Ex Parte Jones

Patent Trial and Appeal Board

Sep 27, 2013

11230814 (P.T.A.B. Sep. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANTHONY G. JONES
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Appeal 2011-004427
Application 11/230,814
Technology Center 2100
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Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004427
Application 11/230,814
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 21-24, 26, and 27. (App. Br. 5). We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

INVENTION
This invention relates to "a method and apparatus for managing access
permissions to documents in a distributed database, which enables more
effective control over copies of a master document." (Spec. 1). Claim 21,
reproduced below, is representative of the claimed subject matter:
Independent claim 21, reproduced below, is representative of the
subject matter on appeal.
21. A distributed database system connected over a
communication network and accessed by a plurality of users,
the system comprising:
[a] a master database sub-system comprising a master
database and an associated master database server; and
[b] a plurality of distributed database sub-systems with
each distributed database sub-system of the plurality of
distributed database sub-systems comprising a distributed
database comprised of stored data and an associated distributed
database server and with each distributed database sub-system
being in data communication with the master database over the
communication network, and with each distributed database
having an associated plurality of authorized users from the
plurality of users of the distributed database system;
wherein:
[c] the master database stores a plurality of document-
and-control-list data sets;
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[d] each document-and-control-list data set of the
plurality of document-and-control-list data set comprises a
document and its associated document control list; and
[e] each document control list comprises a list of any
distributed databases from among the distributed databases of
the plurality of distributed database sub-systems where a copy
of the document-and-control-list data set including that
document control list is stored.
(Disputed limitation emphasized, elements lettered).

REJECTIONS
R1. The Examiner rejected claims 21-24 under 35 U.S.C. § 103(a)
based upon the combined teachings and suggestions of Moser (US Patent
Application Publication 2004/0117377 A1) and Hoover (US 5,724,575).
R2. The Examiner rejected claims 26 and 27 under 35 U.S.C. § 103(a)
based upon the combined teachings and suggestions of Moser, Hoover, and
Mancuso (US 6,934,706 B1).

GROUPING OF CLAIMS
Based on Appellant's arguments, we decide the appeal of the
obviousness rejection R1 of claims 21-24 on the basis of representative
claim 21. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). 1
We address rejection R2 separately, infra.

1 See also MPEP Rev. 8, July 2010. Note: In the instant appeal, Appellant
filed a Notice of Appeal on Feb. 12, 2010. The date of filing of the Notice
of Appeal determines which set of rules applies to an Ex Parte appeal. If a
notice of appeal is filed prior to January 23, 2012, then the 2004 version of
the Board Rules last published in the 2011 edition of Title 37 of the Code of
Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the appeal.
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ANALYSIS
We disagree with Appellant's contentions regarding the Examiner’s
obviousness rejections of the claims. We adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons set forth by the Examiner in the Answer in
response to arguments made in Appellant's Appeal Brief. (Ans. 9-11). We
highlight and address specific findings and arguments below.
R1. Claim 21
A. NON-FUNCTIONAL DESCRIPTIVE MATERIAL
At the outset, we conclude Appellant's arguments urging patentability
are predicated on non-functional descriptive material. (Reply Br. 2-3; Ans.
11-12). Non-functional descriptive material is not accorded patentable
weight.2 3 Specifically, the data contents of the recited "document control
list" and "document-and-control-list-data-set" recited in claim 21 limitations
[e] and [f] are merely arrangements of data that are non-functional
descriptive material per se. As such, claims 21 and 23 do not positively

