Ex Parte Roach et al

Board of Patent Appeals and Interferences

Aug 24, 2012

09957459 (B.P.A.I. Aug. 24, 2012)

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.
09/957,459 09/21/2001 Warren Roach 166.0001 2504
25534 7590 08/27/2012
CAHN & SAMUELS LLP
1100 17th STREET NW
SUITE 401
WASHINGTON, DC 20036
EXAMINER
TO, BAOQUOC N
ART UNIT PAPER NUMBER
2162
MAIL DATE DELIVERY MODE
08/27/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WARREN ROACH, STEVEN R. WILLIAMS,
TROY J. REIBER, and STEVEN C. BURDINE
____________________

Appeal 2011-005982
Application 09/957,459
Technology Center 2100

____________________

Before ROBERT E. NAPPI, DEBRA K. STEPHENS, and BRYAN F.
MOORE, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
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Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1-16, 18, 34-49, and 51-59. We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 17, 19-33, and 50 have been withdrawn from consideration.
We AFFIRM-IN-PART.
Introduction
According to Appellants, the invention relates to a method for
archiving files includes determining when a change in an operating file is
imminent, capturing the operating file immediately before the change in the
operating file occurs, if the operating file has not already been captured; and
capturing the operating file immediately after the change in the operating file
has occurred (Abstract).
STATEMENT OF THE CASE

Exemplary Claim(s)
Claims 1, 34, and 44 are exemplary claims and are reproduced below:
1. In a computing device, a method for archiving files
comprising:
detecting an instruction by an operating system to
perform an operation on an operating file; and
capturing the operating file temporally proximate to the
operation being performed on the operating file, responsive to
the detection of the instruction.

34. In a computing device, a method for archiving files
comprising:
detecting an instruction by an operating system to perform an
operation on an operating file;
creating an archive file from the operating file and
storing the archive file in a temporary first storage location
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temporally proximate to the operation being performed on the
operating file and responsive to detecting the instruction;
searching the first temporary storage location for the
archive file responsive to the occurrence of a first event; and
moving the archive file to a second storage location
responsive to a second event, the second storage location being
a permanent storage location.

44. The method of claim 34 further comprising:
after storing the archive file in the first temporary storage
location, updating a database to indicate that the archive file is
located in the first temporary storage location;
determining a final destination for the archive file;
moving the archive file from the first temporary storage
location to an intermediate storage location;
updating the database to indicate that the archive file is
located in the intermediate storage location; and
after moving the archive file to the second storage
location, updating the database to indicate that the archive file
is located in the second storage location.

References
Midgely US 5,608,865 Mar. 4, 1997
Dunphy US 5,638,509 Jun. 10, 1997
Koshisaka US 6,629,109 B1 Sep. 30 2003 (filed
Mar. 2, 2000)
Parthasarathy US 7,117,371 B1 Oct. 3, 2006 (filed Jun.
28, 2000)

Rejections
(1) Claims 1-16, 18, 34-49 and 51-59 stand rejected under
35 U.S.C. § 112, second paragraph as being indefinite.
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(2) Claims 1-16, 18, and 52-57 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Koshisaka, Dunphy, and
Parthasarathy.
(3) Claims 34-38, 43-49, 51, and 58-59 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Dunphy, Koshisaka, and
Parthasarathy.
(4) Claims 39-42 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dunphy, Koshisaka, Parthasarathy, and Midgely.

We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2009).

ISSUE 1
35 U.S.C. § 112, second paragraph: claims 1-16, 18, 34-39, and 51-59
Appellants argue. contrary to the Examiner’s contentions, the terms
“capturing the operating file temporally proximate to the operation” (claim
1); “storing the archive file in a temporary first storage location temporally
proximate to the operation” (claim 34); “capturing the operating file just
before or just after the operation being performed” (claim 54); and “moving
the archive file to a first storage device temporally proximate to the
operation” (claim 59) have metes and bounds readily identifiable to an
ordinarily skilled artisan (Br. 6-8). According to Appellants, paragraph
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[0040] of the Specification clearly set the metes and bounds to within a few
clock cycles of the detection of the instruction from the operating system
(id.).

Issue 1: Has the Examiner erred in finding the invention as recited in
claims 1, 34, 54, and 59 is indefinite?

ANALYSIS
We disagree with the Examiner that the recitation is indefinite. We
find instead the terms are broad. Indeed, the term “temporally proximate”
can be construed to mean within a few clock cycles, within a year, etc.
Therefore, although the claim language is broad, we find the claim is not
indefinite. Accordingly, the Examiner erred in finding the invention as
recited in claims 1-16, 18, 34-39, and 51-59 are indefinite under
35 U.S.C. § 112, second paragraph.

