Ex Parte BerstisDownload PDFBoard of Patent Appeals and InterferencesFeb 10, 200408976888 (B.P.A.I. Feb. 10, 2004) Copy Citation 1 Application for patent filed November 21, 1997. The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board. Paper No. 25 UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte VIKTORS BERSTIS __________ Appeal No. 2002-0614 Application No. 08/976,8881 ____________ ON BRIEF ____________ Before BARRETT, FLEMING and SAADAT, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal from the Examiner’s final rejection of claims 1-28, which are all of the claims pending in this application. We reverse. BACKGROUND Appellant’s invention is directed to the use of uniform resource locators to access a file system in a communication Appeal No. 2002-0614 Application No. 08/976,888 2 network wherein different interfaces to access applications via the Internet or a local network are not required. First, a command is received to access a first file wherein a device evaluates the command to determine a first file type of the first file. The first file is then retrieved from a remote data processing system when the first file type indicates that the first file is stored outside the local data processing system (specification, page 8). Representative independent claim 1 is reproduced as follows: 1. A computer program product in a computer readable medium comprising: an operating system on a local data processing system, said operating system comprising: input means for receiving a command to access a first file; means for evaluating the command to determine a first type of the first file; and means for retrieving the first file from a remote data processing system when the first file type indicates the first file is stored outside the local data processing system. The Examiner relies on the following references in rejecting the claims: Walls et al. (Walls) 5,848,410 Dec. 8, 1998 (filed Oct. 8, 1997) Freund 5,987,611 Nov. 16, 1999 (filed May 6, 1997) Appeal No. 2002-0614 Application No. 08/976,888 2 Although the Examiner does not refer to any particular one of the previous Office actions for the complete text of the claim rejections, we find that a non-final Office action (Paper No. 13, mailed September 9, 2000) contains the complete statement of the rejection, to which we refer. 3 Claims 1-5, 7-15, 17-24 and 26-28 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Walls. Claims 6,16 and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Walls in view of Freund. We make reference to the answer (Paper No. 23, mailed August 27, 2001)2 for the Examiner’s reasoning, and to the brief (Paper No. 22, filed July 18, 2001) for Appellant’s arguments thereagainst. OPINION In rejecting claims 1-5, 7-15, 17-24 and 26-28 under 35 U.S.C. § 102, the Examiner refers to table 1 of Walls and equates file-system definer 222 (col. 11, line 62 through col. 12, line 5) to the claimed means for evaluating the command to determine a first type of the first file (non-final Office action, page 3). The Examiner further characterizes the field name “Remote Location” listed in Table 1 of Walls (col. 17, lines 40-49) as the claimed means for retrieving the first file from a remote data processing system when the first file type indicates its storage outside the local data processing system (id.). Appeal No. 2002-0614 Application No. 08/976,888 4 Appellant argues that the teachings of Walls relate to a storage data structure built by an index builder which provide for a system and method for indexing information stored in one or more sources of information such as a database (brief, page 5). Appellant points out that Walls merely discloses a continuous indexer (col. 3, lines 50-55) that is configured to search one or more files in order to provide the user with a continuously updated index of information contained within the file system (id.). In response to Appellant’s arguments, the Examiner asserts that “Walls teaches the same functionality of generating a file system from the remote data processing and then storing the retrieved file in the local memory” (answer, page 3). The Examiner further relies on one of the field names listed in table 1 of Walls (col. 17, lines 40-49) and asserts that examining the “Remote Location” field of the file that contains a binary indicator determines if the first type of the file is a local or remote while the feature of evaluating the command is inherent in the system (answer, page 4). A rejection for anticipation under section 102 requires that each and every limitation of the claimed invention be disclosed in a single prior art reference. In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994). See also Atlas Appeal No. 2002-0614 Application No. 08/976,888 5 Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). We observe that Walls relates to a system and method for comprehensively and continuously indexing information stored in one or more sources of information such as a data base (col. 3, lines 48-50) by using descriptive indexing elements such as titles of files or keywords (col. 4, lines 37-40). The portion of table 1 relied on by the Examiner (col. 17, lines 40-49) actually describes the location of a file that is to be indexed. However, Walls neither discloses nor suggests using any means for evaluating the received command to determine a first type of a the first file which may indicate that the first file to be retrieved is stored outside the local data processing. In that regard, Walls merely refers to generator 234 which inserts pointers in storage data structure so that records in storage data structure are associated with each other by their primary keywords (col. 19, lines 24-28) and, in fact, shows that the location where the file is stored is already known and the access command need not be evaluated. We disagree with the Examiner that the feature of evaluating the received command to determine the first type of the first file is inherent in the system since Walls provides for a “Remote Location” field for indexing data (answer, page 4). Although Appeal No. 2002-0614 Application No. 08/976,888 6 Walls provides for an indicator to be set to indicate remote file location, a pointer to that file is already inserted by generator 234 (col. 19, lines 52-56) which means that the file location is known prior to retrieving the file. Furthermore, “[to establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by person of ordinary skill.’” In re Robinson, 169 F.3d 743, * 49 USPQ2d 1949, 1950-1951 (Fed. Cir. 1999) citing Continental Can Co. V. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result for a given set of circumstances is not sufficient.” Id. 948 F.2d at 1269, 20 USPQ2d at 1749. Here the examiner has not pointed to, nor do we find, any teaching in the prior art that would disclose or fairly suggest that existence of the “Remote Location” field necessarily indicates the presence of the claimed “means for evaluating the command to determine a first type file of the first file” after a command to access a first file is received. In fact, since Walls provides for pointers to the files that are already accessed, there is no need for determining the location of he file. Accordingly, we find that the Examiner has failed to meet the burden of providing a Appeal No. 2002-0614 Application No. 08/976,888 7 prima facie case of anticipation and the 35 U.S.C. § 102 rejection of claims 1-5, 7-15, 17-24 and 26-28 over Walls cannot be sustained. Turning now to the 35 U.S.C. § 103 rejection of claims 6, 16 and 25, we note that the Examiner further relies on Freund for teaching a socket for communicating between the local and the remote data processing systems (non-final Office action, page 5). Freund relates to a system and method for regulating access and maintaining security of individual computer systems and local area networks connected to larger open networks (col. 1, lines 25-30). However, since there is no disclosure in Freund that relates to a “means for evaluating the command to determine a first type file of the first file” after a command to access a first file is received, the deficiencies of Walls as discussed above with respect to claims 1-5, 7-15, 17-24 and 26-28 cannot be overcome. Accordingly, we do not sustain the 35 U.S.C. § 103 rejection of claims 6, 16 and 25 over Walls and Freund. Appeal No. 2002-0614 Application No. 08/976,888 8 CONCLUSION In view of the foregoing, the decision of the Examiner to reject claims 1-5, 7-15, 17-24 and 26-28 under 35 U.S.C. § 102 and claims 6, 16 and 25 under 35 U.S.C. § 103 is reversed. REVERSED ) LEE E. BARRETT ) Administrative Patent Judge ) ) ) ) BOARD OF PATENT MICHAEL R. FLEMING ) Administrative Patent Judge ) APPEALS AND ) ) INTERFERENCES ) MAHSHID D. SAADAT ) Administrative Patent Judge ) MDS/ki Appeal No. 2002-0614 Application No. 08/976,888 9 James J. Murphy 5400 Renaissance Tower 1201 Elm Street Dallas, TX 75270-2199 Copy with citationCopy as parenthetical citation