Ex Parte Smith

Board of Patent Appeals and Interferences

Jun 23, 2009

10261356 (B.P.A.I. Jun. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ALAN G. SMITH
____________________

Appeal 2008-003903
Application 10/261,356
Technology Center 2100
____________________

Decided:1 June 23, 2009
____________________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
ST. JOHN COURTENAY III, and DEBRA K. STEPHENS, Administrative
Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-003903
Application 10/261,356
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-17 under 35 U.S.C. §103(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

Introduction
According to Appellant, the invention is a system and method that
relates to electronic computing devices and software for storing a group of
data files as a single compressed file with editable components (Spec. 1,
Technical Field of the Invention).

Exemplary Claim(s)
Claim 1 is an exemplary claim and is reproduced below:
1. A software program stored on a computer media for a computer
device which provides a file archive system for storing multiple files as a
single file comprising:

a file manager that communicates with an archive file, having a
directory navigation system and a read/write file system, and wherein the
archive file comprises:

a fixed header in the file that does not change when files are
added to the archive, and that contains a first pointer to a first file
information block group,

Appeal 2008-003903
Application 10/261,356
3
the first information block group containing a link block having
a second pointer to a second information block group,

a first file information block in the first information block
group containing a third pointer which points to a first data file, and

a second file information block in the second information block
group containing a fourth pointer to a second data file, or,
alternatively, an end of file code.

Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Whiting US 5,778,395 Jul. 7, 1998
Cabrera US 5,931,935 Aug. 3, 1999

Rejections
The Examiner rejected claims 1-17 under 35 U.S.C. § 103(a) as being
obvious over Whiting and Cabrera.

GROUPING OF CLAIMS
Appellant argues claims 1-17 as a group based on the similar language
of limitations recited in independent claims 1, 7, and 12 (App. Br. 7, ll. 3-7).
We will, therefore, treat claims 2-17 as standing or falling with claim 1.
Appeal 2008-003903
Application 10/261,356
4
We accept Appellant’s grouping of the claims. See 37 C.F.R.
§ 41.37(c)(1)(vii) (“Notwithstanding any other provision of this paragraph,
the failure of appellant to separately argue claims which appellant has
grouped together shall constitute a waiver of any argument that the Board
must consider the patentability of any grouped claim separately.”)

Issue
Appellant contends combining “the first information block containing
a link block having a second pointer to a second information block group”
technique disclosed by Cabrera into the Whiting system would not have
been obvious since neither reference suggests combining the features of the
prior art or provides a motivation for such a combination (App. Br. 9, l. 13 to
App. Br. 10, l. 7). Instead, Appellant argues, their teachings actually
motivate against it (id.). Appellant argues that no particular purpose exists
for adding the chaining mechanism of Cabrera to the system of Whiting, and
doing so would act against the very purpose of Whiting’s system (App. Br.
11, ll. 1-3).
The Examiner finds Whiting teaches a system for backing up files
from disk volumes on multiple nodes of a computer network to a common
random-access backup storage means (Ans. 14). The Examiner further finds
as part of the backup process, duplicate files (or portions) may be identified
across nodes so only a single copy is stored in the backup storage means
(id.). The Examiner also finds Cabrera teaches a system that resolves file
Appeal 2008-003903
Application 10/261,356
5
names and translates the file name to a particular location on the disk with
information being passed on to device drivers that may also use that
information (Ans. 15). Therefore, the Examiner concludes it would have
been obvious to combine Cabrera’s teaching into the system of Whiting to
provide linked/chained information blocks by using pointers to link
information block groups and provide a coherent methodology for extending
capabilities of an I/O system to cover changing needs (id.).
Issue: Has Appellant met the burden of showing the Examiner erred
in finding that a person of ordinary skill in the art would have been
motivated to combine the linked/chained information blocks of Cabrera into
the system of Whiting?

FINDINGS OF FACT (FF)
Appellant’s Invention
(1) A file structure of Appellant’s invention has four main
components – a file header, information block groups, file data, and wasted
space (Spec. 4, ll. 25-27 and Fig. 2, 204). The file header, the first section in
the archive file, contains version information and a pointer to the first
information block group (Spec. 4, ll. 28-29).
(2) The information block group contains a pointer to the next
information block group and pointers to any file contents associated with
files of that group (Spec. 5, ll. 1-5). All directory information for files
Appeal 2008-003903
Application 10/261,356
6
associated with that group are also contained in the information block group
(Spec. 5, ll. 6-7).

