of designated chunks of information;
generating full source digests based on the designated
chunks and then deriving abbreviated source digests from the
full source digests;
distributing the abbreviated source digests to different
data-processing devices to allow individual ones of the data-
processing devices to scan locally stored data units to determine
which of said data units satisfy a specified matching criterion
pertaining to at least one identified match to at least one of the
abbreviated source digests, the scanning comprising generating
full scan digests for the stored data units, deriving abbreviated
scan digests from the full scan digests, and then comparing the
abbreviated source digests to the abbreviated scan digests;
receiving, by a central processing facility, a plurality of
the full scan digests for the data units that satisfy the specified
matching criterion; and
the central processing facility comparing the full scan
digests received from the data-processing devices to the full
source digests so as to determine which corresponding data
units satisfy a policy criterion.

App. Br., Claims App’x.

Appeal 2012-006679
Application 12/242,998

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Rejection on Appeal
The Examiner maintains, and the Appellants appeal, the following
rejection:
Claims 1, 3–8, 13, 15–18, and 21–30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over George Forman et al., Finding Similar
Files in Large Document Repositories, KDD ’05, Association for
Computing Machinery, 394400 (Aug. 21–24, 2005) (hereinafter,
“Forman”).

ANALYSIS
Independent claim 1 and dependent claims 3–8, 21, and 23
We are persuaded by Appellants’ argument that Forman fails to
disclose or suggest:
distributing the abbreviated source digests to different
data-processing devices to allow individual ones of the data-
processing devices to scan locally stored data units to determine
which of said data units satisfy a specified matching criterion
pertaining to at least one identified match to at least one of the
abbreviated source digests, the scanning comprising generating
full scan digests for the stored data units, deriving abbreviated
scan digests from the full scan digests, and then comparing the
abbreviated source digests to the abbreviated scan digests;
as recited by claim 1 (App. Br. 9–10).
The Examiner finds that Forman does not explicitly disclose the
subject limitation, but concludes that the limitation is a “predictable result”
of Forman (Ans. 5, 14–15). In reaching this conclusion, the Examiner
reasons that the “to allow” clause of claim 1 recites non-limiting future steps
(Ans. 7, 13–14). Thus, the Examiner does not address Appellants’ argument
(App. Br. 8–9; Reply Br. 2–3) that the “to allow” clause recites “generating
Appeal 2012-006679
Application 12/242,998

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full scan digests” which provides antecedent basis for the term “the full scan
digests” that appears in the later phrases of claim 1.
In this connection, we construe the “to allow” clause as language
setting forth the further operation of the involved process and hence is
limiting, and thus it provides antecedent basis for the later phrases of claim
1. For this reason, we do not sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 103(a). We do not sustain the
rejection of claims 3–8, 21, and 23, which depend from claim 1, for similar
reasons.

Independent claims 24 and 28 and dependent claims 13, 15–18, 22,
25–27, 29, and 30
Independent claims 24 and 28 contain substantially similar language
as independent claim 1. We do not sustain the Examiner’s rejection of
independent claims 24 and 28 under 35 U.S.C. § 103(a) for similar reasons
as for independent claim 1.
Claims 13, 15–18, 22, 25–27, 29, and 30 each depend from one of
independent claims 24 or 28, respectively. We do not sustain the
Examiner’s rejection under 35 U.S.C. § 103(a) of claims 13, 15–18, 22, 25–
27, 29, and 30, for similar reasons, as for independent claims 24 and 28.

DECISION
The decision of the Examiner to reject claims 1, 3–8, 13, 15–18, and
21–30 is reversed.
REVERSED

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