Ex Parte Kern et al

Board of Patent Appeals and Interferences

May 10, 2012

11312961 (B.P.A.I. May. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIC R. KERN and SHANE M. LARDINOIS
____________

Appeal 2010-002981
Application 11/312,961
Technology Center 2100

____________

Before ROBERT E. NAPPI, MICHAEL R. ZECHER, and
BRYAN F. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner‟s final
rejection of claims 1-6 which are all of the claims remaining in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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Invention
Appellants‟ invention relates to methods, apparatus, and products for
sharing computer data among computers. (Spec. [0001])

Claims
Claim 1, which is the only independent claim and illustrative of the
invention, is reproduced below with key disputed language emphasized:
1. A method for sharing computer data among computers, the
method comprising:
identifying by a user through a user interface on a first computer
at least one object of a file system to be shared through a second
computer;
creating by a sharing file system generator on the first computer a
sharing file system;
installing by the sharing file system generator in the sharing file
system the object to be shared; and
exposing the object to be shared from the sharing file system to
the second computer through a Universal Serial Bus ('USB') connection
between the first computer and the second computer.

Prior Art
The Examiner relies on the following references as evidence:
Macon, Jr. US 5,752,249 May 12, 1998
Frantz US 6,636,929 B1 Oct. 21, 2003
Reese US 2004/0254955 Dec. 16, 2004
Nelson US 6,857,057 B2 Feb. 15, 2005
Oshins US 2006/0259731 Nov. 16, 2006
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Principles of Law

During examination, the PTO must interpret terms in a claim using
“the broadest reasonable meaning of the words in their ordinary usage as
they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant's
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Nevertheless, “courts must not „import[ ] limitations from the specification
into the claim.‟ … [I]t is improper to „confin[e] the claims to th[e]
embodiments' found in the specification ….” In re Trans Texas Holdings
Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007) (citations omitted, bracketed
text in internal quotes in original).

This can be a difficult balancing act. However, as our reviewing court
has instructed, “the line between construing terms and importing limitations
can be discerned with reasonable certainty and predictability if the court's
focus remains on understanding how a person of ordinary skill in the art
would understand the claim terms.” Phillips v. AWH Corp., 415 F.3d 1303,
1323 (Fed. Cir. 2005) (en banc).

Examiner’s Rejection
The Examiner rejected claims 1-2 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Reese and Frantz. The Examiner
rejected claims 3-4 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Reese, Frantz, and Macon, Jr. The Examiner rejected claim
5 under 35 U.S.C. § 103(a) as being unpatentable over the combination of
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Reese, Frantz, and Oshins. The Examiner rejected claim 6 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Reese, Frantz, and
Nelson.

Appellant’s Contention
Appellants contend that the cited references fail to teach or suggest
the limitation of “creating by a sharing file system generator on the first
computer a sharing file system;” as recited in independent claim 1. (App.
Br. 6-9.) Appellants further contend that the cited references fail to teach or
suggest the limitation of “installing by the sharing file system generator in
the sharing file system the object to be shared;” as recited in independent
claim 1. (App. Br. 9-10.) Finally, Appellants contend “[t]he Office Action
does not examine Applicants' claims in light of the factual inquiries set forth
in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966).” (App.
Br. 11; hereinafter “Graham factors”.)

ISSUES
Based upon our review of the record and Appellants‟ contention, we
have determined that the following issues are dispositive in this appeal:
1) Did the Examiner err in determining that the cited references teach
or suggest the claimed “creating by a sharing file system generator
on the first computer a sharing file system?” (Independent claim
1.)
1

1
Appellants argue claim 1 separately (App. Br. 7-10). Appellants also argue
claims 2-6 separately. However, Appellants make only conclusory
statements that each of claims 2-6 are patentable for the same reason as
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2) Did the Examiner err in determining that the cited references teach
or suggest the claimed “installing by the sharing file system
generator in the sharing file system the object to be shared?”
(Independent claim 1.)
3) Did the Examiner err in allegedly failing to examine Applicants'
claims in light of the Graham factors.

