Ex Parte Gold et al

Board of Patent Appeals and Interferences

Mar 27, 2012

10684207 (B.P.A.I. Mar. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN GOLD
and ROBERT GIBSON
____________

Appeal 2009-014993
Application 10/684,207
Technology Center 2100
____________

Before GREGORY J. GONSALVES, ERIC B. CHEN and BRUCE R.
WINSOR, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014993
Application 10/684,207

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-27, all the claims pending in the application. (App. Br. 3.) We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Exemplary claim 1 follows:
1. A method comprising:

receiving a list comprising media and at least two backup
devices, wherein a first medium of the list is assigned to a first
backup device, and a second medium of the list is assigned to a
second backup device;
ordering the list by physical location of the at least two
backup devices based on proximity of the remaining backup
devices of the at least two backup devices to the first backup
device; and
presenting at least the media portion of the ordered list to
a user.

The Examiner rejected claims 1-9, 13-15, 19-22, and 24-27 under 35
U.S.C. § 103(a) as being unpatentable over Bolin (U.S. Patent 5,664,146) in
view of Jennings (“Using Access 97”). (Ans. 3-9.)
The Examiner rejected claims 10-12, 16-18 and 23 under 35 U.S.C. §
103(a) as being unpatentable over Bolin, Jennings and Kanai (U.S. Patent
Pub. 2002/0152181). (Ans. 10-11.)

Appeal 2009-014993
Application 10/684,207

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ISSUE
Appellants’ responses to the Examiner’s positions present the
following issue:
Does the combination of Bolin and Jennings teach or suggest
“ordering the list by physical location of the at least two backup devices
based on proximity of the remaining backup devices of the at least two
backup devices to the first backup device,” as recited in independent claim
1, and as similarly recited in independent claims 10, 13, 16, 19, and 23?

ANALYSIS
We disagree with Appellants’ conclusion regarding the obviousness of
claims 1-27. 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 (Ans. 3-18) in
response to the Appellants’ Appeal Brief. We concur with the conclusion
reached by the Examiner. We highlight and address specific findings and
arguments regarding the claim limitation of “ordering the list by physical
location of the at least two backup devices based on proximity of the
remaining backup devices of the at least two backup devices to the first
backup device.”
Appellants contend that the combination of Bolin and Jennings does
not teach or suggest “ordering the list based on proximity of the remaining
backup devices of the at least two backup devices to the first backup
device.” (App. Br. 10.) Appellants argue that “Bolin appears to only
provide a home location column without providing corresponding proximity
information or a mechanism for determining said proximity information.
Appeal 2009-014993
Application 10/684,207

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(Id. at 11.) As explained by the Examiner, however, Bolin teaches that
textual representations are used to identify racks of cartridges within a vault
such as the text “VLT17R1” for vault 17, rack 4. (Ans. 12.) Moreover,
Bolin’s cartridge racks qualify as the claimed backup devices because
according to Appellants’ own specification, “backup devices may be tape
libraries.” (Spec. 4:6.) In addition, as also explained by the Examiner,
Jennings teaches “ordering a set of rows by a given column in ascending or
descending order . . .” (Ans. 4, citing Jennings, table 3.2.) Thus, we find
that the Examiner, giving the claim its broadest reasonable meaning
consistent with the Specification, In re Morris, 127 F.3d 1048, 1054 (Fed.
Cir. 1997), properly relies on the sorting of racks of cartridges by their
textual representation as taught by the combination of Jennings and Bolin, as
the claimed step of “ordering the list based on proximity of the remaining
backup devices of the at least two backup devices to the first backup
device.” Accordingly, we will sustain the Examiner’s rejection of claim 1 as
well as claims 2-5, 7, 9-21, and 23-24 because Appellants did not set forth
any separate patentability arguments for these claims. (See App. Br. 12, and
14-15.)
With respect to claim 6, the Examiner found that the claimed “order
number” constitutes non-functional descriptive material which cannot
“distinguish the claimed invention from the prior art in terms of patentability
. . .” (Ans. 6.) Appellants argue that “[t]he order number, interpreted in the
context of the instant specification (see specifically paragraph 23) is
assigned based on physical proximity of data centers to each other.” (App.
Br. 13.) But as explained by the Examiner, the claim language itself does
not require the order number to be assigned based on physical proximity and
Appeal 2009-014993
Application 10/684,207

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the limitations from the specification identified by Appellants may not be
incorporated into the claims. (Ans. 17.) Accordingly, we will sustain the
rejection of claim 6 as well as claims 22 and 25-27 because Appellants did
not set forth any separate patentability arguments for those claims. (See
App. Br. 13.)
In addition, Appellants argue that the Examiner erred in rejecting
claim 8 as obvious because its “assertion that in Bolin the ‘order number
would be the physical limitation’ is incorrect . . . .” (App. Br. 13.)
Appellants argue that “[t]he physical location of Bolin is not both a physical
location and an order number as claimed.” (Id.) As explained by the
Examiner, however, “[t]here is nothing in the claim language that would
render inconsistent an interpretation of the order number as being the
physical location.” (Ans. 17.) Moreover, the combination of Bolin and
Jennings teaches “ordering the list by an order number associated with each
of the backup devices,” as recited in claim 8, because Bolin teaches that text
may represent the order number and Jennings teaches that a list may be
sorted by any text. (Ans. 3-5 and 7.) Accordingly, we will sustain the
Examiner’s rejection of claim 8.

DECISION
We affirm the Examiner’s decision rejecting claims 1-27 as obvious.
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
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