Ex Parte Moore

Board of Patent Appeals and Interferences

Mar 22, 2010

10758061 (B.P.A.I. Mar. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOHN A. MOORE
____________________

Appeal 2009-005535
Application 10/758,061
Technology Center 2100
____________________

Decided: March 22, 2010
____________________

Before LANCE LEONARD BARRY, JAY P. LUCAS, and THU A. DANG,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-005535
Application 10/758,061

I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection
of claims 1, 3-10, 12-15, and 17-20. Claims 2, 11, and 16 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm-in-part.

A. INVENTION
According to Appellant, the invention relates generally to file
management systems, and more particularly, to hierarchical storage
management systems (Spec. 1, ll. 4-5).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A method for managing image files in a host system
comprising:

identifying an image file stored in secondary storage for a
host system;

comparing file metadata for the identified image file to a
downgrade threshold;

downgrading the identified image file in response to the
comparison of the file metadata to the downgrade threshold;

storing the downgraded file in the secondary storage of
the host system; and

storing the identified image file in tertiary storage of the
host system, the tertiary storage of the host system having an
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access time that is greater than the access time for the
secondary storage of the host system.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gleicher 5,218,431 Jun. 8, 1993
Bryniarski 5,974,182 Oct. 26, 1999
Baba 2001/0014172 A1 Aug. 16, 2001
Toda 2002/0037100 A1 Mar. 28, 2002

Claims 1, 5-10, 12-15, and 17-20 stand rejected under 35 U.S.C.
§ 103(a) over the teachings of Toda in view of Baba.
Claim 3 stands rejected under 35 U.S.C. § 103(a) over the teachings
of Toda in view of Baba and Gleicher.
Claim 4 stands rejected under 35 U.S.C. § 103(a) over the teachings
of Toda in view of Baba and Bryniarski.

II. ISSUE
Did the Examiner err in finding that the combination of Toda in view
of Baba teaches or would have suggested “storing the downgraded file in the
secondary storage of the host system” and “storing the identified image file
in tertiary storage” (claim 1, emphasis added), as Appellant contends?

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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Toda
1. Toda discloses an image processing apparatus which includes a CPU
that executes an image compression processing using programs and
stored data, and a RAM having an area for temporarily storing
programs and data loaded from an external storage device and storage
medium drive and data input from an image data input device (p. 8, ¶
[0135]; Fig. 28).
2. A binarization unit generates a binary image on the basis of the color
document image loaded onto the RAM, wherein a histogram of
luminance data in the color document image is computed, the color
document image is binarized using the binarization threshold value to
generate a binary image, and the generated binary image is stored in
an area different from that which stores the color document image in
the RAM (p. 9, ¶ [0142]; Fig. 29).
Baba
3. Baba discloses image data processing carried out on an internal
memory device having extremely fast processing speed (p. 7, ¶
[0102]; Fig. 9).
4. Data is transferred from the internal memory device to an external
memory device (p. 8, ¶ [0113]), wherein the external storage device,
such as a hard disc drive, is slow in processing speed (p. 7, ¶ [0102]).
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IV. PRINCIPLES OF LAW
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)). Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).

