Ex Parte Roublev et al

Patent Trial and Appeal Board

Jun 25, 2014

11317592 (P.T.A.B. Jun. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NIKOLAI ROUBLEV and ROBERT T. LONG
____________

Appeal 2012-0023861
Application 11/317,5922
Technology Center 2100
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Before ROBERT A. NAPPI, JOHN A. EVANS, and
BETH Z. SHAW, Administrative Patent Judges.

SHAW, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-12 and 18-30 as obvious. Claims 13-
17 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).

1 According to Appellants, the real party in Interest is
Meta-Communications, Inc. (Appeal Br. 2).
2 Our Decision refers to Appellants’ Appeal Brief filed May 26, 2011
(“Appeal Br.”); Reply Brief filed November 15, 2011 (“Reply Br.”); the
Examiner’s Answer mailed September 16, 2011 (“Ans.”); and the
Specification filed December 23, 2005 and amended May 28, 2008
(“Spec.”).
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We reverse and enter NEW GROUNDS OF REJECTION UNDER
37 C.F.R. § 41.50(b).
INVENTION
The invention relates to systems and methods for archiving and
retrieving digital assets. (See Spec. ¶ 1.)
Claim 1 is independent. The independent claims have not been
argued separately and therefore stand or fall together. 37 C.F.R.
§ 41.37(c)(1)(iv). An understanding of the invention can be derived from a
reading of claim 1, which is reproduced below:
1. A method comprising:
receiving a selection of a physical media size;
receiving a selection of a set of one or more files on a
first file server;
creating a set of one or more virtual media folders on a
second file server having a server media size, each of the virtual
media folders representing a single physical media having the
physical media size, wherein the physical media size is less
than the server media size; and
copying the set of one or more files to the set of one or
more virtual media folders such that the total size of files
copied to a virtual media folder does not exceed the physical
media size of the physical media represented by the virtual
media folder.

REJECTIONS AT ISSUE
The Examiner relies upon the prior art as follows:
Pisello US 5,495,607 Feb. 27, 1996
Midgely US 5,608,865 Mar. 4, 1997
Reed US 6,345,288 B1 Feb. 5, 2002
Clairmont US 2003/0126153 A1 July 3, 2003
Barney US 6,751,604 B2 June 15, 2004
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Campbell US 2004/0128316 A1 July 1, 2004
Brechner US 2004/0215643 A1 Oct. 28, 2004
Roshal, User’s Manual Rar 3.42 32-bit console version, Mar. 11, 2005.
The claims stand rejected as follows:
1. Claims 1, 12, 18, and 26 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Pisello and Roshal (Ans. 5-
9).
2. Claims 2, 3, 4, 19, 20, 27, and 28 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Pisello, Roshal,
and Midgely (Ans. 9-13).
3. Claims 4-8, 10, 21, 23, 24, and 25 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Pisello, Roshal,
Midgely, and Campbell (Ans. 14-19).
4. Claims 9 and 29 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Pisello, Roshal, Midgely, and
Clairmont (Ans. 20-21).
5. Claim 11 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Pisello, Roshal, and Brechner (Ans.
21-22).
6. Claims 12 and 30 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Pisello, Roshal, and Barney (Ans.
22-24).
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7. Claim 22 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Pisello, Roshal, Midgely, and Reed
(Ans. 24).

ISSUES
Appellants argue the Examiner’s rejection of independent claims 1,
18, and 26 is in error. The dispositive issue presented by these arguments is:
Did the Examiner err in finding the combination of Pisello and Roshal
teaches or suggests creating a set of one or more virtual media folders on a
second file server having a server media size, each of the virtual media
folders representing a single physical media having the physical media size,
wherein the physical media size is less than the server media size, as recited
in claim 1?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We agree with Appellants’
conclusion that the Examiner erred in rejecting independent claims 1, 18,
and 26.
Appellants argue claim 1 requires each of the virtual media folders to
represent a single physical media having the physical media size, with the
physical media size being less than the server media size. (See Appeal Br.
12.) Appellants contend the Examiner’s application of Pisello is not
reasonable because Pisello discloses a domain-wide virtual catalog that
represents “all the data stored in all the various storage means . . . of the
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domain.” (See Appeal Br. 12.) The Examiner has not responded to this
argument. (See Ans. 25-27.)
Claim 1 requires that each of the virtual media folders represent a
single physical media having the physical media size. The Examiner relied
on Pisello to teach the limitation “each of the virtual media folders
representing a single physical media having the physical media size” (Ans.
6). The Examiner concludes Pisello’s “virtual catalogs represent the
physical media” (Ans. 6). We disagree, as Pisello’s “virtual catalog” is a
“domain-wide” virtual catalog, not a virtual media folder representing a
single physical media having the physical media size, as recited in claim 1.3
Therefore, we decline to sustain the Examiner’s rejection of
independent claims 1, 18, and 26 as obvious over Pisello in view of Roshal,
and dependent claims 2-12, 19-25, and 27-30, which also include the argued
limitations.

NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b)

Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection
against claim 26 under 35 U.S.C. § 101. This independent claim recites a
computer program embodied on a computer readable storage medium.
Appellants’ Specification states, the “term ‘computer readable media’ is also
used to represent software-transmitted carrier waves” (Spec. ¶ 20). Thus,
Appellants’ Specification identifies that the medium can include a
propagating signal. A signal is not within one of the four categories of

3 Because we are persuaded of error with regard to the identified issue,
which is dispositive of the rejection over Pisello and Roshal, we do not reach
the additional issues raised by Appellants’ arguments.

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patentable subject matter as defined under 35 U.S.C. § 101. In re Nuijten,
500 F.3d 1346, 1357 (Fed. Cir. 2007). See also Ex parte Mewherter (Appeal
2012-007692), 2013 WL 3291360 (PTAB 2013) (precedential); Manual of
Patent Examining Procedure (“MPEP”) § 2106(I), ed. 8, Rev. 9 (Aug.
2012). Accordingly, we now reject claim 26 as being drawn to subject
matter that is not eligible for patent protection under 35 U.S.C. § 101.

DECISION
We reverse the rejection of claims 1-12 and 18-30 under 35 U.S.C.
§ 103(a).
We enter a new ground of rejection for claim 26 pursuant to 37 C.F.R.
§ 41.50(b). This section provides that “[a] new ground of rejection . . . shall
not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
37 C.F.R. § 41.50(b).

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).
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REVERSED
37 C.F.R. 41.50(b)

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