Ex Parte Vlcan et al

Board of Patent Appeals and Interferences

May 30, 2012

10015886 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEVE VLCAN and BIKRAM S. BAKSHI
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Appeal 2010-002990
Application 10/015,886
Technology Center 2400
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Before ROBERT E. NAPPI, ERIC S. FRAHM, and BRYAN F. MOORE,
Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002990
Application 10/015,886

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-3, 5-11, and 13-18 which are all of the claims
remaining in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

Invention
Appellants’ invention relates to maintaining the integrity of a file at a
remote location via a communication medium. (Abstract)

Claims
Claim 1, which is illustrative of the invention, is reproduced below
with key disputed language emphasized:

1. A method for maintaining the integrity of a file at a remote
location via a communication medium, comprising the steps of:
performing an integrity check on the file by an integrity
module;
redirecting to an install module by a redirect module if said
integrity check fails, wherein the step of redirecting to the install
module comprises the steps of:
modifying an address of the install module by the redirect
module to include a parameter to indicate the remote location of the
file;
producing a request by an authentication module based on the
modified address that indicates the remote location of the file; and
communicating the request by the authentication module to the
install module in a login page that instantiated the file at the remote
location; and
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Application 10/015,886

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reinstalling the file by the install module at the remote location
via the communication medium, thereby maintaining the integrity of
the file.

Prior Art
The Examiner relies on the following references as evidence:
Satyanarayana US 5,909,429 Jun. 1, 1999
Gauvin US 5,991,760 Nov. 23, 1999
Winburn US 2002/0069363 A1 Jun. 6, 2002

Examiner’s Rejection
The Examiner rejected claims 1-3, 6, 7, 9-11, 14, 15, 17, and 18 under
35 U.S.C. § 102(e) as being anticipated by Winburn. Claims 8 and 16 were
rejected under 35 U.S.C. § 103(a) as being unpatentable over Winburn and
Satyanarayana. Claims 5 and 13 were objected to as being dependent upon a
rejected base claim, but would be allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening claims.
Claims 4 and 12 were cancelled.

Appellants’ Contention
Appellants contend that Winburn fails to disclose the redirect module
modifying an address of the install module include a parameter to indicate
the remote location of the file as recited in independents claim 1 and 10.
(App. Br. 3-5.)

Appeal 2010-002990
Application 10/015,886

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ISSUE
Based upon our review of the record and Appellants’ contention, we
have determined that the following issue is dispositive in this appeal:
Did the Examiner err in determining that the cited references teach or
suggest the claimed “modifying an address of the install module by the
redirect module to include a parameter to indicate the remote location of the
file?” (Claim 1 and similarly recited in independent claim 10.)
1

ANALYSIS
As to the rejection under § 102(e), Appellants argue that Winburn
fails to disclose the claimed “modifying an address of the install module by
the redirect module to include a parameter to indicate the remote location of
the file.” (See App. Br. 3-5.) Specifically, Appellants argue that “Winburn
uses an indicia in an active or RAM memory in order to camouflage the
location of a backup file. As a result, Winburn cannot modify an address of
an install module, because an install module is not resident in active or RAM
memory.” (App. Br. 4) We agree with Appellants. The Examiner correctly
states that Winburn teaches indicia used to locate the file which may be
considered the claimed “parameter to indicate the location of the file.” (Ans.
7.) However, we find that the Examiner has not presented a reasonable
rationale why the portions of Winburn cited by the Examiner—Figures 2, 4,

1
Appellants argue claims 1-3, 6, 7, 9-11, 14, 15, 17, and 18 as a group (Br.
4). Appellants argue claims 8 and 16 separately. However, in each claim
the Examiner argues the claim limitations of the independent claims are met
by Winburn. We recognize that Appellants’ arguments present additional
issues. However, we were persuaded of error by this issue and as such we
do not reach the additional issues as this issue is dispositive of the appeal.
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5, and 7 and paragraphs [0011], [0026], and [0027]—disclose the limitation
of “modifying an address of an install module.” (Ans. 6-9.)
As for the rejection under § 103(a), Appellants argue “Winburn does
not establish a prima facie case of obviousness with respect to claim 1,
because Winburn does not teach or suggest each and every element of claim
1.” (App. Br. 6.) We agree with Appellants. See In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). For the reasons above, Winburn does not teach
“modifying an address of the install module by the redirect module to
include a parameter to indicate the remote location of the file” and
Satyanarayana fails to cure the deficiencies of Winburn.
Accordingly, we will not sustain the Examiner’s rejection of claims 1-
3, 6, 7, 9-11, 14, 15, 17, and 18 under § 102(e) and we will not sustain the
Examiner’s rejection of claims 8 and 16 under § 103(a).

CONCLUSION
Appellants have persuaded us of error in the Examiner’s decision to
reject claims 1-3, 6-11, and 14-18.

DECISION
The decision of the Examiner to reject claims 1-3, 6-11, and 14-18, is
reversed.

REVERSED

ELD