Ex Parte Hsiao et al

Patent Trial and Appeal Board

Apr 2, 2014

10135982 (P.T.A.B. Apr. 2, 2014)

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.
10/135,982 04/30/2002 Hui-I Hsiao ARC920000014US2 7328
7590 04/03/2014
John L. Rogitz
Rogitz & Associates
Suite 3120
750 B Street
San Diego, CA 92101
EXAMINER
CHOJNACKI, MELLISSA M
ART UNIT PAPER NUMBER
2164
MAIL DATE DELIVERY MODE
04/03/2014 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 HUI-I HSIAO, JOSHUA WAI-HO HUI, and
INDERPAL SINGH NARANG
____________________

Appeal 2011-010184
Application 10/135,982
Technology Center 2100
____________________

Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s non-final rejection of claims 1-42 and 45-64. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM-IN-PART.1

THE CLAIMED INVENTION
Appellants’ claimed invention is directed to updating external files
using SQL to maintain transactional consistency (Spec. 1, ll. 9-11).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A computer-implemented method for ensuring
consistency between metadata stored in a database system and
files stored in a file system and represented by the metadata,
comprising:
writing at least changes to at least one original file having
a name to at least one replacement file;
commencing a database transaction;
if the transaction commits, designating, as the name of
the replacement file, the name of the original file; and removing
the original file from the file system;
otherwise, not designating, as the name of the
replacement file, the name of the original file.

1 Our decision will refer to Appellants’ Appeal Brief (“Br.,” filed
December 7, 2010) and the Examiner’s Answer (“Ans.,” mailed March 17,
2011).
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THE REJECTIONS
The following rejections are before us for review:
Claim 64 is rejected under 35 U.S.C. § 112, first paragraph, as a single
means claim.
Claims 1-42 and 45-61 are rejected under 35 U.S.C. § 102(e) as
anticipated by Cabrera (US 6,453,325 B1, iss. Sep. 17, 2002).
Claims 62-64 are rejected under 35 U.S.C. § 102(b) as anticipated by
Christie (US 5,757,669, iss. May 26, 1998).

ANALYSIS
Single Means Claim – Enablement
We are not persuaded that the Examiner erred in rejecting independent
claim 64 under 35 U.S.C. § 112, first paragraph (Br. 13-14).
Claim 64 is directed to a computer program product having computer
usable means thereon executable by a digital processing apparatus, and
recites that the computer program product comprises “computer readable
code means for mapping at least one file reference in a source DBMS to a
target linked to a target file system.” The “computer readable code means”
is the only limitation recited in the body of the claim. As such, claim 64 is
structured as a “single means” claim.
Appellants argue that “[c]laim 64 recites two means-plus-function
elements: computer usable means that are executable by a digital processing
apparatus, which in turn include computer readable code means for
mapping” (Br. 14). But the “computer usable means” does not appear in
claim 64 in combination with the “computer readable code means.”
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Accordingly, claim 64 is not subject to 35 U.S.C. § 112, sixth paragraph,
which provides that:
An element in a claim for a combination may be expressed as a
means . . . for performing a specified function without the
recital of structure . . . and such claim shall be construed to
cover the corresponding structure . . . described in the
specification and equivalents thereof.

