Ex Parte 6928442 et al

Patent Trial and Appeal Board

Sep 25, 2018

90013764 (P.T.A.B. Sep. 25, 2018)

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.
90/013,764 06/10/2016 6928442 JAR-5980-11 1680
23117 7590 09/25/2018
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
PEIKARI, BEHZAD
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/25/2018 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
Patent Owner and Appellant
________________

Appeal 2018-003936
Reexamination Control 90/013,764
Patent 6,928,442 B2
Technology Center 3900
________________

Before KEVIN F. TURNER, BRADLEY W. BAUMEISTER, and
IRVIN E. BRANCH, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Patent Owner of US 6,928,442 B2, issued to Farber et al. Aug. 9,
2005, (“the ’442 patent”), appeals under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claim 7. App. Br. 5–6.1 We have jurisdiction
under 35 U.S.C. § 6(b). We REVERSE and enter new grounds of rejection
pursuant to our discretionary authority under 37 C.F.R. § 41.50(b).

1 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the following documents’ details: the Request for
Reexamination filed June 10, 2016 (“Request”); the Final Action mailed
March 8, 2017 (“Final Act.”); the Appeal Brief filed September 11, 2017
(“App. Br.”); the Examiner’s Answer mailed September 21, 2017 (“Ans.”);
and the Reply Brief filed November 20, 2017 (“Reply Br.”).
Appeal 2018-003936
Reexamination Control 90/013,764
Patent 6,928,442 B2

2
STATEMENT OF THE CASE
Patent Owner describes the present invention as follows:
Data files are distributed across a plurality of computers. The
computers may form a network such as a content delivery
network (CDN) or a peer-to-peer network. The network may
operate as a TCP/IP network such as the Internet. Data files may
represent may represent digital messages, images, videos or
audio signals. For content—data items or files in the system—a
name is obtained (or determined), where the name is based, at
least in part, on a given function of the data in a data item or file.
The given function may be a message digest or hash function,
and it may be MD4, MD5, and SHA. A [copy] of a requested
file is only provided to licensed (or authorized) parties. The
system may check one or more computers for unauthorized or
unlicensed content. Content is served based on a measure of
availability of servers.
Abstract.
Claim 7 is the sole claim on appeal:
7. A method, in a system in which a plurality of files are
distributed across a plurality of computers, wherein some of the
computers communicate with each other using a TCP/IP
communication protocol, the method comprising:
obtaining a name for a data file, the contents of said data
file representing a digital image, the name having been
determined using at least a given function of the data in the data
file, wherein the data used by the given function to determine
the name comprises the contents of the data file; and
in response to a request for the data file, the request
including at least the name of the data file, providing a copy of
the file from a given one of the plurality of computers, wherein
a copy of the requested file is not provided to unlicensed parties
or to unauthorized parties.

Appeal 2018-003936
Reexamination Control 90/013,764
Patent 6,928,442 B2

3
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Woodhill (US 5,649,196; issued July 15, 1997) and Kahn (US 6,135,646;
issued Oct. 24, 2000). Final Act. 4–5. The Examiner finds that Woodhill
discloses most of the claim 7’s limitations (Final Act. 4 (citing Request 21–
26)) except the following: (1) the computers communicate using a TCP/IP
protocol, (2) the data files could represent, in particular, digital images; or
(3) the files are not provided to unlicensed or unauthorized parties. Final
Act. 4–5. The Examiner finds that Kahn teaches these limitations. Id.
(citing, respectively, Khan, col. 10, ll. 44–46; col. 1, ll. 17–19; and col. 2,
ll. 17–21). The Examiner determines that motivation existed to combine the
references’ teachings in a manner that renders claim 7 obvious. Id. at 5.
Claim 7 separately stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Woodhill and Stefik (US 7,359,881 B2; issued Apr. 15,
2008). Final Act. 5–7. As in the rejection over Woodhill and Khan, the
Examiner again finds that Woodhill discloses most of claim 7’s limitations
(Final Act. 5–6 (citing Request 29–34)), except for the three limitations
noted in the previous rejection. Final Act. 6–7. The Examiner finds that
Stefik also teaches these three limitations. Id. (citing Stefik, col. 26, ll. 50–
54; col. 6, ll. 31–33; and col. 7, ll. 6–27). The Examiner determines that
motivation existed to combine the references’ teachings in a manner that
renders claim 7 obvious. Id. at 7.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). We address Patent Owner’s arguments seriatim.
Appeal 2018-003936
Reexamination Control 90/013,764
Patent 6,928,442 B2

