Ex Parte Bardsley et alDownload PDFPatent Trial and Appeal BoardApr 9, 201411474898 (P.T.A.B. Apr. 9, 2014) 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. 11/474,898 06/26/2006 Jeffrey S. Bardsley I401/US 2710 52354 7590 04/10/2014 SCENERA RESEARCH, LLC JENKINS, WILSON, TAYLOR & HUNT, P.A. 5400 Trinity Road Suite 303 Raleigh, NC 27607 EXAMINER LIU, HEXING ART UNIT PAPER NUMBER 2167 MAIL DATE DELIVERY MODE 04/10/2014 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 JEFFREY BARDSLEY and MONA SINGH ____________ Appeal 2011-005849 Application 11/474,898 Technology Center 2100 ____________ Before ROBERT E. NAPPI, BRUCE R. WINSOR, and ROBERT J. WEINSCHENK, Administrative Patent Judges. WEINSCHENK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-10, 12-30, and 32-42. Claims 11 and 31 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal 2011-005849 Application 11/474,898 2 STATEMENT OF THE CASE Introduction Appellants’ invention relates to a method and system for using metadata to identify a container associated with a plurality of files (see Spec. 2, ll. 26-32). Claim 1, which is illustrative of the claimed method, reads as follows: 1. A method for identifying a container associated with a plurality of files, the method comprising: providing for associating a file with a container associated with at least one file to form a plurality of associated files; determining prevailing metadata among the plurality of associated files, wherein the prevailing metadata is not required to be from all of the plurality of associated files; and identifying the container based on the prevailing metadata, wherein the container is an existing container and identifying the container based on the prevailing metadata includes renaming the existing container based on the prevailing metadata and wherein at least one of the preceding actions is performed on at least one electronic hardware component. Rejections on Appeal Claims 1-10, 12-30, and 32-42 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ueda (US 2004/0117411 A1; June 17, 2004) and Izume (US 2005/0110879 A1; May 26, 2005) (see Ans. 3-13). Issue on Appeal Did the Examiner err in rejecting the claims as being obvious over the asserted combination of references because the combination does not teach or suggest the disputed features recited in Appellants’ claims? Appeal 2011-005849 Application 11/474,898 3 ANALYSIS We reviewed the Examiner’s rejections, Appellants’ arguments in their brief, and the Examiner’s response to Appellants’ arguments. We refer herein to Appellants’ Appeal Brief filed September 7, 20101 (App. Br.), and the Examiner’s Answer mailed November 23, 2010 (Ans.). Claims 1, 21, 41, and 42 Independent claims 1, 21, 41, and 42 recite the limitation of determining prevailing metadata among the plurality of associated files, wherein the prevailing metadata is not required to be from all of the plurality of associated files. Appellants contend that “prevailing metadata” refers to metadata that is common to a majority of files associated with a container (App. Br. 33). Appellants argue that Ueda only teaches naming a folder based on metadata having the highest priority, and not based on metadata that is common to a majority of files (App. Br. 34). However, Appellants fail to address all the teachings of Ueda cited by the Examiner (Ans. 3, 4, 14, 15). For example, Ueda also teaches naming a folder based on metadata that is common to plural files (Ueda ¶¶ [0042], [0076]). Appellants do not explain how the disputed claim limitation differs from this teaching in Ueda. Thus, Appellants fail to persuade us that the Examiner erred. Appellants also contend that the phrase “plurality of associated files” requires that the files be associated with an existing container at the time the prevailing metadata is determined (App. Br. 33-34). Appellants argue that Ueda does not teach this feature (App. Br. 34). However, Appellants fail to 1 We did not review or consider Appellants’ Appeal Brief filed August 2, 2010, because it was superseded by Appellants’ Appeal Brief filed September 7, 2010. Appeal 2011-005849 Application 11/474,898 4 address the Examiner’s conclusion that the combination of Ueda and Izume teaches the claimed feature. Specifically, the Examiner concludes that Ueda teaches determining prevailing metadata, whereas Izume teaches renaming of an existing folder associated with a plurality of files (Ans. 4, 15, 16). Appellants do not dispute this teaching of Izume. Instead, Appellants argue that Izume does not teach a different claim limitation, namely determining prevailing metadata (App. Br. 35). Thus, Appellants address Ueda and Izume individually, but never explain why the combination fails to teach the disputed limitation. As a result, we are not persuaded that the Examiner erred. