Ex Parte Iliev et al

Patent Trial and Appeal Board

Jul 25, 2016

13421588 (P.T.A.B. Jul. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/421,588 03/15/2012
50400 7590 07/27/2016
SCHWEGMAN LUNDBERG & WOESSNER/SAP
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Ivaylo Iliev
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.
2058.672US 1 5856
EXAMINER
CHEN,TEY
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
07/27/2016 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IV A YLO ILIEV, VENCISLA V DIMITROV, GALIN GALCHEV,
and GEORGI STANEV
Appeal2014-008264
Application 13/421,588 1
Technology Center 2100
Before LARRY J. HUME, CARLL. SILVERMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
Opinion for the Board filed by SILVERMAN, Administrative Patent Judge.
Opinion dissenting-in-part filed by DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3-10, 12-14, and 16-20. Final Act. 2.
Claim 18 is subject to objection2 and claims 2, 11, and 15 are cancelled.
Final Act. 2-3. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellants identify the real party in interest as SAP AG. App. Br. 2.
2 The Examiner states claim 18 would be allowable if rewritten to overcome
the rejection(s) under 35 U.S.C. l 12(b) or 35 U.S.C. 112 (pre-AIA), 2nd
paragraph and to include all of the limitations of the base claim and any
intervening claims. Final Act. 18.
Appeal2014-008264
Application 13/421,588
STATEMENT OF THE CASE
The disclosed and claimed invention relates to implementing an
abstraction layer for a file repository wherein an access request to retrieve an
electronic file is received from a requesting device. Abstract.
Claim 1, reproduced below, is exemplary of the subject matter on
appeal (disputed limitation emphasized):
1. A method, comprising:
receiving from a requesting device an access request to
retrieve an electronic file, the access request comprising an
identification of a first storage location in a file repository;
searching, using at least one processor of a machine for the
electronic file in the file repository at the first storage location in
response to the access request;
based on the searching for the electronic file being
successful, retrieving the electronic file from the file repository
at the first storage location;
based on the searching for the electronic file being
i1nsi1ccessfi1l,
accessing a redirection file in the file repository, the
redirection file comprising an identification of a second storage
location for the electronic file at a storage site external to the file
repository, the accessing of the redirection file in the file
repository comprising searchingfor the redirection file in the file
repository, beginning in a lowest-level electronic file folder
containing the first storage location, and continuing to
successively higher-level electronic file folders containing the
first storage location, until the redirection file is discovered, and
retrieving the electronic file from the storage site external
to the file repository based on the identification of the second
storage location; and
transmitting the retrieved electronic file to the requesting
device.
App. Br. 17. (Claims App.).
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Appeal2014-008264
Application 13/421,588
THE REJECTION
Claims 1, 3-10, 12-14, 16-17, and 19-20 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Kane (US 2002/0156702 Al,
published Oct. 24, 2002). Final Act. 4-8.
ANALYSIS
Regarding independent claims 1, 10, and 14, Appellants argue Kane
teaches servicing a request for resources and "the cited sections of Kane do
teach performing a search, but only for the requested 'resource,' not for a
redirection file of any kind." App. Br. 11 (citing Abstract; i-fi-1217-225).
According to Appellants, "Generating a redirection file after completing a
search for a resource does not teach or suggest conducting a search for an
already generated redirection file, as recited by claim I." Id. Appellants
further argue, Kane, therefore, does not disclose "searching for the
redirection file in the file repository, beginning in a lowest-level electronic
file folder containing the first storage location, and continuing to
successively higher-level electronic file folders containing the first storage
location, until the redirection file is discovered." Id.
The Examiner finds Kane discloses the claim 1 disputed limitation.
Final Act. 4-5 (citing Abstract; i-fi-f 171-174, 181-202, 217-225, 58---61, 126;
Figs. 3, 5-8). In the Answer, the Examiner notes Appellants' argument
regarding "already generated file" refers to language not recited in the
claims. Ans. 3. The Examiner then identifies excerpts from Kane as
disclosing the disputed limitation. Id. at 3-10. The Examiner refers to the
workflow of Kane regarding a PSNS (Producer System Network Server)
request for a PKI (Product Knowledge Item) that does not exist in its storage
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Appeal2014-008264
Application 13/421,588
and in which SRL (Static Resource Locator) and SRR (Streaming Resource
Redirector) are activated to propagate a request if the file is not found. Id.
Ans. 5-7 (citing i-fi-f 172-174, 111; Fig. 5). Based on these teachings, the
Examiner finds "Kane has clearly disclosed the claimed searching of a
redirection file in a repository." Ans. 7. In particular, the Examiner finds
Kane discloses, if the requested page is not found (unsuccessful), SRL
(Static Resource Locator) and SRR (Streaming Resource Redirector)
handlers propagate the request to other nodes (external) which then transmit
the requested file to the client. Id. 9-10 (citing Kane i-fi-f 111, 172-174, 217-
226; Fig. 3). The Examiner further finds the propagation request is "via a
uniquely identified streaming/electronic PKI XML file (e.g., S.: 0111 &
0172-0174 & 0217-0226) to other PSIN server Nodes of the Web Content
Management producing farm ... " Id. at 9. The Examiner refers to the
propagation request as a "generated redirection file." Id. at 10.
In reply, Appellants argue:
In contrast, the newly cited portions of Kane ... fail to disclose
searching for a redirection file at all. Instead, Kane discloses
searching for a requested resource and, if the requested resource
is not found, converting a XML file into a new file that can then
be returned to the requesting user. At no point does Kane
disclose searching for or finding a "redirection file [comprises]
an identification of a second storage location for the electronic
file at a storage site external to the file repository," as recited by
claim 1.
Reply Br. 4.
The[] newly cited sections of Kane disclose "how a [server]
serves[] a request for a PKI (product knowledge item that does
not exist in storage." The "DWS (display web server) checks
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Appeal2014-008264
