14983786 (P.T.A.B. Jul. 24, 2017)

Ex Parte Carroll

Patent Trial and Appeal BoardJul 24, 2017

14983786 (P.T.A.B. Jul. 24, 2017)

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. 14/983,786 12/30/2015 Christopher Paul Carroll CARR-001-102 4807 7590 07/24/2017 Christopher Carroll 956 Salem End Road Framingham, MA 01702 EXAMINER VO, CECILE H ART UNIT PAPER NUMBER 2153 MAIL DATE DELIVERY MODE 07/24/2017 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 CHRISTOPHER PAUL CARROLL ____________ Appeal 2017-0083731 Application 14/983,786 Technology Center 2100 ____________ Before LINZY T. MCCARTNEY, SCOTT E. BAIN, and ALEX S. YAP, Administrative Patent Judges. YAP, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1–18, which are all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b) We reverse. 1 According to Appellant, the real party in interest is Christopher P. Carroll. (App. Br. 1.) Appeal 2017-008373 Application 14/983,786 2 STATEMENT OF THE CASE Introduction According to the Specification, Appellant’s invention “relates generally to systems and methods for data file handling[, specifically,] to data file loading.” (December 30, 2015 Specification (“Spec.”) 1.) Claim 1 is illustrative, and is reproduced below (with minor reformatting): 1. A file loading system comprising: a datastore for storing a plurality of data files, each of the plurality of data files including information, a removable media storage device capable of interfacing with the datastore, the removable media storage device having a data storage capacity, a first computer arranged to: access the plurality of data files in the datastore, and load a data pad into one or more of the plurality of data files to increase the size of the one or more of the plurality of data files based on the data storage capacity of the removable media storage device, wherein the increased size of the one or more of the plurality of data files, being based on the data storage capacity of the removable media storage device, inhibits a transfer of the one or more of the plurality of data files from the datastore to the removable media storage device and wherein the data pad includes a pattern of data elements. Appeal 2017-008373 Application 14/983,786 3 Prior Art and Rejections2 on Appeal The following table lists the prior art relied upon by the Examiner in rejecting the claims on appeal: Evers et al. (“Evers”) US 6,542,975 B1 Apr. 1, 2003 Lofgren et al. (“Lofgren”) US 2004/0044894 A1 Mar. 4, 2004 Baik et al. (“Baik”) US 8,005,458 B2 Aug. 23, 2011 Claims 1, 2, and 4–17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Evers in view of Lofgren. (See Final Office Action (mailed July 13, 2016) (“Final Act.”) 6–14.) Claims 3 and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Evers, in view of Lofgren, and further in view of Baik. (See Final Act. 15–19.) ANALYSIS We have reviewed the Examiner’s rejection in light of Appellant’s arguments that the Examiner has erred. We are persuaded that the Examiner erred in rejecting the claims on appeal. With respect to claim 1, the claim recites “load a data pad into one or more of the plurality of data files to increase the size of the one or more of the plurality of data files based on the data storage capacity of the removable media storage device.” (Emphasis added.) The Examiner finds paragraphs 16, 120, 122, 146, and 147 of Lofgren teach or suggest the 2 The Examiner withdrew the double patenting rejection in the Answer. (Ans. 3.) Appeal 2017-008373 Application 14/983,786 4 limitation at issue. (Final Act. 9; Ans. 4–5.) According to the Examiner, “an image [] can be recursively embedded with layers of reversible watermark [and] the achievable embedding capacity depends on available auxiliary capacity of the image/Disk[, which] is interpreted as the data storage capacity.” (Final Act. 8–9.) Appellant contends that the padding of data is not “based on the data storage capacity of the removable media storage device.” (App. Br. 13–14.) We have reviewed the portions of Lofgren cited by the Examiner, and we do not agree with the Examiner’s finding that the data pad into the one or more of the plurality of data files is based on data storage capacity. Specifically, we agree with Appellant that the size increase of the embedded watermark (i.e., data pad) in Lofgren is based on the constraints of the underlying image rather than on data storage capacity. (See Lofgren ¶¶ 120– 122 (discussing that “the achievable embedding capacity depends on the nature of the image itself.”).) The Examiner does not explain how Lofgren teaches or suggests embedding a reversible watermark layer based on the available auxiliary data capacity layer and why one of ordinary skill in the art would interpret the available auxiliary capacity layer as a “removable media storage device.” (See id. at ¶ 157.)3 For the foregoing reasons, we are persuaded of Examiner error in the rejection of claim 1 and do not sustain the 35 U.S.C. § 103(a) rejection of 3 In the event of further prosecution, we leave to the Examiner to consider whether this limitation (i.e., “load a data pad into one or more of the plurality of data files to increase the size of the one or more of the plurality of data files based on the data storage capacity of the removable media storage device”) complies with 35 U.S.C. Section 112, paragraph 2. Appeal 2017-008373 Application 14/983,786 5 claim 1.4 Independent claims 17 and 18 contain a similar limitation at issue and the Examiner cites to Lofgren for the limitation and makes similar findings. (Final Act. 14 (“Claim 17 recite a method is similar to subject matters of claim 1. Therefore, claim 17 is rejected by the same reason as discussed in claim 1.”), 17–18.) Thus, for the same reason, we do not sustain the 35 U.S.C. § 103(a) rejections of independent claims 17 and 18, as well as claims 2–16, which depend from independent claim 1. DECISION We reverse the decision of the Examiner to reject claims 1–18. REVERSED 4 Because we do not sustain the Examiner’s rejection for the reasons discussed herein, we need not address Appellant’s further arguments. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency is at liberty to reach a decision based on “a single dispositive issue”). For example, Appellant’s new argument in reply that “Lofgren does not disclose or even suggest a ‘removable media storage device’” (Reply 3) or that a watermark is not a data pad (App. Br. 13).