4
ANALYSIS
I.
Patent Owner asserts, and the Examiner agrees, that the claim terms
“file” and “data file” are synonymous. See, e.g., App. Br. 14; see also Final
Act. 8.2 We must determine, then, whether these two synonymous terms
should be interpreted narrowly to mean a complete file, or interpreted
broadly to mean “a data item,” which may be either a complete file or a data
segment of a complete file.
Patent Owner argues that the claim terms “file” and “data file” are
limited to “‘complete, named collection[s] of information, such as a
program, a set of data used by a program, or a user-created document.’”
App. Br. 8. “In other words, one of skill in the art would have understood
that a ‘named’ data item is one that is necessarily a complete coherent unit
that a user can selectively retrieve, change, delete, save, or send to an output
device.” Id.; see generally id. 8–14.

2 We question whether the terms are, in fact, synonymous. Claim 19
of the ’442 Patent expressly differentiates between the terms “file” and “data
file,” indicating that “data file” is a generic term, broad enough to read on,
inter alia, either a file or a portion of a file:
19. A method as in claim 14 wherein a data file may comprise
a file, a portion of a file, a page in memory, a digital message, a
digital image, a video signal[,] or an audio signal.
’442 Patent, claim 19 (emphasis added).
Regardless, we accept the interpretation agreed upon by Patent Owner
and the Examiner—that the claim terms are used synonymously. See Frye,
94 USPQ2d at 1075 (we review the appealed rejections for error based upon
the issues identified by Appellants, and in light of the arguments and
evidence produced thereon).
Appeal 2018-003936
Reexamination Control 90/013,764
Patent 6,928,442 B2

5
The Examiner alternatively interprets the terms “file” and “data file”
to be broad enough to read on not only a complete file, but also on a portion
of a file, or merely a sequence of bits. Ans. 9.
Before interpreting these claim terms, we note that the ’442 Patent is
expired (see App. Br. 7), so we must interpret claim 7 according to the
narrower, Phillips standard for claim construction. That is, we afford the
claim terms their ordinary and customary meaning as would be understood
by one of ordinary skill in the art at the time of the invention. Phillips v.
AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
In related litigation, a district court judge already has construed the
present patent’s claim term, “data file” under the Phillips standard. See
PersonalWeb Technologies, LLC. v. NEC Corp of America, Inc. et al.,
United States District Court, Tyler Division 2013 WL 4015332 (E. D. Texas
2013). In that Claim Construction Order, the court adopted the broader
construction, interpreting “[d]ata file(s)” to mean “a named data item(s)” (id.
at *5) and interpreting a “data item,” in turn, to mean “a sequence of bits”
(id. at *10).3
However, claim 7 does not recite just “a data file.” Claim 7 more
fully recites, inter alia, “obtaining a name for a data file, the contents of said
data file representing a digital image” (emphasis added). Patent Owner

3 The Claim Construction Order also indicates that in that proceeding, Patent
Owner argued for the opposite position to that which Patent Owner currently
takes. That is, Patent Owner argued at the Markman hearing for the broader
interpretation that the district court then adopted and which the present
Examiner now adopts. See id. at *4 (“PersonalWeb proposes [‘data file(s)’
to be interpreted as] ‘a named data item having one or more data
segments.’”).
Appeal 2018-003936
Reexamination Control 90/013,764
Patent 6,928,442 B2