ANALYSIS
Issue 1
Appellants argue that the cited references, most notably Reese, fail to
teach or suggest the claimed “creating by a sharing file system generator on
the first computer a sharing file system.” (See Br. 6-9.) The Examiner
responds that Reese in view of Frantz discloses this limitation in that Reese
teaches “entire file system 316 is configured by the management device 102
as a shared file system.” (See Ans. 13-14, citing Reese [0042].) Based upon
our review of the record, as discussed infra, we find the evidence before us
supports the Examiner‟s position.
We agree with and adopt the Examiner‟s reading of the claimed
“sharing file system generator” on Reese, i.e., management device 102
(Ans. 13) and the Examiner‟s reading of the claimed “sharing file system”
on Reese, i.e., files system 316. (Id.)
Appellants argue that, based on the Specification, the “sharing file
system”:
[I]ncludes an emulation of a virtual disk drive (415)
implemented, for example, with RAM configured into tracks,

claim 1. (App. Br. 6-7.) Based on the absence of a specific argument
directed to claims 2-6, we treat claims 1-6 as standing or falling together.
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sectors, and clusters so as to emulate a disk drive - or
implemented in a file opened through file system (404) and
configured into tracks, sectors, and cluster so as to emulate
disk drive. The type of drive so emulated may be a SCSI drive,
an ATA drive, or a drive of another type as may occur to those
of skill in the art. Just as the drive (415) of the sharing file
system may be of any type, so the sharing file system itself may
emulate any kind of file system as may occur to those of skill in
the art, storing in its emulated drive memory data structures
representing objects of the sharing file system, typically
directories and files. The kind of data structures representing
objects of the sharing file system to be stored in the emulated
drive of the sharing file system depend upon the kind of file
system represented by sharing file system (414). If sharing file
system (414) is implemented as a Unix-type system, data
structures stored in drive (415) includes a master block and
inodes. If sharing file system is implemented as MSDOS, data
structures stored in drive (415) include a File Access Table
('FAT') and a Directory Table. And so on, according to the
kind of file system implemented by sharing file system (414).

(Spec. [0037].) However, the Specification does not explicitly limit the
sharing file system to the numerous limitations in the preferred embodiment
listed above. We decline to import limitations from such embodiment into
claim 1. Accordingly, Appellants' contentions are not persuasive in showing
that the Examiner's reasoning is in error.
Appellant argues that Reese does not teach the sharing file system
generator by simply listing the additional limitations of claim 1 and alleging
their absence from Reese. (App. Br. 8-9.) We note that according to 37
C.F.R. § 41.67(c)(1)(vii), a statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim. See also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e
hold that the Board reasonably interpreted Rule 41.37 to require more
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substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”) In any event, the Examiner has shown where these
limitations are taught by the references. (Answer at p. 11-12.)
Issue 2
Appellants argue that the cited references, most notably Reese, fail to
teach or suggest the claimed “installing by the sharing file system generator
in the sharing file system the object to be shared.” (See Br. 9-10.) The
Examiner responds that Reese in view of Frantz discloses this limitation in
that Reese teaches “mapping the shared content to a web page or mapping
the shared content to the client computer, wherein the mapping the shared
content is creating a link on a web page or creating a link on client computer
to connect with shared file system in order to allow user to access the
content.” (See Ans. 14, citing Reese [0042] and [0043].) Based upon our
review of the record, as discussed infra, we find the evidence before us
supports the Examiner‟s position.
Appellants argue that, based on the specification, installation must
include copying of the object to be shared from the file system of a first
computer to the sharing file system of that computer. (App. Br. 10.)
However, the specification states only that installation is “typically”
accomplished by copying from a file system to a sharing file system. (Spec.
[0046].) Additionally, claim 1 does not contain a limitation to a file system
separate from the sharing file system. We decline to import limitations from
the preferred embodiment into claim 1. Accordingly, Appellants'
contentions are not persuasive in showing that the Examiner's reasoning is in
error.
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Issue 3
Appellants argue that the Examiner erred in allegedly failing to
examine Applicants' claims in light of the Graham factors. Specifically,
Appellants argue that the Examiner did not consider the prior art and the
claims “as a whole,” and that the Examiner did not “resolve[] the level of
ordinary skill in the art.” (App. Br. 11-12.) We note that “the absence of
specific findings on the level of skill in the art does not give rise to
reversible error where the prior art itself reflects an appropriate level and a
need for testimony is not shown.” Okajima v. Bourdeau, 261 F.3d 1350,
1355 (Fed. Cir. 2001) (citing Litton Indus. Prods., Inc. v. Solid State Sys.
Corp., 755 F.2d 158, 163 (Fed.Cir.1985)). In this case, we are not persuaded
of error in the rejection because the cited prior art itself-- Reese and Frantz --
reflects an appropriate level of skill and Appellants did not demonstrate a
need for specific evidence on this issue. Additionally, we agree with and
adopt the Examiner‟s reasoning, at pages 15 and 16 of the Answer, that the
Examiner properly applied the law in rejecting claim 1 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Reese and Frantz.

CONCLUSION
The Examiner did not err rejecting claim 1 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Reese and Frantz.
Accordingly, we sustain the Examiner‟s 35 U.S.C. §103 rejection of claim 1
and claims 2-6 that fall therewith.

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DECISION
The Examiner‟s decision rejecting claims 1-6 under 35 U.S.C.
§ 103(a) is 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

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