V. ANALYSIS
Claims 1, 5, 8, and 9
As to independent claim 1, though Appellant admits that the
document image of Toda “is clearly identified as being loaded onto the
RAM 2802 from the external storage device 2804, image input device 2808,
or stage medium drive 2809” (App. Br. 4), Appellant contends that “these
devices [2804, 2808 and 2809] form the secondary storage for the system”
because “RAM 2802 is described as a temporary storage area or as a work
area” which is “diametrically opposed to the meaning of secondary storage
as established by the Applicant for understanding the claimed invention”
(id.). In particular, Appellant contends that “[o]n page 1, lines 7-20 of
Applicant’s specification, different types of memory are described with
reference to access times” wherein “[t]hese differences are used to identify
secondary and tertiary storage in a hierarchical management system” (id.).
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Similarly, Appellant contends that “[t]he word ‘tertiary’ is clearly a
reference to a third level of storage” (App. Br. 6), and that “[t]he Examiner
cites references that only differentiate between two levels of storage and he
reverses those two levels as they are commonly understood” (id.).
However, the Examiner finds that the combined teachings of Toda
and Baba would have suggested “storing the downgraded file in the
secondary storage of the host system” because “it is clear from [the cited]
passage that Toda’s color document image (used to generate the binary
image) was loaded/stored onto the RAM” and that “the generated binary
image is then stored in a different area but still in the ‘SAME’ RAM 2802;
wherein the RAM 2809[sic] corresponds to the secondary storage of the host
system as claimed” (Ans. 14-15). Further, the Examiner finds that “the
BABA reference expressly teaches storing the identified image file in
tertiary storage of the host system” because Baba discloses that “original
image data are stored in an external storage device, such as a hard disc
drive device, which is then accessed for performing image data processing
operations” (Ans. 15-16). In particular, the Examiner explains that “since
the external storage device, such as the hard disc dove[sic] device, is slow
in processing speed and hence an extremely long time is consumed in the
data processing operations … the examiner interprets BABA’s external
device as the tertiary storage of the host system claimed” (id.).
Thus, the issue we address on appeal is whether Toda in view of Baba
teaches or would have suggested “storing the downgraded file in the
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secondary storage of the host system” and “storing the identified image file
in tertiary storage” (claim 1, emphasis added), as Appellant contends.
We give the claims their broadest reasonable interpretation. See In re
Bigio, 381 F.3d at 1324. Furthermore, our analysis will not read limitations
into the claims from the specification. See In re Van Geuns, 988 F.2d at
1184.
Although Appellant contends that the external storage device 2804,
image input device 2808, and stage medium drive 2809 of Toda “form the
secondary storage or the system” as opposed to RAM 2802 (App. Br. 4), and
that “[t]he word ‘tertiary’ is clearly a reference to a third level of storage”
(App. Br. 6), Appellant’s claims simply do not place any limitation on what
the terms “secondary” and “tertiary” are to be, to represent, or to mean, other
than that the image file and the downgraded file are stored “in the secondary
storage of the host system” and the image file is then stored “in tertiary
storage” (claim 1).
Thus, the secondary storage and tertiary storage cannot be confined to
a specific embodiment set forth in Appellant’s arguments, when the claims
do not recite a specific embodiment. Instead, we interpret a “secondary”
storage as a second or subsequent storage, and interpret a “tertiary” storage
as a storage subsequent to the “secondary” storage. That is, nothing in claim
1 excludes the “secondary” storage from being a storage subsequent to
storage in an external storage device, image input device or stage medium
drive, as long as the storage is subsequent to another storage. Similarly, the
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language of claim 1 does not require that the “tertiary” storage to be a third
level of storage.
In fact, claim 1 does not even recite a “primary” storage. Rather,
claim 1 merely cites a “secondary” storage and a “tertiary” storage, wherein
the terms “secondary” and “tertiary” do not change the functionality of or
provide an additional function to the “storage.” That is, these “secondary”
and “tertiary” terms are merely labels used to describe these storages as
being two separate and distinct storages.
Toda discloses a RAM having an area for temporarily storing
programs and data loaded from an external storage device and storage
medium drive and data input from an image data input device (FF 1),
wherein a generated binary image is stored in the RAM which also stores the
color document image from which the binary image is based (FF 2). We
agree with the Examiner’s finding that RAM 2802 of Toda “corresponds to
the secondary storage of the host system as claimed” whereby “Toda’s color
document image (used to generate the binary image) was loaded/stored onto
the RAM” and that “the generated binary image is then stored in a different
area but still in the ‘SAME’ RAM 2802” (Ans. 14-15). That is, we find that
Toda’s RAM to be a “secondary” storage in that it is a storage that is
subsequent to the storage in the external storage device, storage medium
drive, or the image data input device.
Baba discloses image data processing carried out on an internal
memory device having extremely fast processing speed (FF 3), wherein data
is transferred from the internal memory device to an external memory
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device, such as a hard disc drive, having slower processing speed (FF 4).
The skilled artisan would have understood Baba’s external storage device to
be a storage subsequent to storage in the internal RAM, wherein the access
time of the external storage device is greater than that of the internal RAM.
That is, because the external storage device is slower in processing speed
than the internal RAM, it has a greater access time.
Accordingly, we agree with the Examiner’s finding that “since the
external storage device … is slow in processing speed and hence an
