Ex Parte Ananthanarayanan et al

Patent Trial and Appeal Board

May 9, 2016

12698733 (P.T.A.B. May. 9, 2016)

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.
12/698,733 02/02/2010 Rema Ananthanarayanan IN920090109US1
(790.045)
4585
89885 7590 05/09/2016
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
TAYLOR, BROOKE JAZMOND
ART UNIT PAPER NUMBER
2181
MAIL DATE DELIVERY MODE
05/09/2016 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 REMA ANANTHANARAYANAN,
VINATHA CHATURVEDI, VIJIL E. CHENTHAMARAKSHAN,
PRASAD M. DESHPANDE, RAGHURAM KRISHNAPURAM, and
SHAJEER K. MOHAMMED
____________________

Appeal 2014-007525
Application 12/698,733
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, JOHN F. HORVATH, and
AMBER L. HAGY, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2014-007525
Application 12/698,733

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1–12 and 25–27. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm-In-Part.

Exemplary Claims
Exemplary claims 1 and 27 read as follows (emphasis and formatting
added):
1. An apparatus comprising:
[(a)] one or more processors; and
[(b)] a computer readable storage medium having
computer readable program code embodied therewith and
executable by the one or more processors, the computer
readable program code comprising:
[(i)] computer readable program code configured
to extract a file system structure corresponding to a
software product;
[(ii)] computer readable program code configured
to identify, from the file system structure, candidate
subtrees that are likely to be subtrees of more than one
directory across at least two software products; and
[(iii)] computer readable program code configured
to indicate common components across at least two
software products.

Appeal 2014-007525
Application 12/698,733

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Rejections on Appeal
The Examiner rejected claims 1–8, 10, 11, 25, and 26 under
35 U.S.C. § 102(b) as being anticipated by Gupta et al. (US 2006/0026157
A1; Feb. 2, 2006).1
The Examiner rejected claims 9 and 12 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Gupta and Applicant’s Admitted
Prior Art.2
The Examiner rejected claim 27 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
The Examiner rejected claim 25 under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. 3
Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(b) because:
Independent Claims l and 25 recite identification, from a
file system structure, of candidate subtrees that are likely to be
subtrees of more than one directory across at least two software
products, and further recite an indication of common
components across at least two software products. Applicants

1 Separate patentability is not argued for claims 2–8, 10, 11, 25, and 26.
Except for our ultimate decision, as to this rejection these claims are not
discussed further herein.
2 As to the rejection of claims 9 and 12, separate patentability is not argued.
Rather, the rejection of these claims turns on our decision as to the
underlying § 102 rejection. Except for our ultimate decision, these claims
are not further addressed herein.
3 Appellants do not appeal this rejection. (“GROUNDS OF REJECTION TO
BE REVIEWED ON APPEAL” App. Br. 10). Therefore, we affirm pro
forma. Except for our ultimate decision, this rejection is not discussed
further herein.
Appeal 2014-007525
Application 12/698,733

4
respectfully submit that Gupta, at the very least, does not teach
or suggest these features.
App. Br. 11, emphases added.
2. Appellants also contend that the Examiner erred in rejecting claim
1 under 35 U.S.C. § 102(b) because:
Gupta does not disclose the extraction of file system structures
relative to software products . . . as broadly claimed by Claims
1 and 25.
App. Br. 13, emphasis added.
3. Appellants contend that the Examiner erred in rejecting claim 27
under 35 U.S.C. § 112, second paragraph, because:
[I]t is stated in para. 0038 of the instant application as filed that
“among the advantages associated with at least one embodiment
of the present invention is the possibility of identifying
dependent products (of a given software product) just by
processing the install image. It is not necessary to install the
product itself, in other words.”
App. Br. 15.
[I]t is respectfully submitted that Claim 27 is more than
sufficiently definite for conveying the features claimed and
encompassed thereby, with clear support in the instant
application, and thus easily fulfills the requirements of Section
112, second paragraph.
App. Br. 16.

Issues on Appeal
Did the Examiner err in rejecting claim 1 as being anticipated under
35 U.S.C. § 102(b) because Gupta fails to describe the argued limitations?
Did the Examiner err in rejecting claim 27 as being indefinite?

Appeal 2014-007525
Application 12/698,733

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
As to above contentions 1 and 2, Appellants’ arguments are
essentially that as to “software products” the Examiner’s rejection fails to
sufficiently explain how the Gupta reference teaches each of the claimed
extracting a file system structure, identifying candidate subtrees, and
indicating common components. We agree. The Examiner’s minimal
explanation (Final Act 3–4 and Ans. 7–8) of the rejection is insufficient to
support a final conclusion of anticipation based on the Gupta reference.
As to above contention 3, we agree. We agree with Appellants that
claim 27 meets the requirement of 35 U.S.C. § 112, second paragraph.

CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1–8, 10, 11, 25, and 26 as being anticipated by Gupta under
35 U.S.C. § 102(b).
(1) Appellants have established that the Examiner erred in rejecting
claims 9 and 12 as being unpatentable under 35 U.S.C. § 103(a).
(3) Appellants have established that the Examiner erred in rejecting
claim 27 as being indefinite under 35 U.S.C. § 112, second paragraph.
(2) The Examiner did not err in rejecting claim 25 under 35 U.S.C.
§ 101, as failing to be within one of the four statutory categories.
(3) On this record, claims 1–12, 26, and 27 have not been shown to
be unpatentable.
(4) Claim 25 is not patentable.
Appeal 2014-007525
Application 12/698,733

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DECISION
The Examiner’s rejection of claims 1–8, 10, 11, 25, and 26 as being
anticipated under 35 U.S.C. § 102(b) is reversed.
The Examiner’s rejection of claims 9 and 12 as being unpatentable
under 35 U.S.C. § 103(a) is reversed.
The Examiner’s rejection of claim 27 as being indefinite under
35 U.S.C. § 112, second paragraph, is reversed.
The Examiner’s rejection of claim 25 under 35 U.S.C. § 101, as
failing to be within one of the four statutory categories, is affirmed.

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).

AFFIRMED-IN-PART