Ex Parte Buller et al

Patent Trials and Appeals Board

Nov 14, 2014

12244764 - (R) (P.T.A.B. Nov. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte STEVEN J. BULLER, RICHARD C. GARRETT, and
RICHARD HUTZLER
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Appeal 2012-007474
Application 12/244,764
Technology Center 2100
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Before JASON V. MORGAN, BRUCE R. WINSOR, and
JEFFREY A. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

INTRODUCTION
Appellants1 request rehearing under 37 C.F.R. § 41.52 of our Decision
of November 18, 2014, wherein we affirmed the Examiner’s decision
rejecting claims 1–12. We have reconsidered our original Decision, in light
of Appellants’ comments in the Request, and have found no errors therein.
We, therefore, decline to change the Decision.

1 Appellants identify International Business Machines Corp. as the real party
in interest. (Appeal Br. 2.)
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Application 12/244,764

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DISCUSSION
Appellants contend we misapprehended or overlooked certain
arguments presented in the Appeal Brief. (Req. Reh’g 2–5.) Specifically,
Appellants argue:
Absent from the factual findings of the Honorable Board,
however, are [sic] any discussion of the principal allegation of
the Appellants set forth at page 9 of the Appeal Brief—that
Redlich lacks a teaching of the claimed partitioning of a file
into multiple, different fragments within a byte stream for
storage in a peer-to-peer data backup and archival network, the
encrypting of each of the fragments in the byte stream occurring
individually and the storage of the encrypted fragments for the
byte stream occurring in different peer hosts in the peer-to-peer
data backup and archival network.
(Req. Reh’g 4–5.) We do not agree that any of Appellants’ arguments were
misapprehended or overlooked. All of Appellants’ arguments were
considered and found unpersuasive.
As indicated in our Decision, “[w]e agree with (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 2–3, 6–7) and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 13–
16).” (Dec’n 3.) In agreeing with the Examiner’s findings and reasons, in
effect, we adopted them as our own. For emphasis, we discussed certain of
Appellants’ arguments in our Decision. (Dec’n 3–5.) In essence, Appellants
argue that in our Decision we erroneously failed to provide an individualized
critique of each argument Appellants presented in their appeal. Appellants
do not provide support for the proposition that such individualized critiques
are required. (See Req. Reh’g 2–5.) In reviewing the Examiner’s decision
on appeal, the Board must necessarily weigh all of the evidence and
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Application 12/244,764

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arguments. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). The
absence of discussion in the opinion of a particular contention does not mean
it was not considered, only “that the author of the opinion, for whatever
reasons, did not deem it necessary or appropriate specifically to discuss” the
points raised. Lowder v. Dep’t of Homeland Sec., 504 F.3d 1378, 1383 (Fed.
Cir. 2007) (“The author of an opinion has broad discretion to determine what
the opinion should contain and in what detail.”). “[I]t is well settled that an
agency must explain its action with sufficient clarity to permit ‘effective
judicial review.’” Timken U.S. Corp. v. United States, 421 F.3d 1350, 1355
(Fed. Cir. 2005) (quoting Camp v. Pitts, 411 U.S. 138, 142–43 (1973)).
Where, as here, a panel concludes the Examiner has adequately explained
the reasons for the panel’s decision (see Dec’n 3–4), the panel need not
repeat the Examiner’s findings and reasons in order to discuss individually
each of Appellants’ arguments in its opinion. As noted in our Decision (id.),
and as discussed below, the Examiner’s findings addressed all limitations of
the claim. In addition, our opinion addressed all of Appellants’ arguments
that were sufficiently developed to be addressed.
The Examiner’s findings address each of the limitations of claim 1
identified in Appellants’ Request for Rehearing (Req. Reh’g 4–5). (See
Final Act. 2–4, 6; Ans. 13–16.) In the appeal briefing, Appellants define
“the crux of the dispute between the Examiner and Appellants” as “whether
or not the ‘plain text document’ of the cited Redlich reference is equivalent
to a ‘stream of bytes.’” (Reply Br. 3.) Our Decision agrees with the
Examiner that Redlich’s “plaintext” is a byte stream for the reasons given by
the Examiner (Dec’n 3, 4), and emphasizes that the source documents and
data objects sometimes referred to in Redlich as “plaintext” are explicitly
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Application 12/244,764

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defined as including “data streams” (Dec’n 4–5, citing Redlich ¶¶ 3, 98).
We also agreed with and emphasized the Examiner’s finding that “in
accessing . . . fragment files for encryption, the computer would require at
least accessing a stream of bytes for/of the files.” (Dec’n 4, quoting Final
Act. 3, Ans. 16.)
On rehearing, rather than continue to challenge whether Redlich’s
“plaintext” is a “byte stream,” Appellants suggest that it was necessary for
the Board to make additional findings regarding every limitation in the body
of the claim and how each is disclosed in Redlich. (See Req. Reh’g 4–5.)
Although Appellants’ recitation of the steps of claim 1 at pages 4 to 5 of the
Request for Rehearing alters and emphasizes certain words of the claim, we
decline to read into these nuances arguments that Appellants did not
expressly present. To the extent Appellants argue that the Examiner’s
rejection is in error on its face, we have reviewed the rejection and do not
agree. Indeed, Appellants’ framing of “the crux of the dispute” (Reply Br.
3) acknowledges that, if Redlich’s plaintext is a “byte stream,” then the steps
disclosed in Redlich otherwise meet the limitations of the claim. Persuasive
argument to the contrary was not presented either in the original briefing on
appeal or in the Request for Rehearing. Moreover, our Decision indicates
that, in considering Appellants’ “byte stream” argument, we necessarily
considered the claim steps that include the “byte stream” limitation. (See
Dec’n 5 (“Accordingly, the portions of Redlich relied on by the Examiner
teach that the partitioning, encrypting, and storing steps may be performed
on a data stream.”).)
Accordingly, for the foregoing reasons, we decline to modify our
Decision.
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CONCLUSION
Based on the foregoing, we have granted Appellants’ Request for
Rehearing to the extent we have considered the arguments made in the
Request and reviewed our Decision, but we deny Appellants’ Request for
Rehearing in that we decline to make any change in the Decision.

ORDER
The Request for Rehearing is denied.
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).

REHEARING DENIED

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