6
further argues that the additional recitation of a digital image also limits
claim 7 because a digital image must entail a complete file: “While a large
database file in Woodhill could possibly itself represent a ‘digital image,’ a
small segment thereof such as a granule or binary object could not.” App.
Br. 29 (citing the undated Declaration of Robert B. K. Dewar) (“Dewar
Decl.”) ¶ 70); see also id. (citing more generally Dewar Decl. ¶¶ 68–72).
The Examiner disagrees that claim 7’s further recitation of a digital
image narrows the meaning of “a data file” to a complete file. Ans. 16.
(“[Appellants’] argument relies entirely on the [unpersuasive] claim
construction discussed above [in relation to the claim term ‘data file’].”).
The Examiner additionally finds that a digital image could be as small as a
one-bit pixel. Id. The Examiner further reasons that even if a digital image
must be interpreted as constituting a complete file, Kahn and Stefik both
teach that digital images were common data files in computer systems. Id.
We need not determine whether claim 7’s recitation of a digital image
further limits the term “data file” to complete files. Even if we were to
determine that the recitation of a digital image does not limit the meaning of
a data file to any meaning narrower than a series of bits, we still would
reverse the obviousness rejections, as presently reasoned. See sub-section
IV of the Analysis Section, infra. Conversely, even if we were to determine
that the recitation of a digital image does limit the meaning of a data file to a
complete file, the Panel’s newly presented, alternative rationale for the
obviousness rejections, discussed below, still renders claim 7 unpatentable.
See sub-sections II–VI of the Analysis Section, infra.
Appeal 2018-003936
Reexamination Control 90/013,764
Patent 6,928,442 B2

7
II.
Patent Owner argues that Woodhill’s binary objects and granules are
mere portions of basic files, and they, themselves, cannot be “files,” as
claimed. App. Br. 12–13 (citing Dewar Decl. ¶¶ 68–72).
Patent Owner’s argument is unpersuasive, at least with respect to
Woodhill’s binary objects. Woodhill expressly states that a file, or “data
file,” in Woodhill’s lexicon, may be comprised of one or more binary
objects. Woodhill col. 2, l. 3; id. Abstract. As such, at least in those
situations where a data file consists of exactly one binary object, Woodhill
expressly discloses that a single binary object may be a complete file.
We need not additionally address whether granules can be files. See
Final Act. 4, 13 (wherein the Examiner equates the term “data files” to
Woodhill’s binary objects—not to Woodhill’s smaller granules).
III.
Patent Owner argues, inter alia, that Woodhill’s binary object
identifier 74 does not constitute a “name for a data file,” as claimed. App.
Br. 14–15. According to Patent Owner, “[o]ne of ordinary skill in the art at
the time of the invention would have understood that there can be a
significant difference between a ‘file name’ (or ‘name for a data file’) and a
mere ‘identifier.’” App. Br. 15 (citing Dewar Decl. ¶ 30) (emphasis added).
One of ordinary skill in the art would have recognized that a “file
name” (or “name for a data file”) is used to both (a) identify a
particular file so that the name can be used to differentiate the
file from other files, and (b) refer to that file, access that file,
search for that file, and address that file so that a user can use the
name to selectively retrieve, change, delete, save or send the file
to an output device.
Appeal 2018-003936
Reexamination Control 90/013,764
Patent 6,928,442 B2

