Ex Parte Seaman et al

Patent Trial and Appeal Board

Apr 25, 2017

13117135 (P.T.A.B. Apr. 25, 2017)

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.
13/117,135 05/27/2011 David Robert Seaman 1500-0001 6965
76935 7590 04/27/2017
Cesari Intellectual Property Law
1114 Lost Creek Boulevard
Suite 430
AUSTIN, TX 78746
EXAMINER
NGUYEN, KIM T
ART UNIT PAPER NUMBER
2153
NOTIFICATION DATE DELIVERY MODE
04/27/2017 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):
usptomail@cesari-reed.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ROBERT SEAMAN, BLAIR JAMES WALL, and
CHRISTOPHER CARL CAPSON
Appeal 2016-0076121
Application 13/117,135
Technology Center 2100
Before JUSTIN BUSCH, NORMAN H. BEAMER, and ALEX S. YAP,
Administrative Patent Judges.
YAP, 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 and 5—20,2 which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Metalogix
International Gmbh. (App. Br. 1.)
2 Claim 4 was cancelled. (App. Br. 12.)
Appeal 2016-007612
Application 13/117,135
STATEMENT OF THE CASE
Introduction
Appellants’ invention “generally relate[s] to compression of data for
transmission over a network.” (Specification (filed May 27, 2011) (“Spec.”)
1.) Claim 1 is representative and is reproduced below (with minor
reformatting):
1. A method comprising:
synchronizing a data object between a first node and a
second node including:
processing in the first node including:
partitioning the data object into portions;
determining a signature for each of the
portions to produce a first object
signature;
retrieving a previously stored object
signature from a cache, the previously
stored object signature corresponding
to a different version of the data object
at the second node;
comparing the first object signature to the
previously stored object signature;
creating a list of the portions of the data
object that are different than
corresponding portions of the different
version at the second node based on the
comparison, the list indicating selected
portions of the data object at the first
node that the second node needs to
update the different version; and
sending the list to the second node in a first
transmission that does not include any
data from the portions of the data
object.
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Application 13/117,135
Prior Art and Rejection on Appeal
The following table lists the prior art relied upon by the Examiner in
rejecting the claims on appeal:
Woodhill et al.
(“Woodhill”) US 5,649,196 July 15, 1997
Gwozdz et al.
(“Gwozdz”) US 8,412,676 B2 Apr. 2, 2013
Claims 1—3 and 5—20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Woodhill in view of Gwozdz. (See Final Office Action
(mailed May 18, 2015) (“Final Act.”) 5—13.)
ANAFYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner has erred. We are not persuaded that the
Examiner erred in rejecting claims 1—3 and 5—20.
Appellants contend that the Final Action fails to support a prima facie
case of obviousness because it “fails to provide an articulated reasoning for
the rejections[, i]n fact, the FOA only provides merely conclusory statement
(i.e.[,j only a cut-and-paste of the claim language) for almost all of the claim
language.” (App. Br. 4.) We have reviewed the Examiner’s rejections and
Appellants have not persuaded us of Examiner error. Here, the Examiner’s
identification of “the theory of invalidity [(obvious)], the prior art basis for
the rejection [(Woodhill in view of Gwozdz)], and the identification of
where each limitation of the rejected claims is shown in the prior art
reference by specific column and line number was more than sufficient to
meet [its prima facie] burden.” In re Jung, 637 F.3d 1356, 1363 (Fed. Cir.
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2011). We are also not persuaded by Appellants’ further contention that
Appellants “cannot even be certain as to which reference the citation is
referring to.” (App. Br. 5.) For example, with regard to claim 3, which
Appellants cite as an example, the Final Action points to column 15, lines
40-66 and column 16, lines 1—15. (App. Br. 4—5; Final Act. 7.) It is clear,
even from a cursory review of the two prior art references in question, that
the Examiner is referring to Woodhill because column 15 in Gwozdz has
only 22 lines.
Appellants next contend that the prior art “teaches away from the
present claims.” (App. Br. 6—7.) Specifically, according to Appellants,
Woodhill teaches away from the present claims because “[t]he present
claims specifically require the changed data portions NOT to be sent to a
backup server, instead merely a list of changes is sent.”3 (Reply 2.)
Appellants also contend that “Gwozdz also teaches away from the present
claims because Gwozdz teaches a completely different synchronization
method.” (App. Br. 6.) Appellants, however, have not persuaded us of
Examiner error. One cannot “show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.” See In re Keller, 642 F.2d 413, 426 (CCPA 1981).
With regard to Appellants’ contention that Woodhill teaches away
from “sending the list to the second node in a first transmission that does not
include any data from the portions of the data object” (Reply 2), we note that
the Examiner is not relying on Woodhill for this limitation. (Final Act. 6
3 For claim 1, Appellants list the processing and creating limitations (App.
Br. 5—6) but appear to be arguing the sending limitation (“sending the list to
the second node in a first transmission that does not include any data from
the portions of the data object.”).
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Application 13/117,135
(“Woodhill does not appear to expressly disclose ‘sending the list to the
second node in a first transmission that does not include any data from the
portions of the data object’.”).) Instead, the Examiner relies on Gwozdz to
teach not sending the data but sending only the metadata regarding the
changes. (Final Act. 6; Ans. 12; Gwozdz 4:60-67 (“Each replica associated
with a node can maintain metadata that represents ‘knowledge’ that
