Ex Parte Pettigrew

Board of Patent Appeals and Interferences

Jan 6, 2012

10628902 (B.P.A.I. Jan. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte DAVID PETTIGREW
_____________

Appeal 2009-012269
Application 10/628,902
Technology Center 2100
______________

Before, ROBERT E. NAPPI, KALYAN K. DESHPANDE, and
DAVID M. KOHUT, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-36 and 61-66.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm the Examiner’s rejection of these claims.

1 Claims 37-60 and 67 were previously cancelled.
Appeal 2009-012269
Application 10/628,902

2
INVENTION
The invention is directed to a method, processor readable medium,
and a system for generating a manifest file in an archive file and
distinguishing between data files and print files in the archive file. See Spec.
2. Claim 1 is representative of the invention and is reproduced below:
1. A method of creating an archived file in a manner that
allows an application to distinguish between one or more data
files and one or more print files in said archived file, wherein
said print files contain data used by said application to print
visual labeling associated with data of one or more of said data
files and said data files provide data to be transferred by said
application to a recording medium associated with said visual
labeling, said method comprising:
generating a manifest file; and
including said manifest file in said archived file;
wherein said manifest file distinguishes between one or
more data files and one or more print files in said archived file
and indicates to said application a file location within said
archived file associated with said one or more data files and a
file location associated with said one or more print files.

REFERENCES
Dockes US 5,974,004 Oct. 26, 1999

Van Valer US 2002/0145614 A1 Oct. 10, 2002

Schmidt US 6,535,894 B1 Mar. 18, 2003

REJECTIONS AT ISSUE
Claims 1, 19-20, 23, 61, and 66 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Schmidt in view of Dockes. Ans. 3-6.
Appeal 2009-012269
Application 10/628,902

3
Claims 2-18, 21-22, 24-36, and 62-65 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Schmidt in view of Dockes and Van
Valer.2 Ans. 6-11.
ISSUES
Did the Examiner err in finding that Schmidt in view of Dockes
teaches or suggests distinguishing between data files and print files in an
archived file?
Did the Examiner err in finding that Schmidt in view of Dockes
teaches or suggests including a boot file in a root directory of said archived
file, said boot file indicating a path of said manifest file in said archived file?
Did the Examiner err in finding that Schmidt in view of Dockes and
Van Valer teaches or suggests burning said one or more data files onto an
optical disc; and printing content corresponding to said one or more print
files?
Did the Examiner err in finding that Schmidt in view of Dockes and
Van Valer teaches or suggests data files that comprise a disk image file?
Did the Examiner err in finding that Schmidt in view of Dockes and
Van Valer teaches or suggests generating a manifest file in Extensible
Markup Language?
ANALYSIS
Claim 1 requires an archive file and a manifest file located in the
archive file. Additionally, claim 1 requires that the manifest file distinguish
between one or more data files that are transferred to a recording medium
and one or more print files wherein the print files contain data that is used to

2 Both the Examiner and Appellant inadvertently omitted claims 25-34 and
36 from the heading of the rejected claims.
Appeal 2009-012269
Application 10/628,902

4
label the recording medium. Independent claims 23, 61, and 66 contain
similar limitations and claims 2-22, 24-36, and 62-65 depend upon claims 1,
23, and 61 (respectively). Appellant argues that the combination of Schmidt
and Dockes does not disclose an archive file that distinguishes between data
files and print files. App. Br. 11; Reply Br. 3. We disagree.
The Examiner incorrectly states that Appellant’s Specification defines
the term “print file” at paragraph [0027] to mean “‘an image file in bitmap
(BMP) format, Joint Photographic Experts Group (JPEG) format, Graphic
Interchange Format (GIF), a text file, or any other type of graphics file.’”
Ans. 12. While this portion of the Specification describes the type of file
that a “print file” can be, it does not define the term. Claim 1, as well as the
other independent claims, specifically defines a “print file” as a file which
contains data that is used by an application to print visual labeling that is
associated with the data files. As such, the claim requires that there be a
distinction between regular data and print file data and both must be
contained in the archive file.
Even so, the Examiner finds that Schmidt discloses a JAR archive file
that contains a manifest file, where the manifest file includes information
about the files in the archived file. Ans. 14. The Examiner also finds that
Dockes discloses a system where an application retrieves data in order to (1)
copy a compact disc (CD) and (2) print particular information about the CD.
Ans. 14-15. The Examiner finds that both types of data are stored on the
SUN machine running the SOLARIS system that corresponds to the claimed
archived file. Ans. 13. Since a manifest file contains information about the
files in the archived file, the Examiner finds that one of ordinary skill in the
art would have used this file to distinguish between the print files and data
Appeal 2009-012269
Application 10/628,902