8
Id. (citing ’442 Patent col. 16, ll. 13–16, col. 17, ll. 15–50, col. 19, ll. 1–27,
col. 23, ll. 61–67, col. 24, ll. 56–67, col 34, ll. 35–49; Dewar Decl. ¶ 30).
Patent Owner further argues that “[e]ven Woodhill contrasts the
difference between a file ‘name’ and a binary object ‘identifier’ . . .
evidencing that they are not necessarily the same thing in this art.” App.
Br. 14 (citing Woodhill, FIGs. 3, 4, elements 40, 80, 74) (emphasis added).
Patent Owner’s arguments are unpersuasive. First, even if we were to
assume arguendo that there can be a significant difference between a file
name and an identifier, as Patent Owner alleges, this does not mean that an
identifier necessarily is precluded from being interpreted as constituting a
name within the meaning of claim 7. Likewise, the fact that Woodhill uses
different terms for file names and binary object identifiers also does not
necessarily mean that an identifier cannot be reasonably interpreted as
constituting a name, as well. The distinct terms merely serve a separate
purpose of distinguishing the two labels.
More importantly, though, Woodhill’s binary object identifier
performs the same function as Patent Owner’s file name: it provides a
unique identifier for a file (Woodhill’s binary object can be a complete file)
based upon the file’s data contents. See, e.g., Woodhill, Abstract;
’442 Patent claim 7. Woodhill even states expressly that the binary object
identifier serves as the name of the binary object:
1. A system for distributed management of the storage space
and data on a networked computer system wherein the networked
computer system includes at least two storage devices for storing
data files, said distributed storage management system
comprising:
. . . .
Appeal 2018-003936
Reexamination Control 90/013,764
Patent 6,928,442 B2

9
means for calculating a current value for a binary object
identifier for each binary object within a file, said calculation of
said binary object identifier being based upon the actual data
contents of the associated binary object, said calculated binary
object identifier being saved as the name of the associated binary
object . . . .
Woodhill, claim 1 (emphasis added).
IV.
Patent Owner notes that the Examiner relies on Woodhill’s
granularization restore procedure in finding Woodhill teaches the following
claim limitation: “‘in response to a request for the data file, the request
including at least the name of the data file, providing a copy of the file . . .’”
App. Br. 19 (citing Request 21–26, 29–34). Patent Owner presents various
arguments for why Woodhill’s granularization restore procedure does not
teach this claim limitation. Id. at 19–27 (citing Woodhill col. 17, l. 18–
col. 18, l. 9).
For example, Patent Owner argues claim 7 requires that in response to
some given data entity being requested (be it a file, binary object, or
granule), that requested data entity has to be the entity that is returned. Id. at
24–27. But according to Patent Owner, Woodhill’s granularization restore
procedure entails sending requests for binary objects that need to be restored
to previous versions of the file, and in response, the Distributed Storage
Manager transmits to the local computer, only those granules of the binary
object that need to be updated. Id. That is, the granularization restore
procedure entails returning only portions of a requested data entity.
The Examiner does not dispute that the rejection is based, at least in
part, on Woodhill’s granularization restore procedure. See, e.g., Ans. 3
Appeal 2018-003936
Reexamination Control 90/013,764
Patent 6,928,442 B2

10
(incorporating by reference the proposed rejection of pages 21–26 of the
Request; see also Request 23 (“The identifiers are sent as part of the request
to restore a binary object. . . . This technique is illustrated in the flow chart
depicted in FIG. 5i.”).
We agree with Patent Owner that Woodhill’s granularization
procedure does not return to the local computer, the particular data entity
that was initially requested. See Woodhill col. 17, l. 18–col. 18, l. 9. Only
portions are returned to the local computer. Id. Accordingly, we do not
sustain the Examiner’s obviousness rejections of claim 7.4
V.
The preceding determination regarding Woodhill’s granularization
restore process does not end our inquiry in relation to the question of

4 We would reach the same conclusion and reverse the obviousness
rejections even if the Examiner should be basing the rejection on the
alternative theory that the disputed claim limitation is taught by somehow
blending steps from Woodhill’s Auditing and Reporting procedure with
steps from the granularization procedure of Woodhill’s Backup/Restore
routine. For example, the incorporated Request explains the mapping of the
claim’s elements, as follows:
Woodhill discloses this limitation because it teaches that its data
processing system allows restores (client request) of binary
objects (data files) using their Binary Object Identifiers during
the Backup/Restore Routine. The identifiers are sent as part of
the request to restore a binary object. Also, the data processing
system of Woodhill performs periodic self-audits by initiating a
restore of a randomly selected binary object, identified by its
Binary Object Identification Record, which includes its Binary
Object Identifier.
Request 23 (emphasis added). But neither the Request nor the Examiner sets
forth a sufficient explanation of how these distinct procedures could be
combined or what the reason or motivation would be to do so.
Appeal 2018-003936
Reexamination Control 90/013,764
Patent 6,928,442 B2