extremely long time is consumed in the data processing operations… the
examiner interprets BABA’s external device as the tertiary storage of the
host system claimed” (Ans. 16). That is, we find that Baba’s external
storage device to be a “tertiary” storage in that it is a storage that is
subsequent to the “secondary” storage, i.e., the internal RAM, having an
access time that is greater than the access time for the secondary storage.
We agree with the Examiner’s conclusion that the combined teachings
of Toda and Baba would have suggested the features of claim 1.
Accordingly, we find that the Examiner has not erred in rejecting
independent claim 1 and claims 5, 8, and 9 falling therewith under 35 U.S.C.
§ 103(a).
Claim 6
Appellant contends that “reduction in the Toda reference more likely
refers to decimation than it does to pixel size reduction [as required by
claims 6]” (App. Br. 7). Though the Examiner finds that Toda discloses that
“[i]f the number of areas with large coefficients of high-frequency portions
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in the orthogonal transformation result is equal to or large than a threshold
value, the controller 2001 adjusts the reduction parameter to 1/2” (Ans.
16-17), we agree with Appellant. That is, we agree with Appellant that the
sections of Toda cited by the Examiner do not teach the claimed “pixel size
reduction” as claimed.
Accordingly, we find that the Examiner has erred in rejecting claim 6
as unpatentable over Toda and Baba under 35 U.S.C. § 103(a).
Claim 7
Appellant contends that, though Toda “states that an RGB format
may be converted to an LAB or YCrCb format,” such conversion is “not size
reduction” because “rounding, not the conversion from one format to
another cited by the Examiner, reduces the size of the color data [as required
by claim 7]” (App. Br. 7-8). Though the Examiner finds that Toda discloses
that “color data may be converted from an RGB format into an LAB or
YcrCb format” (Ans. 17), we agree with Appellant. That is, though Toda
discloses converting from one format to another, we agree with Appellant
that the sections of Toda cited by the Examiner do not teach that the
converted format “requires less data to represent color” as claimed.
Accordingly, we find that the Examiner has erred in rejecting claim 7
as unpatentable over Toda and Baba under 35 U.S.C. § 103(a).
Claim 10
Appellant contends that, in the combined teachings, “the original
image appears to be the full resolution image and the storage in which the
original image is located is not described as being either secondary or
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tertiary” (App. Br. 9). Though the Examiner finds that Toda discloses
“performing a downgrade operation on the full resolution version of the
identified image file to generate the downgraded file” (Ans. 18), we agree
with Appellant that this is not the full resolution version from the tertiary
storage. That is, though Toda in view of Baba discloses a tertiary (external)
storage and performing down grade operation on a full resolution version,
we agree with Appellant that the sections of Baba cited by the Examiner do
not teach that the full resolution version of the image file is “from tertiary
storage” as required by claim 10.
Accordingly, we find the Examiner has erred in rejecting claim 10 as
unpatentable over Toda and Baba under 35 U.S.C. § 103(a).
Claims 12-14
Appellant contends that “[t]he Examiner cites to nothing that indicates
this histogram relates to file access frequency [of claim 12]” (App. Br. 9),
that “[n]o history of file access [of claim 13] is discussed [in Baba]” (App.
Br. 11), and that “the cited paragraph does not refer to a classification
threshold [of claim 14]” (id.). However, claims 12-14 simply do not
respectively place any limitation on what the terms “file access frequency,”
“last access time” and “classification” are to be, to represent, or to mean,
other than that the respective thresholds are compared to file metadata. In
fact, the terms “file access frequency,” “last access time” and
“classification” do not change the functionality of or provide an additional
function to the “comparing” step but are merely labels used to describe these
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thresholds as separate and distinct thresholds. Accordingly, we interpret
claims 12-14 to require comparing file metadata for a threshold.
As the Examiner finds regarding claim 1 from which claims 12-14,
Toda in view of Baba discloses “comparing file metadata for the identified
image file to a downgrade threshold” (Ans. 4). Appellant provides no
argument to dispute that the Examiner has correctly shown where the
claimed elements of claim 1 appear in Toda and Baba.
Accordingly, we find that the Examiner did not err in rejecting claim
12-14 as unpatentable over Toda and Baba under 35 U.S.C. § 103(a).
Claims 15, and 17-20
Appellant contends that “file metadata are data about a file” wherein
“[p]ixels, on the other hand, are the actual data in the file” (App. Br. 12).
Though the Examiner finds that “the pixels [of Toda] corresponds to file
metadata as claimed” (Ans. 20), we agree with Appellant. That is, we find
that the skilled artisan would have understood pixels to be actual data in a
file rather than “metadata” as claimed.
Accordingly, we find that the Examiner did not err in rejecting claim
15 and claims 17-20 depending therefrom and falling therewith as
unpatentable over Toda and Baba under 35 U.S.C. § 103(a).
Claims 3 and 4
Appellant does not provide separate arguments with respect to claims
3 and 4 depending from claim 1. That is, Appellant has not indicated that
the Examiner erred in rejecting claim 3 falling with claim 1 as unpatentable
over Toda in view of Baba and Gleicher, or in rejecting claim 4 falling with
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claim 1 as unpatentable over Toda in view of Baba and Bryniarski, under 35
U.S.C. § 103(a).

VI. CONCLUSIONS OF LAW
(1) The Examiner did not err in concluding that claims 1, 3-5, 8, 9,
and 12-14 are unpatentable under 35 U.S.C. § 103(a).
(2) The Examiner erred in concluding that claims 6, 7, 10, 15, and 17-
20 are unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1, 3-5, 8, 9, and 12-14 are not patentable.

VII. DECISION
We affirm the Examiner’s rejection of claims 1, 3-5, 8, 9, and 12-14
and reverse the Examiner’s rejection of claims 6, 7, 10, 15, and 17-20 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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