Ex Parte Borden et al

Patent Trial and Appeal Board

Mar 24, 2015

11783272 (P.T.A.B. Mar. 24, 2015)

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.
11/783,272 04/06/2007 Bruce Borden 3222.2080003 4281
26111 7590 03/25/2015
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
QAYYUM, ZESHAN
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
03/25/2015 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 BRUCE BORDEN and RUSSELL BRAND
____________

Appeal 2012-012258
Application 11/783,272
Technology Center 3600
____________

Before CARLA M. KRIVAK, JOHNNY A. KUMAR, and
CHRISTA P. ZADO, Administrative Patent Judges.

ZADO, Administrative Patent Judge.

DECISION ON APPEAL
Appellants
1
appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 12, 13, and 48–65.
2
We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1
Appellants identify as the real party in interest Carmenso Data LLC. (App.
Br. 3.)
2
No other claims of Application No. 11/783,272 are pending.
Appeal 2012-012258
Application 11/783,272

2
STATEMENT OF THE CASE
3

Claim 12 is illustrative of the subject matter on appeal (disputed
limitations in italics):
12. A method of storing a multi-segmented file,
comprising:
associating, using a computing device, content signatures
with corresponding segments in the multi-segmented file;
comparing, using the computing device, each of the
associated content signatures with content signatures previously
stored within a data management system;
determining, using the computing device, whether the
associated content signatures match the previously stored
content signatures;
storing in the computing device, in response to the
associated content signature of each corresponding segment
within the multi-segmented file not matching previously stored
content signatures:
metadata for the multi-segmented file;
the associated content signatures for each of the
corresponding segments of the multi-segmented file; and
content for the multi-segmented file; and
storing in the computing device, in response to each of
the associated content signatures of the corresponding segments
within the multi-segmented file matching previously stored
content signatures, metadata for the multi-segmented file.

3
Rather than repeat the arguments here, we refer to the Briefs for the
positions of Appellants and the Final Office Action and Answer for the
positions of the Examiner. Only those arguments actually made by
Appellants have been considered in this decision. Arguments that
Appellants did not make in the Briefs have not been considered and are
deemed to be waived. (See 37 C.F.R. § 41.37(c)(1)(iv) (2012).)
Appeal 2012-012258
Application 11/783,272

3
REFERENCES
Freivald US 5,898,836 Apr. 27, 1999
Downs US 6,226,618 B1 May 1, 2001
Sutton US 7,496,604 B2 Feb. 4, 2002
(filing date)

THE REJECTION
Claims 12, 13, and 48–65 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sutton, Freivald, and Downs. (Ans. 4–8.)

ISSUES
Under § 103, did the Examiner err by finding Sutton, Freivald, and
Downs collectively teach or suggest:
(1) “storing in the computing device, in response to the associated
content signature of each corresponding segment within the multi-segmented
file not matching previously stored content signatures . . . content for the
multi-segmented file,” as recited in claim 12;
(2) “wherein each hash function signature is generated using more
than one hash function,” as recited in claim 54; and
(3) “wherein generating metadata for the multi-segment file includes
generating metadata that identifies the associated content signatures for the
corresponding segments contained within the multi-segmented file and path
data,” as recited in claim 51?

Appeal 2012-012258
Application 11/783,272

4
ANALYSIS
First Issue
The Examiner relies on the combination of Sutton and Freivald for
teaching the disputed limitation of claim 12. (Ans. 5.) In particular, the
Examiner relies on Sutton for teaching the disputed limitation except that
Sutton refers to determining whether the content signature of a segment (i.e.,
a file attached to an e-mail) has previously been stored, whereas claim 12
recites looking at content signatures of each segment within a multi-
segmented file. (Ans. 5, citing Sutton 7:11–16.) The Examiner, however,
relies on Freivald for teaching determining whether content signatures
(checksums) of each segment of a multi-segmented file (webpage) have
been previously stored. (Ans. 5.)
Appellants contend the combination of Sutton and Freivald is
improper, arguing Freivald teaches away from “storing . . . content for the
multi-segmented file” because Freivald teaches storing a checksum rather
than the content for a document. (App. Br. 10, 12, and 13 (emphasis added).)
We are unpersuaded by this argument.
“[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious.” KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007)
(citing United States v. Adams, 383 U.S. 39, 51–52 (1966)). “When a piece
of prior art ‘suggests that the line of development flowing from the
reference’s disclosure is unlikely to be productive of the result sought by the
applicant’ the piece of prior art is said to ‘teach away’ from the claimed
invention.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir.
2006) (quoting In re Gurley, 27 F.3d 551, 53 (Fed. Cir. 1994)). Here,
Appeal 2012-012258
Application 11/783,272