11
claim 7’s obviousness over the cited prior art. In the Second Decision on
Appeal of related ex parte reexamination 90/013,487, this Panel of the Board
concluded that “Woodhill’s self-audit routine—in conjunction with
Woodhill’s additional teachings—at least renders obvious independent
claims 10 and 25” of US Patent 6,415,280 B1 (issued to Farber et al., July 2,
2002) (“the ’280 Patent”).5 Ex parte Personal Web Technologies, LLC, and
Level 3 Communications, LLC, No. 2016-006941, 2017 WL 3730324, at *6–
7 (PTAB Aug. 28, 2017) (“the ’6941 Decision”) (emphasis added). These
claims of the ’280 Patent also included the presently disputed requirement of
providing a data file in response to a request for the particular data file. For
example, claim 10 of the ’280 Patent, reads as follows:
10. A content delivery method, comprising:
distributing a set of data files across a network of servers;
determining a data identifier for a particular data file, the
data identifier being determined using a given function of
the data, wherein said data used by the given function to
determine the data identifier comprises the contents of the
particular data file; and
in response to a request for the particular data file, the
request including at least the data identifier of the particular
data file, providing the particular data file from a given one of
the servers of the network of servers, said providing being based
on the data identifier of the particular data file.
Moreover, the Board analyzed those appealed claims applying an even
narrower construction to the claim term “data file” than we apply today in
analyzing claim 7. ’6941 Decision, at *4 (explaining that we interpret the
claim term “data file” to read on a binary object, “at least in those situations

5 The present ’442 Patent claims priority to the ’280 Patent.
Appeal 2018-003936
Reexamination Control 90/013,764
Patent 6,928,442 B2

12
where [Woodhill’s] data file[—or complete file—]consists of exactly one
binary object”).
We, therefore, adopt and incorporate the Board’s rationales that were
set forth in at least Section V of the ’6941 Decision. Id. at *6–7. For ease of
reference, we reproduce the most relevant part of that section below:
Given that Woodhill’s self-audit routine retrieves a binary
object to perform the audit,6 it at least would have been
obvious—if not inherent—that some sort of binary object name
would be used to retrieve the binary object. Further, given that
Woodhill expressly discloses that the binary object identifier can
serve as the binary object’s name, it would have been obvious to
one of ordinary skill to have used Woodhill’s binary object
identifier in the self-audit routine to retrieve the binary object
being audited.
Patent Owner, anticipating that the Board might raise sua
sponte the question of whether Woodhill at least renders the
claims obvious, argues there would not have been any reason to
use the binary object identifier 74 to retrieve a binary object.
Tr. 7–8. In Patent Owner’s view, because Woodhill discloses, in
other contexts, that binary objects can be retrieved using the

6 Patent Owner does not dispute that Woodhill’s self-audit
routine requests binary objects:
JUDGE BAUMEISTER: [So you have a binary object] stored
somewhere and you pull it up?
MR. RHOA: Woodhill doesn’t say you pull it, but I’m assuming
there’s a pull. Where it goes, again, unclear. But there’s one
binary object. Let’s say for the sake of argument, it gets pulled.
You then calculate a binary object identifier on that, then
compare that newly calculated binary object identifier to a
previous binary object identifier for that one binary object to see
if they match.
[Oral Hearing Transcript mailed June 21, 2017 (“Tr.”)] 13:17–
25.
Appeal 2018-003936
Reexamination Control 90/013,764
Patent 6,928,442 B2

