Ex Parte Cychosz et al

Patent Trial and Appeal Board

Aug 30, 2016

12474663 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/474,663 0512912009 Joseph M. Cychosz
51344 7590 09/01/2016
BROOKS KUSHMAN P.C. /Oracle America/ SUN I STK
1000 TOWN CENTER, TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075-1238
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SUN090222-US-NP 2006
EXAMINER
MUELLER, KURT A
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
09/01/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH M. CYCHOSZ and
HARRIET GLADYS COVERSTON
Appeal2014-004312
Application 12/474,663 1
Technology Center 2100
Before LARRY J. HUME, JEFFREY A. STEPHENS, and
NATHAN A. ENGELS, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This is a decision on Appellants' Request for Rehearing of our
Decision on Appeal mailed March 10, 2016. The Decision affirmed the
Examiner's§ 102(b) Rejection Rl of claims 1, 5-9, and 11, and§ 103
Rejection R2 of claims 2--4, 10, and 12-18 on appeal. See Decision 1, 3, 8,
and 9.
1 According to Appellants, the real party in interest is Oracle America, Inc.
App. Br. 1.
Appeal2014-004312
Application 12/474,663
BACKGROU-ND2
Appellants have filed a paper under 37 C.F.R. § 41.52 requesting we
reconsider our Decision affirming the Examiner's rejection of claim 1 under
§ 102(b) as being anticipated by Martin. Request 2--4.
We reconsider our Decision in light of Appellants' Request, but
decline to change the decision for the reasons provided, infra.
APPELLANTS' ARGUMENTS
Argument (1)
Appellants first assert, "the Board . . . appears to impermissibly
ignore the word 'retention' in the phrase 'data retention policies.' And,
Applicant has explained that Martin's data permission policies are, of course,
not data retention policies. As such, Martin cannot anticipate claim 1:
Martin does not disclose each and every limitation of the claim."
Request 2-3.
Argument (2)
Appellants further contend:
[T]he Examiner has formulated, without evidence, an
interpretation of the phrase "archiving file system" according to
what the Examiner asserts to be the broadest reasonable
interpretation. Applicant disputed this interpretation as being
broader than the ordinary meaning, and thus not reasonable.
2 Our Decision on this Request relies upon Appellants' Appeal Brief ("App.
Br.," filed July 24, 2013); Reply Brief ("Reply Br.," filed Feb. 4, 2014);
Examiner's Answer ("Ans.," mailed Dec. 4, 2013); Final Office Action
("Final Act.," mailed Feb. 27, 2013); the original Specification ("Spec.,"
filed May 29, 2009); and our Decision on Appeal ("Decision" mailed
Mar. 10, 2016).
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Application 12/474,663
The Examiner has not provided any evidence that what
Applicant contends to be the ordinary meaning is incorrect-even
though it is his burden to do so. And, the Board appears to have
impermissibly shifted the Examiner's burden onto Applicant.
Moreover, the Board's comparison of purported similarities
between portions of the Specification and Martin does not
establish that the file system of Martin is an archiving file
system, just as a comparison of similarities between the wheels
of a bicycle and the wheels of a train does not establish that a
train is a bicycle. Still further, to the extent Applicant's
assertions are unsupported argument, the Examiner's assertions
are likewise unsupported argument. The distinction between
these two, however, is that the Examiner bears the initial
burden of providing evidence to establish that Applicant is
wrong-not the other way around.
Request 4.
RESPONSE TO ARGUMENTS
With respect to the issues identified in the Request, we have only
considered those timely arguments actually made by Appellants in deciding
this Request. Arguments which Appellants could have timely made but
chose not to make in Request or in the prior Appeal and Reply Briefs have
not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Response to Argument (1)
In the Appeal Brief, and as reiterated in the Request, Appellants
contend Martin "arbitrates queued access and updates for a database system
using a permit relocation mechanism," and such disclosure "does not define
a set of data retention policies that can be enforced upon the record content
of Martin's database." App. Br. 3--4; and see Request 2. Appellants further
argue "[g]ranting or revoking access, however, implicates data permission
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policies-not data retention policies. Put a different way, the examiner
appears to impermissibly ignore the word 'retention' in the phrase 'data
retention policies.'" App. Br. 4. In the Request, Appellants further contend
"the Board also appears to impermissibly ignore the word 'retention' in the
phrase 'data retention policies.' And, Applicant has explained that Martin's
data permission policies are, of course, not data retention policies. As such,
Martin cannot anticipate claim 1 .... " Request 2-3.
As a matter of claim construction, we adopt a broad but reasonable
interpretation of the recited "at least one data policy manager process
configured to (i) query the database system and (ii) enforce a set of data
retention policies upon the archiving file system based on results of the
query." Claim 1 (emphasis added). 3 We agree with the Examiner's broad
but reasonable construction of the recited "data retention policies" as "the
enforcement of a set of data policies upon the archiving file system based on
the results of the query." Final Act. 5. We further agree with the Examiner's
3 "In the patentability context, claims are to be given their broadest
reasonable interpretations ... limitations are not to be read into the claims
from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (citations omitted). Any special meaning assigned to a term "must be
sufficiently clear in the specification that any departure from common usage
would be so understood by a person of experience in the field of the
invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473,
1477 (Fed. Cir. 1998); see also Helmsdeifer v. Bobrick Washroom Equip.,
Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own
lexicographer and assign to a term a unique definition that is different from
its ordinary and customary meaning; however, a patentee must clearly
express that intent in the written description."). Absent an express intent to
impart a novel meaning to a claim term, the words take on the ordinary and
