Ex Parte Farlee et al

Patent Trial and Appeal Board

Mar 28, 2013

11107991 (P.T.A.B. Mar. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL
BOARD
____________________

Ex parte KEVIN FARLEE, RICHARD REITMEYER, and WILLIAM
MARUYAMA
____________________

Appeal 2010-006708
Application 11/107,991
Technology Center 2100
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J.
DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006708
Application 11/107,991

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-35. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Exemplary Claim
Appellants’ invention relates to a method, system, and computer
program product and medium with instructions to perform a method of
resuming processing of a hierarchical data in a file system tree (Spec. ¶¶
[0001], [0002], and [0012]-[0014]; claims 1, 19, and 23) to perform a
backup operation with respect to the file system or a portion thereof (Spec.
¶¶ [0014] and [0015]; Abs. at [0027]; claims 1, 19, and 23).
Exemplary independent claim 1 under appeal, with emphasis added to
the disputed limitation at issue, reads as follows:

1. A method of resuming processing of a hierarchical data in a file
system tree, comprising:

traversing a previously-processed part of the hierarchical data by
starting at a first level of the hierarchical data, omitting at least one
processing operation with respect to data in the previously-processed part;

descending only into sub-levels, if any, that lead to a restart location
within the hierarchical data; and

resuming normal processing of a remaining part of the hierarchical
data in the file system tree starting from a next data after the restart location,
wherein:

resuming normal processing includes processing the remaining
part in the same order as the previous processing would have
processed the remaining part had the previous processing not been
interrupted; and

Appeal 2010-006708
Application 11/107,991

3
[A] after resuming normal processing, a given piece of the
remaining part of the hierarchical data in the file system tree is
processed without first determining whether said given piece of the
hierarchical data was successfully processed prior to the interruption
of the previous processing.
The Examiner’s Rejections
(1) The Examiner rejected claims 1-35 under 35 U.S.C. § 112, first
paragraph, as failing to provide adequate written description of the claimed
invention, i.e., failing to describe the subject matter of claims 1, 19, and 23
on appeal in such a way as to reasonably convey to one skilled in the art that
the inventor had possession of the currently claimed invention at the time the
application was filed. Ans. 4-5. The Examiner determines that the
originally filed Specification, Drawings, and Claims fail to show, describe,
and/or provide written description support for limitation [A] of claim 1, and
similar limitations found in remaining independent claims 19 and 23 (Ans.
4-5 and 21). The Examiner finds (Ans. 4-5) that Appellants’ Specification
(Spec. ¶¶ [0014], [0015], and [0017]) only describes resuming the backup
process, and omits any reference as to how to handle data that has been
unsuccessfully saved during a backup interruption, or any expectation that
such a check would be unnecessary.
(2) The Examiner rejected claims 1-27 and 30-35 as being
unpatentable under 35 U.S.C. § 103(a) over Hamilton (US 7,085,962 B1)
and Eastridge (US 5,241,668). Ans. 6-16 and 17-19. For purposes of
applying the references to the claims, the Examiner interprets claims 1, 19,
and 23 as reciting processing the hierarchical data in the file system tree in a
specified order, and reads out the clause in limitation [A] rejected as lacking
written description support (“without first determining whether said given
Appeal 2010-006708
Application 11/107,991

4
piece of the hierarchical data was successfully processed prior to the
interruption of the previous processing” (see, e.g., claim 1)). Ans. 8-10 and
22-23.
(3) The Examiner rejected claims 28 and 29 as being unpatentable
under 35 U.S.C. § 103(a) over Hamilton, Eastridge, and Murray (US Pat.
Pub. 2003/0056139 A1). Ans. 19-20.
Appellants’ Contentions1
(1) Appellants contend (App. Br. 13-15; Reply Br. 4) that the
Examiner erred in rejecting claims 1-35 under 35 U.S.C. § 112, first
paragraph, because:
(a) paragraphs [0001], [0014], and [0015] taken together would
lead a person of ordinary skill in the art to know that it is not necessary
after resuming processing to determine if data was successfully
processed prior to the interruption before processing the data (App. Br.
15); and

1 Appellants do not provide separate patentability arguments for claims 2-27
rejected under 35 U.S.C. § 103(a) over Hamilton and Eastridge, and instead
argues these claims with independent claim 1 rejected under
35 U.S.C. § 103(a) over Kohn, Johnson, and Tanaka (see App. Br. 15-18;
Reply Br. 5-6). Appellants rely on the arguments presented with regard to
claim 1 for the patentability of claims 28 and 29, depending from claim 1,
and rejected under 35 U.S.C. § 103(a) over Hamilton, Eastridge, and
Murray. In view of the foregoing, we select claim 1 as representative of the
group of claims consisting of claims 1-27, and we with regard to this group
we will only address the merits of representative claim 1 in our decision.
We will decide the appeal of claims 28 and 29 on the basis as claim 1 from
which claims 28 and 29 depend.
Appeal 2010-006708
Application 11/107,991