Whiting’s Invention
(3) Whiting describes a system for backing up files from disk
volumes on multiple nodes of a computer network to a backup storage
means to create backup data files (Abstract). Whiting states their technology
enhancements significantly reduce both the amount of storage and the
amount of network bandwidth required for performing the backup (Abstract
and col. 4, l. 59 to col. 5, l. 2).
(4) A backup data file consists of four main sections – the Header
section, the Data Blocks section, the FileInfo section, and the FileInfoPtrs
section (col. 13, l. 37 to col. 14, l. 4 and Fig. 6).
(5) The fixed-size Header section contains a signature and creation
time stamp, information on file format version, file size, and a pointer to the
FileInfoPtrs section (col. 13, ll. 41 to 49). The FileInfoPtrs section contains
a variable size indicating the exact set of values represented in
the backup data file (col. 13, ll. 52-58). Each FileInfo entry contains
information on the contents of the file, including a variable length array of
pointers into the DataBlock section or into the contents of files contained in
other backup data files (col. 13, l. 67 – col. 14, l. 4).
Appeal 2008-003903
Application 10/261,356
7
(6) Thus, with Whiting’s system, accessing any portion of the file
contents requires only a handful of disk accesses, which although probably
larger than would be necessary to access a file on a “normal” file system, is
still small enough that the access time during restore is measured in
milliseconds (col. 14, ll. 34-62).

Cabrera’s Invention
(7) Cabrera teaches a method and system for interrupting a normal
processing sequence to allow drivers that would not normally process an I/O
request to intervene and assume control for processing the I/O request
(Abstract). Cabrera describes a mechanism to dynamically extend and
reconfigure an I/O system that uses a plurality of data managers or drivers to
process I/O requests (col. 3, ll. 16-21).
(8) A special directory or file called a “reparse point” is created by
including a reparse point attribute with a file or directory which when
encountered during processing of an I/O request, interrupts the processing.
(col. 8, ll. 59-66).
(9) The reparse point contains sufficient information to allow the
particular driver which should process the reparse point to be able to be
identified and be able to store data with the reparse point that can later be
used to correctly process the reparse point (col. 11, ll. 18-25).
(10) The reparse point mechanism provides a flexible and extensible
system which can be used by any numbers of drivers (col. 4, ll. 30-33 and
Appeal 2008-003903
Application 10/261,356
8
col. 23, ll. 34-36). The mechanism allows special types of files or
directories to be defined and then turn control for processing I/O request
involving the special files or directories over to a particular driver adapted
for processing the I/O request involving the special file or directory thereby
providing a coherent methodology for extending capabilities of an I/O
system to cover needs as they change over time (col. 4, ll. 41-47 and col. 23,
ll. 40-59).

PRINCIPLES OF LAW
Obviousness
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
Discussing the question of obviousness of a patent that claims a
combination of known elements, KSR Int'l Co. v. Teleflex, Inc., 550 U.S.
398, 127 S. Ct. 1727 (2007), explains "when the prior art teaches away from
combining certain known elements, discovery of a successful means of
combining them is more likely to be nonobvious." Id. at 1740 (citing United
States v. Adams, 383 U.S. 39, 51-52 (1966). Additionally, "[a] reference may
Appeal 2008-003903
Application 10/261,356
9
be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant." In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)
(quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).

ANALYSIS
Whiting is directed toward technology for backing up files on multiple
nodes on a network while limiting disk accesses and reducing the amount of
storage and network bandwidth required for performing a backup (FF 3 and
FF 6). In contrast, Cabrera is directed toward technology that allows a
driver that would not normally process an I/O request to interrupt a normal
processing sequence and assume processing control (FF 7). The Examiner
cites Cabrera to show use of pointers to link information block groups by
linking/chaining information blocks and to extend the capabilities of an I/O
system (Ans. 15). We find this linking/chaining technique would increase
disk access and thus, based on this disclosure, an ordinarily skilled artisan
would have been led in a direction or path divergent from selecting a
technique that would increase disk accesses such as that taught by Cabrera.
Thus, for the reasons discussed above, we find Cabrera teaches away from
the technique in Whiting which seeks to decrease disk access and network
bandwidth for a backup.
Appeal 2008-003903
Application 10/261,356
10
Accordingly, we find Cabrera and Whiting are directed toward
addressing two different issues and Whiting teaches away from the
technology of Cabrera. Therefore, we find Appellant has met the burden of
showing the Examiner erred in finding an ordinary person skilled in the art
would have been motivated to combine the linked/chained information
blocks of Cabrera into the system of Whiting.

