Ex Parte Gkantsidis et al

Patent Trial and Appeal Board

Jun 21, 2017

13324202 (P.T.A.B. Jun. 21, 2017)

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.
13/324,202 12/13/2011 Christos Gkantsidis 334372.01 7156
39254 7590 06/23/2017
Barta, Jones & Foley, P.C.
(Patent Group - Microsoft Corporation)
2805 Dallas Parkway
Suite 222
Plano, TX 75093
EXAMINER
TEETS, BRADLEY A
ART UNIT PAPER NUMBER
2195
NOTIFICATION DATE DELIVERY MODE
06/23/2017 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):
u sdocket @ micro soft .com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOS GKANTSIDIS, DIMITRIOS VYTINIOTIS,
ORION HODSON, DUSHYANTH NARAYANAN, and
ANTONY ROWSTRON
Appeal 2017-003748
Application 13/324,202
Technology Center 2100
Before ALLEN R. MacDONALD, PHILLIP A. BENNET, and
JOHN F. HORVATH, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 2, 3, 5, 6, 8—10, 17, and 20.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
Appellants ’ Invention
This invention is directed to “generating filters automatically from
data processing jobs.” Spec. 1 5; Abstract.
1 Claims 1, 4, 7, 11—16, 18, and 19 are allowable. Final Act. 4.
Appeal 2017-003748
Application 13/324,202
Representative Claims
Representative claims 1 (in-part), 2, and 3 read as follows.
1. A method comprising:
receiving, at a filter generator, a compiled input data processing
job;
outputting the executable filter to a filtering proxy; and
at least one of:
modifying a uniform resource identifier within the
compiled input data processing job to point to the
filtering proxy, embedding a filter specification in
each uniform resource identifier, and outputting the
modified compiled input data processing job;
applying . . .;
ensuring . . .; or
receiving and storing . . . and providing the filtered data
to the compute node.
2. The method according to claim 1, further comprising:
modifying the compiled input data processing job to reference
the filtering proxy; and
outputting the modified compiled input data processing job.
3. The method according to claim 2, wherein modifying the
compiled input data processing job comprises:
modifying a uniform resource identifier within the compiled
input data processing job to point to the filtering proxy; and
embedding a filter specification in each uniform resource
identifier.2
2 In our review of the rejection, we treat this claim as reciting “modifying a
[second] uniform resource identifier within the compiled input data
processing job to point to the filtering proxy; and embedding a [second]
filter specification in each uniform resource identifier.” Otherwise,
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Application 13/324,202
Rejection
The Examiner rejected dependent claims 2, 3, 5, 6, 8—10, 17, and 20
under 35 U.S.C. § 112, 4th paragraph, for failing to further limit the subject
matter of the respective claims upon which they depend. Final Act. 2—A.
ANALYSIS
The Examiner indicates independent claim 1 recites optional
limitations, in which at least one limitation must be present to effectuate the
claim. Final Act. 2; Ans. 3. The Examiner further indicates the rejected
dependent claims each recite one of the optional limitations of claim 1, and
thus “would not provide any further limitation as the language of [the
dependent] claims . . . already appears within claim 1.” Final Act. 3; see
Ans. 3—5. To further clarify, the Examiner indicates that claim 1 may be
represented as a method “comprising at least one of A or B or C,” and that
claim 2 may be represented as “[t]he method of claim 1 further comprising
A.” Ans. 4. Accordingly, the “Examiner asserts that claim 1 can be read as
‘A method . . . comprising A’ because you only need one of the limitations
to satisfy the ‘at least one of’ criterion.” Id. Therefore, according to the
Examiner claim 2 fails to “further limit claim 1 because it is merely
repeating a limitation that is already required by claim 1.” Id. The
Examiner additionally explains:
Examiner acknowledges that claim 1 can be interpreted to
select B or select C, and in such an instance, then claim 2
further limits. However, there is one instance Examiner
significant antecedent basis problems occur as the claim would improperly
repeat the introduction of “a uniform resource identifier” and “a filter
specification” found in claim 1.
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Appeal 2017-003748
Application 13/324,202
outlined above where claim 2 fails to further limit, and
therefore, because there is an instance in which claim 2 fails
to further limit, claim 2 cannot be considered to be in
proper form as required by pre-AIA 35 U.S.C. 112(d). A
claim must be proper in all instances; if there is one
instance that fails to meet the requirements of the statute,
then the claim is improper.
Ans. 4—5.
Appellants argue “35 U.S.C. § 112 does not specify or imply that ‘[a]
claim must be proper in all instances; if there is one instance that fails to
meet the requirements of the statute, then the claim is improper’, as alleged
by the Answer.” Reply Br. 2.
The Examiner proffers no citation to case law, statute, regulation, or
the MPEP to support the statement. See Ans. 2—6. Moreover, 35 U.S.C.
§ 112, 4th paragraph, requires that “[a] claim in dependent form shall be
construed to incorporate by re ference all the limitations of the claim to
The Examiner’s si a dependent claim fails to
further limit a parent claim comprising optional limitations because the
dependent claim merely repeats one of the optional limitations, overlooks
this statutory requirement. Absent supporting evidence, we do not agree
with the Examiner’s conclusory statement of the law on indefiniteness under
Section 112, fourth paragraph.
Additionally, Appellants argue that each of the rejected dependent
claims recites limitations not found in, and thus further limits, the claim(s)
from which it depends. App. Br. 13—16. We agree with Appellants
insomuch as claims 2, 3, 9, 17, and 20 recite limitations not found in the
respective claims from which they depend. Specifically, we agree with
Appellants’ arguments that: Claim 2 further recites “modifying the
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Application 13/324,202
compiled input data,” which is not found in claim 1 (App. Br. 13); Claim 3
further recites “modifying a [second] uniform resource identifier,” which is
not found in claim 1 (id.)3; Claim 9 further recites “in response to receiving
a request for data from a compute node, accessing the data from a storage
node and dynamically applying the executable filter to the data to generate
filtered data,” which is not found in claim 1 (id. at 15); Claim 17 further
recites “the filtering proxy is implemented on a storage node,” which is not
found in claim 16 (id. at 16); and Claim 20 further recites “a caching proxy
comprising a local cache and arranged to intercept requests from the
compute cluster to the filtering proxy and provide the filtered data to the
compute cluster from the local cache the filtering proxy is implemented on a
storage node,” which is not found in claim 16 (id.).
Accordingly, we do not sustain the rejection of claims 2, 3, 5, 6, 8—10,
17, and 20.
CONCLUSION
The Examiner erred in rejecting claims 2, 3, 5, 6, 8—10, 17, and 20
under 35 U.S.C. § 112, 4th paragraph.
DECISION
The Examiner’s rejection of claims 2, 3, 5, 6, 8—10, 17, and 20 is
reversed.
REVERSED
3 Again, we note each of claim 1 and claim 3 recites “modifying a uniform
resource identifier.” Thus, we interpret the uniform resource identifier
recited in claim 3 to be additional to, i.e., distinct from, the uniform resource
identifier recited in claim 1.
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