customary meanings attributed to them by those of ordinary skill in the art.
Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed.
Cir. 2003) (citation omitted).
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Application 12/474,663
finding that Martin's "Permit Manager" discloses the recited data policy
manager process because it "queries the database to see if the data is
currently available for manipulation, and granting or revoking access based
on this .... " Id. (citing Martin i-f 43). We agree with the Examiner's
finding. We note that granting or revoking access in Martin determines
whether or not data is retained in its current state. Moreover, we note
Appellants do not provide evidence that "data retention policy" is explicitly
defined otherwise in the Specification or that a person with skill in the art
would attribute a different meaning to this phrase.
Response to Argument (2)
Appellants contend, "Martin does not disclose an archiving file
system," "[t]herefore Martin's database is not an archiving file system ...
[and] the [E]xaminer's interpretation of the phrase 'archiving file system'
impermissibly vitiates the meaning of the term 'archiving' because it
incorrectly suggests that all file systems are archiving file systems." App.
Br. 3.
In the Reply Brief, Appellants allege:
The [E]xaminer has the burden of establishing that the term of
art "archiving file system" does not have, to those of ordinary
skill, the meaning that applicant has suggested .... Moreover,
terms of art understood by those of ordinary skill and used in an
application need not be further defined in the specification.
And, external authority need not be cited in order for a phrase
to be a term of art.
Reply Br. 2.
In the Request, Appellants further allege:
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Application 12/474,663
[T]he Examiner has formulated, without evidence, an
interpretation of the phrase "archiving file system" according to
what the Examiner asserts to be the broadest reasonable
interpretation. Applicant disputed this interpretation as being
broader than the ordinary meaning, and thus not reasonable.
The Examiner has not provided any evidence that what
Applicant contends to be the ordinary meaning is incorrect-even
though it is his burden to do so. And, the Board appears to have
impermissibly shifted the Examiner's burden onto Applicant.
Request 4. We disagree with Appellants' contention. While Appellants
allege the Examiner's interpretation is broader than the ordinary meaning,
they proffer no alternative definition in any of the Appeal Brief, Reply Brief,
or Request, nor do Appellants cite to any explicit definition or evidence in
support of their argument the Examiner erred.
Appellants argue the Board has impermissibly shifted the Examiner's
burden to Appellants because the Examiner bears the initial burden of
factually supporting any prima facie conclusion of obviousness. Request 3
(quoting ivIPEP § 2142). "[A]ll that is required of the office to meet its
prima facie burden of production is to set forth the statutory basis of the
rejection and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice requirement of
§ 132." In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). "Here, the
examiner's discussion of the theory of invalidity (anticipation), the prior art
basis for the rejection ... and the identification of where each limitation of
the rejected claims is shown in the prior art reference by specific [paragraph]
number was more than sufficient to meet this burden." Id.
Appellants alleged errors in the Examiner's rejection by identifying
claim terms that Appellants argued were not interpreted correctly. After
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Application 12/474,663
reviewing these alleged errors, we determined that the Examiner's claim
constructions were reasonable and the Examiner's findings were supported
in Martin, by a preponderance of the evidence. We again reiterate our
agreement with the Examiner's construction of and findings related to the
claimed "archiving file system." See Decision 5-7 (citing Ans. 2-3 and
comparing Spec. 1 with Martin i-f 30). In the Appeal Brief and Reply Brief,
Appellants did not identify any evidence of record to weigh against the
Examiner's broad but reasonable interpretation of the recited "archiving file
system" that would preclude it from reading on Martin's disclosure of
persistent data element storage. See Ans. 3 (citing Martin i-fi-127, 30, and 32).
Our review necessarily considered the lack of evidence or persuasive
argument from Appellants that the Examiner's claim interpretations were
incorrect or findings were not supported, but this did not impermissibly shift
any burden to Appellants.
Appellants argue "to the extent Applicant's assertions are unsupported
argument, the Examiner's assertions are likewise unsupported argument.
The distinction between these two, however, is that the Examiner bears the
initial burden of providing evidence to establish that Applicant is wrong-not
the other way around." Request 4. In response, we note the Board, as well
as Examiners, make findings of fact, reach conclusions of law, and make
decisions regarding the exercise of discretion-not "arguments,"
"contentions," "admissions," or "concessions"-because neither the
Examiner nor the Board are parties in any ex parte proceeding. Instead, the
Examiner has made several findings with which Appellants disagree, as
discussed above.
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Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on Martin to disclose the
contested limitations of claim 1, nor do we find error in the Examiner's
resulting finding of anticipation. Therefore, we sustain the Examiner's
anticipation rejection of independent claim 1.
CONCLUSION
In view of the above, Appellants have not persuasively shown that we
misapprehended or overlooked any of their arguments, or that our Decision
should otherwise be reversed. For the aforementioned reasons, Appellants'
contentions have not persuaded us of error in our Decision on Appeal of
March 10, 2016.
DECISION
Accordingly, while we have granted Appellants' Request for
Rehearing to the extent that we have reconsidered our Decision, that request
is denied with respect to making any changes therein. Accordingly, we
affirm the Examiner's decision rejecting claims 1-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REQUEST FOR REHEARING DENIED
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