ISSUE 2
35 U.S.C. § 103(a): claims 1-16, 18, and 52-57
Appellants assert their invention is not obvious over Koshisaka,
Dunphy, and Parthasarathy (App. Br. 4-6; 8-12). Specifically, Appellants
contend the Examiner incorrectly equates an API (Application Program
Interface) with an Operating System (id.). Appellants point to the explicit
definition of “operating system” set forth in the Specification (see ¶[0028])
as supporting the contention API and Operating System are not the same
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(Br. 8). Additionally, Appellants contend this difference is reflected in
Koshisaka’s teaching of an “application-centric” file revision management
system and method while the present invention is directed toward a “data-
centric” file revision management system (Br. 9-10). Therefore, Koshisaka
provides a very limited layer of file protection (Br. 11).
Similarly, Appellants argue Dunphy does not teach detecting an
instruction by an operating system but instead teaches an application-centric
solution (Br. 11-12). Further, Appellants argue Parthasarathy clearly
recognizes the distinct nature of the operating system and the application
program (Br. 12).
Thus, according to Appellants, none of the references, taken alone or
in proper combination teaches or suggests “detecting an instruction by an
operating system to perform an operation on an operating file” (Br. 9).

Issue 2: Has the Examiner erred in finding the combination of
Koshisaka, Dunphy, and Parthasarathy would have taught or suggested
“detecting an instruction by an operating system to perform an operation on
an operating file” as recited in claim 1?
ANALYSIS
We are not persuaded by Appellants’ arguments. We decline to
import limitations from the Specification or arguments. Although
Appellants may have defined “operating system” in their Specification, the
interpretation along with the claim language does not distinguish an
operating system from other software. Indeed, as set forth by the Examiner,
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the claim is interpreted according to the function and not on the basis of
element labels (see Ans. 29).
Accordingly, the Examiner did not err in finding the combination of
Koshisaka, Dunphy, and Parthasarathy would have taught or suggested the
invention as recited in independent claim 1; commensurately recited and not
separately argued, independent claim 54; and dependent claims 2-16, 18, 53,
and 55-57, not separately argued. Therefore, the Examiner did not err in
rejecting claims 1-16, 18, and 52-57 under 35 U.S.C. § 103(a) for
obviousness over Koshisaka, Dunphy, and Parthasarathy.

ISSUE 3
35 U.S.C. § 103(a): claims 34-38, 43, and 59
Appellants again assert, as similarly set forth with respect to the
arguments regarding claim 1, the invention as recited in independent claims
34 and 59 is not obvious over Dunphy, Koshisaka, and Parthasarathy
because the references do not teach or suggest detecting an instruction by an
operating system, (App. Br. 12-14).

Issue 3: Has the Examiner erred in concluding the combination of
Dunphy, Koshisaka, and Parthasarathy would have taught or suggested
“detecting an instruction by an operating system to perform an operation on
an operating file” as recited in claims 34 and 59?

ANALYSIS
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For the reasons set forth above with respect to claim 1, we are not
persuaded by Appellants’ arguments. Accordingly, the Examiner did not err
in finding the combination of Dunphy, Koshisaka, and Parthasarathy would
have taught or suggested the invention as recited in independent claims 34
and 59; and dependent claims 34-38 and 43, not separately argued.
Therefore, the Examiner did not err in rejecting claims 34-38, 43, and 59
under 35 U.S.C. § 103(a) for obviousness over Dunphy, Koshisaka, and
Parthasarathy.
ISSUE 4
35 U.S.C. § 103(a): claims 44-50 and 58
Appellants argue Dunphy does not disclose the archive file passing
through two storage locations before ending up in permanent storage (Br.
14). According to Appellants, the Examiner’s reliance on the event log as an
archive file is misplaced since the event log is a collection of data that
includes identifying information about a file (id.).
We agree with Appellants. The event log of Dunphy includes a list of
data files that have been subject to change since the last backup (col. 4, ll.
25-30). A database retrieves the event log and uses the information to
identify data files to be transmitted to backup media for storage (col. 4., ll.
41-44). The Examiner asserts the event log of Dunphy is equivalent to the
storage locations (Ans. 32
1
); however, the event log does not store the file,