5
Freivald does not teach away from the claimed invention because it does not
discourage looking at the content signature of each segment of a multi-
segmented file in systems such as Sutton that store content. Moreover, there
is no indication in Freivald that the claimed feature would be unproductive
or difficult to do. We are, therefore, unpersuaded by Appellants’ argument.
Appellants further argue Sutton does not teach or suggest storing
content associated with “each corresponding segment of a multi-segmented
file” because Sutton refers only to looking at the content signature (digital
signature) of a file rather than the content signature of each segment of a
multi-segmented file. (App. Br. 14.) We are unpersuaded by this argument
because the Examiner does not rely on Sutton alone, but rather on the
combination of Freivald and Sutton, for teaching “each corresponding
segment of a multi-segmented file.” (Ans. 5.) As we discuss supra the
Examiner explains Freivald teaches comparing content signatures
(checksums) for each corresponding segment (webpage section) of a multi-
segmented file (web page). (Id., citing Freivald 9:39–57, 10:13–67, 12:22–
57.)
We, therefore, sustain the Examiner’s rejection of independent
claim 12, and independent claim 56
4
which recites similar limitations and is
not argued separately. (App. Br. 10–15.) We also sustain the Examiner’s
rejection of dependent claims 13, 48–55, and 57–65 (depending from

4
Upon return of the application to the Examiner, the Examiner may wish to
review claim 56 and its dependent claims for compliance under
35 U.S.C. § 101 in light of the recitation “[a] computer-readable storage
medium.” (In re Nuitjen, 500 F.3d 1346, 1357 (Fed. Cir. 2007); Ex parte
Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential).)
Appeal 2012-012258
Application 11/783,272

6
claims 12 and 56) for which Appellants do not raise separate arguments for
patentability.
5
(Id. at 16.)
Second Issue
Claim 52 recites “generating a hash function signature,” and claim 54
(which depends from claim 52) further recites “each hash function signature
is generated using more than one hash function.” The Examiner finds it
would have been obvious for each hash function signature in Sutton to be
generated “using more than one hash function.” (Ans. 8.) The Examiner
explains “using two or more than one hash functions there will [be] no new
and unexpected result produced. This is analogous to installing multiple
locks on a door. The more locks on a door the more secure the door.
Similarly, the more hash functions, the more secure the process.” (Id. at 11.)
Appellants argue the Examiner improperly relies on In re Harza.
6

Appellants explain the technology at issue (hash functions) is not
sufficiently similar to (and is more complicated than) the technology in In re
Harza. (App. Br. 17.) As a result, Appellants argue the Examiner cannot
simply rely on In re Harza, but rather must articulate a reason why the
claimed feature would have been obvious. (Id. at 17 and 18.) However, as
we discuss supra the Examiner articulates reasoning as to why it would have
been obvious to use more than one hash function (to make the process more
secure), and further explains that using more than one hash function would
not yield a new or unexpected result. (Ans. 11.) (See KSR, 550 U.S. at 417.)

5
Appellants raise additional arguments with respect to claims 54, 55, 64,
and 65, which do not persuade us of error for the reasons we discuss under
the heading Second Issue.
6
274 F.2d 669 (CCPA 1960).
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7
Appellants further argue “hash functions require a complexity that the
court did not have to address in In re Harza.” (Reply Br. 5.) Appellants’
Specification makes clear, however, that even though generating a hash
function is computationally complex, it was well within the abilities of a
computer to generate a hash function: “[w]hile hashing functions generally
require a complex computation, computing hash function signatures as
content signatures for files is well within the capabilities of present day
computers.” (Spec. ¶ 107.)
Appellants further argue “[u]sing multiple hash functions is
significantly more complex than ‘installing multiple locks on a door.’” In
support of this argument, Appellants rely on supporting documents relating
to hash functions in general. (Reply Br. 5.) However, the arguments and
evidence presented by Appellants do not relate to multiple hash functions,
and do not demonstrate the relative complexities of using a single hash
function versus using multiple hash functions. Similarly, the Specification
does not provide evidence that using multiple hash functions is significantly
more complex than using a single hash function. In particular, the
Specification does not disclose using multiple hash functions to generate a
hash function signature.
7

As a result, we are unpersuaded that the Examiner incorrectly
determined the disputed limitation of claim 54 would have been obvious.