5
(b) paragraph [0019] provides support as well, because if the last
successfully processed data is identified as the Specification describes at
paragraphs [0015] and [0019], then limitation [A] of claim 1 is not
supported (Reply Br. 4).
(2) Appellants contend (App. Br. 15-20; Reply Br. 5-7) that the
Examiner erred in rejecting claims 1-27 and 30-35 under 35 U.S.C. § 103(a)
over Hamilton and Eastridge for numerous reasons, including:
(a) with regard to claims 1-27, neither Hamilton nor Eastridge
teach or describe processing in some order, and in accordance with
limitation [A] of representative claim 1 (App. Br. 15-18; Reply Br. 5-
6);
(b) with regard to claims 30, 32, and 34, Hamilton and
Eastridge fail to teach or suggest any context, or to even use the word
“context” (App. Br. 18-19; Reply Br. 6); and
(c) with regard to claims 31, 33, and 35, Hamilton and
Eastridge fails to teach or suggest recursive stacks (App. Br. 19-20;
Reply Br. 6-7).
(4) Appellants contend (App. Br. 20) that the Examiner erred in
rejecting claims 28 and 29 under 35 U.S.C. § 103(a) over Hamilton,
Eastridge, and Murray for the same reasons provided with respect to claim 1.
Appeal 2010-006708
Application 11/107,991

6
Issues on Appeal
Based on Appellants’ arguments, the following three issues are
presented on appeal:
(1) Did the Examiner err in determining that the originally filed
Specification fails to reasonably convey to one of ordinary skill in the art
that Appellants had possession of the claim limitation [A] as set forth in
representative claim 1, including that “a given piece of the remaining part of
the hierarchical data in the file system tree is processed without first
determining whether said given piece of the hierarchical data was
successfully processed prior to the interruption of the previous processing”
as set forth in claim 1, and as similarly recited in remaining independent
claims 19 and 23?
(2) Did the Examiner err in rejecting claims 1-27 and 30-35 as being
obvious because the combination of Hamilton and Eastridge fails to teach or
suggest (i) a method of resuming processing of a hierarchical data in a file
system tree, as recited in representative claim 1; (ii) building process
context, as recited in claims 30, 32, and 34; and/or (iii) “building a recursive
stack,” as recited in claims 31, 33, and 35?
(3) Have Appellants shown that the Examiner erred in rejecting claims
28 and 29 as being obvious over the combination of Hamilton, Eastridge,
and Murray?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Appeal Brief (App. Br. 13-20) and the Reply Brief (Reply
Br. 4-7) that the Examiner has erred. We do not agree with Appellants’
Appeal 2010-006708
Application 11/107,991

7
conclusions. 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 set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief (see Ans. 4-25). We concur with the conclusions
reached by the Examiner, and highlight and address specific findings and
arguments for emphasis as follows.
Issue (1): § 112, First Paragraph, Rejection
We disagree with Appellants’ arguments (App. Br. 13-15; Reply Br.
4) that the originally filed Specification reasonably conveys to one of
ordinary skill in the art that Appellants had possession of the claim
limitations [A], including that “a given piece of the remaining part of the
hierarchical data in the file system tree is processed without first determining
whether said given piece of the hierarchical data was successfully processed
prior to the interruption of the previous processing” (claim 1), as recited in
claims 1, 19, and 23 on appeal.
Paragraph [0015] of Appellants’ Specification describes the condition
on which a given piece of hierarchical data in the file system tree is
processed after resuming normal processing as being done only after
determining that the data was successfully processed prior to the interruption
in the following manner:

In an embodiment, when a file system entry is successfully
saved to a [backup] media as part of a backup operation, a
record of the backup is made. This record can be used later to
resume backup at the last successfully recorded backup point if
a failure occurs during backup. In an embodiment once the last
backed up point is found in a backup resume operation, the
backup system or process re-establishes backup operation
context without exhaustively traversing the file system. An
Appeal 2010-006708
Application 11/107,991

8
interrupted backup operation is resumed by reestablishing
context and resuming processing starting with a data element
that follows the last file successfully and completely backed up
prior to the interruption. Traversing the file system in the same,
repeatable order ensures that no files will be missed or stored in
duplicate on the backup media.

(Spec. ¶ [0015]) (emphases added).
We agree with the Examiner (Ans. 4-5 and 21) that paragraph [0015]
describes making a record backup as part of a backup operation when a file
system entry (i.e., a given piece of hierarchical data) is successfully saved to
a backup media. Thus, Appellants’ originally filed Specification only
provides a written description supporting the opposite of what is recited in
claims 1, 19, and 23, i.e., that it is first determined whether a given piece of
hierarchical data was successfully processed prior to the interruption of the
backup process (Ans. 21). Paragraph [0019] supports paragraph [0015] by
stating that “in the event the backup operation is interrupted, the last file in
the saveset that was saved successfully to the backup media” is logged.
Finally, original claims 1, 19, and 23 do not recite or otherwise
provide support for limitation [A] found in claim 1, and as similarly found in
claims 19 and 23 on appeal.
In summary, a review of the entire Specification and Drawings as
originally filed, including the originally filed claims, fails to reasonably
convey to one of ordinary skill in the art that Appellants had possession of
limitation [A] set forth in claim 1, including as set forth in independent
claims 1, 19, and 23. Accordingly, we will sustain the Examiner’s rejection
of claims 1-35 under 35 U.S.C. § 112, first paragraph.
Appeal 2010-006708
Application 11/107,991

