Ex Parte 5,978,791 et al

Patent Trial and Appeal Board

Sep 29, 2015

90012931 (P.T.A.B. Sep. 29, 2015)

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.
90/012,931 07/26/2013 5,978,791 47415.440 4110
23117 7590 09/29/2015
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
REICHLE, KARIN M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/29/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte Personal Web Technologies, LLC
and LEVEL 3 COMMUNICATIONS, LLC
Appellant
____________

Appeal 2015-004285
Reexamination Control 90/012,931
Patent 5,978,791
Technology Center 3900
____________

STEPHEN C. SIU, BRADLEY W. BAUMEISTER, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal under 35 U.S.C. § 134 from the Examiner’s rejection
of claim 35 of US Patent No. 5,978,791
1
(herein “the ’791 patent”), the only
reexamined claim. We have jurisdiction under 35 U.S.C. § 6(b).

1
US Patent 5,978,791 issued to David A. Farber and Ronald
D. Lachman on November 2, 1999, based on an application (08/960,079),
filed October 24, 1997.
Appeal 2015-004285
Reexamination Control 90/012,931
Patent 5,978,791

2
The claimed subject matter relates to identifying data in a data
processing system “by substantially unique identifiers which depend on all
of the data in the data items and only on the data in the data items. The
system also determines whether a particular data item is present in the
database by examining the identifiers of a plurality of data items.” Abstract.
Independent claim 35 reads as follows:
35. A method for determining whether a particular
data item is present in a data processing system, the method
comprising:
(A) for each data item of a plurality of data items present
in the system,
(i) determining a substantially unique identifier for
the data item, the identifier depending on and being determined
using all of the data in the data item and only the data in the
data item, whereby two identical data items in the system will
have the same identifier; and
(ii) making and maintaining a set of identifiers of
the plurality of data items; and
(B) for the particular data item,
(i) determining a particular substantially unique
identifier for the data item, the identifier depending on and
being determined using all of the data in the data item and only
the data in the data item, whereby two identical data items in
the system will have the same identifier; and
(ii) determining whether the particular identifier is
in the set of data items.

The Examiner rejects claim 35 under 35 U.S.C. § 102(a) or (e) as
anticipated by US Patent No. 5,649,196 issued to Woodhill et al. on
July 15, 1997 (herein “Woodhill”).
Appeal 2015-004285
Reexamination Control 90/012,931
Patent 5,978,791

3
CONTENTIONS
Patent Owner contends that the Examiner erred in finding that
Woodhill anticipates claim 35 for several reasons. PO App. Br.
2
8–18.
First, Patent Owner argues that Woodhill is incapable of determining
whether a particular data item is present in a data processing system because
Woodhill does not determine that the data item is not present in the system
when that is the case. Id. at 8–15. Patent Owner asserts that to anticipate the
method of claim 35, Woodhill’s system, in order to be capable of
“determining whether” a particular binary object is present in the data
processing system, the system “must be able to both (1) determine that the
binary object is present in the system when that is the case, and
(2) determine that the binary object is NOT present in the system when that
is the case.” Id. at 9. Patent Owner makes essentially the same point with
respect to the claim limitation of determining whether a particular identifier
is in a “set of data items.” Id. at 15–16. Finally, Patent Owner contends that
Woodhill does not make and maintain “a set of identifiers of the plurality of
data items” (clause (A)(ii) of claim 35) because Woodhill does not “group a
plurality of identifiers together.” Id. at 17. See also id. at 16–18.

ANALYSIS
We are unpersuaded of error for essentially the reasons stated by the
Examiner (Ex Parte Reexamination Communication Transmittal Form 4–14,

2
Patent Owner Appeal Brief, filed September 29, 2014.
Appeal 2015-004285
Reexamination Control 90/012,931
Patent 5,978,791

4
mailed May 30, 2014, pp. 4–14 (incorporated by reference into the
Examiner’s Answer, mailed October 24, 2014)) (hereinafter “Final
Rejection”). We note the following for emphasis.
Patent Owner’s assertion that a prior art system must be capable of
determining that a particular data item is not present in the system (or,
correspondingly, that a particular identifier is not in a set of data items) in
order to “determine whether” the data item (identifier) is present in the
system (set) (PO App. Br. 8–16) is simply unfounded. We agree with the
Examiner that Patent Owner’s declarant does not provide a persuasive basis
for concluding such a construction is required. Final Rejection 6–8
(referencing “Declaration of Robert B. K. Dewar,” Feb. 5, 2014).
Moreover, Patent Owner concedes that “Woodhill only looks at information
relating to one binary object of one file when backing up that binary object.”
Id. at 10. See Woodhill 9:16–22. That “one binary object of one file” is in
Woodhill’s File Database (i.e., a “system”). Id. Hence, because Woodhill
determines that a “Binary Object Identifier” is present in that file, Woodhill
has determined that the Binary Object Identifier is present in the system.
In other words, we find that by Woodhill’s determining that a data
item is present in a file, Woodhill has “determined whether” the data item is
present. This is so without regard to Woodhill’s alleged failure to explicitly
disclose an ability to determine that the data item is not present elsewhere in
the File Database. Similar reasoning applies with respect to Patent Owner’s
Appeal 2015-004285
Reexamination Control 90/012,931
Patent 5,978,791

5
argument regarding determining whether an identifier is present in a set of
data items. PO App. Br. 15–16.
Patent Owner’s argument that Woodhill does not make and maintain
“a set of identifiers of the plurality of data items” because Woodhill does not
group a plurality of identifiers together (PO App. Br. 16–18) is also
unpersuasive of error. Patent Owner does not dispute that Woodhill stores
binary object identifiers in a database, albeit in different records of the
database. Id. at 17 (“Merely having a database 25 in Woodhill [that]
contains many elements including binary object identifiers 74 in different
records, is not the same as making a ‘set’, or maintaining a ‘set’, of
identifiers.”). But we do not find sufficient persuasive evidence in support
of Patent Owner’s assertion that Woodhill’s making and maintaining a File
Database that includes the identifiers is not “grouping” and therefore not
making and maintaining a set. Id; Accord, Final Rejection 14.
We note Patent Owner’s comments regarding Woodhill’s priority date
(PO App. Br. 18–19), but do not find therein an argument evidencing error
in the Examiner’s rejection.
For the foregoing reasons, then, we are unpersuaded of error in the
rejection of claim 35.
Appeal 2015-004285
Reexamination Control 90/012,931
Patent 5,978,791

6
DECISION

We affirm the Examiner’s rejection of claim 35 under 35 U.S.C.
§ 102(a) or (e) as anticipated by Woodhill.

AFFIRMED

PATENT OWNER:

Nixon & Vanderhye, PC
901 North Glebe Road
11
th
Floor
Arlington, VA 22203

THIRD PARTY REQUESTER:

Haynes and Boone, LLP
Attn: IP Docketing
2323 Victory Avenue
Suite 700
Dallas, TX 75219