Id. [Emphasis added].
Because § 112, sixth paragraph, does not limit the interpretation of the
recited “computer readable code means” to the structure disclosed in the
Specification and equivalents, claim 64 covers every conceivable means for
performing the recited function; on the other hand, Appellants’ Specification
“discloses at most only those means known to the inventor[s].”
See In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983) (“The long-recognized
problem with a single means claim is that it covers every conceivable means
for achieving the stated result, while the specification discloses at most only
those means known to the inventor.”). Claim 64, therefore, is subject to an
undue breadth rejection for lack of enablement under 35 U.S.C. § 112, first
paragraph. See id. at 715.
Accordingly, we will sustain the Examiner’s rejection.
Anticipation
Independent claim 1 and dependent claims 2, 46, 50, 54, and 55
Claim 1 is directed to a computer-implemented method for ensuring
consistency between metadata stored in a database system and files stored in
a file system and represented by the metadata, and recites that the method
comprises “writing . . . changes to at least one original file having a name to
at least one replacement file” and “commencing a database transaction.”
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Claim 1 further recites that “if the [database] transaction commits,
designating, as the name of the replacement file, the name of the original
file; and removing the original file from the file system.” Otherwise, if the
database transaction does not commit, claim 1 recites “not designating, as
the name of the replacement file, the name of the original file,” i.e., the
method stops.
Claim 1, thus, broadly recites a method that includes a name
designation step only if a certain condition is met, i.e., if the database
transaction commits. Stated differently, the step of “designating, as the
name of the replacement file, the name of the original file; and removing the
original file from the file system” is a conditional step that, in the broadest
scenario, i.e., when the database does not commit, will not be performed.
During examination before the U.S. Patent and Trademark Office
(PTO), claims are given their broadest reasonable interpretation consistent
with the specification. In re Abbott Diabetes Care, Inc., 696 F.3d 1142,
1148 (Fed. Cir. 2012); In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983).
Moreover, conditional steps employed in a method claim need not be found
in the prior art if, under the broadest scenario, the method need not invoke
the steps. See Ex parte Katz, 2010-006083, 2011 WL 514314, at *4 (BPAI
2011) (non-precedential) (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004)).
Here, when given its broadest reasonable interpretation, claim 1
covers a method that comprises the steps of “writing . . . changes to at least
one original file having a name to at least one replacement file” and
“commencing a database transaction,” and that stops if the database
transaction does not commit. Therefore, it is only necessary that the prior art
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disclose or suggest a method comprising the steps of “writing . . . changes to
at least one original file having a name to at least one replacement file” and
“commencing a database transaction.”
The Examiner found that Cabrera teaches “writing . . . changes to at
least one original file having a name to at least one replacement file”
(Ans. 6, citing Cabrera, Abstract; col. 3, ll. 16-34; and col. 4, lines 58-63,
“where ‘updating’ is read on ‘writing at least changes’”), and that Cabrera
also teaches “commencing a database transaction” (id., citing Cabrera,
Abstract; col. 3, ll. 16-34; and col. 14, ll. 49-61). Appellants do not dispute
these findings; instead, Appellants argue that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 102(e) because Cabrera does not teach various
aspects related to “designating, as the name of the replacement file, the name
of the original file; and removing the original file from the file system”
(see, e.g., Br. 6-9). However, this step need not be found in the prior art
because, under the broadest scenario, claim 1 need not invoke the step.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 102(e). We also will sustain the rejection of
dependent claims 2, 46, 50, 54, and 55, which were not separately argued.
Dependent claim 3
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting claim 3 under 35 U.S.C. § 102(e) because Cabrera fails to
teach “if the transaction commits, setting at least one security attribute of the
original file as a security attribute of the replacement file,” as recited in
claim 3. (Br. 10). The step of “setting at least one security attribute of the
original file as a security attribute of the replacement file” need not be found
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in the prior art because, under the broadest scenario, claim 1 need not invoke
this step. See Ex Parte Katz, supra.
Therefore, we will sustain the Examiner’s rejection of claim 3 under
35 U.S.C. § 102(e).
Dependent claim 4
For much the same reasons, we also are not persuaded by Appellants’
arguments that the Examiner erred in rejecting claim 4 under 35 U.S.C.
§ 102 (e) (Br. 10-11). Claim 4 depends from claim 1, and recites that the
method comprises “providing at least one SQL interface to facilitate at least
the designating and removing acts.” However, this step need not be invoked
under the broadest scenario; therefore, it need not be found in the prior art.
Therefore, we will sustain the Examiner’s rejection of claim 4 under
35 U.S.C. § 102(e).
Dependent claims 5-12
Appellants variously assert that the language of claims 5-12
“appear[s] nowhere” and is “not found” in Cabrera (Br. 11-12). However,
Appellants’ assertions do not rise to the level of a separate argument for
patentability. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(holding that the Board reasonably interpreted 37 C.F.R. § 41.37(c)(1)(vii)
as requiring “more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art”).
Therefore, we will sustain the Examiner’s rejection of claims 5-12
under 35 U.S.C. § 102(e).
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Independent claim 13 and dependent claims 14-19 and 21
Claim 13 recites
A system comprising:
at least one database system storing metadata;
at least one file system storing files represented by the
metadata; and
at least one SQL interface for ensuring that files in the
file system are not updated except when a transaction reflecting
corresponding changes in the metadata commits in the database
system.

We are not persuaded of error on the part of the Examiner by
Appellants’ argument that Cabrera does not disclose a “SQL interface,” as
called for in claim 13, because the “teaching in Cabrera [on which the
Examiner relies]2 bear[s] no relation to the portions of Cabrera relied on for
the claimed condition of a transaction committing or not.” (App.
Br. 10-113).
Claim 13 recites that the SQL interface is “for ensuring that files in
the file system are not updated except when a transaction reflecting
corresponding changes in the metadata commits in the database system.”
As such, the claim language connotes an intended use of the SQL interface,
which does not limit the scope of the claim. See Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir.
2003). A prior art “interface,” therefore, need only be capable of this