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.”). Independent claims 1, 21, 41, and 42 also recite the limitation of identifying the container based on the prevailing metadata, wherein the container is an existing container, and identifying the container based on the prevailing metadata including renaming the existing container based on the prevailing metadata. Appellants restate their previous arguments with respect to this claim limitation. Namely, Appellants argue that Ueda fails to teach the feature of renaming an existing folder (App. Br. 36), and Izume fails to teach naming a folder based on prevailing metadata (App. Br. 37). Thus, Appellants again attack the cited references individually, rather than addressing the combination cited by the Examiner. As discussed above, Appellants’ argument is not persuasive. Appellants argue that Ueda and Izume teach away from the above- referenced claimed limitations (App. Br. 34-37). However, Appellants do not point to any evidence to support the alleged teaching away. Appellants’ Appeal 2011-005849 Application 11/474,898 5 contention that the individual references do not teach all the claim limitations is not a teaching away from those claim limitations. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (finding no teaching away because the prior art did not “criticize, discredit, or otherwise discourage the solution claimed”). Thus, Appellants fail to persuade us that the Examiner erred, and we sustain the rejections of claims 1, 21, 41, and 42. Claims 5 and 25 Dependent claims 5 and 25 recite the limitation of determining the prevailing metadata based on a number of occurrences of like metadata among the plurality of associated files. Appellants argue that Ueda only teaches naming a folder based on metadata having the highest priority, and not based on metadata that is common to a majority of files (App. Br. 38). As previously discussed, Ueda also teaches naming a folder based on metadata that is common to plural files (Ueda ¶¶ [0042], [0076]). The Examiner further explained that it is well known to one of ordinary skill in the art that one way to determine whether metadata is common to plural files is by determining how many times it occurs (Ans. 18). Appellants do not address the above-referenced teaching of Ueda or the Examiner’s specific finding. Therefore, we are not persuaded that the Examiner erred, and we sustain the rejections of claims 5 and 25. Claims 6 and 26 Dependent claims 6 and 26 recite the limitation of determining the prevailing metadata based on a categorization of metadata among the plurality of associated files. The Examiner points to paragraphs [0049] to [0075] and Figure 8 of Ueda as teaching that folder names can be determined based on prevailing metadata for different categories (Ans. 6, 7, Appeal 2011-005849 Application 11/474,898 6 18). Appellants argue that Ueda teaches the different types of metadata used to determine the name of the folder, but does not disclose determining the prevailing metadata based on the different categories (App. Br. 39). To the contrary, we find Ueda teaches determining the prevailing metadata for different categories and then combining them to form the name of the folder (Ueda ¶ [0077]). For example, the folder name “20121204_JP- Tokyo_ID012345_001” contains the prevailing metadata for the categories of file date, scanning location, member number, and user order (Ueda ¶ [0077]). For at least this reason, we are not persuaded that the Examiner erred, and we sustain the rejections of claims 6 and 26. Claims 7 and 27 Dependent claims 7 and 27 recite associating a plurality of different metadata among the plurality of associated files with a respective number of occurrences of each metadata and determining prevailing metadata based on the respective number of occurrences of each metadata. Appellants argue that Ueda does not teach this feature for the same reasons as claims 5 and 25 (App. Br. 40). For the reasons discussed above with respect to claims 5 and 25, we do not find Appellants’ argument persuasive, and, therefore, we sustain the rejections of claims 7 and 27. Claims 8 and 28 Dependent claims 8 and 28 recite ranking the associated metadata based on the respective number of occurrences of each metadata. Ueda teaches ranking metadata based on an order of priority, but we agree with Appellants that ranking metadata based on priority is not the same as ranking metadata based on the number of occurrences of each metadata (see App. Br. 41). The Examiner did not identify any other portion of Ueda or Appeal 2011-005849 Application 11/474,898 7 Izume that teaches or suggests ranking the associated metadata based on the number of occurrences of each metadata (see Ans. 19-20). Therefore, we agree with Appellants that the Examiner does not put forth a prima facie case of obviousness, and we do not sustain the rejections of claims 8 and 28. Claims 12 and 32 Dependent claims 12 and 32 recite that the existing container is a shortcut to another container that is also renamed based on prevailing metadata. The Examiner cites to a folder linking to a subfolder, such as in Figures 4 and 11 of Ueda, as teaching the claimed shortcut (Ans. 8-9). Appellants argue that none of these folders are shortcuts, but fail to provide any explanation to support that conclusory assertion (see App. Br. 42). Appellants’ Specification states that a shortcut may be any file containing the location of one or more other files stored on a computer (Spec. 3, ll. 18- 20). We find Ueda teaches a shortcut because it shows at least one file folder that contains the location of another file folder (and thus any files