Ex Parte 5,978,791 et alDownload PDFPatent Trial and Appeal BoardSep 29, 201590012931 (P.T.A.B. Sep. 29, 2015) Copy Citation 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 Copy with citationCopy as parenthetical citation