CONCLUSION
Based on the findings of facts and analysis above, Appellant has met
the burden of showing the Examiner erred in finding that one skilled in the
art would have been motivated to combine the linked/chained information
blocks of Cabrera into the system of Whiting. Accordingly, Appellant has
met the burden of showing the Examiner erred in rejecting claims 1-17
under 35 U.S.C. § 103(a) for obviousness over Whiting and Cabrera.

NEW GROUND OF REJECTION
35 U.S.C. § 112, first paragraph
Using our authority under 37 C.F.R. § 41.50(b), we reject claims 1
and 7 under 35 U.S.C. § 112, first paragraph for undue breadth due to the
recitation of only a single means in the claims. Specifically, claims 1 and 7
each recite a “file manager” (i.e., a single means) that performs the function
of communicating with an archive file that comprises a specific data
structure. See In re Hyatt, 708 F.2d 712, 714-715 (Fed. Cir. 1983) (A single
Appeal 2008-003903
Application 10/261,356
11
means claim which covered every conceivable means for achieving the
stated purpose was held nonenabling for the scope of the claim because the
specification disclosed at most only those means known to the inventor.)
In Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1096 (Fed. Cir.
2008), the Court determined it must assess the meaning of a claimed
limitation based on structural context. The Court in Wekjer stated
[n]o adjective endows the claimed “mechanism” with a physical
or structural component. Further, claim 1 provides no structural
context for determining the characteristics of the “mechanism” other
than to describe its function. Thus, the unadorned term “mechanism”
is “simply a nonce word or a verbal construct that is not recognized as
the name of structure and is simply a substitute for the term ‘means
for.’

citing Lighting World, 382 F.3d at 1360 (id.).
Here, no structure, material, or acts are recited to achieve the specified
function of communicating with the archive file. Nor do the recited
“directory navigation system” and “read/write file system” provide any
structure, as neither is defined in the Specification, neither has any
interconnection to any other element in any of the claims, and both are
software components. (Claims 1 and 7).
Therefore, we broadly but reasonably construe the claim limitation “a
file manager that communicates with an archive file, having a directory
navigation system and a read/write file system . . .” as a single means-plus-
function limitation. Since the “file manager” is the only means for
Appeal 2008-003903
Application 10/261,356
12
performing the communication function set forth in claims 1 and 7, we
conclude that each of claims 1 and 7 is a single-means claim.
The long-recognized problem with a single means claim is that
it covers every conceivable means for achieving the stated result,
while the specification discloses at most only those means known to
the inventor. See O'Reilly v. Morse, 56 U.S. (15 How.) 62, 112, 14
L.Ed. 601 (1853). Thus, the claim is properly rejected for what used to
be known as “undue breadth,” but has since been appreciated as
being, more accurately, based on the first paragraph of § 112.

In re Hyatt, 708 F.2d at 714.
We thus conclude that claims 1 and 7 are of undue breadth because
the scope of the single-means “file manager” covers every conceivable
means for achieving the stated function of communicating with an archive
file. Therefore, we conclude that these claims are not enabled by the
Specification for the scope of the claim. Accordingly, we reject claims 1
and 7 under 35 U.S.C. § 112, first paragraph.

DECISION
The Examiner’s rejection of claims 1-17 under 35 U.S.C. § 103(a) as
being obvious over Whiting and Cabrera is reversed.
In addition to affirming the Examiner's rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2007). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
Appeal 2008-003903
Application 10/261,356
13
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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.…

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.

Appeal 2008-003903
Application 10/261,356
14
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

REVERSED
37 C.F.R. § 41.50(b)

rwk

TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, M/S 3999
DALLAS TX 75265