9
Issue (2): § 103(a) Rejection over Hamilton and Eastridge
With regard to representative claim 1, the Examiner determines (Ans.
6-10 and 22-23) that the combination of Hamilton and Eastridge discloses or
suggests the recited method, including limitation [A] of claim 1 without the
clause rejected in the written description rejection as lacking support (“a
given piece of the remaining part of the hierarchical data in the file system
tree is processed without first determining whether said given piece of the
hierarchical data was successfully processed prior to the interruption of the
previous processing”). Appellants’ contentions (App. Br. 15-18; Reply Br.
5-6) that Hamilton and Eastridge fail to teach or describe processing the
given piece of the remaining part of the hierarchical data in the file system
tree without first determining whether said given piece of the hierarchical
data was successfully processed prior to the interruption of the previous
processing are unpersuasive in light of our conclusion with regard to the
written description rejection that the Specification does not reasonably
convey to one of ordinary skill in the art that Appellants had possession of
the claim limitation [A] as set forth in representative claim 1, including that
“a given piece of the remaining part of the hierarchical data in the file
system tree is processed without first determining whether said given piece
of the hierarchical data was successfully processed prior to the interruption
of the previous processing” (claim 1).
With regard to claims 30, 32, and 34, we agree with the Examiner
(Ans. 24) that Hamilton teaches or suggests the equivalent of the recited
“building process context.”
Appeal 2010-006708
Application 11/107,991

10
With regard to claims 31, 33, and 35, we agree with the Examiner
(Ans. 25) that Hamilton’s disclosure of hierarchical trees teach or suggest
the recited recursiveness.
In view of the foregoing, the combination of Hamilton and Eastridge
teaches or suggests (i) a method of resuming processing of a hierarchical
data in a file system tree, as recited in representative claim 1; (ii) building
process context, as recited in claims 30, 32, and 34; and/or (iii) “building a
recursive stack,” as recited in claims 31, 33, and 35. Appellants’ arguments
(App. Br. 15-20; Reply Br. 5-7) to the contrary are unpersuasive in view of
the Examiner’s:
(i) proper conclusion that the originally filed Specification fails to
reasonably convey to one of ordinary skill in the art that Appellants had
possession of the claim limitation [A] as set forth in representative claim 1,
including that “a given piece of the remaining part of the hierarchical data in
the file system tree is processed without first determining whether said given
piece of the hierarchical data was successfully processed prior to the
interruption of the previous processing” as set forth in claim 1, and as
similarly set forth in remaining independent claims 19 and 23, and
(ii) findings and determinations with regard to Hamilton and Eastridge
(Ans. 6-10 and 22-25). Accordingly, we will sustain the Examiner’s
rejection of claims 1-27 and 30-35 under 35 U.S.C. § 103(a) over Hamilton
and Eastridge.
Issue (3): § 103(a) Rejection over Hamilton, Eastridge, and Murray
Appellants have not shown that the Examiner erred in rejecting claims
28 and 29 as being obvious under 35 U.S.C. § 103(a) over the combination
of Hamilton, Eastridge, and Murray, or otherwise provided separate
Appeal 2010-006708
Application 11/107,991

11
patentability arguments for these claims (see App. Br. 20). Accordingly, we
will sustain the Examiner’s obviousness rejection of claims 28 and 29 for the
same reasons as for claim 1 from which these claims depend.

CONCLUSIONS
(1) The Examiner did not err in (i) determining that the originally filed
Specification fails to reasonably convey to one of ordinary skill in the art
that Appellants had possession of the limitation [A] of claim 1, including
that “a given piece of the remaining part of the hierarchical data in the file
system tree is processed without first determining whether said given piece
of the hierarchical data was successfully processed prior to the interruption
of the previous processing,” and as similarly recited in claims 19 and 23, and
(ii) rejecting claims 1-35 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
(2) The Examiner did not err in rejecting claims 1-27 and 30-35 as
being obvious under 35 U.S.C. § 103(a), because the combination of
Hamilton and Eastridge teaches or suggests (i) the method of resuming
processing of a hierarchical data in a file system tree as recited in
representative claim 1; (ii) building process context, as recited in claims 30,
32, and 34; and/or (iii) “building a recursive stack,” as recited in claims 31,
33, and 35.
(3) Appellants have not shown that the Examiner erred in rejecting
claims 28 and 29 as being obvious under 35 U.S.C. § 103(a) over the
combination of Hamilton, Eastridge, and Murray, or otherwise provided
separate patentability arguments for these claims.
Appeal 2010-006708
Application 11/107,991

12

DECISION
The Examiner's § 112, first paragraph, and § 103(a) rejections are
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

tkl