5
files. Ans. 13. Thus, the Examiner finds, and we agree, that the
combination of Dockes with Schmidt teaches and suggests that which is
claimed in claim 1.
Regarding claims 19, 23, 61, and 663, Appellant makes the same
arguments with respect to claim 1. App. Br. 14-17; Reply Br. 5-9. Thus, we
sustain the Examiner’s rejection of these claims for the same reasons
discussed supra with respect to claim 1.
Regarding claim 20, Appellant makes the same arguments with
respect to claim 1. App. Br. 17-18; Reply Br. 9-10. We agree with the
Examiner for the same reasons discussed supra with respect to claim 1.
However, claim 20 additionally recites “including a boot file in a root
directory of said archived file, said boot file indicating a path of said
manifest file in said archived file.” Appellant merely points out what claim
20 recites and asserts that the references fail to teach the limitation. App. Br.
17-18; Reply Br. 9-10. Such conclusions are not considered a separate
argument for patentability. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (stating that interpreting 37 C.F.R. § 41.37(c)(1)(vii) to require a more
substantive argument than a naked assertion that the prior art fails to teach
the limitation in order to address a claim separately, is not an unreasonable
interpretation of the rule). Additionally, any arguments not presented are
waived. See Ex parte Borden, 93 USPQ 2d 1473, 1474 (BPAI 2010)
(informative). Even so, the Examiner finds that Schmidt discloses
MANIFEST.MF is the manifest file and META-INF/Manifest.MF is the

3 Appellant mistakenly argues claim 67, which was previously cancelled,
however, the recited claim in the argument is corresponds to claim 66. App.
Br. 16-17; Reply Br. 8. We find this to be harmless error and will consider
all arguments directed to claim 67 to actually be directed to claim 66.
Appeal 2009-012269
Application 10/628,902

6
root directory that indicates the path of the manifest file, as can be seen in
Figures 5 and 6. Ans. 18. In the absence of a specific argument as to why
the Examiner’s findings are erroneous, we find no basis to conclude the
Examiner erred in rejecting claim 20.
Regarding claims 2, 24, and 62, Appellant makes the same arguments
with respect to claim 1. App. Br. 18-19; Reply Br. 10. We agree with the
Examiner for the same reasons discussed supra with respect to claim 1.
Claim 2 additionally recites “burning said one or more data files onto an
optical disc; and printing content corresponding to said one or more print
files.” Claims 24 and 62 contain similar limitations. Appellant argues that
even though Van Valer teaches the subject matter of the claim, there is no
connection to the claimed archive file. App. Br. 18-19; Reply Br. 10.
Appellant also argues that the subject matter of the claims is outside the
scope of the prior art. Reply Br. 10. We disagree.
The Examiner finds that Van Valer demonstrates that it is known in
the art to burn data files onto a disc and print content corresponding to print
files. Ans. 19. Thus, it is the combination of Van Valer with Dockes and
Schmidt that discloses that which is claimed. Additionally, the Examiner
finds that it would have been obvious to combine the references “in order to
easily catalog and identify what images/data a particular disc holds.” Ans. 7.
As noted above, in the absence of a specific argument as to why the
Examiner’s finding is erroneous, we find no basis to conclude the Examiner
erred in rejecting claims 2, 24, and 62.
Regarding claims 8, 9, 30, and 31, Appellant argues that the cited
prior art does not teach or suggest data files that comprise a disk image file
as required by claim 8. App. Br. 19; Reply Br. 11. Claim 30 contains
Appeal 2009-012269
Application 10/628,902

7
similar limitations and claims 9 and 31 depend upon claims 8 and 30
(respectively) and are not argued separately. Appellant argues that the
specific definition for a disk image file provided in the Specification requires
that there be an exact binary copy of an entire disk and Van Valer does not
disclose this. App. Br. 19; Reply Br. 11. We disagree.
The Examiner finds that Appellant’s Specification indicates that a
disk image file is data to be burned on to a disk and is an exact copy of an
entire disk wherein the disk can be an optical disk. Ans. 20. Additionally,
the claim itself defines a disk image file as one or more data files.
Therefore, the Examiner’s finding that a CD containing an archived new
album file that contains pictures selected from multiple online albums (Ans.
20) is a reasonable interpretation of a disk image file. As a result, we sustain
the Examiner’s rejection of claims 8, 9, 30, and 31.
Regarding claims 13 and 64, Appellant argues that the references fail
to teach or suggest generating a manifest file using Extensible Markup
Language (XML) as required by the claims. App. Br. 19; Reply Br. 11-12.
The Examiner finds that it is well known in the art that XML can be
substituted for HTML and since the JAR files are written in HTML, they can
also be written in XML. Ans. 21-22. As noted above, in the absence of a
specific argument as to why the Examiner’s finding is erroneous, we find no
basis to conclude the Examiner erred in rejecting claims 13 and 64.

CONCLUSION
The Examiner did not err in finding that Schmidt in view of Dockes
teaches or suggests distinguishing between data files and print files in an
archived file.
Appeal 2009-012269
Application 10/628,902

8
The Examiner did not err in finding that Schmidt in view of Dockes
teaches or suggests including a boot file in a root directory of said archived
file, said boot file indicating a path of said manifest file in said archived file.
The Examiner did not err in finding that Schmidt in view of Dockes
and Van Valer teaches or suggests burning said one or more data files onto
an optical disc; and printing content corresponding to said one or more print
files.
The Examiner did not err in finding that Schmidt in view of Dockes
and Van Valer teaches or suggests data files that comprise a disk image file.
The Examiner did not err in finding that Schmidt in view of Dockes
and Van Valer teaches or suggests generating a manifest file in Extensible
Markup Language.
SUMMARY
The Examiner’s decision to reject claims 1-36 and 61-66 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

msc