2 Cf. Functional descriptive material consists of data structures and computer
programs which impart functionality when employed as a computer
component. See Interim Guidelines for Examination of Patent Applications
for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off. Gaz. Pat.
Office 142 (November 22, 2005), especially pages 151-152. (The Manual of
Patent Examining Procedure (MPEP) includes substantively the same
guidance. See MPEP, 8th edition (revised Aug. 2006), § 2106.01.)
3 The informational content of non-functional descriptive material is not
entitled to weight in the patentability analysis. See Ex parte Nehls, 88
USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84
USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No.
2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d
1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).
See also MPEP § 2111.05).
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recite functional data structure content that is used to change or alter any
machine or computer function. (See claims 21 and 23). Assuming arguendo
weight may be given to the disputed “document control list” and "document-
and-control-list-data-set" recited in claim limitations [e] and [f] of claim 21,
we find the weight of the evidence supports the Examiner's underlying
factual findings and legal conclusion of obviousness, as discussed below.
B. LIMITATION [e]
Appellant contends Moser's "accessibility information" would not
have taught or suggested limitation [e] "each document control list
comprises a list of any distributed databases . . . where a copy of the
document-and-control-list data set . . . is stored," within the meaning of
claim 21 and the commensurate language of claim 23. (Reply Br. 2-3).
Appellant's contention is not persuasive because the Examiner relies,
not on Moser, but upon Hoover to teach or suggest the limitation [e]'s
"document control list." Specifically, Hoover's ID Table including Table
Entries (IDTE) (called a copy list) would have taught or suggested "each
document control list" (ID table) "comprises a list of any distributed
databases . . . where a copy of the document-and-control-list data set . . . is
stored" ("locations of this IDTE exist" and "location of the object's
replicas"). (Ans. 5, 6, 10, citing Hoover, col. 3, ll. 45-49, 53-56). Appellant
fails to rebut the Examiners' findings.
C. LIMITATION [d]
Appellant contends Moser would not have taught or suggested
limitation [d] "each document-and-control-list data set of the plurality of
document-and-control-list data sets comprises a document and its associated
document control list," because Moser's "accessibility information" would
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not have suggested a "document control list" as recited in limitation [e].
(Reply Br. 2).
Appellant's contention is not persuasive. As discussed above, the
Examiner relies on Hoover's ID Table as teaching or suggesting limitation
[e]'s "document control list." The Examiner finds the combination of Moser
and Hoover's teachings would have taught or suggested limitation [d] "each
document-and-control-list data set of the plurality of document-and-control-
list data sets comprises a document and its associated document control list."
(Ans. 5-6, 9-10). Specifically, the Examiner finds Moser's data object and
the data object's associated access control list would have taught or
suggested the claimed "document-and-control-list data set." (Ans. 9-10;
Moser, ¶¶[0168] and [0169]). The Examiner modifies Moser's access
control list with Hoover's ID Table (copy list) to teach or suggest the
claimed "document control list" in limitations [d] and [e] of claim 21. (Ans.
5-6, 9-10). The Examiner concludes the combination of Hoover's ID table
("document control list") with Moser's teachings of Access control
list/accessibility information ("document control list") and data objects
("documents") would have been obvious. (Ans. 5-6; 9-10). The
combination would have been obvious because the combination yields the
predictable result of Moser's access control list including a list of the
locations of the copies of the documents and control lists.4 The Examiner
finds motivation for the combination of "providing information related to the
objects locations allowing the ability to keep track of the objects copies

4 “The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
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which assures consistency between objects if modifications to the object
[are] made." (Ans. 6; see Hoover, col. 3, ll. 50-53). Appellant fails to rebut
the Examiner's underlying factual findings and ultimate legal conclusion of
obviousness.
D. UNTIMELY NEW ARGUMENT
Appellant also presents a new argument (“teaching away”) for claim
21 in the Reply Brief that was not raised in the principal Brief. (Reply Br.
3). We find this argument to be untimely and do not give it consideration.
The Examiner relies upon Moser's paragraphs [0168] and [0169]5 as
modified by Hoover (col. 3, lines 45-49, 53-56) for teaching or suggesting
limitation [d] and Hoover (col. 3, lines 45-49, 53-56) for teaching or
suggesting limitation [e] in the Final Office Action (pp. 4-5, mailed Jan. 29,
2010). (See Ans. 4-5; 9-11). Although Appellant had full opportunity to
address these findings and conclusions in the principal Brief, Appellant did
not address these cited portions of the references until the Reply Brief was
filed. “Considering an argument advanced for the first time in a reply brief .
. . is not only unfair to an appellee, but also entails the risk of an improvident
or ill-advised opinion on the legal issues tendered.” McBride v. Merrell
Dow and Pharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986) (citations
omitted). “The failure to raise all issues and arguments diligently, in a
timely fashion, has consequences.” Ex parte Borden, 93 USPQ2d 1473,
1475 (BPAI 2010) (informative).

5 The Examiner made typographical errors by typing "[0168]-[0167]"
instead of the correct [0168]-[0169]. Ans. 4-5.
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For these reasons, on this record, we are not persuaded of Examiner
error. Accordingly, we sustain the rejection of claim 21, and of claims 22-
24, which fall therewith.
R2.
Regarding the remaining rejection R2 of claims 26 and 27, Appellant
argues these claims are patentable by virtue of their dependency from parent
claims 21 and 23. However, we find no deficiencies for the reasons
discussed above regarding claims 21 and 23. Therefore, we sustain the
Examiner's rejection of these claims.

DECISION
We affirm the Examiner's rejections R1-R2 of claims 21-24, 26, and
27 under § 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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