Ex Parte Forman et alDownload PDFPatent Trial and Appeal BoardJan 29, 201512242998 (P.T.A.B. Jan. 29, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GEORGE FORMAN and KAVE ESHGHI ____________ Appeal 2012-0066791 Application 12/242,9982 Technology Center 3600 ____________ Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and JAMES A. WORTH, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 38, 13, 15–18, and 21–30, all pending claims in the subject application. We have jurisdiction under 35 U.S.C. §§ 134 and 6(b). We REVERSE. 1 Our decision refers to the Appellants’ Appeal Brief (“App. Br.,” filed Nov. 29, 2011) and Reply Brief (“Reply Br.,” filed Mar. 16, 2012), and the Examiner’s Answer (“Ans.,” mailed Jan. 23, 2012). 2 According to Appellants, the real party in interest is Hewlett-Packard Development Company, LP (App. Br. 1). Appeal 2012-006679 Application 12/242,998 2 Introduction Appellants’ disclosure relates to a method, processing facility, and computer-readable storage medium “for scanning information across different devices and is useful, e.g., in scanning enterprise personal computers for designated sensitive data” (Spec. ¶ 1). Claims 1, 24, and 28 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A method of scanning information across a plurality of devices, comprising: obtaining a set of designated chunks of information; generating full source digests based on the designated chunks and then deriving abbreviated source digests from the full source digests; distributing the abbreviated source digests to different data-processing devices to allow individual ones of the data- processing devices to scan locally stored data units to determine which of said data units satisfy a specified matching criterion pertaining to at least one identified match to at least one of the abbreviated source digests, the scanning comprising generating full scan digests for the stored data units, deriving abbreviated scan digests from the full scan digests, and then comparing the abbreviated source digests to the abbreviated scan digests; receiving, by a central processing facility, a plurality of the full scan digests for the data units that satisfy the specified matching criterion; and the central processing facility comparing the full scan digests received from the data-processing devices to the full source digests so as to determine which corresponding data units satisfy a policy criterion. App. Br., Claims App’x. Appeal 2012-006679 Application 12/242,998 3 Rejection on Appeal The Examiner maintains, and the Appellants appeal, the following rejection: Claims 1, 3–8, 13, 15–18, and 21–30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over George Forman et al., Finding Similar Files in Large Document Repositories, KDD ’05, Association for Computing Machinery, 394400 (Aug. 21–24, 2005) (hereinafter, “Forman”). ANALYSIS Independent claim 1 and dependent claims 3–8, 21, and 23 We are persuaded by Appellants’ argument that Forman fails to disclose or suggest: distributing the abbreviated source digests to different data-processing devices to allow individual ones of the data- processing devices to scan locally stored data units to determine which of said data units satisfy a specified matching criterion pertaining to at least one identified match to at least one of the abbreviated source digests, the scanning comprising generating full scan digests for the stored data units, deriving abbreviated scan digests from the full scan digests, and then comparing the abbreviated source digests to the abbreviated scan digests; as recited by claim 1 (App. Br. 9–10). The Examiner finds that Forman does not explicitly disclose the subject limitation, but concludes that the limitation is a “predictable result” of Forman (Ans. 5, 14–15). In reaching this conclusion, the Examiner reasons that the “to allow” clause of claim 1 recites non-limiting future steps (Ans. 7, 13–14). Thus, the Examiner does not address Appellants’ argument (App. Br. 8–9; Reply Br. 2–3) that the “to allow” clause recites “generating Appeal 2012-006679 Application 12/242,998 4 full scan digests” which provides antecedent basis for the term “the full scan digests” that appears in the later phrases of claim 1. In this connection, we construe the “to allow” clause as language setting forth the further operation of the involved process and hence is limiting, and thus it provides antecedent basis for the later phrases of claim 1. For this reason, we do not sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103(a). We do not sustain the rejection of claims 3–8, 21, and 23, which depend from claim 1, for similar reasons. Independent claims 24 and 28 and dependent claims 13, 15–18, 22, 25–27, 29, and 30 Independent claims 24 and 28 contain substantially similar language as independent claim 1. We do not sustain the Examiner’s rejection of independent claims 24 and 28 under 35 U.S.C. § 103(a) for similar reasons as for independent claim 1. Claims 13, 15–18, 22, 25–27, 29, and 30 each depend from one of independent claims 24 or 28, respectively. We do not sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of claims 13, 15–18, 22, 25– 27, 29, and 30, for similar reasons, as for independent claims 24 and 28. DECISION The decision of the Examiner to reject claims 1, 3–8, 13, 15–18, and 21–30 is reversed. REVERSED llw Copy with citationCopy as parenthetical citation