Application 13/421,588
first if the HTML page associated with the user request exists
already on the PSIN (the Producer System Interactive Network)
Node Storage." If "the page does not exist, DWS (display web
server) searches for the PK.I XML file." Once, found, "an X2H
handler converts the [XML file] to the PK.I HTML pages" which
is then "sen[t] to the end-user browser." Thus, the cited sections
of Kane teach that if a requested HTML page cannot be found, a
XML to HTML converter converts an existing PK.I XML file to
create a new HTML file.
The Examiner argues that the "server of the Web Content
Management Producing farm in Kane's invention [] converts the
uniquely identified streaming/electronic PK.I XML to retrieve a
PK.I HTML file associated with a client request." However, the
Examiner appears to misunderstand the cited sections of the
reference. No HTML file is ever "retrieved" based on the PK.I
XML file. Instead, the PK.I XML file itself is converted to create
a PKI XML. Thus, the PK.I XML file is not a "redirection file
comprising an identification of a second storage location for the
electronic file at a storage site external to the file repository," as
required by claim 1.
1A1s such, the above cited sections do not teach or disclose
"searching for the redirection file in the file repository" because
the cited sections of Kane fail to teach a "redirection file" at all.
As best, the cited sections of Kane disclose searching for an
XML file which is then converted into the needed HTML file.
Reply Br. 8 (footnotes omitted).
While we agree with the Examiner claim 1 does not recite an "already
generated file," claim 1 does recite "accessing a redirection file in the file
repository" in which the redirection file comprises "an identification of a
second storage location at a storage site external to the file repository" and in
which accessing comprises "searching for the redirection file in the file
repository." Thus, the claim requires searching for the redirection file, and
not merely generating a redirection file.
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Application 13/421,588
We are persuaded by Appellants' arguments that Kane does not
disclose the claimed redirection file and the disputed limitation. App.
Br. 11; Reply Br. 3-13. In particular, we are persuaded the redirection files
of Kane are generated rather than searched for and the Examiner does not
present a clear identification of how the various cited portions of Kane
specifically disclose the claimed redirection file and the disputed limitation
as required for anticipation. A claim is anticipated only if each and every
element as set forth in the claims is found, either expressly or inherently
described in a single prior art reference, and arranged as required by the
claim. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F .2d 628, 631
(Fed. Cir. 1987).
In view of the above, based on the record before us, we do not sustain
the rejection of claim 1, and independent claims 10 and 14 which recite the
disputed limitation in commensurate form, and we also do not sustain the
rejection of their respective dependent claims 4, 5, 12, and 14.
DECISION
We reverse the Examiner's decision rejecting claims 1, 3-10, 12-14,
16, 17, 19, and 20.
REVERSED
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Appeal2014-008264
Application 13/421,588
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IV A YLO ILIEV, VENCISLA V DIMITROV, GALIN GALCHEV,
and GEORGI STANEV
Appeal2014-008264
Application 13/421,588
Technology Center 2100
Before LARRY J. HUME, CARLL. SILVERMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge, Dissenting-In-Part
DISSENTING-IN-PART OPINION
I respectfully dissent from the Majority's Decision reversing the
Examiner's rejection of independent claim 1. However, I concur with the
reversal of the rejection of claims 10, 12-14, 16, 17, 19, and 20.
Unlike independent claims 10 and 14, claim 1 is directed to a method.
As part of the recited method, I find two conditional limitations. Claim 1
recites two sets of steps each responsive to one of two mutually exclusive
conditions. The broadest reasonable interpretation of claim 1 requires
performance of only one of the set of steps that are conditioned on whether
the search for the electronic document is successful. See Ex parte Katz,
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Application 13/421,588
2011 WL 514314, at *4--5 (BPAI Jan. 27, 2011) (the broadest reasonable
interpretation of a conditional step in a method claim includes instances in
which the conditional step would not be invoked), reh 'g denied, 2011 WL
1211248, at *2 (BPAI Mar. 25, 2011 ); see also In re Johnston, 435 F.3d
13 81, 13 84 (Fed. Cir. 2006) ("optional elements do not narrow the claim
because they can always be omitted"). See also Cybersettle, Inc. v. Nat 'l
Arbitration Forum, Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007)
(unpublished) ("[i]t is of course true that method steps may be contingent. If
the condition for performing a contingent step is not satisfied, the
performance recited by the step need not be carried out in order for the
claimed method to be performed").
In particular, claim 1 requires if the search for the electronic file is
successful, then the electronic file is retrieved from the file repository at the
first storage location and transmitted to the requesting device. Steps
associated with the condition where the search is unsuccessful would not be
performed. By contrast, under the other scenario contemplated by claim 1,
i.e., if the search for the electronic document is unsuccessful, then a
redirection file is accessed according to further limitations. Steps associated
with the condition where the search is successful would not be performed.
Clearly, a use of the claimed method cannot perform steps for both
conditions, and thus, one set of steps would not be invoked under the
broadest reasonable interpretation.
Because I find the method of claim 1 to include two conditional
limitations, based on whether the search for the electronic file was
successful, the Examiner need not cite art for the steps responsive to both
potential conditions of the results of the claimed search. Here, the Examiner
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Application 13/421,588
finds, and l agree, Kane discloses performing the claimed steps when a
search for the electronic file was successful. Final Act. 4. Appellants do not
dispute this finding.
In view of the above discussion, I respectfully dissent from the
Majority Decision reversing the rejection of independent claim 1. 3
3 I do not comment on Appellants' proferred separate arguments of
patentability for claims 7 and 8, which depend from claim 1.
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