Ex Parte Carro

Patent Trial and Appeal Board

Mar 27, 2013

11523684 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FERNANDO INCERTIS CARRO
1

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Appeal 2010-009714
Application 11/523,684
Technology Center 2100
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Before KALYAN K. DESHPANDE, JOHNNY A. KUMAR, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-16, all pending claims in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1
The Real Party in Interest is International Business Machines Corporation.
(App. Br. 3.)
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2
STATEMENT OF THE CASE
2

The Invention
Appellant’s invention relates generally to the field of managing files
embedded within an electronic document and, more particularly, to a system
and method for associating specific locations to automatically save and
retrieve the files. Spec. p. 1, ll. 5-7 (“Technical Field of the Invention”).
Exemplary Claims
Claim 1 is an exemplary claim representing an aspect of the invention
which is reproduced below (emphases added):
1. A method of attaching at least one file saved on a
sender file system to an electronic document, the method
comprising the steps of:
(a) selecting a filename of the at least one file to be
attached;
(b) encoding the corresponding file directory path name
where the at least one file is saved on the sender file system;
(c) merging the encoded file directory path name with
the selected filename to form a file location identifier thereby
indicating a location where to save the file on a receiver file
system; and
(d) generating into the electronic document an attached
file from the file location identifier.

2
Our decision refers to Appellant’s Appeal Brief (“App. Br.,” filed
Jan. 4, 2010); Reply Brief (“Reply Br.,” filed May 20, 2010); Examiner’s
Answer (“Ans.,” mailed Mar. 31, 2010); Final Office Action (“FOA,”
mailed June 30, 2009); and the original Specification (“Spec.,” filed
Sep. 19, 2006).
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Claim 11 is an exemplary claim representing an aspect of the
invention which is reproduced below (emphasis added):
11. A method of detaching at least one file from an
electronic document on a receiver file system, the at least one
file being referenced by a file being assigned a file directory
path name that is encoded on a sender file system, and the
encoded file directory path name is merged with the filename to
form a file location identifier, the method comprising the steps
of:
(a) extracting from the electronic document the file
location identifier of the at least one file to be detached;
(b) parsing the extracted file location identifier to decode
the file directory path name and the filename associated to said
file location identifier;
(c) generating a saving location associated to the file
directory path name; and
(d) saving the at least one file at the associated saving
location.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Carro US 2005/0097114 A1 May 5, 2005
Rejection on Appeal
Claims 1-16 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Carro. Ans. 3.
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ISSUES AND ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions with respect to claims 1-16, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
the Examiner’s Answer in response to Appellant’s Arguments. However,
we highlight and address specific findings and arguments regarding claims 1
and 11 for emphasis as follows.
1. Rejection of Claims 1-10
Issue 1
Appellant argues (App. Br. 8-9; Reply Br. 2-3) that the Examiner’s
rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated by Carro
is in error. These contentions present us with the following issue:
Did the Examiner err in finding that Appellant’s claimed
method of attaching at least one file saved on a sender file
system to an electronic document is anticipated by Carro,
particularly that Carro discloses, inter alia, the steps of
“encoding the corresponding file directory path name where the
at least one file is saved on the sender file system . . . [and]
merging the encoded file directory path name with the selected
filename to form a file location identifier thereby indicating a
location where to save the file on a receiver file system,” as
recited in claim 1?
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Analysis
Appellant admits that the Examiner correctly identifies Carro as
disclosing a method for encoding, in the filename of a file, an address from
which software required to process the file can be accessed. App. Br. 9.
Further, in connection with Appellant’s recitation of “encoding the
corresponding file directory path name where the at least one file is saved on
the sender file system,” Appellant contends that the Examiner misconstrued
this particular limitation of claim 1. Id. Appellant goes on to contend that
Carro does not deal with the file path of software, but rather the file path of
the file attachment itself. Id.
Appellant further contends, in connection with the recitation of
“merging the encoded file directory path name with the selected filename to
form a file location identifier thereby indicating a location where to save the
file on a receiver file system,” that the Examiner erred. Id. In particular,
Appellant contends that the Examiner erred in finding that Carro’s teaching
of “decoding an encoded address,” (Carro ¶ [0025]) discloses this limitation
because this analysis “ignores the following claim language: ‘thereby
indicating a location where to save the file on a receiver file system.’” App.
Br. 9. Appellant argues that Paragraph 0025 of Carro does not disclose a
“file identifier” that can help indicate where to save the file in a file system,
and that Carro’s disclosure is limited to “file identifiers” that help find
software with which to process the file, and therefore does not anticipate
Appellant’s claim 1. App. Br. 10.
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In response, the Examiner points out that Carro’s disclosure of
merging a primary filename of the file and the encoded address in a new
filename (Ans. 12 (citing Carro ¶ [0022])) discloses the above-cited
limitation, i.e., “merging the encoded file directory path name with the