2 The Examiner relies on Cabrera as disclosing this claim limitation at
column 4, lines 589-63; column 8, lines 24-54; column 14, lines 14-61;
column 16, lines 14-42 (Ans. 10), and col. 1, ll. 16-20; col. 6, ll. 38-58;
col. 9, ll. 20-58; col. 15, ll. 18-24; and Fig. 10 (Ans. 27-28).
3 This argument is directed to claim 4, but Appellants argue that it applies
equally to claim 13 (App. Br. 11).
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intended use to meet the claim limitation. In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997).
Cabrera, at column 14, lines 57-61, discloses “APIs [i.e., application
programming interfaces] 40 of the database management system 15 also
include a reconciliation API that reconciles database records with file system
information in the event of interruption in the operation of a file system
containing files referenced in the database system.” Appellants have made
no showing here that the API disclosed in Cabrera is not capable of
“ensuring that files in the file system are not updated except when a
transaction reflecting corresponding changes in the metadata commits in the
database system,” as recited in claim 13. Therefore, we will sustain the
Examiner’s rejection of claim 13 under 35 U.S.C. § 102(e). We also will
sustain the rejection of dependent claims 14-19 and 21, which were not
separately argued.
Claims 20 and 51
Claim 20 ultimately depends from claim 13, and recites
wherein the manager determines whether the act of making
persistent is successful, and if so, undertakes at least one of:
setting at least one security attribute of the replacement file to
be a security attribute of the original file, and renaming the
replacement file to have the name of the original file.

Appellants assert that the arguments set forth with respect to claim 3
apply “mutatis mutandis” to claim 20. (App. Br. 10). However, the
limitation recited in claim 20 is different from the limitation at issue with
respect to claim 3.
Because Appellants do not present any other arguments in the Appeal
Brief with respect to claim 20, any such arguments that Appellants could
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have made, but chose not to make, are considered waived. Therefore, we
summarily sustain the rejection of claim 20 under 35 U.S.C. § 102(e). We
also sustain the rejection of claim 51, which depends from claim 20, and was
not separately argued.
Claims 22-31, 47, 48, 51, 52, and 56-59
Appellants do not present any argument with respect to the
Examiner’s rejection of claims 22-31, 47, 48, 51, 52, and 56-59 under
35 U.S.C. § 102(e).
Therefore, the rejection of these claims is summarily sustained.
Independent claim 32 and dependent claims 33-42, 49, 53, 60, and 61
Claim 32 recites a computer program product comprising, inter alia,
“means for, if the transaction commits, designating, as the name of the
replacement file, the name of the original file; and removing the original file
from the file system; the designating means otherwise not designating, as the
name of the replacement file, the name of the original file.” This limitation
is written in means-plus-function format; therefore, it is construed to cover
the corresponding structure disclosed in the Specification and equivalents
thereof. See 35 U.S.C. § 112, sixth paragraph; In re Donaldson Co., 16 F.3d
1189 (Fed. Cir. 1994).
Appellants direct our attention to Figures 8 and 9, and page 16,
line 24, through page 17, line 15, of the Specification as disclosing the
structure that corresponds to the recited “designating means.” (App.
Br. 3-4), i.e., a general purpose computer programmed to perform the
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algorithm shown in Figures 8 and 9 and described at pages 16 and 17 of the
Specification.4
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting claim 32 under 35 U.S.C. § 102(e) because Cabrera does not
disclose the “designating” and “removing” steps recited in the claim
(Br. 6-9, referenced at Br. 12).
The Examiner cites the Abstract, column 3, lines 16-34, column 14,
lines 49-61, column 16, lines 14-42, and column 17, lines 1-28 of Cabrera as
disclosing these features (Ans. 11-12). However, we can find nothing in the
cited portions of Cabrera that discloses “if the transaction commits,
designating, as the name of the replacement file, the name of the original
file; and removing the original file from the file system,” as recited in
claim 32.
Cabrera discloses a file name management API (application
programming interface) for use in a database management system
(“DBMS”), at column 14, lines 49-61, for enabling the DBMS to correctly
identify a file system (and, therefore, files stored in the file system), where
the file system name may change over time, e.g., with changes in its mount
point. But there is nothing in this portion of Cabrera that discloses
designating the name of an original file as the name of a replacement file
and removing the original file from the file system, if the database
transaction commits.

