Ex Parte Turner

Patent Trial and Appeal Board

Mar 9, 2017

12368940 (P.T.A.B. Mar. 9, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
12/368,940 02/10/2009 Bryan A. Turner 30566.435-US-01 2853
55895 7590 03/09/2017
GATES & COOPER LLP - Autodesk
HOWARD HUGHES CENTER
6701 CENTER DRIVE WEST, SUITE 1050
LOS ANGELES, CA 90045
EXAMINER
ALLEN, BRITTANY N
ART UNIT PAPER NUMBER
2169
MAIL DATE DELIVERY MODE
03/09/2017 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 BRYAN A. TURNER
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Appeal 2016-007534
Application 12/368,940
Technology Center 2100
________________

Before CARL W. WHITEHEAD JR., BRADLEY W. BAUMEISTER, and
AARON W. MOORE, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1–18, 20, and 22. Final Act. 2.1 Claims 19, 21, 23, and
24 were cancelled previously. Id. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.

1 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the following documents for their details: the Final
Action mailed May 26, 2015 (“Final Act.”); the Appeal Brief filed
September 24, 2015 (“App. Br.”); the Examiner’s Answer mailed June 10,
2016 (“Ans.”); and the Reply Brief filed July 29, 2015 (“Reply Br.”).
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STATEMENT OF THE CASE
Appellant describes the present invention as follows:
A method, apparatus, and article of manufacture provide
an alternative mechanism for copying files. A request to copy a
first file from a first source location to a first target location is
received. A first checksum value of the first file is determined
and used in a query to find a second source location for a second
file. The second file has a second checksum value that is
equivalent to the first checksum value. Additionally, the second
file is located at the second source location. A determination is
made regarding whether to copy the first file from the first source
location or the second file from the second source location.
Thereafter, the first source file or the second source file is copied
to the first target location based on the determining.
Abstract.
Independent claim 1, reproduced below, is illustrative of the appealed
claims:
1. A computer implemented method for copying files,
comprising:
(a) initializing, at a target, a request to copy a first file
from a first source location on a source to a first target location
on the target, wherein:
(i) the target is receiving a solid modeling
assembly comprising multiple unique parts, wherein each
unique part has a corresponding part file; and
(ii) the request further comprises the solid
modeling assembly;
(b) transmitting the request, from the target to the
source;
(c) in response to the transmitting, receiving, at the
target, from the source, a first checksum value of the first file;
(d) prior to performing a copy operation, performing a
query, at the target, using the first checksum value to find a
second source location on the target for a second file, wherein:
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(i) the second file has a second checksum value
that is equivalent to the first checksum value; and
(ii) the query indicates that the second file is
located at the second source location on the target;
(e) determining, based on the query, whether to copy
the first file from the first source location or the second file from
the second source location; and
(f) based on the determining and in response to the
request, copying the second source file to the first target location
on the target instead of copying the first file from the first source
location, wherein instead of copying all of the part files in the
modeling assembly from the source to the target, changed part
files are copied from the source to the target, and remaining part
files in the modeling assembly are copied from the second source
location on the target to the first target location on the target.
The rejections on appeal are set forth on pages 2–3 of the Final
Action:
Claims 1–6 and 10–15 stand rejected under 35 U.S.C. § 103(a) as
obvious over Fineberg (US 2008/0270436 A1; published Oct. 30, 2008) in
view of Kirihara (US 5,339,247; issued Aug. 16, 1994) and Palliyll
(US 2005/0131900 A1; published June 16, 2005).
Claims 7 and 16 stand rejected under 35 U.S.C. § 103(a) as obvious
over Fineberg in view of Kirihara, Palliyll, and Leber
(US 2003/0233455 A1; published Dec. 18, 2003).
Claims 8 and 17 stand rejected under 35 U.S.C. § 103(a) as obvious
over Fineberg in view of Kirihara, Palliyll, and Chang (US 7,272,645 B2;
issued Sept. 18, 2007).
Claims 9 and 18 stand rejected under 35 U.S.C. § 103(a) as obvious
over Fineberg in view of Kirihara, Palliyll, and Examiner’s Official Notice
supported by Microsoft Support, How a slow link is detected for processing
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user profiles and Group Policy, available at
http://suport.microsoft.com/kb/227260 last visited February 23, 2007.
Claims 20 and 22 stand rejected under 35 U.S.C. § 103(a) as obvious
over Fineberg in view of Kirihara, Palliyll, and Blumenau
(US 2006/0106885 A1; published May 18, 2006).
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