selected filename to form a file location identifier.” We agree, because such
merging of Carro’s primary filename with its encoded address results in a
new filename, thus meeting the claim limitation.
Further in this regard, the Examiner finds that Carro teaches using the
encoded address to determine whether the required software is already
installed (Carro Fig. 4, step 405 (encoded URL) and ¶¶ [0057],[0058]) and,
if not, to download and install the software (Carro Fig. 4, steps 455, 460).
Ans. 12. The Examiner further finds that installing software inherently
involves determining a location where to save the software on the receiving
system, and that Examiner interprets the software as part of the “file,” as
claimed. Id. Thus, we agree with the Examiner that the cited disclosure of
Carro teaches determining the location to save the file because downloading
and installing software would necessarily be done to a specific location on
the receiving system. With regard to Appellant’s argument (App. Br. 9), the
Examiner’s finds that the clause in claim 1 of “thereby indicating a location
where to save the file on a receiver file system,” is merely a statement of
intended use and, as such, has no patentable weight. Id. This finding and
the case law cited in support by the Examiner remain unrebutted by
Appellant in the Reply Brief. Further, even if we give the “thereby clause”
patentable weight, and as discussed above, Carro discloses determining the
location to save the downloaded file on the receiving system based upon the
file location identifier formed by merging the encoded file directory path
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name with the selected filename, thus meeting the intended use specified by
the clause.
Accordingly, Appellant has not provided sufficient evidence or
argument to convince us of any error in the Examiner’s characterization of
the cited art and related claim construction. Therefore, we sustain the
Examiner’s anticipation rejection of independent claim 1. As Appellant has
not provided separate arguments with respect to independent claim 9 or
dependent claims 2-8 and 10, we similarly sustain the Examiner’s rejection
of these claims under 35 U.S.C. § 102(b).
2. Rejection of Claims 11-16
Issue 2
Appellant argues (App. Br. 9-10) that the Examiner’s rejection of
claim 11 under 35 U.S.C. § 102(b) as being anticipated by Carro is in error.
Appellant’s contentions present us with the following issue:
Did the Examiner err in finding that Appellant’s claimed
method of detaching at least one file from an electronic
document on a receiver file system, the at least one file being
referenced by a file being assigned a file directory path name
that is encoded on a sender file system, and the encoded file
directory path name is merged with the filename to form a file
location identifier is anticipated by Carro, particularly that
Carro discloses, inter alia, the step of “generating a saving
location associated to the file directory path name,” as recited
in claim 11? (Emphasis added).
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Analysis
Appellant contends that Carro discloses accessing software to process
the file, and that nothing at all is saved during the operations described in
Carro and, because nothing is saved, there is no need to generate a saving
location. Ans. 9-10 (citing Carro ¶ [0025]).
Appellant admits that:
The present invention does not purport to have invented the
concept of saving files, or the concept of generating a saving
location to use in saving the files. However, claim 11 recites
“generating a saving location associated to the file directory
path name [that is encoded on a sender file system]” . . . That is
what is new here relative to . . . Carro. The file identifier,
which is based upon the sender’s saving location for the file, is
then used by the receiver system in determining where to save
that same file in its own file storage system. This is not
disclosed in . . . Carro at paragraph 0025, or anywhere else.
App. Br. 10. We disagree with Appellant, and agree with the Examiner’s
findings. Ans. 3-4 and 13. In particular, we agree with the Examiner that:
Carro does teach generating a saving location associated to the
“file directory path name” (See fig.4, paragraph [0057] &
[0058] . . . where steps 405, 410 [of] Carro teach[] using the
encoded address (step 405 encoded URL) to determine whether
the required software is already installed and if not download
and install the software (steps 455, 460). Installing the software
inherently involves generating a saving location where to save
(install) the software on the receiver system . . . [and] the saving
location [] on the receiver is dependent on the particular
software . . . [which] is identified by the software address (“file
directory path name”). Hence, the saving location can be
considered to be ‘associated’ with the software address (“file
directory path name”).
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Ans. 13. During prosecution:
the PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We find that the phrase
“associated to” broadens the interpretation of the claim limitation at issue,
because, as claimed, any association of location to which the file is to be
saved to the file directory path name would meet this limitation, i.e., the
saving location on the receiver is dependent on the particular software
identified by the software address (or file directory path name) such that the
saving location is “associated” with the file directory path name.
Accordingly, Appellant has not convinced us of any error in the
Examiner’s characterization of the cited art and related claim construction of
“associated to.”. Therefore, we sustain the Examiner’s anticipation rejection
of independent claim 11. As Appellant has not provided separate arguments
with respect to dependent claims 12-16, we similarly sustain the Examiner’s
rejection of these claims under 35 U.S.C. § 102(b).
CONCLUSIONS
The Examiner did not err with respect to the rejection of claims 1-16
under 35 U.S.C. § 102(b) as being anticipated by Carro, and the rejection is
sustained.
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DECISION
The decision of the Examiner to reject claims 1-16 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) (2011).
AFFIRMED

ELD