Ex Parte Kalas et al

Patent Trial and Appeal Board

Feb 16, 2017

13963785 (P.T.A.B. Feb. 16, 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.
40205/05601 4384
EXAMINER
KIM, TAELOR
ART UNIT PAPER NUMBER
2156
MAIL DATE DELIVERY MODE
13/963,785 08/09/2013
30636 7590 02/17/2017
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
Andrea KALAS
02/17/2017 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 ANDREA KALAS, SEAN VILBERT,
ERIKA McPHERSON, and VITALIY VAYSBERG
Appeal 2016-007127
Application 13/963,7851
Technology Center 2100
Before ERIC B. CHEN, HUNG H. BUI, and SHARON FENICK,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 21—40, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 According to Appellants, the real party in interest is Paramount Pictures
Corporation. App. Br. 2.
2 Our Decision refers to Appellants’ Appeal Brief filed Nov. 25, 2015
(“App. Br.”); Reply Brief filed July 11, 2016 (“Reply Br.”); Examiner’s
Answer mailed May 12, 2016 (“Ans.”); Final Office Action mailed June 29,
2015 (“Final Act.”); and original Specification filed June 18, 2015 (“Spec.”).
Appeal 2016-007127
Application 13/963,785
STATEMENT OF THE CASE
Appellants’ invention relates to “systems and methods for preserving
content in digital files.” Title, Spec. 120; Abstract. Claims 21, 29, and 37
are independent. Representative claim 21 is reproduced below with disputed
limitations in italics'.
21. A method, comprising:
preparing a copy of an original content of a digital file,
the copy having a copy content;
preparing a health indicator corresponding to the copy
content of the copy;
performing a health check based on the health indicator
to assess if the copy content differs from the original content',
and
performing an asset repair when the health check fails.
App. Br. 7 (Claims App’x).
Examiner’s Rejection and References
Claims 21—40 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kavuri et al. (US 2005/0195660 Al; published on Sept. 8,
2005; “Kavuri”) and Scarpino et al. (US 2014/0279946 Al; published on
Sept. 18, 2014; “Scarpino”).
Issue on Appeal
Based on Appellants’ arguments, the dispositive issue on appeal is
whether the combination of Kavuri and Scarpino teaches or suggests the
disputed limitation: “performing a health check based on the health indicator
to assess if the copy content differs from the original content” as recited in
claim 21, and similarly recited in claims 29 and 37. App. Br. 3—6; Reply Br.
2-7.
2
Appeal 2016-007127
Application 13/963,785
ANALYSIS
With respect to independent claim 21, and similarly, claims 29 and 37,
the Examiner finds Kavuri teaches a method having most of Appellants’
limitations, including: (1) “preparing a copy of an original content of a
digital file” in the form of Kavuri’s storage solutions providing copies of a
digital file (Kavuri 1182); (2) “preparing a health indicator corresponding to
the copy content of the copy” in the form of Kavuri’s hash algorithm (i.e.,
message digest 5 “MD5”; Kavuri || 92, 145); (3) “performing a health
check based on the health indicator” in the form of Kavuri’s integrity
module to verify the integrity of data copied based on the hash algorithm
(Kavuri || 179, 189, 217); and (4) “performing an asset repair” in the form
of Kavuri’s “rebuild any copy of data that is lost or corrupted (i.e., Kavuri
1217). Final Act. 3^4.
To support the conclusion of obviousness, the Examiner
acknowledges Kavuri does not expressly teach the specific claimed
assessment in the step of performing a health check, and the claimed basis
for asset repair, but relies on Scarpino for expressly teaching (1) the integrity
check as including “assess if the copy content differs from the original
content” and (2) the asset repair “when the health check fails.” Final Act. 5
(citing Scarpino 119).
Appellants do not dispute the Examiner’s rationale for combining
Kavuri and Scarpino. Instead, Appellants contend neither Kavuri nor
Scarpino teaches or suggests the disputed limitation: “performing a health
check based on the health indicator to assess if the copy content differs from
the original content” as recited in claim 21, and similarly recited in claims
3
Appeal 2016-007127
Application 13/963,785
29 and 37. App. Br. 3—6; Reply Br. 2—7. In particular, Appellants
acknowledge Kavuri teaches verification of a digital file, but argue Kavuri’s
“verification is indirect and does not include verification of the content of
the files as recited in claim 21” and, as such, “does not disclose or suggest
