Ex Parte Janakiraman et al

Board of Patent Appeals and Interferences

Jul 31, 2012

11456230 (B.P.A.I. Jul. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JANANI JANAKIRAMAN and BASU VAIDYANATHAN
____________

Appeal 2010-000278
Application 11/456,230
Technology Center 2100
____________

Before JEAN R. HOMERE, MARC S. HOFF, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge CARL W.
WHITEHEAD, JR.

Opinion Dissenting filed by Administrative Patent Judge JEAN R.
HOMERE,

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000278
Application 11/456,230

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-20. Appeal Brief 4. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
We reverse.

Introduction
The invention is directed to “a computer implemented method,
apparatus, and computer usable program code for managing files. A set of
origination locations for files are identified in response to a request to view
the files. Each origination location in the set of origination locations
identifies a location on a network from which a file has been received.”
Appeal Brief 6.

Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. A computer implemented method for managing
files, the computer implemented method comprising:

responsive to a request to view a plurality of files,
identifying a set of origination locations for the plurality of
files to form a set of identified origination locations, wherein
each origination location in the set of identified origination
locations identifies a location on a network from which a file
in the plurality of files has been received; and

presenting a representation of the plurality of files
in using a set of graphical indicators based on the set of
identified origination locations.

Appeal 2010-000278
Application 11/456,230

3
Rejections on Appeal
Claims 1, 3-5, 8, 10-12, 15, and 17-19 stand rejected under 35 U.S.C.
102(b) as being anticipated by Piersol (U.S. Patent Number 6,775,665 B1,
issued August 10, 2004). Answer 4-5.
Claims 2, 9, and 16 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Piersol and Jones (U.S. Patent Number 7,149,959 B1,
issued December 12, 2006. Answer 5-6.
Claims 6, 13, and 20 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Piersol and Komamura (U.S. Patent Application
Publication Number U.S. 2006/0206791 A1, issued September 14, 2006).
Answer 6.
Claims 7 and 14 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Piersol and Bushman (U.S. Patent Application Publication
Number U.S. 2005/0108157 A1, published May 19, 2005). Answer 7.

Issue on Appeal
The dispositive issue is: Do the references cited, alone or in
combination, disclose “a location on a network from which a file in the
plurality of files has been received” as recited in claim 1 (emphasis added)?

ANALYSIS
Appellants argue, as it can be seen from claims 1, 8, and 15, “the
location that is identified for the plurality of files is a location on a network
from which a file in the plurality of files has been received.” Appeal Brief
10. Appellants further argue:
In contrast, per the teachings of the cited Piersol
reference, no file location information - such as a location
Appeal 2010-000278
Application 11/456,230

4
on a network from which a file has been received, as
claimed - is determined or indicated. Instead, the type of
physical device from which a document was captured is
identified (Piersol col. 13, lines 59-61; Figure 4, element
445). A type of device for which a document was
captured from, as described by the cited reference, does
not provide any type of information with respect to a
location on a network from which the file has been
received, as per the features of Claim 1.
Id.
The Examiner finds Piersol teaches a meta data file (Figures 4 and 5)
that provides origination locations such as devices 120, 112, 125, and 130
located on the network of Figure 1. Answer 7-8; Piersol, column 13, lines
61-65. The Examiner concludes that the “devices identify locations on the
network of fig. 1 from which files has been received by data storage device
140, see col. 4, lines 3-12 and lines 56-65; col. 5, lines 1-12; col. 13, lines
50-67; and col. 14, lines 5-7.” Answer 8.
Piersol’s Figure 1 is reproduced below:
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scanner, display, file, etc. This device-type does not
provide any information that identifies a location on a
network from which a file in the plurality of files has been
received. Instead, it indicates a type of device from which
the document was captured, with no type of identification
being made as to any network location from which a file
was received from (Piersol col. 13, lines 59-61). This list
of files/icons is presented to a user so that the user can
select a file to be retrieved (Piersol col. 13, lines 65-67),
so these icons cannot identify a location on a network
from which a file in the plurality of files has been
received.
Appeal Brief 11.
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal
quotation marks omitted). “[T]he words of a claim ‘are generally given their
ordinary and customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (internal citations omitted).
We agree with Appellants that Piersol discloses the type of device in
which the plurality of files originate within the network and not a location of
the origin of the plurality of files. Interpreting the “location” limitation
broadly within reasonable constraints, we find that merely knowing the type
of device a file originates is not the same as knowing the location of the
device in which the files originates. Further, we find that neither Jones,
Komamura, nor Bushman remedies the noted deficiency of Piersol.
Therefore, we do not sustain the Examiner’s rejection of independent claims
1, 8, and 15, as well as those claims that dependent therefrom, for the same
reasons stated above.
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Application 11/456,230

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DECISION
The rejections of claims 1-20 are reversed.

REVERSED

Llw
Appeal 2010-000278
Application 11/456,230

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HOMERE, Administrative Patent Judge, dissenting.
I write separately to voice my disagreement with the majority’s
finding that Piersol’s disclosure does not describe identifying a location on a
network from which a file is received. In particular, the majority finds that
Piersol discloses the type of device in which the plurality of
files originate within the network and not a location of the
origin of the plurality of files. Interpreting the “location”
limitation broadly within reasonable constraints, we find that
merely knowing the type of device a file originates is not the
same as knowing the location of the device in which the files
originates.
(Op. 6.)
Because of the cited finding, the majority reversed the Examiner’s
rejection of all claims on appeal. From that decision, I respectfully dissent.
As depicted in Figure 1, reproduced hereinabove at page 5 of the majority
opinion, Piersol discloses a network having a plurality of devices including a
fax, a copier, and a storage device, each of said devices having an icon to
identify a request associated therewith and originated therefrom. (Col. 4, ll.
18-24, col. 13, ll. 59-61.) While the majority correctly interprets Piersol’s
disclosure of identifying the source of the device as indicative of the type of
device, the majority incorrectly finds that such disclosure does not also teach
the location of the device on the network. In my view, the ordinarily skilled
artisan would readily appreciate that, in a network, the location of each
device thereon is readily ascertainable. Therefore, upon identifying the
actual device from which a request originates, the location of such device is
also ascertainable. The anticipation requirement that every element of a
claim appears in a single reference accommodates situations where the
common knowledge of “technologists” is not recorded in a reference, i.e.,
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where technical facts are known to those in the field of the invention.
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir.
1991). Also, it has been held that the teachings of a reference may be taken
in combination with knowledge of the skilled artisan to put the artisan in
possession of the claimed invention within 35 U.S.C. § 102 even though the
patent does not specifically disclose certain features. In re Graves, 69 F.3d
1147, 1152 (Fed. Cir. 1995). Thus, even assuming that Piersol’s disclosure
does not explicitly disclose the location of each device on the network, the
fact that such information is readily ascertainable to the ordinarily skilled
artisan renders the Examiner’s rejection proper. Therefore, because I agree
with the Examiner’s finding that Piersol’s disclosure describes the disputed
limitations of claim 1, I would affirm the Examiner’s anticipation rejection
of claim 1 over Piersol.

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