facilitates efficient replication. For example, such knowledge can include
metadata that represents changes for which the particular replica is
aware. . . . ”).)
With regard to Appellants’ contention that Gwozdz “teaches a
completely different synchronization method” (App. Br. 6—7), we are not
persuaded by Appellants’ contention because the Examiner relies on
Gwozdz only for its teachings to send only the metadata regarding the
changes and not the data. (Final Act. 6; Ans. 12.) Appellants do not offer
persuasive evidence (App. Br. 5—7) as to why the Examiner’s combination is
improper but rather argue the references individually.
For example, Appellants contend, without further explanation or
discussion, that “even if one were to combine the references, one would not
arrive at the present claims because the combination still fails to teach or
suggest all of the elements of the claim and the Examiner has not provided
any articulated reasoning to overcome this deficiency of the combination.”
(App. Br. 7.) Appellants’ assertion is mere attorney argument, which is
unsupported by factual evidence. See 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 substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
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elements were not found in the prior art.”); In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Appellants further contend that the Examiner “uses impermissible
hindsight to make the combination, while ignoring that the references cannot
be combined as suggested by the Examiner because they clearly teach away
from each other.” (App. Br. 8.) According to Appellants, Woodhill cannot
be combined with Gwozdz because the teaching in Woodhill is contrary to
that in Gwozdz. (Id. at 8—9.) Appellants contend that “Woodhill clearly
teaches that each local computer must keep a record of the file database
[25] to be able to determine what parts of a file have changed from what is
stored at the backup server, which is the essence of Woodhill.” (Id. at 8
(citing to Woodhill 5:17—20, 6:21—25, original emphasis omitted, italics
added.)
Appellants, however, do not address the Examiner’s rejection, which
cites to column 15, line 9 through column 16, line 15 of Woodhill, and refers
to comparing “contents identifier[s].” (Final Act. 5.) The “content
identifier” is “composed of a standard 32-bit Cyclical Redundancy Check
number[,] which is calculated against the contents of the ‘granule’ and a 32-
bit hash number.” (Woodhill 15:24—30.) According to the Examiner, the
system calculates the “contents identifier” (i.e., “first object signature”) for
each “granule” (i.e., a data “portion”) and compares the calculated “contents
identifier” (i.e., “first object signature”) with the “contents identifier” (i.e.,
“stored object signature”), of the “granule” the last time the binary object
was backed up (into remote backup file server 12). (Final Act. 5; Woodhill
15:32—38 (“Each time that the binary object is to be backed up, the
Distributed Storage Manager program 24 can calculate the ‘contents
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identifier’ for each ‘granule’ in the binary object and then compare it to the
‘contents identifier’ of the ‘granule’ the last time the binary object was
backed up and determine if the ‘granule’ has changed.”).) (Ans. 9-10.) In
other words, during backup, the current “contents identifier” (i.e., “first
object signature”) is generated in real time and compared against the
“contents identifier” (i.e., “stored object signature”) stored in remote backup
file server 12. Appellants do not address the Examiner’s specific findings in
their Reply Brief (Reply 3—4), but instead repeat their arguments from their
Appeal Brief (App. Br. 8—10). Appellants have, therefore, not persuaded us
that the Examiner has erred.
Appellants then argue that:
There is no teaching or suggestion within these two
references that would allow one skilled in the art to combine
these contrasting implementations; instead one would have to
choose between these implementations as they cannot be
reconciled. The Examiner has not articulated any explanation to
counter this contradiction in the cited combination.
(App. Br. 9, emphasis omitted; see also id. 6—7.) We disagree with this
argument, which appears to be based on incorporation of Gwozdz into
Woodhill.
To justify combining reference teachings in support of a rejection
it is not necessary that a device shown in one reference can be
physically inserted into the device shown in the other. The test
for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be
expressly suggested in any one or all of the references. Rather,
the test is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.
Keller, 642 F.2d at 425 (citations omitted). See also In re Sneed, 710 F.2d
1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the
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Application 13/117,135
references be physically combinable to render obvious the invention under
review.” (Citations omitted)). Here, the Examiner does not propose that the
features of Gwozdz be physically incorporated into the structure of
Woodhill. Instead, the Examiner concludes that the combined teachings of
the references would have suggested to one of ordinary skill in the art the
Appellants’ invention because Gwozdz method of using metadata teaches
for tracking changes improves upon Woodhill’s system. The Appellants’
argument overlooks “the relevant combined teachings of the . . . references.”
In re Andersen, 391 F.2d 953, 958 (CCPA 1968) (dismissing the argument
that a combination would result in an inoperative structure).
For the foregoing reasons, we are not persuaded of Examiner error in
the rejection of claim 1 and we sustain the 35 U.S.C. § 103 rejection of
claim 1, as well as the 35 U.S.C. § 103 rejection of claims 2, 3, and 5—20,
which are not argued separately. (App. Br. 3—10.)
DECISION
The decision of the Examiner to reject claims 1—3 and 5—20 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)(l)(iv).
AFFIRMED
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