4 Figure 9 discloses element 230, which is described as follows: “If it is
determined at decision diamond 230 that the command at block 228 was not
successfully executed, the transaction aborts at state 232 and participants are
ordered to roll back their various transactions. Otherwise, the logic enters a
second phase of the commit process.” (Spec. 16, l. 24 to 17, l. 2).
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There also is no such disclosure in the other cited portions of Cabrera.
Cabrera, at column 16, lines 14-42, merely discloses steps for renaming a
file in response to a request from a file system user. And, although Cabrera
mentions the use of “conventional two-phase COMMIT processing” at
column 17, lines 10-14, Cabrera does not disclose “if the transaction
commits, designating, as the name of the replacement file, the name of the
original file; and removing the original file from the file system,” as recited
in claim 32.
Therefore, we will not sustain the Examiner’s rejection under
35 U.S.C. § 102(e) of claim 32, and claims 33-42, 49, 53, 60, and 61, which
depend from claim 32.
Independent claim 45
Claim 45 recites
[a] program storage device including an SQL interface
executable by a processor to perform database data and file
system updates, the interface having at least a first expression
specifying a location of an original file in URL format, and a
second expression specifying a location of a replacement file in
URL format.

We are persuaded by Appellants’ argument that the Examiner erred in
rejecting claim 45 under 35 U.S.C. § 102(e) because Cabrera discloses
“nothing about expressing locations of original and replacement files, much
less in URL format” (App. Br. 12).
The Examiner cites Cabrera at column 14, lines 14-61, and
column 16, lines, 14-42, as disclosing the claimed limitation. (Ans. 12).
Neither of the cited passages, however, discloses an SQL interface, i.e., a
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software routine to perform a database update by specifying file names in
URL format, as called for in claim 45.
Therefore, we will not sustain the Examiner’s rejection of claim 45
under 35 U.S.C. § 102(e).
Independent claims 62 and 64
Claim 62 is directed to a method for replicating data in a source
system, having a source file system linked to a source DBMS, to a target
system having a target file system linked to a target, and recites that the
method comprises “identifying a changed file in the source file system, the
changed file having an associated file reference stored in the source DBMS;
and replicating the changed file to the target file system and mapping the
associated file reference to the target.” Claim 64 is directed to a computer
program product comprising “computer readable code means for mapping at
least one file reference in a source DBMS to a target linked to a target file
system.”
Appellants argue that the Examiner erred in rejecting claims 62 and
64 under 35 U.S.C. § 102(b) because Christie does not disclose “a file
reference in a changed file” or “mapping the reference to the target,” as
recited in claims 62 and 64 (App. Br. 12-13).
The Examiner maintains that the rejection is proper, and cites
column 1, lines 52-64 and column 15, lines 30-53 of Christie as disclosing
the argued features.
Christie discloses a system for replicating data between computer sites
(Christie, Abstract). Christie describes at column 1, lines 52-64, cited by the
Examiner, that each replica must be synchronized with the replica at other
sites(s), and explains that inter-site communication, e.g., connecting the sites
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via modems and telephone lines or via a network connection, is required to
synchronize information among the sites. Christie describes a replicator
session at column 15, lines 30-53, including “inbound processing,”
i.e., processing of objects received via e-mail from another site and new or
changed objects in a local database at the replicator’s own site, and
“outbound processing,” i.e., determining what objects need to be sent to
other sites and transmitting the messages to the other sites. However, we
agree with Appellants that there is nothing in the cited portions of Christie
that discloses “identifying a changed file in the source file system [linked to
the source DBMS], the changed file having an associated file reference
stored in the source DBMS; and replicating the changed file to the target file
system and mapping the associated file reference to the target,” as recited in
claim 62, and substantially similarly recited in claim 64.
Therefore, we will not sustain the rejection of claims 62 and 64 under
35 U.S.C. § 102(b).
Independent claim 63
Appellants argue claim 63 together with claim 62 (App. Br. 12).
However, claim 63 differs in scope from claim 62, and does not recite “a file
reference in a changed file” or “mapping the reference to the target” – the
features of claim 62 that Appellants relied on in distinguishing over Christie.
Because Appellants do not present any other arguments in the Appeal
Brief with respect to claim 63, any such arguments that Appellants could
have made are considered waived. Therefore, we summarily sustain the
rejection of claim 63 under 35 U.S.C. § 102(e).

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DECISION
The Examiner’s rejection of claim 64 under 35 U.S.C. § 112, first
paragraph, is affirmed.
The Examiner’s rejection of claims 1-31, 46-48, 50-52, and 54-59
under 35 U.S.C. § 102(e) is affirmed.
The Examiner’s rejection of claims 32-42, 45, 49, 53, 60, and 61
under 35 U.S.C. § 102(e) is reversed.
The Examiner’s rejection of claims 62 and 64 under 35 U.S.C.
§ 102(b) is reversed.
The Examiner’s rejection of claim 63 under 35 U.S.C. § 102(b) is
affirmed.
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).

AFFIRMED-IN-PART

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