FINDINGS AND CONTENTIONS
The Examiner finds that Fineberg teaches a computer implemented
method for copying files that comprises, prior to performing a copy
operation, performing a query, at the target, using a first checksum to find a
second source location on the target for a second file, wherein (i) the second
file has a second checksum value that is equivalent to the first checksum
value, and (ii) the query indicates that the second file is located at the second
source location on the target, as recited in limitation (d) of independent
claim 1. Final Act. 3–4. The Examiner further finds that Fineberg discloses
determining, based on the query, whether to copy the first file from the first
source location or the second file from the second source location, as recited
in limitation (e), as well as performing the subsequent copying step, as
recited in limitation (f). Id. at 4.
Central to the rejection’s foundation is the Examiner’s interpretation
that the claim term “file” is employed broadly by Appellant in a manner that
reads on parts or “chunks” of files, as well as entire files. Final Act. 16. The
Examiner bases this interpretation on the finding that “Applicant defines a
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solid modeling assembly as comprising part files that make up that
assembly.” Id. at 15; see also id. at 16; Ans. 2 (citing Spec. ¶ 29).
The Examiner finds that “[w]hile Fineberg teaches retrieving chunks
to make a file . . . and that the chunks are part of a file . . . , Fineberg doesn’t
expressly teach” initializing a request to copy a file at a target that, in turn, is
receiving a solid modeling assembly comprising multiple unique parts, as
recited in claim 1’s limitation (a). Id. at 5 (citing Fineberg ¶¶ 10, 16). The
Examiner further finds, though, that Kirihara teaches the initializing step of
limitation (a). Id. at 5–6 (citing Kirihara col. 3, ll. 47–57, 61–66; col. 4,
ll. 11–16, 26–30, 46–54; col. 5, ll. 3–38; id. Fig. 3). The Examiner
additionally finds that Kirihara teaches claim 1’s request-transmitting step of
limitation (b) (id. at 6 (citing Kirihara col. 4, ll. 46–54)) and copy-
determining step of limitation (e) (id. at 6 (citing Kirihara col. 5, ll. 8–31; id.
Fig. 5.)
The Examiner finds that motivation existed to modify Fineberg to
include Kirihara’s teachings. Id. at 6–7 (citing Kirihara, col. 1, l. 60 – col. 2,
l. 5; col. 8, ll. 30–35). And, despite initially finding that Kirihara teaches
limitation (b) of claim 1 (Final Act. 6), the Examiner then finds to the
contrary that the combination of Fineberg and Kirihara does not expressly
teach “transmitting the request, from the target to the source,” as recited in
limitation (b) (id. at 7). The Examiner further finds that the combination
does not teach or suggest the method step of “in response to the transmitting,
receiving, at the target, from the source, a first checksum value of the first
file,” as recited in limitation (c). Id.
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The Examiner finds that Palliyll teaches these limitations (id. (citing
Palliyll ¶ 63)), and that motivation existed to add these teachings of Palliyll
into the combination of Fineberg and Kalahari (id. ¶¶ 7, 64)).
Appellant asserts, inter alia, that Fineberg does not “hash,” or
determine a checksum, of entire files, but instead separately hashes chunks
of the files. App. Br. 6–8 (citing Fineberg ¶¶ 38–44)). Appellant further
contends that independent claims 1 and 10 both require that checksums be
performed on entire files—not chunks of files. Id. at 8 (citing Spec. 3, 5–6);
Reply Br. 2–3 (citing Spec. ¶¶ 29, 30).
Appellant urges that the claim term “file” should be afforded its
common dictionary definition. App. Br. 8. To support this position,
Appellant argues that “in the specification, a file may be copied to a folder
(see paragraphs [0003] and [0005]), that files may be renamed (see [0005]),
and the transfer of files/folders (see [0006]). Chunks of a file are not copied
to a folder, are not renamed, and are not transferred similar to files/folders.”
Id.

ANALYSIS
As noted above, the Examiner relies on paragraph 29 of Appellant’s
Specification as supporting the adopted construction of the claim term “file.”
See Ans. 2. Paragraphs 29 and 30 of Appellant’s Specification read as
follows:
[0029] Embodiments of the invention may be useful in networks
spread out throughout the world in various different scenarios.
For example, a mechanical designer in China may be working on
a solid modeling document consisting of 100 unique parts. The
mechanical designer may need to send the work to Boston when
it is complete. The Boston location may already have the original
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solid modeling assembly/document. Further, assume that the
mechanical designer needs to create a new assembly that is
unique from the original assembly only in name, and in 1 of the
100 unique parts. Thus, the mechanical designer creates a local
copy (in China) of the assembly document, renames the
assembly, modifies 1 of the 100 parts, and save[s] the assembly.
[0030] When the designer attempts to send the file to Boston,
the prior art would require the designer to resend the entire
assembly from Boston to China again. However, in accordance
with embodiments of the invention, the designer only needs to
send a name change, and the one unique part over the network.
The rest of the files would be copied locally from the original
assembly in Boston to the new assembly in Boston.
We see insufficient evidence in these paragraphs or any other portion
of Appellant’s Specification that would indicate that Appellant is using the
term “file” in a manner that corresponds to file chunks or otherwise deviates
from the customary and ordinary meaning of a computer file. Rather, we
understand Appellant’s Specification to mean that a complete computer file
contains at least one of the mentioned 100 parts, and another at least one
complete computer file associates the plurality of files for the 100 parts into
a unified assembly document.
For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s obviousness rejection of independent claim 1, as well as
independent claim 10, which recites similar language. Accordingly, we do
not sustain the Examiner’s rejection of those claims or of claims 2–6 and
11–15, which depend from claims 1 and 10.
With respect to the remaining rejections of dependent claims 7–9, 16–
20, and 22, the Examiner does not rely upon any of the additionally cited
references or evidence to cure the deficiency of the obviousness rejection
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explained above. See Final Act. 9–15. Accordingly, we do not sustain any
of the obviousness rejections of these claims.

DECISION
The Examiner’s decision rejecting claims 1–18, 20, and 22 is
reversed.

REVERSED