7
Upon return of the application to the Examiner, the Examiner may wish to
review claims 54 and 64, and their dependent claims for compliance under
35 U.S.C. § 112, first paragraph for lack of written description in light of the
recitation “wherein each hash function signature is generated using more
than one hash function,” because neither the originally filed claims nor the
Specification disclose this feature.
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Application 11/783,272

8
We, therefore, sustain the Examiner’s rejection of claim 54, and
claim 64 which recites similar limitations and is not argued separately.
(App. Br. 16–19.) We also sustain the Examiner’s rejection of dependent
claims 55 and 65 (depending from claims 54 and 64) for which Appellants
do not raise separate arguments for patentability.
8
(Id.)

Third Issue
With respect to the disputed limitation of claim 51, the Examiner finds
this is “nonfunctional descriptive material because it just described data
stored in the memory and does not require to performed any function.
Therefore, it has been held nonfunctional descriptive material will not
distinguish the invention from prior art.” (Ans. 7, 11.)
Appellants advance two arguments for non-obviousness. Appellants
argue “metadata” defines physical or logical relationships among data
elements (e.g., “content signatures associated with the corresponding
segments contained within the multi-segmented file and path data”); and
“metadata” supports data manipulation functions (e.g., “identifying content
based on the content signatures and determining whether a new file should
be stored or the repository updated”). (App. Br. 20, citing MPEP
§ 2106.01.)
We are unpersuaded by Appellants’ arguments. The Examiner finds,
and we agree, the combination of Sutton, Freivald, and Downs teaches each
limitation of claim 51 except Downs does not specify that the metadata

8
Appellants raise additional arguments with respect to claims 54, 55, 64,
and 65 which have not persuaded us of error for reasons we discuss under
the heading First Issue.
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Application 11/783,272

9
being generated “identifies the associated content signatures for the
corresponding segments contained within the multi-segmented file and path
data.” (Ans. 5, 7.) However, content signatures and path data were well
known in the art at the time of invention (see, e.g., Ans. 5), and their
inclusion in metadata would have been within the abilities of a skilled
artisan at the time of invention, and would have yielded predictable results.
(See KSR, 550 U.S. at 417.)
Moreover, our reviewing court has held that nonfunctional descriptive
material cannot lend patentability to an invention that would have otherwise
been anticipated by the prior art. (In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004).) (Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that
when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability).) (King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d
1267, 1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there
exists any new and unobvious functional relationship between the printed
matter and the substrate.’” (citations omitted)).)
Here, the descriptive material (“metadata” that “identifies the
associated content signatures for the corresponding segments contained
within the multi-segmented file and path data”) does not have a functional
relationship with the substrate (the claimed method of storing a multi-
segmented file). Neither claim 51, nor claims 12 and 50 (from which
claim 51 depends) recite using the stored metadata to perform any function.
Specifically, even though claim 12 includes a step of “comparing . . . content
signatures,” nothing in claim 12 suggests the content signatures used for
comparing is stored in the “metadata” (rather than stored in a separate
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Application 11/783,272

10
repository). Consistent with this reading of the claim, the Specification
describes storing content signatures in two separate repositories—metadata
repository 340 and content repository 1420 (used in comparing step). (Spec.
¶¶ 130, 131.)
Given there is no functional relationship between the metadata and the
claimed method of storing a multi-segmented file, Appellants cannot create a
novel method by attaching printed matter to it (i.e., by adjusting the content
of the metadata). Adding or subtracting content from the metadata does not
alter the claimed method. To agree with Appellants’ argument that it would
not have been obvious to add content signatures and path data to metadata
would mean a novel addition to the metadata is sufficient to warrant a patent
even if the invention remains unchanged.
We, therefore, sustain the Examiner’s rejection of claim 51, and
claim 61, which recites similar limitations and is not argued separately.
(App. Br. 20.)

DECISION
The Examiner’s decision rejecting claims 12, 13, and 48–65 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

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