in that folder) stored on a computer (see Ueda Figs. 4, 8, 11). Therefore, we are not persuaded that the Examiner erred, and we sustain the rejections of claims 12 and 32. Claims 13 and 33 Dependent claims 13 and 33 recite determining a user-preferred naming convention and renaming the existing container using the user- preferred naming convention. Appellants argue that Ueda does not teach a naming convention that is user-preferred (App. Br. 42-43). However, Appellants fail to address the combination of Ueda and Izume cited by the Examiner (Ans. 21). Specifically, Appellants admit that Izume teaches a system that renames folders according to a user’s rule set (see App. Br. 35, Appeal 2011-005849 Application 11/474,898 8 37). Yet, Appellants fail to explain why the user’s rule set in Izume is not a user-preferred naming convention as recited in Appellants’ claims. Therefore, we are not persuaded that the Examiner erred, and we sustain the rejection of claims 13 and 33. Claims 14-16 and 34-36 Dependent claims 14 and 34 recite determining whether the at least one name is acceptable to a user and renaming the existing container based on whether the at least one name is acceptable to the user. Appellants argue that Ueda does not teach this feature (App. Br. 43-44). But, as discussed above, Appellants admit that Izume teaches a system that renames folders according to a user’s rule set (see App. Br. 35, 37). Appellants fail to explain why a folder name that is determined based on a user’s rule set, as in Izume, is not a name that is acceptable to that user. Because Appellants fail to distinguish the teachings of Izume, and thus fail to address the combination of Ueda and Izume cited by the Examiner (Ans. 22), we are not persuaded that the Examiner erred. Therefore, we sustain the rejection of claims 14 and 34. Appellants do not present any separate arguments with respect to claims 15, 16, 35, and 36, so we sustain those rejections as well. Claims 18 and 38 Dependent claims 18 and 38 recite determining a name change history for the existing container and determining whether to rename the existing container based on the name change history. We agree with Appellants that the Examiner did not identify any portion of Ueda or Izume that teaches or suggests determining whether to rename a folder based on a name change history for that folder (see App. Br. 44; Ans. 22-23). Thus, we conclude that Appeal 2011-005849 Application 11/474,898 9 the Examiner has not put forth a prima facie case of obviousness, and we do not sustain the rejections of claims 18 and 38. Claims 19 and 39 Dependent claims 19 and 39 recite determining whether a renaming hold is associated with the existing container, the renaming hold indicating that the existing container should not be renamed, and determining whether to rename the existing container based on the renaming hold determination. Appellants argue that Ueda does not teach this feature (App. Br. 45-46). However, Appellants fail to address the combination of Ueda and Izume cited by the Examiner (Ans. 23-24). Specifically, Appellants admit that paragraph [0108] of Izume teaches protecting an image folder from renaming based on a third character string that is entered and stored by the user (App. Br. 32). This third character string is a renaming hold indicating that a folder cannot be renamed (Izume ¶ [0108]). Because Appellants do not distinguish the claimed feature from this teaching in Izume, we are not persuaded that the Examiner erred. Therefore, we sustain the rejection of claims 19 and 39. Claims 20 and 40 Dependent claims 20 and 40 recite suggesting to a user that one or more of the plurality of files be associated with another container and suggesting an identity for the other container based on the prevailing metadata. We agree with Appellants that the Examiner did not identify any portion of Ueda or Izume that teaches or suggests the claimed feature of suggesting to a user that files be associated with another container (App. Br. 46; Ans. 24). Thus, we conclude that the Examiner did not put forth a prima Appeal 2011-005849 Application 11/474,898 10 facie case of obviousness, and we do not sustain the rejections of claims 20 and 40. Claims 26-40 Appellants argue that the Examiner failed to address claims 26-40 in the Final Office Action and thus did not set forth a prima facie case of obviousness (App. Br. 32). However, Appellants admit that claims 26-40 are analogous to claims 6-20 (App. Br. 32), and Appellants respond to the rejections of claims 26-40 in detail in the Appeal Brief (App. Br. 38-47). We conclude that Appellants were sufficiently notified of the rejections of claims 26-40 and was able to respond to them, and therefore do not find Appellants’ argument persuasive. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (the PTO satisfies its initial burden when “the applicant is properly notified and able to respond”). DECISION The decision of the Examiner rejecting claims 1-7, 9, 10, 12-17, 19, 21-27, 29, 30, 32-37, 39, 41, and 42 is affirmed. The decision of the Examiner rejecting claims 8, 18, 20, 28, 38, and 40 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED-IN-PART ke Copy with citationCopy as parenthetical citation