any verification that the content of data corresponding to the content of an
original file, as recited in claim 21” or “the content of the backup file itself.”
App. Br. 4—5. Likewise, Appellants acknowledge Scarpino teaches
verification of copy data, but argue such a verification is based “by check
two integrity values” and “the value of Scarpino that is checked is simply a
representation of the data content and the content itself is never checked.”
App. Br. 5. According to Appellants, “the key used to identity the data
object [in Scarpino] in no way verifies the content of the data” and
“Scarpino only provides traditional verification systems in which all
integrity values are based on the data of the file and not on the content of the
file.” App. Br. 5; Reply Br. 7.
We do not find Appellants’ arguments persuasive. Instead, we find
the Examiner has provided a comprehensive response to Appellants’
arguments supported by a preponderance of evidence. Ans. 2—7. As such,
we adopt the Examiner’s findings and explanations provided therein. Id.
For additional emphasis, we note Appellants’ claim 21 is broadly worded to
encompass any type of a health check (i.e., verification) of copied data based
on a health indicator (e.g., MD5 checksum or digital fingerprint). As
recognized by the Examiner, Kavuri teaches verifying the integrity of data
that has been copied (i.e., copy content of a digital file) based on a health
indicator (e.g., MD5 or digital signature). Final Act. 4 (citing Kavuri || 92,
145, 189, 217); see also Kavuri || 81—82. Similar, Scarpino also teaches
4
Appeal 2016-007127
Application 13/963,785
performing “an integrity check for each retrieved copy of the data block”
based on a similar “integrity algorithm” and “performing an asset repair
when the health check fails.” Scarpino 119.
With respect to the claim limitation “to assess if the copy content
differs from the original content” as part of Appellants’ claimed “performing
a health check based on the health indicator,” we note that such limitation is
not described anywhere in Appellants’ Specification. Appellants cite
paragraphs 25, 27, 28, 81, and Figure 2 of the Specification as support for
that phrase. App. Br. 2 (citing Spec. H 25, 27, 28, 81, Fig. 2). However, the
cited paragraphs 25, 27, 28, 81, and Figure 2 of Appellants’ Specification all
describe performing a health check on each copy of a digital asset based on a
digital fingerprint or an MD5 checksum of the digital asset. To the extent
the limitation “to assess if the copy content differs from the original content”
is understood as part of Appellants’ Specification, including Appellants’
claimed “performing a health check based on the health indicator,” the
Examiner has interpreted the claimed assessment as encompassing
Scarpino’s “integrity check for each retrieved copy of the data block” based
on an “integrity algorithm.” Final Act. 5; Ans. 4—5 (citing Scarpino 119).
We find the Examiner’s interpretation and explanations to be
reasonable and consistent with Appellants’ Specification. Ans. 4 (citing
Spec. H39, 52, 65, 81, claims 26 and 37 “wherein the health indicator is a
digital fingerprint.”). “Absent an express definition in their specification,
[even if] appellants can point to definitions or usages that conform to their
interpretation [this] does not make the PTO’s definition unreasonable when
the PTO can point to other sources that support its interpretation.” In re
Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
5
Appeal 2016-007127
Application 13/963,785
Lastly, we note Appellants have not demonstrated the Examiner’s
proffered combination of references would have been “uniquely challenging
or difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Nor have Appellants
provided objective evidence of secondary considerations which our
reviewing court guides “operates as a beneficial check on hindsight.”
Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Systems, Inc., 725
F.3d 1341, 1352 (Fed. Cir. 2013).
For the reasons set forth above, Appellants have not demonstrated
Examiner error. As such, we sustain the Examiner’s obviousness rejection
of independent claims 21, 29, and 37, and their respective dependent claims
22—28, 30-36, and 38-40, which Appellants do not argue separately. App.
Br. 6.
CONCFUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 21—40 under 35 U.S.C.
§ 103(a).
DECISION
As such, we AFFIRM the Examiner’s final rejection of claims 21—40.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
6