13
binary stream type 62 and binary object offset 72, one looking
for a way to access or retrieve binary objects specifically for the
self-audit routine instead would have used the stream type and
offset. Id. at 8. Patent Owner argues that the binary object
identifier is only used to see if there has been a change to the
binary object—not for retrieval or access purposes. Id.
This argument is unpersuasive. Given that Woodhill does
not expressly state what data is used to access or retrieve binary
objects for performing the self-audit routine, one of ordinary skill
would have been motivated to look for possible ways to access
or retrieve these objects. Woodhill expressly states the binary
object identifier is used as a name of the binary object (e.g.,
claim 1), which renders the identifier [] a reasonably foreseeable
piece of data for performing this task. The fact that Woodhill
further discloses that additional data fields alternatively may be
used to request binary objects does not negate the fact that the
binary object identifier is one of the data fields one of ordinary
skill would [have] consider[ed] using.
’6941 Decision, at *11–13.
VI.
Patent Owner further argues that because of their respective sizes, a
binary object cannot represent, more particularly, a digital file. App. Br. 28–
30. According to Patent Owner, “[i]n 1995, one of ordinary skill in the art
would have expected a ‘large database file’ of the type handled by
Woodhill’s granularization procedure to be at least 1 to 2 gigabytes in size.”
Id. at 29 (citing Dewar Decl. ¶ 70 and citing Oral Deposition of M. Ray
Mercer of June 24, 2014 (“Mercer Dep.”) 123, 134–35). Patent Owner
further argues that, in contrast, Woodhill discloses binary objects are only
one megabyte in size. App. Br. 29 (citing Woodhill, col. 7, ll. 54–55).
According to Patent Owner, “a . . . binary object in Woodhill [therefore]
cannot be the type of ‘file’ (a ‘file’ that represents a digital image) called for
Appeal 2018-003936
Reexamination Control 90/013,764
Patent 6,928,442 B2

14
in claim 7.” Id. at 30. Patent Owner’s arguments are unpersuasive for the
following reasons:
First, although Patent Owner’s expert declares that one of ordinary
skill “would have expected a ‘large database file’ of the type handled by
Woodhill’s granularization [restore] procedure to be at least 1 to 2 gigabytes
in size” (Dewar Decl. ¶ 70) (emphasis added), opining on what was expected
is not the same as declaring that a file used in Woodhill’s granularization
process necessarily must have to be as large a gigabyte. That is, Patent
Owner’s expert does not declare that a digital image is incapable of being
the same size as Woodhill’s binary objects, much less provide a factual basis
for such a conclusion.
Furthermore, Patent Owner does not explain why the conclusions by
Patent Owner’s expert regarding Woodhill’s granularization restore process
would be applicable equally to the files worked upon in other of Woodhill’s
processes, such as the self-audit routine. See App. Br. 28–30; Reply Br. 19–
21.
Coupled with the foregoing considerations, we also note the Examiner
effectively takes timely Official Notice in the Final Action regarding what
the size of digital-image files could have been at the time of the invention.
Specifically, the Examiner states that “pictures could be very small (.jpg
image files of one pixel each have been regularly used online for tracking
purposes).” Final Act. 13. Patent Owner has not challenged the Examiner’s
Official Notice seasonably, much less adequately. See Manual of Patent
Examining Procedure (MPEP) § 2144.03(C) (discussing the requirements
for challenging an Examiner’s taking of Official Notice: “To adequately
Appeal 2018-003936
Reexamination Control 90/013,764
Patent 6,928,442 B2