1
We note the Examiner appears to have inadvertently referred to Koshisaka,
col. 4, lines 25-38 on page 32 of the Answer. The Examiner had originally
referred to Dunphy as teaching the limitation (Ans. 18) and further, Dunphy,
and not Koshisaka, describes the disclosure upon which the Examiner relies.
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but instead, stores a list of data files that have been subject to change since
the last backup (col. 4, ll. 25-30).
Accordingly, the Examiner erred in concluding the combination of
Dunphy, Koshisaka, and Parthasarathy would have taught or suggested the
invention as recited in claim 44. Dependent claims 45-50 and 58 stand with
claim 44. Therefore, the Examiner erred in rejecting claims 44-50 and 58
under 35 U.S.C. § 103(a) for obviousness over Dunphy, Koshisaka, and
Parthasarathy.

ISSUE 5
35 U.S.C. § 103(a): claims 39-42
Appellants assert their invention is not obvious over Koshisaka,
Parthasarathy, and Midgely because Midgely does not teach or suggest a
temporary file location is searched responsive to a message from a timer
(claims 39 and 41) or according to a message from a resident program
(claims 40 and 42) (Br.16). Instead, according to Appellants, Midgely
teaches generating a notification when a user requests a file open operation
(Br. 16).

ANALYSIS
The Examiner contends Midgely discloses a notification process
based on a scheduled event such as when a client requests a file open
operation (Ans. 33); however, the Examiner has not shown, nor do we
readily find Midgely teaches or suggest a message from a timer. Therefore,
we find the Examiner has not shown Midgely teaches or suggests the first
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event or the second event includes a message from a timer as recited in
claims 39 and 41, respectively.
With respect to claim 40, we agree with the Examiner that the
combination of the references teaches or suggests the first event includes a
message from a program resident on the computing device (Ans. 23 and 33).
Indeed, the message (a client requesting a file open operation) is from a
program resident on the computing device and teaches or suggests finding a
file (Midgely, col. 7, ll. 59-63). Therefore, we find the Examiner did not err
in finding Midgely teaches or suggests the first event includes a message
from a program resident on the computing device.
The Examiner relies on Midgely as teaching or suggesting the second
event includes a message indicating when the second storage location is
available as recited in claim 42 (Ans. 24). Although Midgely teaches the
registration requests the agent be notified when a client requests a file open
operation, prior to the file system’s execution of the open operation (col. 7,
ll. 59-63), we do not find Midgely teaches or suggest a notification
indicating when the second storage location is available. Therefore, we find
the Examiner erred in finding Midgely teaches or suggests the second event
includes a message indicating when the second storage location is available
as recited in claim 42.
Accordingly, the Examiner erred in finding the combination of
Koshisaka, Parthasarathy, and Midgely would have taught or suggested the
invention as recited in claim 39, 41, and 42. Therefore, the Examiner erred
in rejecting claims 39, 41, and 42 under 35 U.S.C. § 103(a) for obviousness
over Koshisaka, Parthasarathy, and Midgely.
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However, the Examiner did not err in finding the combination of
Koshisaka, Parthasarathy, and Midgely would have taught or suggested the
invention as recited in claim 40. Therefore, the Examiner did not err in
rejecting claim 40 under 35 U.S.C. § 103(a) for obviousness over Koshisaka,
Parthasarathy and Midgely.
DECISION
The Examiner’s rejection of claims 1-16, 18, 34-49 and 51-59 under
35 U.S.C. § 112, second paragraph as being indefinite is reversed.
The Examiner’s rejection of claims 1-16, 18, and 52-57 under 35
U.S.C. § 103(a) as being unpatentable over Koshisaka, Dunphy, and
Parthasarathy is affirmed.
The Examiner’s rejection of claims 34-38, 43, and 59 under 35 U.S.C.
§ 103(a) as being unpatentable over Dunphy, Koshisaka, and Parthasarathy
is affirmed.
The Examiner’s rejection of claims 44-50 and 58 under 35 U.S.C.
§ 103(a) as being unpatentable over Dunphy, Koshisaka, and Parthasarathy
is reversed.
The Examiner’s rejection of claims 39, 41, and 42 under 35 U.S.C.
§ 103(a) as being unpatentable over Dunphy, Koshisaka, Parthasarathy, and
Midgely is reversed.
The Examiner’s rejection of claims 40 under 35 U.S.C. § 103(a) as
being unpatentable over Dunphy, Koshisaka, Parthasarathy, and Midgely is
affirmed.

No time period for taking any subsequent action in connection with
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this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

ELD