15
traverse such a finding, an applicant must specifically point out the supposed
errors in the examiner’s action, which would include stating why the noticed
fact is not considered to be common knowledge or well-known in the art.”);
see also 37 C.F.R. § 111(b).
Accordingly, Patent Owner does not rebut the Examiner’s finding
that, in at least some situations, a digital file can be on the order of a
megabyte or smaller—the size Woodhill’s binary objects.
Second, even if we were to assume arguendo that all of Woodhill’s
files that are subject to the self-audit routine are of a size on the order of one
to two gigabytes (that is, three orders of magnitude larger than the one-
megabyte size Woodhill discloses as being the size of the binary objects),
Woodhill still would have rendered obvious performing the disclosed self-
audit routines with the assistance of binary object identifiers on files of this
larger size. As explained, supra, Woodhill teaches or at least suggests the
general conditions for using the binary object identifier 74, which identifier
includes a hash or some function of the file’s data, to name a file. As further
explained, supra, Woodhill teaches or suggests retrieving files in response to
requesting the file with at least the binary object identifier. Nothing in the
record reasonably teaches away or discourages one of ordinary skill in the
art from applying this concept to larger sized files.
To be sure, binary object identifiers of the bit size used in Woodhill
for megabyte-sized files would not produce, at least in theory, the same level
Appeal 2018-003936
Reexamination Control 90/013,764
Patent 6,928,442 B2

16
of file-name uniqueness when used for larger, gigabit-sized files.7 However,
Patent Owner acknowledges that true name uniqueness—as opposed to an
approximation of name uniqueness—is impossible to obtain using the
claimed invention:
It is impossible to define a function having a unique output
for each possible input when the number of elements in the range
of the function is smaller than the number of elements in its
domain. However, a crucial observation is that the actual data
items that will be encountered in the operation of any system
embodying this invention form a very sparse subset of all
possible inputs.
’442 Patent, col. 13, ll. 23–29. Furthermore, claim 7 provides no limits or
objective standard for what level of theoretical uniqueness is required or
what level of computational speed is demanded.
As such, it would have been obvious to one of ordinary skill that
Woodhill’s process could be used for files that are larger in magnitude than
one megabyte. It further would have been obvious that such uses either
would (1) entail binary object IDs of the same size used in Woodhill,
resulting in file names of lower theoretical uniqueness, or, alternatively,
(2) require larger byte sizes than those used in Woodhill in order to get
similar levels or name uniqueness, resulting in some greater level of
computational demands. That is, the size of the file for which the binary
object is employed and the selected byte-size of the binary object identifier
were known result effective variables. Modifying these variables for
optimizing results appears to have been within the scope of the skill of the

7 See, e.g., Woodhill col. 8, ll. 1–3 (stating that “[e]ach of the fields of the
Binary Object Identifier 74 may be four (4) bytes in length and is calculated
from the contents of each binary object.”).
Appeal 2018-003936
Reexamination Control 90/013,764
Patent 6,928,442 B2

17
ordinary artisan, and modifying these variables does not appear to produce
any unexpected results. See In re Aller, 220 F.2d 454, 456 (CCPA 1955)
(“[W]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation.” (citations omitted)).
VII.
Lastly, Patent Owner presents multiple arguments for why
“Reexamination of issued patents by the USPTO without Patent Owner
consent violates the U.S. Constitution.” App. Br. 33–56 (emphasis and
capitalization modified). Patent Owner’s arguments are noted, and they are
preserved for appeal.

DECISION
The Examiner’s rejections of claim 7 are REVERSED.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
issue new grounds of rejection under 37 C.F.R. § 103(a), rejecting claim 7 as
obvious over Woodhill in view of Kahn and separately rejecting claims 7 as
obvious over Woodhill in view of Stefik.
Rule 41.50(b) provides that “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
Rule 41.50(b) also provides the following:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
Appeal 2018-003936
Reexamination Control 90/013,764
Patent 6,928,442 B2

18
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the prosecution will be
remanded to the examiner. The new ground of
rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure (MPEP) § 1214.01
(9th Ed., Rev. 9, Nov. 2015).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)

Appeal 2018-003936
Reexamination Control 90/013,764
Patent 6,928,442 B2

19
Patent Owner:

NIXON & VANDERHYE, PC
901 North Glebe Road, 11th Floor
Arlington, VA 22203

Third Party Requester:

ARNOLD & PORTER LLP
ATTN: IP Docketing Dept.
555 Twelfth Street, NW
Washington DC 20004-1206